ARO MFG. CO. v. CONVERTIBLE TOP CO.

Print this transcript Transcript: 

Argument of David Wolf

Chief Justice Earl Warren: Number 21, Aro Manufacturing Company, Incorporated, et al. versus Convertible Top Replacement Company, Incorporated.

Mr. Wolf.

Mr. David Wolf: Mr. Chief Justice, may it please the Court.

This is a patent infringement suit brought by the respondent to get the petitioner for infringement of the Mackie-Duluk patent.

That was held valid and infringed by the District Court which also held contributorily infringed and no misuse was found.

The Court of Appeals affirmed the decision.

The Mackie-Duluk patent relates to a combination of elements in a convertible car construction.

The patent comprises the body of a car withholding both structures supported on the body of a car, a fabric on the bow structure extending down into the car and secured within the body of the car just below the bodyline.

A wiper arm supported on the holding bow mechanism is used to force the fabric ultimately against the body of the car in order to affect the watertight seal at the bodyline.

The patent relates specifically to the means for affecting this automatic seal at the bodyline of the car in order to prevent water from entering.

The fabric itself was cleaned in a combination of elements.

Every claim in the patent related to the combination of holding bow mechanism, the body of the car, the wiper on and the fabric in a specific operative relationship.

It was never claimed in the patent.

It was never claimed in the file -- in the prosecution of patent to the fabric itself.

The combination was embodied in the General Motor Cars from 1950 to 1953 and at some models in 1954.It was also incorporated from 1952 to 1954 portion of the cars.

The fabric itself was the only wearable component of a patented combination.

The other elements were found to be relatively permanent and would normally last the life of the car.

The fabric would wear and would normally be replaced for every three years.

Because of the nature of the automotive industry, the automobile manufacturers were not interested in the replacement of these fabrics.

Consequently, they're sizable replacement fabric industry in which these manufacturers make these fabrics for replacement purposes.

The petitioner in this case in Massachusetts Corporation and Partnership or perhaps the national leaders in this particular replacement field, they have been making these fabrics and selling them at kit form for installation for a number of years.

These kits are sold to distributors and jobbers who in turn install it.

All that is sold is the fabric for installation.

The kits include primarily the fabric especially designed to fit the General Motor and Ford cars.

The petition themselves except for incidental installation occasionally for test purposes in a very, very small amount of regular replacement don't do any installations.

The respondent --

Justice John M. Harlan: With this fabric that you described to us, this fabric, is it shaped?

Mr. David Wolf: The fabric -- the fabric is a -- is -- looks like any conventional fabric top for an automobile.

It has a flop or a prolongation at the sides which extend into the body of the car and it's secured there by hinds on a truck so that when water comes down at the top of the car, if it isn't stop behind the pressure of the wiper arm against the fabric and the body, it'll be taken up to destruct and drain out.

But in answer to your question, the fabric itself was not, if I assume the question correctly, is not itself unique in shape.

The record shows it was prior at which had this particular shape although not specifically the same dimensions.

The --

Justice Potter Stewart: Mr. Wolf, where in the -- where in the appendix we'll get the best picture (Inaudible) --

Mr. David Wolf: Of the patent itself?

Justice Potter Stewart: Well, of this -- of this top and of the shape of the top.

Mr. David Wolf: The shape of the -- well, the shape of the top is fashionably shown on page 589 and figure 1 of the patent.

I call to your attention that in figure 1 of the patent, only a portion of the entire fabric top is shown.

In other words, there was never a disclosure of a complete fabric top, only the fragmentary portion of it.

If the Court is interested in -- in embodiment of an installation, there are several of them.

Perhaps he could look at page 531 which shows an exhibit looking from the inside of the car.

You can see that the flap is detached at the lower end there.

The bar going across just above the individual's hand is that this wiper arm which form the part of the patent combination.

Justice Potter Stewart: Now, which direction are we looking at?

Mr. David Wolf: We're looking from the trunk of the car through the back window.

There -- the -- the respondent corporation is apparently a patentable incorporation that owns only a territorial right in this patent in the Commonwealth of Massachusetts.

It was organized approximately 22 days before the suit was brought.

It received a territorial assignment in the patent to Massachusetts only about 10 days before the suit was -- was brought.

It received this assignment, this territorial assignment from another patent owning company called Automobile Body Research.

Automobile Body Research had a -- had a companion patent to this particular patent.

Automobile Body also had a number of -- well, had several licenses outstanding, had one with General Motors and one with the Ford Motor Company.

Both of these licenses call for payment of royalties on this unpatented fabric when it was -- when they were sold as replacements.

And these -- these royalties or the -- the requirement of royalties was paid with -- with a condition as long as the license was granted.

The fact that the -- the petitioner in this case manufactures fabrics for replacement purposes brings, into a question, a well-known doctrine as to whether or not a user, and consequently a manufacturer, has the right to maintain and repair patented combination.

The Government is going to present use with respect to that particular issue.

As I understand the Government's position is that a user, and consequently a supplier, of unpatented replacement fabrics has the right to make those replacements without payment of further royalties.

Once the patent owner has acquired or has received payments of the patented combination and once that original installations passed monopoly.

We're primarily concerned with the question of whether or not the petitioner in this case has the right to sell fabrics for any purpose or whether the patent can be used for the purpose of controlling this unpatented fabric which was never claimed during the -- at any time.

A patent defines an exception to the antitrust laws.

This exception is in particularly defined by the claims of the invention, by the claims which appeared at the end of the -- the patent itself.

It's long been held by this Court in many decisions starting with the Motion Picture patent case going down through Carbice -- Carbice case and most recently with the Mercoid case, cannot use a patent to control the sale of unpatented component of that particular patented combination.

Even though that particular patent component was an essential element and even though, in some instances, it was termed the heart of the invention.

The Congress recognizing importance of this particular requirement, the requirement of an inventor to find specific terms of what he claims his invention.

They did this by enacting a whole title, Title 35.

In this particular title, is the requirement of the inventor set forth in his application that which he claims his invention must be defined specifically and clearly, the examiners and the patent office will clearly -- will look at the -- this particular claim or these claims whatever is submitted and examine the file to determine whether or not this is an invention.

And the way they do it is they look at this particular claim or the claims above, they draw themselves a picture of what's described.

And then they go and look through what -- what's defined queer eye.

In other words, this -- this claim is a word picture of the invention.

Now, if the claim doesn't describe a particular element, the patent examiners won't look for it and that's just what happened in this particular case.

The patent never looked for the fabric alone because it was never claimed.

The claims also served other functions.

They served the function in telling the public what they can make and what can't make.

They also serve the function of telling the inventor what he can -- what he use as a charge for infringement or what he can't use as a charge of infringement.

Now, respondent in this particular case says, "Well, we don't have to squabble with this claim because this fabric is an element of the patented combination and it's an important element of patented combination.

Now, we can come in under the statute 35 U.S.C. which says, "If you make a material part of a patented combination and it's not a staple or a commodity of commerce, we're entitled to monopolize it."

But let's take a look at this 35 U.S.C. 271 -- pardon me, 271 -- 271 (c).

This appears on page 76 of our brief.

Now, the language paraphrasing it is whoever sells a component of a patented machine, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringement."

Now, the keywords we believe in this particular statute are the phrases "material part" and also the phrase "suitable for substantial noninfringing use".

Now, you can interpret the word "material part" to mean a single unpatented essential element with patented combination.

But the real question is, was this the purpose of that particular phrase?

If you look at the legislative history of 271 (c), it's perfectly clear that Congress intended to codify existing case law.

271 (c) was not intended to make new law.

And in codifying prior existing case law, the Congress codified several cases.

Justice Hugo L. Black: When does it passed?

Mr. David Wolf: July 4th, 1952.

Now, the cases --

Justice Felix Frankfurter: (Voice Overlap) the Patent Division Office?

Mr. David Wolf: Yes.

The cases -- which Congress had called to its attention during this legislative history -- during this legislative history, this particular bill are very interesting because there are four cases which caught their attention.

Two of them illustrated, in our opinion, a proper setting for contributory infringement and two of them were illustrative of -- of a situation which should not be contributory infringement.

Justice Felix Frankfurter: I'm sorry but direct my mind.

Am I -- am I to infer that (Inaudible)

Mr. David Wolf: No.

Justice Felix Frankfurter: -- what was the ruling of this Court on --

Mr. David Wolf: No.

Justice Felix Frankfurter: (Inaudible)

Mr. David Wolf: No.

2 -- 271 --

Justice Felix Frankfurter: (Voice Overlap) want to rely on the statute for your -- for your position or the statute is declaratory or -- or --

Mr. David Wolf: The statute was declaratory.

Justice Felix Frankfurter: Alright.

Mr. David Wolf: I believe Senator Saltonstall, when this came to a vote asked that specific question and Senator McCarran said, "It is a codification."

In the House of Committee -- House of Senate Committee reports will indicate it.

Now --

Justice William O. Douglas: Does that testify (Inaudible)?

Mr. David Wolf: I don't believe so.

In the respondent's brief, he has made the specific statement that the clear and concise definition of contributory infringement now in the statute and every element of that definition represents no more than a codification of what is long and consistently believed and recognized as contributory infringement.

So I don't believe that they are contesting that issue.

But the four cases, I'd like to call the Court's attention, of the Mercoid case and the Carbice case which I think clearly indicate what is not contributory infringement.

Now, on the other side of the line, we have two lower court decisions which were called to the Committee's attention and they're referred to our -- in our brief.

One is the Wallace versus Holmes case, the other is the Amalgamated Dental case.

And these cases considered what this word "material part" is.

I'd like to first mention this Wallace versus Holmes case because that particular case was a very early case.

It was discussed in the Committee reports.

That particular case had a -- had a claim relating to a lamp burner mechanism.

If -- the claim is reproduced in our reply brief, on page 5, the bottom of page 5.

Now, this particular claim recited a lot of elements in a lamp burner mechanism with a glass chimney which was especially designed to fit.

The defendant in that particular case made everything but the glass chimney.

The Court in that case said this is an infringement.

Well, they didn't it was an infringement.

They said this is a virtual infringement because the defendant here is making substantially everything but the background element of the glass chimney.

And so we're going to hold them liable.

It's interesting to note in this case, this was the very first instance of the word -- to use the word "material".

And the Committee reports, they -- they indicate that this was a part of our law for 80 years.

And this was an 1871 case, so I suspect that the Court may have had reference to this particular case when they were considering what material was.

But you see here, there was a making of substantially the entire combination.

There was not a making of a single element or the sale of a single element.

The other case that was caught to the Committee's attention was Amalgamated Dental case.

There was a case in which there were four chemicals in making a solution.

The defendant in that case was selling four chemicals without the aqueous solution.

And the judge in that case recognized that they were making substantially the patented invention except for the background element of the aqueous solution.

And they said -- the judge said, "I'm going to hold the defendant liable on this particular case because he is making the substance of the invention."

And incidentally, in that case, the judge on the District Court never recognized that this was different than Mercoid.

Now, those are the two cases which illustrate what contributory infringement should be.

Now, what contributory infringement should not be was decided several times by this Court.

One is the Carbice case and one is the Mercoid case.

Perhaps I -- I ought to consider the Mercoid case first because this -- that case, as far as I can see, is undistinguishable in all respects from this particular situation.

In the Mercoid case, the patent related to a furnace system in which one of the elements was a specially designed thermostat which was alleged to be the heart of the invention.

Now, the Mercoid Corporation was selling these especially designed switches.

They were suit for contributory infringement.

In that case, this Court said the attempt to hold Mercoid and the attempt to control the sale of these unpatented components is a misuse of the patent and they refused to enforce them.

The Carbice case is also similar.

In that case, there was patent on the combination of the -- of dry ice and the package in which the dry ice was packed.

The defendant in that case was selling dry ice with the knowledge that it was being used in a particular patented combination.

There, the Court said you can't control an unpatented component.

Now, we believe all these cases clearly in this -- illustrate that the word "material" in this particular context really means the substance of the patented invention minus, perhaps, a background element.

I think if you'll look at it in that term, you will -- you will see that this particular statute does make some sense.

If you interpret it to mean an unpatented component even though it's essential, you see it implying in the face of the rest of the statute which -- which set up a very elaborate system for examining these -- these claims.

If you say we're going to protect this unpatented component what you're saying is that every man can be his own patent office and every man by virtue of going into a -- the patent office in getting a claim and a combination adding some element has -- can thereby acquire a right to control the individual components all be it not themselves inventions and not patented.

I'd like to go one step further than -- on this point on contributory infringement.

That is the actions of the respondent in this case.

Now, the facts stated in our brief are fairly complete on this particular point.

But if you -- in the -- in the record you will see there are several licensing agreements.

One is with Ford, one is with General Motors and one is with Atlas International, a competitor of the petitioner in this particular case.

Now, all of these licensing agreements conditioned the right to continue the use of patented combination upon an agreement to pay a royalty on the -- on the unpatented fabrics.

The language, for example, in the Atlas International agreement says, "Licensee will pay a royalty on any replacement top made, used or sold by a licensee without regard to whether such top is covered by either of the patents which by its peculiar shape or the construction is adapted to use in one or more of the following cars."

There's a whole long list of these cars.

And there are some other requirements in this particular agreement.

Now, the evil --

Justice John M. Harlan: Did the company ever have a license?

Mr. David Wolf: No -- the petitioner has consistently refused to take out a license.

And I might say that is to the detriment of the petitioner because there is -- there is evidence in the record that the -- that -- that one of the individuals associated with the Arsenal Corporation was writing letters to possible purchases of this fabric saying, "Don't buy from anyone that hasn't got a license.

Buy from Atlas International, they have a license."

And we believe this is a very clear showing of substantial damage to the -- to the petitioner.

We believe that this case comes clearly within the scope of the International Salt case and that there has been a clear showing of violations of the Sherman Act and the Clayton Act.

We -- we believe that there has been a substantial attempt to monopolize the sale of unpatented fabrics.

And in this particular area of commerce, it's a -- not an insubstantial area at all.

In the record, there was evidence of the amount of royalties of this Atlas International has paid.

And in one year alone, these royalties amounted to $14,000.

Now, if you calculate the amount of tops necessary to generate $14,000 worth of royalties under their particular licensing agreement, you come up with a fee of something close to a half a million dollars.

This, as far as I can see, is a very substantial area of commerce which the -- which -- which has been monopolized or which has attempted to -- be monopolized.

Justice Charles E. Whittaker: If I may require a local trimmer to make a new top for my automobile that I bought and paid for involves this invention, have I infringed this judgment or violate this judgment?

Mr. David Wolf: You are hiring a local -- a local trimmer making --

Justice Charles E. Whittaker: Do it myself or hire a local trimmer to make this new cover for the --

Mr. David Wolf: A replacement fabric.

Justice Charles E. Whittaker: That's right.

On my automobile.

Mr. David Wolf: According -- according to this particular decree, you would be infringing.

Justice Charles E. Whittaker: But what did I pay for when I bought the top from the car?

Did I not then inherently cover in the price of license to use the thing I bought?

Mr. David Wolf: According to the -- according to the respondent, no.

According to respondent, even though you still have the full mechanism, the body of the car, I mean this wiper arm and even though your fabric may, perhaps, be perfectly alright in this little -- little "prolongationary" within the car and even though the -- and even though that all it might be wrong is someone slashed the top in an area not even shown in the patented combination, you would be infringing.

Unknown Speaker: Assuming --

Justice Potter Stewart: Mr. Wolf, might place is here to Mr. Justice Whittaker's question not depend upon whether the top for -- on a Ford or on an automobile because I understand this case, General Motors had a license, it's arguable at least that its purchasers had -- had implied licenses on the other hand, Ford Motor Company did not have a license and therefore, its purchasers did not have had.

Mr. David Wolf: Well, our -- our answer to that question is that the -- the Automobile Body Research Corporation signed an agreement with the Ford Motor Company.

That agreement purports to be a release rather than a license but I say that it is immaterial as to what you've defined it.

And the important point was that Automobile Body got paid.

And as soon as they got paid, for -- for this particular -- this particular -- for instance, their monopoly rights in that patented combination ended and they had no more right to claim anything with respect to those particular combinations which were -- which was sold and which were released by that particular agreement.

There is a further answer to your question and that answer is that -- that if this Court holds that the General Motor Corporation replacement fabrics or fabrics for those particular cars were -- were improperly made the subject matter of this licensing agreement, then there has been a misuse and that in -- in view of this misuse, the respondent has no right under the Morton Salt case, enforces patent.

There are -- there are two other issues which we have raised and I would just like to briefly allude to them because they are fairly well spelled out in our brief.

The first is that since this is a patent and since this is an exception to the antitrust laws, the patent was -- or an exception to antitrust laws, a patent owner is subjecting himself when he comes to the Court with much greater scrutiny as to his equitable content.

We called to your attention.

The respondent in this case was obviously going to shell corporation.

And in our opinion, obviously formed as a shell corporation to dodge -- to dodge discovery proceedings and this -- this would clearly was the case when we tried to find out certain facts and also for the purpose of isolating the companion to that.

Now, we believe that this is an equitable content which should not be tolerated in a patent case.

When a man comes in to court with a patent, he should be made to put it on the line.

He should be made to stand up and say, "This is my invention.

I am going to be subject to the scrutiny as to whether or not it's a good patent."

He should not be allowed to take part of that patent and hide it in a separate corporation so that it would still collect royalties on it.

There is also a constitutional issue involved which I think we spelled out in our brief which would not be met by this Court unless they found that the interpretation on 271 (c) reached by the respondent is the correct interpretation.

I should like to reserve my remaining time.

Chief Justice Earl Warren: Mr. Spritzer.

Argument of Ralph S. Spritzer

Mr. Ralph S. Spritzer: Mr. Chief Justice, may it please the Court.

I'd like to point out that the charge of infringement which was actually made by the respondent here was limited to the charge that the Aro Company had infringed by replacing the worn-out convertible top fabric when -- when it wore out.

There was no charge of infringement in the sense that Aro's, having supplied a manufacturer with material which he in turn might use to install the original top.

So that we don't have here, so far as the charge of infringement is concerned, a question of the supply for purposes -- supply of an element for purposes of creating the entire patented entity.

The charge is simply that there was an infringement when these fabrics were supplied to infringe afterward to do-it-yourself car owners to replace the original fabric.

And that being so, I can assume I think of -- for the purpose of the central issue in this case, the charge of infringement made.

I can assume that if Aro had supplied these convertible top fabrics designed as they were to an automobile manufacturer who had no license from the patentee and if that automobile manufacturer had taken the fabric and then, together with all the other elements which made up the combination, created the patented articles that that would constitute a direct infringement.

We can assume further for purposes of --

Justice Potter Stewart: On the part of the automobile maker.

Mr. Ralph S. Spritzer: On the part of the automobile maker.

Justice Potter Stewart: A contributory infringement presumably on the part --

Mr. Ralph S. Spritzer: I presume further that Aro in that event might have been liable as a contributory infringer --

Justice Potter Stewart: When you're talking about supplying (Voice Overlap) --

Mr. Ralph S. Spritzer: For supplying the (Inaudible)

Justice Potter Stewart: You're not -- you're not talking about supplying bulks of fabric, you're talking about supplying a -- a completed fabric, safe fabrics for this (Voice Overlap) --

Mr. Ralph S. Spritzer: Yes, when I speak of the top fabric, I mean in the form and design.

Justice Potter Stewart: Shape and design.

Mr. Ralph S. Spritzer: Shape and design (Voice Overlap) --

Justice Potter Stewart: It's a combination patent.

Justice John M. Harlan: That will be cool even though the top itself is not fabric.

Mr. Ralph S. Spritzer: No, I'm -- the -- the patent with which we deal in this case is a combination --

Justice John M. Harlan: Combination patent.

Mr. Ralph S. Spritzer: -- patent which has a number of elements of which the fabric in its particular shape and design is but one element.

Justice John M. Harlan: And not patented --

Mr. Ralph S. Spritzer: And not patented, never thought it may.

Justice John M. Harlan: But in the illustration you're giving --

Mr. Ralph S. Spritzer: Yes.

Justice John M. Harlan: -- this should've been to a manufacturer not -- not withstanding that fact.

It was agreed there was a contributory infringement.

Mr. Ralph S. Spritzer: No, I say that I'm -- petitioners argued that even in that event, there will be no contributory infringement on his part --

Justice John M. Harlan: I understand.

Mr. Ralph S. Spritzer: -- because he believes all of the conditions of Section 271 would still not be satisfied.

I say I don't -- I think we can put that to one side because no charge of infringement here is based upon supply to an automobile manufacturer.

Justice John M. Harlan: You don't --

Mr. Ralph S. Spritzer: And I'm going to --

Justice John M. Harlan: -- you don't (Voice Overlap) --

Mr. Ralph S. Spritzer: (Voice Overlap) myself to the narrower question which is the only question of which the Court of Appeals has spoke at this time at least.

And that part is the only point I've been tending to make that far is that we don't deal with alleged infringement by automobile manufacturers about their suppliers.

And thus, I think the primary focus of inquiry becomes this whether an individual, an ordinary consumer who has bought a convertible automobile from one who was authorized to make it in the way that he did, whether that consumer -- when the fabric wears out, two or three years later, exceeds his rights, if he goes ahead and replaced it with either himself or with someone else's aid with another new fabric of similar design.

Now, I think everybody in this case concedes that if there is no direct infringement, if it's not an infringement by the automobile owner to replace the fabric that then there is no issue in contributory infringement because without the direct infringement, no one can be contributing to an infringement.

Justice Charles E. Whittaker: (Inaudible)

Mr. Ralph S. Spritzer: I think so, yes.

I (Inaudible) briefs.

Another way of stating, we think, is the central issue or at least the issues which Government has assigned itself is that we have here, another way of stating it is we have here a question as to the scope of the owner's right to use the article which is involved.

And that the burden of our contention is that a man who buys an automobile has an implied license to use it freely to hold on that.

That he's entitled to use it for as long as Yankee ingenuity could keep it going.

And that to this end, he can replace individual component parts of a patented combination as they wear out or becoming exhausted in ordinary course in advance of the enlightenment of car is uphold that he can do this without any further license or authorization from anyone, so long as the individual part in question is not itself patent.

Justice John M. Harlan: Supposing the day after, your hypothetical car owners (Inaudible) one of his tops.

Mr. Ralph S. Spritzer: Yes, sir.

Justice John M. Harlan: He then goes to a competitor, I like your design, because the distributor is a little better, I like your color better, he rips the top of the article that he bought and replace it with that (Voice Overlap) --

Mr. Ralph S. Spritzer: I think he can --

Justice John M. Harlan: Can you say he can do it?

Mr. Ralph S. Spritzer: -- I think he can do it as the matter of case, yes, because --

Justice John M. Harlan: (Inaudible)

Mr. Ralph S. Spritzer: -- this is an unpatented element and I don't think the replacement of this single element constitutes a recreation of the patented combination.

Of course, the findings in this case are that people normally replace these tops when they become either highly unattractive or seriously worn out in two or three years on the average (Inaudible) of the car.

Justice John M. Harlan: But in your point of view, you said that it doesn't make any difference (Inaudible)

Mr. Ralph S. Spritzer: That is right in the case where there is something which fall short, as I think it's clearly the situation here --

Justice John M. Harlan: Of --

Mr. Ralph S. Spritzer: Of a --

Justice John M. Harlan: -- some --

Mr. Ralph S. Spritzer: -- of a recreation under the combination.

Justice Charles E. Whittaker: (Inaudible)

Mr. Ralph S. Spritzer: That is right.

That's right.

I should pause to emphasize what I think the Government's interest and -- and concern in this litigation which has brought up in this case.

We think that if one were to adopt the tops, the court below I think is gone, whereby if you suffice for the patentee to show that the parts being replaced, part of the combination being replaced by the purchaser of the machine is a significant part or an integral part or a major part or an extensive part, if it were to -- if that would suffice so as to enable him to monopolize the replacement of this element, we think then a patentee would be encouraged and would be permitting to assert monopolistic powers over the replacement parts market, even though the part is in question by themselves unpatented.

Justice John M. Harlan: Could I ask you one more question and I will try not to interrupt you after that just to make sure I understand your thinking.

Does your position describe what sometimes is called the basis of difficulty between reconstruction, repair or replacement insofar as the article itself is an unpatented component of the combination of patents, you discard that distinction?

Mr. Ralph S. Spritzer: As we understand the distinction --

Justice John M. Harlan: I mean --

Mr. Ralph S. Spritzer: -- we think the distinction is between permissible repair or replacement of a -- of component parts on the one hand and forbidden reconstruction of the entire combination on the other hand.

Justice John M. Harlan: Well, I'm limiting myself simply to an unpatented component -- unpatented combination.

I thought you said that it didn't make any difference in your view what the reason was for the replacement of that one unpatented element.

Mr. Ralph S. Spritzer: Oh, if -- if the replacement is of a single element, then I think it can be done in all circumstances.

But I think --

Justice John M. Harlan: But it's really construction or repair?

Mr. Ralph S. Spritzer: I think -- I think it was the replacement and repair concept which permitted owner to replace for reasons of personal preferences as well as the purposes of utility.

And I think the -- the real problem that we -- that we have is, what is the difference?

What is the line as between permissible repair or permissible replacement of components and through reconstruction or complete reconstruction or substantial reconstruction of the patented combination?

And that -- that I've really like to come to next but I should, perhaps, emphasize though, I think petitioners' counsel has already alluded to it.

I'd like to emphasize that here, we don't have a patent on the fabric or indeed on one element, we have a patent covering a combination of a number of elements.

And the findings on that were at page 36 of the record and at that point, Judge Aldrich was pointing out, I'm looking about half way down the page, he was pointing out what the investors -- 36, yes, sir.

He was pointing out what he thought the inventors of this particular convertible top had accomplished and he said, "Rather than affixing the fabric, the tonneau itself they attached it to a trough or gutter and then he goes on to describe how water would be directed into a trough and carried out by a drain, how a wiping arm would be utilized in order to affect the seal and I shouldn't go into the details, but I do want to make the point that there's no room in this case, I think were the suggestion, that the car owner's replacement of the fabric alone could constitute either a replacement or a substantial replacement of the entire system which was the subject of the combination patent claim.

Perhaps, I should also add parenthetically that there is no obstacle or whatever provided a patentee and make the requisite showing that the standard of invention meant.

There's no obstacle whatever to obtaining a patent on the combination and patent rights in relation to a sub-combination or an ingredient element.

This Court has recognized that one can obtain both kind of protection, the patent office in -- in numerable instances just granted patent rights both in relation to a combination and in relation to an ingredient element of the combination.

And so what we have here essentially is the -- a result in this case which permits the patentee who has only claimed the combination of the entire system.

A result which permits him to accomplish the very thing that he could've accomplished assuming that this fabric was separately patentable that he could've accomplished if he'd gone to the patent office made the claim and subjected it to the scrutiny to which it then would've been subject.

Now, how does the court below reach the conclusion of the patentee's rights were trespassed by the fore owner's replacement of the fabric?

It deals with that -- it's the Court of Appeals summarizes this position at page 655 of the record which is a very thin volume and -- on that page, it notes that the fabric is not a minor or relatively inexpensive component, then goes on to add that the fabric does not wear out after a very short period of use.

Although it recognizes it at the same time that the life of the fabric is several times shorter than the life of the invertible top assembly as a whole or to deal it as a whole.

And then it finally concludes that the car owner would not rationally believe that he was making only a minor repair.

In our view, the Court had gotten the wrong answer in this case because it has asked the wrong question.

We think the question is not whether the unpatented component is major or minor, expensive or inexpensive, not whether it wears out every two months or every two years, the question ultimately to be answered by the Court is whether the man who has bought the article and thereby obtained the implied right to used it, the question is whether he has abused that right by making a new article, by recreating the entire combination which alone is the subject that protects.

Justice Potter Stewart: Under the statute, the question, the right question is that they are not immaterial part, isn't that true?

Mr. Ralph S. Spritzer: That would be a question only if you reach an issue as to contributory infringement.

The statute itself makes the claim in 271 (c) that there is no action for contributory infringement except -- insofar if there is a contribution to direct --

Unknown Speaker: (Voice Overlap) --

Mr. Ralph S. Spritzer: (Voice Overlap) and 271 (a) leaves the law of direct infringement where it starts.

Congress was explicit that it was not attempting to legislate on the subject with what he is direct infringement.

It explains that if one can make clear that there were some circumstances in which actions were contributory infringement would be possible.

If would induce to provide by statute for contributory infringement action, they could -- some members of the Patent Bar doubted after the Mercoid case of what scope there was left for contributory infringement actions, Congress said, "We want to authorize and make clear that in a proper case, there could be an action for contributory infringement as well as the record."

And so Your Honors are quite right, I have been confining myself to what is direct infringement and that is why I put aside at the outset the situation which might exist if fabric were being supplied to a manufacturer who was then getting all the other elements assembling them all and creating initially the patented combination.

Justice Potter Stewart: An important justification for holding somebody liable -- for -- for the whole doctrine of contributory question is, is it not that -- that that comes into play when the actual technical infringement has been done by somebody who has a difficulty or other reasons that it just would not be practical or practicable liable for direct infringement i.e. the customer.

Mr. Ralph S. Spritzer: Yes.

Justice Potter Stewart: And this is where the whole doctrine (Inaudible)

Mr. Ralph S. Spritzer: I think that -- that the --

Justice Potter Stewart: Not the justification (Voice Overlap) --

Mr. Ralph S. Spritzer: (Voice Overlap) --

Justice Potter Stewart: -- make it sound rather absurd that Justice Whittaker would be infringing a patent when he had flaps put on his or new tops on his convertible car that would -- that would be a technical infringement.

Nobody's trying to hold the infringement and that's the whole basis for -- for the doctrine (Voice Overlap) --

Mr. Ralph S. Spritzer: That is the reason.

The reason pursuing the contributory and the alleged contributory infringer is that you'd have to sue 100 people if all the consumers -- if the consumers were direct -- were the direct infringers but that did not avoid the necessity for the plaintiff charging infringement establishing the user --

Justice Potter Stewart: Shall (Voice Overlap) --

Mr. Ralph S. Spritzer: -- is a direct infringer.

He doesn't have to go after him but he has --

Justice Potter Stewart: (Voice Overlap) try to hold him liable.

Mr. Ralph S. Spritzer: That -- you don't have to hold him liable but he has to establish of what the replacing car owner did was the direct infringement, this whole case perhaps on that.

Justice Felix Frankfurter: But even after that, the statute is declaratory.

Mr. Ralph S. Spritzer: He's -- the statute didn't --

Justice Felix Frankfurter: Declaratory, namely that he couldn't be a contributory infringer or so-called (Inaudible)

Mr. Ralph S. Spritzer: That's right.

I -- I -- that point I'm making it and perhaps I wasn't clear was the Congress didn't provide any new standard or test as to what a direct infringement would be.

Justice Felix Frankfurter: (Inaudible)

Mr. Ralph S. Spritzer: Now, the leading case in this Court as to the question of permissible repair or replacement on the one hand versus forbidden reconstruction of the entire combination on the other is Wilson against Simpson to which I'd like to refer briefly.

That was the case in which there was a claiming machine -- with claiming machine which consisted among other things of a pressure roller and sets it nice.

And that the patent there again was solely on the combination.

The question which arose was whether the man who had bought this machine would replace the cutting knife when they wore out and develop.

They did after several months and sustain the use.

And this Court said in that case that to be sure that there is no right to build -- rebuild the machine as a whole, then it served, however, that the machine continues to exist even though certain essential parts, essential parts have become worn out.

Chief Justice Earl Warren: Mr. Spritzer, during -- during your argument, you refer to Yankee ingenuity.

It's my information that today, you would've been much better advised to have referred to acquiring this ingenuity.

Mr. Ralph S. Spritzer: Thank you.

Print this transcript Transcript: 

Argument of Ralph S. Spritzer

Chief Justice Earl Warren: Number 21, on the docket Aro Manufacturing Company, Incorporated, Petitioners versus Convertible Top Replacement Company.

Mr. Spritzer you may continue your argument.

Mr. Ralph S. Spritzer: Mr. Chief Justice, Your Honors.

In the very few minutes remaining to me, I should like to attempt to restate briefly the propositions argued last Thursday and then to state concisely what we think is the appropriate test which should govern this case.

My starting point was that we deal here with the combination patent by the convertible top assembly and that none of the individual elements, either the fabric, nor any of the other element, has been separately patented.

From that, it follows that one can find infringement only if there has been an unauthorized creation or recreation of the entity, for that alone is the subject to patent taxes.

Now in this case, the court below found contributory infringement by the petitioner although the top fabric was supplied only for purposes of replacing worn out fabrics and not in any instance, for purposes of building a new convertible top assembly.

In support of its conclusion, the court below said that the fabric is sufficiently important, sufficiently expensive, sufficiently durable, though not nearly so durable as the cars hold, that a car owner would not rationally believe that he was making only a minor repair.

Now, we take direct issue with this entire line of reasoning.

We urge that the patent on a combination does not give patent protection on unpatented parts, whether they be major or minor.

And we say it further that any person reading the patent claim, which was filed in this case, was fully entitled to believe that he could repair or replace any individual component of the machine, when that component in ordinary course, wore out.

I spoke the other day at the close of this Court's decision in Wilson against Simpson, which involved a combination patent on a planing machine and the Court in that case held that the cutting knives which were one element of the combination could be replaced as they wore out.

And in so holding, the Court said "It is the use of the whole of the combination which a purchaser buys."

Then the Court went on to say, that the purchaser may not be deprived of the right "To give duration to that which he owns or has the right to use as a whole."

This Court of course, has followed that the same approach in other similar cases.

The same view, we think, finds conspicuous support in decisions of the -- Second Circuit, although I must add that there are other lower federal court decisions which seem to adopt the approach similar to that adopted by the Firth Circuit in this case.

Among the Second Circuit cases on which we particularly rely, is a case called General Motors against Preferred Electric, which is particularly interesting in that, it, like in this case, involves replacement of automobile parts.

The patented combination in that case was on a circuit breaking system which was designed for incorporation into an automobile ignition.

The breaker arms and certain brackets which held those arms wore out and were replaced.

The Court of Appeals said in that case that the breaker arm which had worn out was the very gist of the invention.

It then stated that nonetheless since the breaker arm was not separately patented but was one of the number of elements that the owner of the car could replace it at will, in order to restore the machine.

And in still another Second Circuit case though not one involving directly the issue of repair versus reconstruction, Judge Learned Hand stated what we think is the gist of the rule.

He said, "The patent monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact, make a new article" and I think that sums up the -- the test we urge.

Justice John M. Harlan: What is the name of that case?

Mr. Ralph S. Spritzer: That was in Alcoa case, Your Honor.

We state -- say that true reconstruction means making a new article after the machine viewed as a whole has been destroyed or has otherwise deteriorated.

Justice William O. Douglas: What do you say about the respondent's argument that -- that had been, is not the substitution of material here but that if the infringement is in the shape of the -- the distinctive feature of the -- this patent is the shape of this material.

I think that's what the -- that's the line that the Court of Appeals --

Mr. Ralph S. Spritzer: Yes, we say that even assuming that the -- the possibility that the material itself might've been the subject of a separate patent that it was not in fact a patent and no claim was made to a patent based on the shape of the fabric.

Therefore, we say that no more than a single element of a multi-element combination is being replaced.

And at a minimum, we argue that replacement of an individual worn out part of a multi-element combination cannot properly be deemed anything more than the owner's right to maintain his property and to enjoy its (Inaudible)

Justice John M. Harlan: What were the lower court's findings as to the condition of the top when it was replaced or detached?

Mr. Ralph S. Spritzer: They found that in some instances they were unattractive and in other instances they wore out and that the court put aside any question of the distinction between replacing it for reasons of taste and replacing it because its utility had completely disappeared.

It said -- the District Court said that it had no doubt that this constituted replacement of something that was no longer usable.

And the basis of its decision was that -- that this was a major replacement in this case.

I think I'm beginning to trench on time reserved by petitioner for rebuttal Your Honor.

Chief Justice Earl Warren: Mr. Pollock.

Argument of Elliot I. Pollock

Mr. Elliot I. Pollock: Mr. Chief Justice and may it please the Court.

Justice Felix Frankfurter: Do you think without disturbing the architecture of your argument is it stated the outset what legal proposition you are tending to the Court?

Mr. Elliot I. Pollock: I propose to do that Mr. Justice Frankfurter.

In order to clarify our position in this matter and in order to be of assistance of the Court and the problems before it, I propose to divide my argument into four main sections.

First, I would like to explain exactly what the Mackie-Duluk patent is all about, what problems it was intended to solve and how it's solved.

Secondly, I will explain what the patent on err, what the both courts below considered to be an infringement of the patent and the other side of the coin what is clearly not an infringement of this patent.

Third, I will discuss the doctrine of repair versus reconstruction.

This doctrine which we maintain has been in the law for over 100 years.

This doctrine which we maintain was reenacted by Congress in 1952 and this doctrine which was the very basis of both decisions below.

And finally, as a fourth section of my argument, I hope to demonstrate that what the Justice Department is here trying to do, is to change the law contrary to the intent of Congress in 1952 and that they are trying to do that on the basis of the very arguments which they presented to Congress and which were rejected by that body in 1952.

Is that --

Justice Felix Frankfurter: Your view -- but your view is that the Act of 1952 did not make a change in the law, but merely is declaratory of the old one.

Mr. Elliot I. Pollock: Quite so; yes, yes and at such, as it will appear, we maintain that it has left intact as the Justice Department itself says, "Left intact, this entire body of law."

Justice William O. Douglas: So you are on common ground would be of the petitioner at that point.

Mr. Elliot I. Pollock: We agree.

Yes, we agree with the law that left intact in this question of repair versus reconstruction.

Now let us consider this first question that I mentioned before what is the Mackie-Duluk patent all about?

Well, as has been clearly stated, it is not involved with the car.

It doesn't concern a car and it doesn't even concern a convertible car.

It concerns as its very title says, a portion of the car, a convertible folding top with an Automatic Seal at the Rear Quarter.

It's concerned with one part of the car, the top structure and in that event, a special type of top structure, one, with an Automatic Seal at the Rear Quarter.

Before proceeding, I think, we ought to have some definitions here.

The Rear Quarter section of the car is the section on the side of the car immediately to the rear of the side windows.

If you will picture yourself sitting in the rear seat of the car and if you look immediately to the right or the left that is the section of the car we are talking about.

The section where this Court may recall convertible top structures in the past, used to have snap fasteners.

That is the very section of the car.

And -- there's another term that may arise from time to time, that is the belt line of the car.

That is the top of the middle structure of the car, the top of the lower body of the car.

Now, prior to the Mackie-Duluk invention, fabrics which were used in inconvertible cars were typically shaped so that they terminated in his Rear Quarter section, immediately adjacent or above the belt line of the car.

And they habitually had some sort of manual fasteners on them, like snap fasteners or a channel in top arrangement, so that after the top have been completely raised, this fabric in the Rear Quarter section could be pulled down and manually fastened to the belt line of the car in that region.

Perhaps, the Court will recall such structures.

They were the typical structure prior to 1950.

Now these structures had been in existence for a long period of years.

Perhaps at least, 50 years or so and over this entire period of time, everyone recognized that they had at least three major problems.

The first problem of course, was that they require, if you will, a manual seal in the Rear Quarter as distinguished on the Automatic Seal with which were concerned here.

It meant that even with the advent of motors, motor driven structures to fold your convertible top up, even after the top had been completely closed over the car, someone had to get out of the car and walk around in the side of the car and actually snap this fasteners in place to complete the closure and this often occurred under conditions of inclimate weather.

The second major problem was a problem of shrinkage in this region.

Since the fabric material in the Rear Quarter section was loose, we found that often after a limited period of usage, even though the top was in fine condition, the material had shrunk a little bit in this region so that even when you tried to pull the fasteners down, you just couldn't quite reach the belt line.

And as a result, you just couldn't make a seal at all in this region of the car and you had some loose flaps so that wind or snow or rain could come into the car.

This was of course, a major problem and there was the third problem which had been discussed in the record this problem of so-called, unauthorized access.

A convertible car can never be reliably locked even now because the top can be slashed, but it was very easy to get into convertible cars prior to 1950, simply because anybody who wanted to get into the car, even when the doors were locked and the window's completely closed, could merely unsnap these fasteners and reach into the car at that region and open the door or what have you.

These three problems --

Justice John M. Harlan: Is the validity of the patent at issue?

Mr. Elliot I. Pollock: No, it's not Your Honor.

No -- it's not.

The patent was found valid by the trial court and validity has never been a question even in the Court of Appeals or here, but I believe that this discussion is important so that we understand what the contribution was which Mackie-Duluk made and -- and how it's important here.

These three problems as they say were recognized for some 50 years and even though the engineers -- the best engineers in the industry have been working on it diligently, no solution came up until Mackie-Duluk finally came up with a solution which is the subject of this case.

Mackie-Duluk solution can perhaps, be best appreciated by seeing what they didn't do.

In the first place, they made absolutely no change to the car body, no change to the folding top structure at all.

No change I should say to the bows and the pillars.

These were conventional linkages which were precisely the same in Mackie-Duluk's convention as they had been for years before.

What they did do, was to change the shape of the fabric in this Rear Quarter section.

They, rather than having the fabric terminate at the belt line of the car as was the case before, they caused the fabric to be shaped, so as to extend deep inside of the car, where it could be permanently fastened.

And while in retrospect, this seems to be a fairly simple approve -- improvement now, actually, it was quite a startling improvement in 1950.

It was an improvement which solved, if you will, 50 years of problems.

And this simple change, this -- this one change in the shaping of the fabric, brought a complete solution immediately to all of these problems.

Now, --

Justice William O. Douglas: Are the claims in -- in the record -- I don't -- I'm unable to find them.

Mr. Elliot I. Pollock: Yes, they are Mr. Justice Douglas.

The patent itself appears at record page 589.

That's in the large volume of the record.

Justice William O. Douglas: Yes.

Well, the Government, their counsel says that the -- the shape was not a part of the invention.

Mr. Elliot I. Pollock: With this we – we --

Justice William O. Douglas: Within -- within the meaning of the -- within the limits of the claim.

Mr. Elliot I. Pollock: I -- I understand that that is their argument, but the concurrent findings below were to the contrary.

I believe that the claim is quite clearly due to define shape, but we but understand them and I might note for the Court's (Inaudible), if you will, the Court of Appeals itself and this is at record page 651, at record page 651, about halfway down the first full paragraph, you will find that the Court of Appeals and this is a concurrent finding but the Court of Appeals states it very well.

This is in the -- Mr. Chief Justice, this is in the small volume, the very small volume of the record.

You'll find that the Court of Appeals there says that shortly after the citation of Heyer versus Duplicator, says the Mackie-Duluk patent does not broadly cover the fabric portion of the folding top of any form or shape.

It specifically covers the fabric part of such a top of a particular form or shape.

The form or shape is particularly covered in this fabric -- in this patent, if we could understand the claim.

The claim is difficult to read immediately, but they very clearly do set forth this fabric shape and no one has had difficulty below on this question.

Justice Felix Frankfurter: (Inaudible) anticipating believe the direction of your argument that because of the nature of the fabric shape, it is an ingredient part of the total (Inaudible)

Mr. Elliot I. Pollock: It is the -- it -- in essence the heart of the invention if you will.

Upon its removal, there is nothing left of patentable nature.

It is the thing which solved the problems.

It is the invention, if you will, although it was claimed in combination with other components and this claiming in combination with other components should be understood.

We have briefed this matter in our brief, but when the suggestion is made that the fabric shape could be claimed alone, this is not correct.

This -- we challenge.

The problems which are involved in the claiming of the thing like a shape all by itself, were discussed at great length before the Congress prior to 1952 and I believe that this Court will appreciate that shape in the abstract is meaningless.

You just cannot define a shape as such.

The shape becomes meaningful only when it is put into its proper environment.

And therefore, under these circumstances, the Patent Office itself, required that these standard elements be put into the claim, so that one can understand exactly what this shape is, even though these other elements are not part of the invention.

Justice Felix Frankfurter: Are you saying in effect that the -- what is meant by combination in this particular patent, is the relationship of the part that can't be broken into separate units?

Mr. Elliot I. Pollock: I'm saying --

Justice Felix Frankfurter: And yet the copy is significant?

Mr. Elliot I. Pollock: I would prefer to say it that these other parts are necessary to understand just where the -- the parts of this new shape go and what they are for.

Justice William J. Brennan: Where do you say in the record, were the claims that indicated that they included in the shape of the fabric?

Justice William O. Douglas: The claims are on page 594, aren't they?

Mr. Elliot I. Pollock: Yes.

Justice William O. Douglas: They start there?

Mr. Elliot I. Pollock: Yes.

Justice William O. Douglas: I'm -- I haven't found the word, shape, at least there.

Mr. Elliot I. Pollock: Oh, perhaps I can understand -- let me anticipate by pointing out what these claims are all about.

If I wish to define the shape of a glove, I may have great difficulty in defining it in the abstract.

If I start of though, with a standard structure which everyone knows about and then point out that we are concerned with a fabric which includes portions covering the palm of the hand and the rear of the hand and portions encompassing each of the individual fingers, if you will.

This immediately conjures up a very clear picture of what shape we're talking about even though we have related it to a standard structure and we must recall that in this case, the car body, the panels, the pillars, the bows and so forth that we are talking about, are structures which were well-known to everyone in this industry.

These are structures in which no change was made.

These are common structures and therefore, when we speak of this, a fabric in point of the -- we point out in these claims that this fabric includes a portion which is supported by the bows and this immediately, strikes a picture in the minds of those skilled in the art.

It includes a portion which spreads and adjoins the belt line of the car.

It includes another portion which extends considerably below the belt line of the car and it's fastened to a panel, a common structure in these cars which everybody knows about.

In this frame of reference therefore, those skilled in the art, immediately have a very clear picture of what the fabric shape is and indeed, this demonstrates one of the purposes in bringing in these other common components for they assist in the definition of the shape.

They make the shape very clear to those skilled in the art and it must be understood of course, that these claims are directed to persons skilled in the art.

They -- they would not mean much to a man in the ice cream industry, if you will, but to people in the automobile industry, these are quite definite recitations of what we're talking about here.

Justice Felix Frankfurter: Does your argument as this shape apply to all the other constituent parts of the whole?

Mr. Elliot I. Pollock: No, it does not Your Honor.

Those were standard parts because they were nothing new.

They -- they were not new in themselves.

They were, if you will, stable -- stable articles of commerce, to use the term of the statute.

These -- the -- the heart of the invention, the inventive improvement, the change which Mackie-Duluk conceived, was in this new shape.

Justice William O. Douglas: The only thing I see about the material is that it's flexible top material.

Mr. Elliot I. Pollock: Well, let us refer to Claim 1, for example, Your Honor.

Justice William O. Douglas: The shape there is the -- is the shape of the folding mechanism as I see it.

Mr. Elliot I. Pollock: No, it has flexible top material are we looking at Claim 1?

Justice William O. Douglas: Yes.

Mr. Elliot I. Pollock: Starting at about line 40 there, you see we have flexible top material supported by the bows and having the top material at the Rear Quarter extending down and supported by sub panel in the inside and considerably, below the top of the metal body or tonneau.

This is all a definition of -- of the shaping in this Rear Quarter.

It's extension down considerably below the top of the metal body and so forth.

A claim such as 4, that define a shape and -- and even other terms as a flexible top material, this is at Claim 4, at about line 17 or 18.

It says it has flexible top material supported by the bows and having the top material at the Rear Quarter extending down and fastened to said panel on the inside and below the top of the metal body or tonneau, a portion of said top material spreading and adjoining the inside of the top of the side of the tonneau when the bow structure is raised and so forth.

This sounds like a lot of words, but as I say to those skilled in the art, this conjures a very clear picture of what we're talking about.

Justice John M. Harlan: They are clear pictures in the record that you can look at (Inaudible)

Mr. Elliot I. Pollock: The -- the patent itself, unfortunately, because we are talking about shape, it is very difficult to explain what the shape is.

In -- in this respect, the courts below were counterfeited in the certain respects.

The trial court on two occasions adjourned to a nearby parking garage to actually abuse some of these structures and the Court of Appeals had actual tops before them.

Justice William J. Brennan: Will we -- will we have to do that?

Mr. Elliot I. Pollock: I don't believe so.

It would certainly assist in your understanding of the shaping consideration but Mr. Justice Brennan, we don't have any cars here unfortunately.

Justice John M. Harlan: Take two cars of the same size, one of which has the top of your manufacturer, one of which has the old fashioned top --

Mr. Elliot I. Pollock: Yes.

Justice John M. Harlan: -- not of your manufacturer, could you take the canvass, take the top from the non-Aro car or the non --

Mr. Elliot I. Pollock: You mean, let's say a (Inaudible) top.

Justice John M. Harlan: -- and put it on the other car --

Mr. Elliot I. Pollock: Immediately.

Justice John M. Harlan: What?

Mr. Elliot I. Pollock: Immediately, without any change of the car whatsoever.

Justice John M. Harlan: It does?

Mr. Elliot I. Pollock: Yes, you could, Your Honor.

This is quite clear on the record that these car bodies and bows that we're talking about are so standard.

There was no change whatsoever, to the car. One of these old tops can go on to the car immediately.

I believe that this will --

Justice John M. Harlan: And I don't understand what the virtue of this, what the significance on the shape is here (Inaudible)

Mr. Elliot I. Pollock: When we put the old top on, we have our snap faster structures if you will, which raise all the problems that I have mentioned before.

When -- when we put on the new shape on top, onto the car, we no longer have any of these three problems that I've talked about and this is the virtue of the shaping and the fastening considerations that I'm talking about.

I believe that if we get into -- I hope to explain in this first section that the essential novelty in this thing, the heart of the invention, as it has in termed in various references and in various cases which I will discuss, the heart of the invention is cruxed in the dominant part of it was in this new shape in this fabric.

Now this being the case, let us consider this second question.

Justice Hugo L. Black: Why are you shaping at the thing that the inventors were in the main discovery was the fact that it didn't have to use snaps?

Mr. Elliot I. Pollock: Well this shape was the thing which produced that result, Your Honor.

Justice Hugo L. Black: You mean that its shape produces snaps?

Mr. Elliot I. Pollock: No the shape permitting a permanent fasting deep within the car permitted someone to eliminate the snaps.

Justice Hugo L. Black: Well, you mean, no other shape can do it?

Mr. Elliot I. Pollock: No, quite to the contrary.

What happened was that this -- if I may explain this briefly, when this came out, it was the first development in this -- in this particular concept of fasting fabrics inside of a car and Mackie-Duluk were, if you will, a pioneer.

They were pioneers in this field.

Their particular shape was used only for approximately three or four years and building on the structure as we do in all these new fields of -- of endeavor where the Yankee ingenuity, if you will, is involved, the industry has since, dropped this shape completely and they've come up with quite different structures which are now lies involved in this suit.

This -- this particular structure with which we are here concerned, was used only until about 1954 and has never been used since.

The industry, the record does not reflect what these new shapes are, but this patent is not concerned with any of these later shapes and arrangements.

They were quite different.

The industry having seen the way after Mackie-Duluk made some very significant developments and a technological advance in this field, with which this patent is in now way is concerned.

If I may, I would like to now, go into this question of what is infringement and what is not and what the courts found to be infringements.

I believe that we you might appreciate on the basis of the argument as I have thus far presented it, that once the fabric is removed from the car completely, we have substantially conventional components.

We have, as I pointed out to the Court before, to Mr. Justice Harlan I believe it was a -- a structure of such conventional nature that -- that the record shows that one of the standard pre-Mackie-Duluk top as the trial court termed it, to go on to the car immediately with no change at all.

If -- if the Court is interested in this concept, I would invite attention to the District Court's finding.

This appears at record page 39 and footnote 8 in which the trial court, who had observed these structures and who actually observed the petitioner Harold Shapiro install one of this snap fastener tops on the car, stated that it is interesting, this is starting in about the third line of footnote 8, it is interesting to note the defendant's own efforts which shows that Mackie-Duluk cars could have applied to them without any structural change, by using snap button receptacles already on the car for the boot, a complete standard free Mackie-Duluk top with outside the two nose snaps.

In other words, the car owner and defendants and instead, did not have to subject themselves to replacing royalties if they did not want to and he continues in that claim.

The car itself is as I say, completely standard and once this new shape of fabric is removed for whatever reason and it is ordinarily not removed because it is more novel, with this position we take direct issue with Mr. Spritzer's allegations.

Once the top fabric is --

Justice Hugo L. Black: Why is it removed?

Mr. Elliot I. Pollock: It is removed ordinarily because it doesn't look good.

Let me -- let me -- this -- this is quite clear in the -- in the court -- in both courts' findings.

The reason that people do replacements, if they do them, is because after a period of three or four years, the tops have become dirty or they have become faded somewhat.

They don't look good.

It's a question of appearance.

Justice Hugo L. Black: They worn out to a certain extent?

Mr. Elliot I. Pollock: That's quite true Mr. Justice Black, that's quite true.

It's quite true, but there are repair procedures available which can dress up these tops without requiring a complete top replacement and these are far simpler procedures which are shown in the record than actual top replacement.

There are commercial preparations available for staining these tops if they are faded.

They can be cleaned if necessary.

If the -- if the stitching in certain portions of the steam has -- of the top, has become faded, they can be sold.

Indeed, even if there's a tear in the part of the top, the record shows that a panel of the top can be very easily be replaced without any difficulty and these are repair procedures with which we have no difficulty here.

Patentee is not trying to cover these at all.

He has no objection to such repair procedures, not only which are well-known in the industry but which Aro themselves, do in their own shops.

These are well-known repair procedures, but we say when you go further and for a profit motive induce someone to remove his entire top fabric and replace it with a very new fabric of this special shape, then you're going far beyond what is normally considered a repair.

You are, if you will, destroying for your own purposes, the heart of the invention which is still perfectly good and functionally -- functionally and replacing it for a permissible profit motive, if you will, a brand new structure of this special shape.

Justice Hugo L. Black: When you dispose of -- suppose a man bought it and the car that he didn't actually check on it or the color or something. --

Mr. Elliot I. Pollock: Then it's --

Justice Hugo L. Black: Brand new -- brand new and then he wanted to get a new garment with a different color.

Mr. Elliot I. Pollock: It is entirely --

Justice Hugo L. Black: Would that -- would that violate this patent then?

Mr. Elliot I. Pollock: We -- it would violate the patent, if you put on a brand new top of this special shape but you need not do that.

It is not infringement for example, if you took off your old top and put on one of these non-infringing fabrics which you can easily do.

This was reflected by the Court of --

Justice Felix Frankfurter: Is it the nature of the fabric or its shape?

Mr. Elliot I. Pollock: It's its shape which is the heart of this thing.

Justice Felix Frankfurter: And Yet, you told us Mr. Pollack, from my understanding that if the shape is crucial to avoid the problems of preexistence.

Mr. Elliot I. Pollock: That's quite true.

Justice Felix Frankfurter: Will some other shape would do this thing about the same result --

Mr. Elliot I. Pollock: No, it wouldn't.

You'd have those problems.

But there's nothing startling in this concept, if you will. Perhaps, if I may just elaborate on this point just a little bit.

Let us assume that -- well, if the Court will reflect, it will see that there are many parts of a car which may require replacement from time to time during the life of a car.

For example, this Court will appreciate that if you buy a car after a period of time, you may wish to replace the tire on it or a spark plug or the muffler or gaskets, these things happen time and time again.

And even though you may have had a patent structure on the car originally, when you remove that structure from the car, you no longer have it.

And if you replace it with a new structure of that type, then obviously you should pay royalty and there's nothing inequitable about this particularly where you have a choice.

Let us assume that you have a patented type spark plug.

It has certain advantages.

For some reason, it is gone.

After a period of time, you want a new spark plug.

Well, you have a choice at that time.

Do I want a patented spark plug with all the advantages or do I want the unpatented spark plug with -- without some of these advantages?

If I want the patented spark plug, then presumably I'm going to pay the royalty which accrues to the patentees' Yankee ingenuity in developing these advancements.

But there's nothing startling about the concept of having a choice between a patented and unpatented component and --

Justice Hugo L. Black: And the -- so if the spark plug are not patented, --

Mr. Elliot I. Pollock: If the spark plug --

Justice Hugo L. Black: -- that's part of the automobile.

Mr. Elliot I. Pollock: Unpatented parts are clearly replaceable, but I think that we must distinguish between an unpatented part in the normal context and a part which is unpatented albeit the heart of the patented combination.

In this contributory infringement field that we're talking about, it is quite clear that in a technical sense, any one part of the combination is unpatented, if you will.

This was made quite clear in the legislative hearings and in the commentary preceding the Patent Act.

But the -- the important thing is that there maybe some technically unpatented parts which nevertheless, mean a number of factual tests which Congress had set forth in the statute and these unpatented parts, unpatented in the sense that there is no patent covering it by itself, are nevertheless, the heart of the invention.

They are --

Justice Felix Frankfurter: Did I understand you to say that the shape couldn't be patented?

Mr. Elliot I. Pollock: I don't see how, Your Honor.

Since this allegation has been made, I've tried to drop the claim on shape all by itself and I just can't come up with the language.

Justice Felix Frankfurter: And yet this is crucial?

Mr. Elliot I. Pollock: Quite so.

Justice Felix Frankfurter: In bringing to cars that for which the patent is granted.

Mr. Elliot I. Pollock: Quite so.

This is precisely --

Justice Felix Frankfurter: Is it -- is it then that -- that although in of itself has no function in relationships, it's the effective functioning aspect of the patent.

Is that your position?

Mr. Elliot I. Pollock: Yes.

Yes.

I -- I may anticipate a little bit but just to later on, I will discuss a case of Morrin versus Robert White Engineering, a case decided in the Second Circuit, in which the invention in that case, was a new shape of boiler tube.

It's akin to what we have here and yet in that case, the patentee claimed this new shape of boiler tube in combination with certain standard boiler parts and the Court itself recognized that this was done in order to describe the invention intelligently.

And this was the reason that this combination-formed patent was required by the Patent Office and eventually issued in that from.

But nevertheless, they've pointed out that the essence of the invention the true invented concept resided not in the standard parts because there was nothing new there.

They resided in this new shape of two.

Perhaps, if I get into this question of repair versus reconstruction which is very essential to an understanding of this case, we can appreciate exactly what the basis of the Court's decisions were below.

The doctrine of repair versus reconstruction has been a part of our law for certainly at least a hundred years.

It was discussed in this Court's decision in Wilson versus Simpson which was decided in 1850.

And this Court has discussed it in cases since then, cases such as Cotton-Tie versus Simmons, cases such as Leeds & Catlin versus Victor Talking Machine, cases such as Heyer versus the Duplicator Manufacturing Company, just to name a few.

It's a doctrine which has been an inherent part of our law and it has been decided or it has been involved time and again in cases of all the Circuit Courts of Appeals.

Justice Felix Frankfurter: Does the doctrine appear in the discussions before the Committee?

Mr. Elliot I. Pollock: Yes, it did.

Justice Felix Frankfurter: Enactment of the 1952 Act.

Mr. Elliot I. Pollock: Yes, it did Your Honor.

Justice Felix Frankfurter: Do you give preferences to those discussions in your brief?

Mr. Elliot I. Pollock: I -- I can give a very -- if you -- if you would refer to page 64 of our brief, merely by example that occurs to me, note, footnote 10.

And this is a -- a -- an extract from a material which was presented to Congress by the Association of American Railroads, in which that association discussed this doctrine of repair versus reconstruction.

They were concerned that the law might be expanding it.

They appeared to have no objection to the law as it had been up to that time.

Justice Felix Frankfurter: It's not referred to Committee report, is it?

Mr. Elliot I. Pollock: In the Committee reports, it appears in the legislative -- in the transcripts of the legislative hearings and as -- this particular part is taken from an appendix to one of here.

Justice Hugo L. Black: You say page 64 of your brief.

Mr. Elliot I. Pollock: Yes, Mr. Justice Black, in the footnote.

Oh, I'm sorry but my brief is the blue one.

Justice Hugo L. Black: Blue one, thank you.

Mr. Elliot I. Pollock: And I will point out later under this question of possible liability of replacement manufacturers appeared throughout the hearings as well.

In the same section of my brief, I have made reference to various pages of the hearing.

Let us understand what this doctrine of repair versus reconstruction is about.

Many years ago, Dr. Oliver Wendell Holmes wrote a poem which the Court of Appeals referred to and I -- and I refer to that poem with no intent (Inaudible) because it -- it thoroughly illustrates the problem that we have here.

In that poem, The Wonderful One-Hoss Shay, Dr. Holmes discussed the deacon's building of a shay which had no weakest part.

And he pointed out that after a hundred years of use these shays went to pieces all at once, all at once and nothing first, just as bubbles do when they burst.

That's a quotation from the poem.

Well in our common knowledge, in our common everyday experience, things just don't happen this way, neither a shays nor anything else we can conceive of, other than a bubble goes to pieces all at once.

In any arrangement of structure, in any structure which has more than one part, there's always some weakest part and there's going to be some part that is gone in advance of other parts for one reason or another.

Now the doctrine of repair versus reconstruction built on this common everyday realization that after a period of time, no matter what combination of structure might be sold, patented or otherwise, no matter what combination of structure maybe sold after a period of time, some parts of it are going to be gone for one reason or another.

And it may occur that the parts which are gone are so important to the true inventive concept, are in their nature, the heart of the invention or the vital component that the entire invention can be said to be destroyed even though some parts of the structure remained.

Let me give you some typical decided cases on this point here, I am going through them briefly because I think that it will illustrate the problem.

One of the classic cases in this field, a case which has been cited time and again in many decisions is the First Circuit case of Davis Electrical Works versus the Edison Electric Light Company, which was decided in the First Circuit in 1894.

In that particular case, Mr. Thomas Edison, who's well known to all of us, invented a new filament for a light bulb.

Now, a new filament is meaningless in the abstract.

It has no functional utility.

It just can't -- can't even be described, if you will, in accordance with the rules of the Patent Office all by itself, but this new filament was of a use in conjunction with a glass -- glass envelop which surrounded it and with a socket for screwing it into a plug of sorts.

And therefore, in his claims, Mr. Edison got a combination claim, if you will, which included not only the new filament, but these standard background elements which were necessary to its operation.

He claimed in his claims, the glass envelope and the socket and certain electrical connectors, but there was no question in that case nor is there any in this case, that the true inventive concept was only in one part.

Now after a period of time, Mr. Edison's bulb burned out, such things do.

Well, the only thing that went bad was the filament, the new part.

The rest of the envelope and the sockets and everything were perfectly good.

And in these circumstances we found that the defendant would gather up these bulbs and he would replace the attenuated carbon filament with a brand new filament of precisely the type that Edison had developed.

He did, if you will, replace only one component of the patented combination albeit in that case the heart of an invention, the true inventive concept.

And in that case, the Court of Appeals of the First Circuit, noting that the true test was entirely factual; noting that it was a question of ultimate fact to be decided by juries and the like.

In that case, the Court of Appeals of the First Circuit held that even though only one part of the combination was replaced, nevertheless, this was a reconstruction of the invention.

For it was a re-providing of the heart and essence of the invention.

Justice Hugo L. Black: Now, I've seen there are some photographs in here.

Could you point out the one that's a photograph of this part that you are talking about -- see it if you have a photograph of it.

Mr. Elliot I. Pollock: Are you referring to the photographs in this large volume?

Justice Hugo L. Black: Yes, I just noticed there are a lot of photographs then --

Mr. Elliot I. Pollock: Yes, there are -- there are --

Justice Hugo L. Black: I'm wondering if --

Mr. Elliot I. Pollock: If they appear on the large volume, unfortunately, none of them referred to it.

Justice Hugo L. Black: Do any of them show this --

Mr. Elliot I. Pollock: None of them showed the fabric by itself.

Well --

Justice Hugo L. Black: How is it made?

How is the fabric made?

Is it a regular fabric that you buy?

Mr. Elliot I. Pollock: The fabric -- the actual material can be of various types.

We're not primarily concerned with material here.

Theoretically, it could be an impregnated canvass of sorts or the latest developments and by far a superior development as reflected in the record, is certain vinyl plastic materials which have their seams electronically sealed to one another.

Justice Hugo L. Black: Well, in other words, the material itself (Inaudible) or the way it's made has nothing to with what you're talking about?

Mr. Elliot I. Pollock: No, no.

We don't care whether the fabric --

Justice Hugo L. Black: Well that one -- when they make it, what do they do?

These people that are selling it that you claim are infringing your patent?

Mr. Elliot I. Pollock: We claim that they removed the fabric completely from the old car when it need not be removed, when it can be repaired by other techniques.

We -- we claim that they remove it at a time when it is still perfectly good functionally.

Justice Hugo L. Black: Why should you object to that?

Mr. Elliot I. Pollock: Well, we don't object --

Justice Hugo L. Black: (Inaudible) buy something that is patented?

He can't change if he wants to --

Mr. Elliot I. Pollock: He can change --

Justice Hugo L. Black: (Inaudible)

Mr. Elliot I. Pollock: Oh yes, he can change.

Justice Hugo L. Black: That is nothing but a combination of patents on it, about elements that are non-patentable.

Mr. Elliot I. Pollock: This is the - this is the -- the essence of this doctrine of repair versus reconstruction, which I have been discussing namely that under some circumstances, the part which is replaced maybe of such vital significance to the invention that it cannot be permissibly replaced.

Justice Hugo L. Black: You buy a suite of clothes or are there ever any clothes patented?

Mr. Elliot I. Pollock: I -- I would imagine that there are design patents and suppose or --

Justice Hugo L. Black: Patents where they have this new fangled-thing they use instead of buttons?

Mr. Elliot I. Pollock: I would expect that if we -- well we have, let us say, a new zipper on the clothes, a new type of zipper, I would expect that even if that new zipper --

Justice Hugo L. Black: Suppose they use the old type of the zipper, but use the -- also the old type of patent on the dresses?

Mr. Elliot I. Pollock: I'm sorry Sir.

Justice Hugo L. Black: They use the pattern there, a rose pattern, they didn't like in one of the places, they want to take it out.

Mr. Elliot I. Pollock: They -- there are certainly well -- if they had certainly perfectly able to do that --

Justice Hugo L. Black: Do they go buy it or would they have to buy it from the person to whom -- who had the patent on the dress?

Mr. Elliot I. Pollock: They could buy it from any licensed source, I should think.

Chief Justice Earl Warren: Buy it from whom?

Mr. Elliot I. Pollock: Any licensed source.

Unknown Speaker: (Inaudible)

Mr. Elliot I. Pollock: Yes, they could.

Let -- let's take this case of a convertible top.

If a man doesn't like his original top and removes it, and he is perfectly able to replace with another color if you will or with another fabric material if you will, which has a non-patented shape.

We have no objection to that.

Justice Hugo L. Black: But you've just said a while ago, shape doesn't need to be patented.

Mr. Elliot I. Pollock: Not by itself, not by itself.

Justice Hugo L. Black: You mean that --

Mr. Elliot I. Pollock: Not because of anything that is non-patentable in shape, but merely because of semantic difficulties in trying to describe it and difficulties which are engendered by the Patent Office rules which therefore require that in order to completely describe what you're talking about, you have to import these other background elements.

Justice Hugo L. Black: I don't get that, if you mean language is not adequate to describe the shape that you don't want patented?

Mr. Elliot I. Pollock: I think that that may often occur.

I would have difficulty for example, in describing the color red, but if I were able to bring --

Justice Hugo L. Black: (Inaudible) you can go and picture the shape and they're frequently drawn.

Mr. Elliot I. Pollock: That's true.

Justice Hugo L. Black: Is there a picture of the shape in your patent here?

Mr. Elliot I. Pollock: Yes, there is.

Justice Hugo L. Black: That -- that's the only pictures that we have.

Mr. Elliot I. Pollock: Well, that's -- that's certainly a good picture of it.

If -- if Your Honor will refer to figure 1 of the patent which is at 589.

Justice Hugo L. Black: I don't think any about that.

Now, which part of that is this?

Mr. Elliot I. Pollock: The fabric material is shown from looking -- looking from the inside of the car toward the fabric, this shape here -- you -- you see the numeral 28?

Justice Hugo L. Black: At the top?

Mr. Elliot I. Pollock: In -- in figure 1, the numeral 28 below the -- immediately above the bottom line of the figure that is a numeral 28, with the lead line there.

Justice Hugo L. Black: Yes, I see it.

Mr. Elliot I. Pollock: There -- there is a -- that is a reference to a -- this entire loose section of fabric which came down inside of the car deep enough to be permanently fastened.

And in side section, this appears in figure 2 on which we again have the numerals 28 and 38, showing this prolongation of fabric coming down into the car.

Justice Tom C. Clark: Can a dress patterns be patented or protected in any way?

Mr. Elliot I. Pollock: Various parts of dresses; I would imagine if someone -- well, the typical thing that occurs to me is of course various ladies' undergarments are constantly being patented.

All sorts of changes are made on those. Dress patents or dress patterns, if you will, are commonly protected under the design patent law.

They are more ornamental than -- well, they certainly have the utilitarian function -- I don't mean to say that they're not functional, but commonly, the malady of the dress pattern is in it's ornamentation and in the -- in its new and ornamental aspect and these are protected under a different section of the patent laws, namely design patents.

Justice Tom C. Clark: Could you get a design patent on your top?

Mr. Elliot I. Pollock: No, because one of the features of the design law is that there must be a distinction between ornamentation or something which is ornamental and something which is functional.

In this particular case, the important part of the fabric actually comes down into the -- inside of the car and does not lend itself to the ornamentation of the top.

It would not ordinarily be seen by anyone viewing the car.

And therefore, under these circumstances, no design protection would be available.

It would be hidden from view, in normal view, sir.

Justice Tom C. Clark: Well, you have a little ornamental band around it, don't you?

Mr. Elliot I. Pollock: We don't -- we don't, I'm -- I'm sorry perhaps, I misunderstand your question correct me please Mr. Justice Clark.

Justice Tom C. Clark: On the outside of the top I have to have a horseshoe (Inaudible)

Mr. Elliot I. Pollock: You're talking about the shingle, perhaps.

Justice Tom C. Clark: (Inaudible) not as wide the surrey with a fringe on the top, but it's a -- it got a little fringe around the outside and makes it look a little bit more (Inaudible)

Mr. Elliot I. Pollock: Well, ornamentation is not our prime purpose here.

It was a solution of this functional difficulty which I've described.

I don't know the topic you have, I'm sure it's quite attractive but it -- nothing with this topic is concerned with.

Justice Tom C. Clark: It's an Oldsmobile, a 1949 Oldsmobile.

[Laughter]

(Inaudible) leak in about since I had 11 years.

Mr. Elliot I. Pollock: You say it's a 1949 Oldsmobile?

Well, if it's not even involved in this patent because the structure is identical – [Luaghter]

Justice Charles E. Whittaker: I'm happy to know that.

[Laughter] I wondered though, about five years ago, you know the weather up here in Washington was bad on the (Inaudible) when you have to park outside and I commenced gangs and leaks in mine and so I took it down, I saw some ads in the paper and I took it down to get it replaced rather than they said that they could sew some fabric over these holes that -- that they thought it should be --

Mr. Elliot I. Pollock: This is repair.

Justice Tom C. Clark: It wouldn't be practical.

Mr. Elliot I. Pollock: This is the --

Justice Tom C. Clark: Well, I put a new one would that be -- I'll assume when I got your top.

That would be a -- an infringement wouldn't it?

Mr. Elliot I. Pollock: I would think so, yes.

Justice Tom C. Clark: Although my old top was worn out it leaked on me.

Mr. Elliot I. Pollock: Well, as you have stated, it could be repaired, if you will.

It could be made functional again by other techniques than complete replacement.

Justice Tom C. Clark: Well, he said that they talked so much to put the new fabric door at the holes, so worn parts where you put it down and on -- at the -- had the tendency to crack, when the weather makes it leak.

Mr. Elliot I. Pollock: I thought --

Justice Tom C. Clark: It would not be practical because the leak would come into the sewing the thread and also that it would cost so much to take the top off and -- and sew it, would it cheaper for me to buy another top?

Mr. Elliot I. Pollock: I think that if you went down to the Western Auto store, you would find that there are patch kits available.

The Pep Boys have them for 98 cents.

I think that --

Unknown Speaker: You might as then allowed to go there.

Mr. Elliot I. Pollock: Yes, you can do them yourself.

These are readily available in --

Justice Tom C. Clark: Can you buy a pattern of your top, a -- a paper pattern like I would've addressed, if I went to dressing making.

Mr. Elliot I. Pollock: I -- I don't know where they would be available, I've never considered --

Justice Tom C. Clark: Would that be an infringement?

Mr. Elliot I. Pollock: Just the pattern?

Oh no -- no, don't just the pattern.

Justice Felix Frankfurter: Go and copy it from the patent office --

Mr. Elliot I. Pollock: Yes, I mean, you could copy it very easily from the pattern, you know.

Chief Justice Earl Warren: Would you make any -- any distinction at all between the case where the top is changed for aesthetic reasons or on the other hand, because it's worn out or --

Mr. Elliot I. Pollock: Yes, yes, we do.

Chief Justice Earl Warren: Or because the -- the owner thinks it's worn out?

Mr. Elliot I. Pollock: Yes, we do.

I think that as I developed this doctrine repair versus reconstruction, you will see Mr. Chief Justice that one of the considerations which courts have given, one of the factors which they considered, is that where a part is replaced which is not truly worn out and then replacement is done for some reason other than legitimate repair.

Justice William J. Brennan: Then there is infringement in such cases --

Mr. Elliot I. Pollock: No, this is just one factor.

There are a number of factual criteria which have been developed in case after case.

And none of these criteria is controlling by itself, but this is just one and I -- and I will be getting immediately to all of these criteria which the courts do consider.

Justice Felix Frankfurter: And they must all be satisfied?

Mr. Elliot I. Pollock: No, they do not.

This is a question of common sense the courts have said.

This Court, itself, in Heyer versus Duplicator, said that the real test is common sense applied to the specific facts.

All of these cases --

Justice Felix Frankfurter: Common sense with reference to what other criteria on or criteria.

Mr. Elliot I. Pollock: That's right.

Justice Felix Frankfurter: But what are the alternates, what is -- you can't -- you got -- you say common sense with the reference to what?

Mr. Elliot I. Pollock: To the -- I would -- would you like me to get into some of these --

Justice Felix Frankfurter: You know by this case and I don't.

Chief Justice Earl Warren: I like to -- I like to hear your question asked -- answer that --

Mr. Elliot I. Pollock: I'm sorry, Mr. --

Chief Justice Earl Warren: You can answer it now.

Justice Felix Frankfurter: I want to know with reference to what?

Mr. Elliot I. Pollock: To what criteria?

Justice Felix Frankfurter: To what the common sense of the judgement must be exercised.

Mr. Elliot I. Pollock: The -- the -- this Court in Heyer said, common sense applied to the specific facts of each case.

Justice Felix Frankfurter: But -- but that --

Mr. Elliot I. Pollock: Now these facts --

Justice Felix Frankfurter: That must be judged by some standard.

Mr. Elliot I. Pollock: That's quite true.

Justice Felix Frankfurter: They can't be judged by themselves?

Mr. Elliot I. Pollock: That's quite true, it doesn't matter that the patentee has read hair.

This is completely beside the point.

Justice Felix Frankfurter: Alright, --

Chief Justice Earl Warren: Well, I'd like to -- excuse me.

Justice Hugo L. Black: I just tried to say that I understand if you can patch it but you can't buy a new one.

Mr. Elliot I. Pollock: Yes sir, that's quite true.

And you can buy a new top with a different shade.

Justice Hugo L. Black: Have it patched by somebody, if you could patch it all --

Mr. Elliot I. Pollock: Absolutely -- absolutely.

We have no objection to any of that.

Chief Justice Earl Warren: Who fixes that standard?

Mr. Elliot I. Pollock: As I say, there had been a number of cases in this repair versus reconstruction field which have laid down among others -- I will -- I will not go through some of these criteria.

Actually, before the Court of Appeals below, the partners to this case argued some 15 criteria, some 15 factual circumstances which were developed in the record but here are some of the typical kinds.

Justice Potter Stewart: What -- what the courts have said, common sense is directed to as to the basic question on whether or not, its reconstruction or repair.

Isn't that right?

Mr. Elliot I. Pollock: Yes.

Justice Potter Stewart: In answer to Justice Frankfurter's question?

Mr. Elliot I. Pollock: That's right, that's right.

Justice Potter Stewart: That's the issue, which is not --

Mr. Elliot I. Pollock: That is true, sir.

And that the courts have consistently said that this is a factual issue, it's a question of founded fact to be decided on the basis of certain subsidiary facts and they have gone further and lay down in case after case, some of the subsidiary facts, which they think are important.

They say for example that if we can examine the structure and determine that it does have a heart, a heart of the patented invention and not all combinations do, but if there is some significant new part --

Justice Felix Frankfurter: The filament and the Edison bulb.

Mr. Elliot I. Pollock: The filament of the Edison bulb, then replacement of such a heart of the invention tends to indicate reconstruction rather than -- rather than repair, this is just one criterion.

Justice Felix Frankfurter: When this document originate?

Mr. Elliot I. Pollock: Certainly, it was in existence in 1850 when this Court spoke of it in Wilson versus Simpson.

Justice Felix Frankfurter: The Court in that case, acknowledged the doctrine?

Mr. Elliot I. Pollock: Quite so.

Justice Felix Frankfurter: In terms, in terms --

Mr. Elliot I. Pollock: Yes, yes.

The very question there was whether or not, by replacing certain cutter knives, there was a repair or a reconstruction of a planing machine.

Justice Felix Frankfurter: And how many cases since the Wilson case has this Court reaffirmed or acknowledged or assumed the existence by deciding cases on its assumption.

Mr. Elliot I. Pollock: In a -- in the -- in the next case that I've been able to find is Cotton-Tie versus Simmons which is reported at 106 U.S. 89.

The Court spoke of the -- of this same doctrine in Leeds & Catlin versus Victor Talking Machine which is reported at 213 U.S. 325.

This Court also referred to the doctrine in Heyer versus Duplicator, Mr. Holmes' decision and that appears in 263 U.S. 100.

Justice Felix Frankfurter: That's the latest case in which reference is made to the doctrine?

Mr. Elliot I. Pollock: It's the latest case I have reference to here.

Justice Felix Frankfurter: 263 what?

Mr. Elliot I. Pollock: 263, 100.

Justice Felix Frankfurter: 100, that's what -- that about 1923?

Mr. Elliot I. Pollock: Yes, yes.

Justice Felix Frankfurter: Now from 1923 down to date, your opinion in this Court has -- had occasion or did in fact because of the (Inaudible) is that right

Mr. Elliot I. Pollock: None that I've been able to find.

Justice Felix Frankfurter: But you say that when Congress came to codify the patent law --

Mr. Elliot I. Pollock: Yes.

Justice Felix Frankfurter: In 19 -- which eventuated in the Act of 1952 --

Mr. Elliot I. Pollock: Yes.

Justice Felix Frankfurter: -- that's codification was a clarification of the doctrine that you say -- is illustrated by those cases?

Mr. Elliot I. Pollock: Yes.

Justice Felix Frankfurter: Is that your proposition?

Mr. Elliot I. Pollock: Yes, yes.

It -- it was certainly a part and an important part of this case law and I might invite attention just to digress for a moment to the Government's brief.

This is the little gray brief which they have filed.

At particularly page 8 of that brief, in which the Government states that Section 271 (c) and this is the contributory infringement section of the statute, that this section defines contributory infringement in terms of direct infringement.

Justice Felix Frankfurter: In terms of what?

Mr. Elliot I. Pollock: In terms of direct infringement and then they go on to say that this definition of direct infringement as it appears in Section 271 (a) is declaratory and I quote, "Left intact the entire body of case law on direct infringement."

And we must understand that this doctrine of repair versus reconstruction is a direct infringement question.

I believe -- I don't believe that there is any --

Justice Felix Frankfurter: Can't have contributory infringement unless you have direct infringement.

Mr. Elliot I. Pollock: That is true.

Justice Felix Frankfurter: So in this case, you haven't got contributory infringement at all, you have merely direct infringement from your point of view.

Mr. Elliot I. Pollock: No, we have direct infringement when --

Justice Felix Frankfurter: (Inaudible)

Mr. Elliot I. Pollock: When some caught --

Justice Felix Frankfurter: (Inaudible)

Mr. Elliot I. Pollock: Yes, sir.

Justice Felix Frankfurter: As did -- as -- as I get your argument, you have merely directed infringement not contributory reasons.

Mr. Elliot I. Pollock: No, we -- we have both, Your Honor and --

Justice Felix Frankfurter: Now explain that.

Mr. Elliot I. Pollock: Yes.

When these people in their own trim shop, the -- they maintain a facility for installing tops.

When they actually put these tops on cars themselves, they are direct infringers.

However, they also supply them to other trimmers to do that job and when these other people do it, they're the direct infringers when these people have are the contributory infringers.

There are both aspects in the case.

Justice Felix Frankfurter: But the actual -- what is physically done in violation of your claimed patent right is the same whether direct infringers or the contributory infringer does it.

Mr. Elliot I. Pollock: Yes, except that the contributory infringer requires a sale of the part and that's the case.

I -- I would like to continue with some of these cases under repair versus reconstruction.

I have discussed this Thomas Edison case, there's also the case of Morrin versus Robert White Engineering, which was decided at the Second Circuit in which, this is the case I mentioned before, in which we had certain specially shaped boiler tubes which were -- described in conjunction with the rest of the boiler to describe these tubes intelligently and in that case, the only part that was replaced again were these specially shaded tubes.

And the Court said in that case that this replacement of the tubes, just part of the combination was in fact a furnishing of a new boiler essentially reconstructed in all of its novel features and this they said was reconstruction and infringement.

In the case of Automotive Parts versus Wisconsin Axle, which is a Sixth Circuit case, we again had an automotive part case and the General Electric versus Preferred case has been cited by Mr. Spritzer, but this is not -- I don't believe that this shows that just because we have an automobile part, that necessarily means that in any part is replaceable.

Justice Felix Frankfurter: Let me ask you about Edison's filament?

Mr. Elliot I. Pollock: Yes, sir.

Justice Felix Frankfurter: Suppose that somebody manufactures Edison's filaments and sells those filaments of children's play thing or for constructing nice Japanese (Inaudible), would that be an infringement of anything?

Mr. Elliot I. Pollock: No, it would not be.

Justice Felix Frankfurter: So the -- if the infringement in that case is valid, derived from the use made in producing the result which is a functional entity.

Mr. Elliot I. Pollock: That's quite true.

Justice Felix Frankfurter: Patent -- is that your point?

Mr. Elliot I. Pollock: Yes and the contributory infringement derives from the intent with which the article is originally sold.

In this case for example, if you will examine petitioner's question one, you will find that he concedes in this question that the parts here involved were especially cut and intended for use in the patented combination.

This is an essential question of fact.

This intent must be determined from all the facts and circumstances of the case and it is an intent which is definitely spelled out on the statute.

Justice Felix Frankfurter: But if I'm a collector of shapes and just -- and buy these things from the present --

Mr. Elliot I. Pollock: Yes and if these people --

Justice Felix Frankfurter: And just buy them in shapes in -- in a warehouse where I have it.

Mr. Elliot I. Pollock: Then there has been no direct infringement and therefore, no contributory infringement.

Justice Felix Frankfurter: Make no use of them at all, you just buy them.

Mr. Elliot I. Pollock: That's quite --

Justice Felix Frankfurter: From somebody not the patentee.

Mr. Elliot I. Pollock: That's right and if these people can show that you never installed that top that would be a perfect defense.

Chief Justice Earl Warren: I've -- I've been wondering why you say that filament in Edison's lamp was the -- was the only functional thing in it.

Mr. Elliot I. Pollock: Well, I didn't say that.

The Court said it, Your Honor.

I believe that the -- the Court in that First Circuit case, stated -- if -- if you will look at our brief from page 51, we have quoted from a Tenth Circuit case, Williams versus Hughes Tool Company, which was decided shortly before this reenactment by Congress.

And in that particular case, the Court quoted at length from various other cases and you'll find at the top of 51, the top of our brief, 51, they spoke of this Davis' case.

They said that the Court held that the replacement of an attenuated carbon filament one element in the combination was reconstruction and not permissible repair because all of the elements other than the filament were old and the filament had its use and the relation described was the new element in the combination and produced the improved results.

Chief Justice Earl Warren: Did they have an electric lamp before --

Mr. Elliot I. Pollock: Oh, yes.

This was not the basic electric lamp invention.

This was merely a new filament.

The lamps were known before that, just as convertible cars were known before our invention.

Justice Tom C. Clark: Automatic Convertible.

Mr. Elliot I. Pollock: Yes, but not with a -- an Automatic Seal in the Rear Quarter.

Justice Tom C. Clark: You mean, you could -- you wouldn't as one man you know, talked about the one main top as well.

Mr. Elliot I. Pollock: I'm talking about the -- the top that -- well, in 1949, I have assume you have a power to assist Mr. Justice, so that you can press a button and your top comes up.

But then, I would assume that you have to get out of your car and do something in the Rear Quarter.

Well, I don't know what structure you have.

Justice Felix Frankfurter: You didn't have your patent.

[Laughter]

Mr. Elliot I. Pollock: Are you sure you drive a 1949?

Justice Tom C. Clark: Well and I used to have one and they call one man, it took about six men (Inaudible) one man to put it down run though as an automatic before a little a lever, first (Inaudible) over the windshield.

Mr. Elliot I. Pollock: Put a little laver?

Justice Tom C. Clark: Put that back and when you -- I could get out and put a cover it, I don't ever do that thing.

Justice Felix Frankfurter: But you want to produce it, don't you?

Mr. Elliot I. Pollock: It sounds like a wonderful idea.

I don't -- I don't know -- I -- I had the impression that in 1949, the General Motors cars had sort of a cup and channel arrangement in the rear quarter that you got out back of your rear windows and actually snapped the flap material around the cup.

Well this was my impression.

Justice Tom C. Clark: Oh, I have a car that goes all the whole thing when it gets down but I'd already put mine up. Your patent is on the automatic feature in the --

Mr. Elliot I. Pollock: Just on -- on a special -- well, on this top which permits this Automatic Sealing on the Rear Quarter, I frankly don't know what your structure is.

Justice Tom C. Clark: Which means yours is -- your patent cover the fact that you don't have to do it manually, you can do it --

Mr. Elliot I. Pollock: Oh, no.

This had nothing to do with the motor which raises it or lowers or anything like that.

Justice Tom C. Clark: But it does have to deal with the mechanism that makes go up and down.

Mr. Elliot I. Pollock: No, no, it does not.

No, that -- that in itself is old.

We're not trying to cover anything like that.

Justice Hugo L. Black: If what you -- that's the reason I asked for the (Inaudible).

I -- I haven't yet quite understood it if it has been so important as what you have done (Inaudible) or you had to get out, I've noticed that many times, these sides or that.

Mr. Elliot I. Pollock: That's right, the Rear Quarter section.

Justice Hugo L. Black: You've made that through its sounds you don't have to do this.

You have --

Mr. Elliot I. Pollock: You don't have to do that anymore.

Now actually --

Justice Hugo L. Black: It's a solid thing instead of one where you have flaps and have to be fastened on.

Mr. Elliot I. Pollock: That's right.

Justice Hugo L. Black: Is there anything else that you've done, except that?

Mr. Elliot I. Pollock: That is the heart of the invention and it's -- it's a little bit more complex that you might imagine simply because, let us picture when you snap this top and -- snap these buttons on, when you lower your top they will rip loose.

Justice Hugo L. Black: But you fixed it --

Mr. Elliot I. Pollock: So that.

Justice Hugo L. Black: As long -- as long -- another shape wrecked can be sewn.

Mr. Elliot I. Pollock: Exactly, that's my (Inaudible)

Justice Hugo L. Black: Therefore, you got rid of the snaps.

Mr. Elliot I. Pollock: That's quite so, exactly.

Justice Hugo L. Black: And that's it.

(Voice Overlap) to discover.

Mr. Elliot I. Pollock: That for the first time, we have -- first time we have what is in the title namely a folding top with an Automatic Seal in the Rear Quarter rather these manual seals.

Justice Hugo L. Black: What you mean by Automatic Seal, you don't mean the automatic operation with the top.

Mr. Elliot I. Pollock: No, I mean, you don't have to get out of your car and do anything of that --

Justice Hugo L. Black: You mean that -- that it -- without turning in the snap, if it starts to rain, you can put that down, you don't have to turn in the snaps but it's a solid cover.

Mr. Elliot I. Pollock: Absolutely.

Justice Hugo L. Black: And that's the whole thing, isn't it?

Mr. Elliot I. Pollock: That is the thing.

Yes, that is.

Justice Felix Frankfurter: Has this patent ever been challenged in any -- any -- in any litigation, in any adjudicated litigation?

Mr. Elliot I. Pollock: Only in this case, Your Honor.

Justice Felix Frankfurter: Well I thought you answered Justice Harlan the validity of the patent is not in controversy.

Mr. Elliot I. Pollock: I say that the time is shortly up.

Justice Felix Frankfurter: (Inaudible)

Mr. Elliot I. Pollock: I say that yes.

I say, yes, it's quite so.

I say that the validity of the patent was challenged before the trial court.

The trial court found the patent valid, found it to be and I quote, "A substantial and enlightened step" and no validity question was ever presented to the Court of Appeals (Voice Overlap) and it's not presented here.

That's right.

Justice Hugo L. Black: And many have presented here, isn't it?

Mr. Elliot I. Pollock: No, no.

Validity is not an issue here.

Just to continue, there were a great number of factors unfortunately a -- a great number of criteria which had been developed in the case law to determine whether something is a repair or reconstruction.

We have mentioned these at some length in our brief and the interesting thing is that under the specific facts of this case, all of these criteria are met by defendant's particular operations.

We have in this case ample support for the ultimate findings of fact below that defendant reconstructed rather than merely repaired.

Now, I would like to go into the Government's argument in the very few minutes that I have remaining here.

The Government states, as I understand their position, that any worn out part should be replaceable.

I don't believe that that applies to the facts in this case simply because the parts here when replaced, are not worn out.

And this is a -- a criterion in which they assumed in their test which is not here present.

Justice John M. Harlan: Mr. Spritzer, as I understood, I have said that the District Court regarded that as immaterial factor.

Mr. Elliot I. Pollock: No well, the -- the District Court pointed out that the conditions of replacement are ordinarily, situations in which we have superficial wear.

This was an expressed finding.

And the Court of Appeals noted that replacement is made for conditions of appearance where questions of appearance but that, if a person is not too fastidious as to appearance, he doesn't have to replace his top even then.

So that the top is not worn out insofar as a person is not too fastidious as to appearance is concerned.

Justice Hugo L. Black: It's like the difference in a man who has the car and had lot of scratches on them.

Some of them are fastidious and we get it painted, some of them don't.

Mr. Elliot I. Pollock: Exactly.

Before this Court, the Justice Department argues what we believed to be arguments essentially similar to those presented to Congress.

Now, we do feel that Congress reenacted the law in 1952, this law of repair versus reconstruction.

Justice Felix Frankfurter: Then it applies to me what you've just said essentially with the Government hearing these arguments before the Congress.

That implies to me that that was actually prevented to Congress issued as the validity of the difference between repair and reconstruction.

Mr. Elliot I. Pollock: No.

I -- well what I --

Justice Felix Frankfurter: What do you mean?

Mr. Elliot I. Pollock: Perhaps, I can verify that (Voice Overlap).

I would understand that the Government's argument as such that they say that under Section 271 (c), a replacement part manufacturer should not be liable under any circumstances, if he is just selling a replacement part.

Justice Felix Frankfurter: Well that means that -- that they rule out the doctrine of repair versus reconstruction.

Mr. Elliot I. Pollock: This in effect, would be the result of the argument presented here.

Justice Felix Frankfurter: That's where you say therefore, when you said a minute ago that the Government in effect, is making the argument here which didn't prevail before Congress in process of enactment, I will take my suggestion that that must imply, that the doctrine of replacement versus repair was before Congress in such an effective and significant way that the Act must be construed to be declaratory of the doctrine theretofore in existence.

Mr. Elliot I. Pollock: I believe that it was and I believe that you pointed out my brief.

Justice Hugo L. Black: Isn't the question of what does (Inaudible)

Mr. Elliot I. Pollock: I don't believe that there is a question with that the court below applied the correct criteria and applied them correctly.

Justice Hugo L. Black: That's the issue.

That's the issue and maybe that is a (Inaudible)

Justice Felix Frankfurter: What your thing even for at least you give him four cases, that the -- if I look at these three cases, 106, 213, 263 and (Inaudible), I will find that the matter of fair reading of English that this Court acted on and enunciated the doctrine of repair versus reconstruction.

Mr. Elliot I. Pollock: I believe that's quite correct.

Yes.

Justice Hugo L. Black: Then it's what that means, it's you repair or you would reconstruct it.

Mr. Elliot I. Pollock: That's true.

Justice Felix Frankfurter: The comes the --

Justice Hugo L. Black: Then decide what reconstruction means.

Mr. Elliot I. Pollock: That's true.

And if I may elaborate just for a moment, you will find that in Leeds & Catlin for example, in Leeds & Catlin for example and in Cotton-Tie versus Simmons, this Court in both cases, found reconstruction through -- through replacement of only one part of the combination.

Chief Justice Earl Warren: Is there any flexibility in the permissible repair doctrine, so far as the type of patent is concerned in this respect?

If you have a combination patent, one of the-- one of the elements in the patent is in all likelihood to become obsolete or to -- or to calling this repair before the rest of it does?

Do you hold them -- do you hold the owner to the same degree of -- of -- under the permissible repair doctrine that you would where they were all of the same type of material and -- and one is part is likely to wear out as another or some of your, some of these is a metal, some of it is fabric and the fabric we know is very likely to -- to wear out before the length of a -- of a car and the metal parts are -- are not likely to do that, is there any room for distinction there?

Mr. Elliot I. Pollock: Yes, there is -- yes there is -- if I may answer that question.

Chief Justice Earl Warren: Yes, will you please.

Mr. Elliot I. Pollock: First of all Mr Chief Justice, I don't believe that just because as part as made of fabric, it necessarily has a very short life, If you will consider --

Chief Justice Earl Warren: No but I want to take -- I -- I want to assume that it does.

Mr. Elliot I. Pollock: Alright, this Court -- this Court in Wilson v. Simpson, said first of all, that perishability is not a test to be applied in repair versus reconstruction.

This basic case in Wilson v. Simpson said --

Unknown Speaker: May I have that cloth please?

Mr. Elliot I. Pollock: Said I have a (Inaudible) edition copy here, said that "The right of the assignee to replace the cutter knife is not because they are perishable materials, but because of certain considerations of intent."

In that case therefore, they said that perishability, the mere fact that something wears out in advance on another part is not the important thing and this Court in Leeds & Catlin said substantially the same thing and I -- in -- in that case they said that, "No licence should be implied merely because of a difference and duration of various parts of the combination."

Chief Justice Earl Warren: Well, did they -- did they permit the replacement of those knives?

Mr. Elliot I. Pollock: In that particular case?

Chief Justice Earl Warren: Yes.

Mr. Elliot I. Pollock: Under the fact and circumstances of that case, they construed the intent of the vendor as being one in which replacement was permitted.

In Leeds & Catlin, they said, the replacement of that part in that case would be reconstruction and not permitted and the -- the cases are dependent solely under different facts.

Justice Felix Frankfurter: Would you mind adding to what the explanation you have just made, by giving the details from which the Court derived intent with the (Inaudible) that the user may rephrase the part.

Mr. Elliot I. Pollock: Yes, I have here --

Justice Felix Frankfurter: What seems to me to be asking anything of the courts to make that (Inaudible)

Mr. Elliot I. Pollock: I have here the case of Wilson v Simpson.

Some of the characteristics which this Court --

Justice Felix Frankfurter: Bearing in such --

Mr. Elliot I. Pollock: Considered was first of all.

Justice Felix Frankfurter: That the intent of the patentee was that I could be replace that --

Mr. Elliot I. Pollock: That's right, that's right.

Now, here are some of the factors which appear on the decision.

They said first of all that the part that that very short life, 60 to 90 days and that the machine itself had a life of years.

In this particular case of course, the fabric itself lasts for years.

In that particular case, another factor which they considered was that the parts were so arranged that only one particular type of part could be replaced thereon.

And they said that, obviously, if the parts remaining when this part is gone are so arranged that you could only put one part on, then the patentee must've intended that that's part you put back.

Of course those circumstances are present here.

The parts are so arranged that you can put many different things on them.

That this Court went in to point out that in -- in question -- in -- in resolving this question of intent, that they said that there are other parts of the combination, which may be put into the combination with no intent that they'd be replaced and that in those parts, replacement is not permitted.

Justice Felix Frankfurter: So then -- so that's what you call intent or what they call intent, case to be derived not of an extraction to the mental state of somebody --

Mr. Elliot I. Pollock: No.

Justice Felix Frankfurter: But from the structural and functional arrangement of -- of --

Mr. Elliot I. Pollock: The parts.

Justice Felix Frankfurter: Just the combination.

Mr. Elliot I. Pollock: Quite, that's so, yes.

Thank you.

Chief Justice Earl Warren: Mr. Wolf.

Argument of David Wolf

Mr. David Wolf: Mr. Chief Justice and may it please the Court.

At first, I like to clarify a few -- few of the facts involved in this case.

The fabric shape itself was not new.

The Court specifically found that, the District Court, where it's set at page 36 to the record (Inaudible)

Justice Hugo L. Black: Why?

Mr. David Wolf: -- brought the fabric from outside the tunnel of the Rear Quarter --

Justice Hugo L. Black: Page, what are you reading from?

Mr. David Wolf: 36, brought the fabric from outside the tunnel with the Rear Quarter inside.

This in itself was not new.

I'd also like to remark that it's quite remarkable that the respondent never once mentioned during his entire presentation of the wiper arm.

The wiper arm, when it -- this case was presented to the District Court, was argued as a very essential element.

As a matter of fact, they -- testimony in page 171 of the record, when I was cross-examining the expert of the respondent speaking about the various parts that went into this invention.

I said, you mean to say that the tonneau and the fabric and the wiper arm and the folding bows are all necessary in this?

Answer, yes, without all those parts, you don have a complete operating unit.

I'd also like to point out that there are other spots in the record which clearly indicate this.

I'd like to refer the page 26 of the record which indicates that the respondent's contentions with respect to wearability were disregarded by the trial court.

I'd also like to point out that on the -- that with respect to the cases the respondent relies upon, there is not one case except Leeds & Catlin that was decided by this Court and Leeds & Catlin was specifically overruled in the (Inaudible) case and that was before Congress when decided the statute.

The -- the responded has also indicated that he couldn't claim the fabric per se or I believe that I could orally state a claim right now but to claim that fabric per se if -- if we had to, but Leeds & Catlin perhaps is not (Inaudible), is not necessarily (Inaudible) in view of Special Equipment versus Coe, which clearly indicated, the one could claim as a sub-combination, a single element.

I repeat that there is not one case to my knowledge including the Davis case which really held that a single component could be monopolized and when that component was merely one component of (Inaudible) combination.

Finally, I'd like to indicate that we believe there are number base -- bases upon which this case could decided.

We believe the case should be decided on the basis of misuse because this respondent has been substantially -- this petitioner as been substantial injured by this (Inaudible) case.

And we believe that's -- if this case is decided on the grounds of misuse, the -- the petitioner will then have the opportunity of trying to recover of some of the damages which it has sustained.

It had -- its credit has been completely tied up for several years because of the injunction.

There had been attachments on the business, all the working capital, the personal homes of the individuals.

This is just the sort of thing which the antitrust laws were designed to avoid.

This was a business.

It was 35-years old.

People that were running it had been making fabrics, cutting them in substantially the same manner to (Inaudible) the automotive trade of many years and this patent comes along and the combination patent is now used to try to stop this business which should -- which had been continuing for these many years.

Thank you.