DEEPSOUTH PACKING CO. v. LAITRAM CORP.

Print this transcript Transcript: 

Argument of Harold J. Birch

Chief Justice Warren E. Burger: After lunch, we will take up argument in 71-315, Deepsouth Packing Co. against the Laitram Corporation.

Mr. Birch, you may proceed whenever you are ready.

Mr. Harold J. Birch: Mr. Chief Justice, may it please the Court.

The question before this Court this afternoon is relatively easy to state, simply it is a combination claim of the United States patent, infringed by one who manufactures and sells the separate parts in the United States, when all assembly end use takes place in a foreign country.

I suppose even more simply the question could be stated, does a combination claim of the United States patent, reach separate, unassembled parts or is it limited to the combination, the assembled combination.

It is petitioner's view here that there is no infringement on the facts of this case, that a combination claim reaches only the assembled combination and that it does not reach the separate parts.

As far as our considerations here are concerned, the ship which took Deepsouth's parts from the peer in and New Orleans might as well have sunk five miles offshore, the question is whether or not a combination claim means what this Court consistently has held it means and what the statute says it means.

Now, perhaps prior to getting into the facts, that is the claim, it would be well for the Court to review or for me to review for the Court briefly what got us here.

This case began as an infringement case in the District Court in Louisiana.

The respondent, Laitram Corporation brought suit against petitioner Deepsouth, for infringement of two patents.

Now one of those patents we call the slitter patent.

Its number is 2694218; the other is called the Tumbler or Deveiner patent and its number is 2825927.

I would like to invite the Court's attention if I may, to the large buff colored Appendix and more particularly to Page 114.

Justice William O. Douglas: Counsel, is there any issue of validity here at all?

Mr. Harold J. Birch: This Court has refused certiorari Mr. Justice Douglas, with respect to the questions presented on validity.

Justice William O. Douglas: It is purely infringement.

Mr. Harold J. Birch: It's purely the infringement question as posed in my opening statement.

You will note on Page 114, in figure 1, there is a device shown, that's the only device disclosed in this patent and the Court will see that it consists of an inclined trough razor blades there only one set, zigzagging down the trough and water sprays downward upon the top of the blades can shrimp if they could be there in a right angle direction.

Now, if you will then turn to Page 443 of the Index, which is in the supplement, you will find a picture of Laitram's commercial device, which shows a plurality of blades on the trough.

The only other difference being that the water sprays are omitted in the commercial device, omitted because they didn't work to devein.

Now if Your Honors, then we will turn to the large Appendix book to Page 120, you will see figure 1 of the patent there which discloses the commercial embodiment of the Laitram Deveiner, which is a drum, a cylindrical drum to which the slit shrimp are fed and as they go through the drum with a residence time of between one and two minutes, the veins which have been exposed by the slitting procedure with the previous apparatus are either pulled out if they are hanging free or dug out if they are not.

Justice William O. Douglas: On what page is that?

Mr. Harold J. Birch: That's on page 122 Mr. Justice Douglas, or 120, essentially the same picture shows in both.

If you again will look at the small Appendix on Pages 445 and 446, you will see a picture of the Laitram.

Justice William O. Douglas: I have to have a copy of Appendix, part of which is printed in one way, another is in upside down.

Mr. Harold J. Birch: Oh, I am terribly sorry, Mr. Justice Douglas.

We tried to correct that with the clerk, may I give you mine or --

Justice William O. Douglas: Get me another one.

Justice Marshall's?

Justice Potter Stewart: Could I get a patent on that?

Mr. Harold J. Birch: Well, I think so.

I don't think there's any constitutional prohibition on that.

Chief Justice Warren E. Burger: While you are stopped, it will help me, if you would explain why this is relevant to the problem of assembly versus non-assembly?

Mr. Harold J. Birch: The reason being Mr. Chief Justice that this court has been very explicit in saying that a combination of old elements presents a particular problem and all of the elements here are old.

The court has said that when you are looking to the issue of infringement, you therefore look very carefully at the elements whether or not they are new and whether or not there is a co-action, the synergism which the opinion of Mr. Justice Douglas in Anderson's Black Rock pointed out so clearly.

And I really wanted the Court to see what the device was like.

Chief Justice Warren E. Burger: We are all clear.

Mr. Harold J. Birch: Now if I may invite to court's attention to Page 7 of our Blue brief, petitioner's Blue brief.

You will see reaching that page the very concise three element combination claim that is involved.

And since it is very short, I would like to examine with you the three elements.

An inclined trough down which shrimp are induced to slide, secondly a knife in said trough positioned to be encountered by shrimp to cut the membrane confining the vein, and third a water spray to the trough directed upon the shrimp for sliding them down to the trough and flushing out the vein, as indicated the flushing didn't occur and that necessitated the second patent.

If Your Honors will then look at Page 9 of the Blue brief you will see the three element combination claim which is involved in the second or 927 patent.

Very briefly one, a support member, two a lip protruding at an acute angle from the support member, and then three means operatively associated with the support for relatively moving the shrimp with respect to said member to cause separation of the vein.

Now in the 1972 --

Chief Justice Warren E. Burger: If you will help me again counsel, if you would tell me why is this basic problem any different from what it would be, if it were a typewriter involved with the same issues you have here namely the assembly problem or an automobile or dishwasher?

Mr. Harold J. Birch: Probably no different if I understood Mr. Chief Justice, that the typewriter's parts were all old.

I am assuming that they are not and they are all old here, but going from this question to the law, I think whatever the combination is, the decisions of this court foreclose in our view, an affirmance of the court below and so does 35 U.S. Code 271 Subsections (a) and (c).

Now --

Justice Byron R. White: (Inaudible) that's the end of this whole defense?

Mr. Harold J. Birch: No I wouldn't take that position at all Mr. Justice White, if the bolt is a resided element this court's decisions and particularly that in the (Inaudible) case, say clearly that all resided elements in a combination claim are critical.

If that is so and the bolt is resided as an element our law says, that that would not result in an infringement.

Justice Byron R. White: So the but as long as one set, but one resided element is not assembled?

Mr. Harold J. Birch: That is the law of this Court as I understand it.

And the Aro case clearly says that the law of this court has been carried forward without change in Section 271 (a).

Of course, here we don't simply have one bolt or one screw, what we have are the three elements in each of the combinations and no one of those elements with the exception of the fingernail belt in the deveiner patent; ever were joined to the other, they were separately manufactured, separately shipped and never joined together in the United States or United States patents are affected.

Now, going to 271 (a) the Congress has made it abundantly clear that direct infringement which again this court has held 271 (a) embodies the law of this court.

Says, that whoever without authority makes uses or sells any patented invention within the United States infringes the patent.

What that provision is clearly telling us is not that someone who makes a machine or sells a machine shall be an infringer.

It says whoever shall make use or sell any patented invention, and I underscore that, shall infringe the patent.

When we get down to Subsection (c), we there have the provision which Congress enacted specifically to take care of the person who made the parts, but did not directly infringe by assembling the combination.

And as this court knows, C resulted from an effort by Congress to resuscitate in part, the contributory infringement doctrine, which I think was given the (Inaudible) by this court in the Mercoid decisions.

Now, turning to the decisions of this court, which are very pertinent and many of them squarely in the point.

In point not to the foreign shipment, but in point to the question of what infringes a combination claim.

I would like the Court just to consider with me briefly a few of them which are very germane.

The first of those starting out early indeed in 1840, was the Prouty v. Ruggles decision, where the same three elements we are dealing with here, that is the three element combination claim was involved.

There, this court held that the union of all the parts arranged and combined together in the manner described, is the thing patented.

In other words, in the words of the section 271 (a), the patented invention is the parts combined together is the thing patented, and that case appears on 19 of our main brief.

Then some years later, this Court in the leads cases which have been very widely, widely cited and which relate to a phonograph, and a record in combination held with respect to the parts that no one part of a resided combination is the combination.

Indeed says this court, all of the elements are not, they must be united by the same operation of law, that same decision repeated in the companion case.

I would like the Court at this point to consider two cases which appear later in our blue brief at Pages 33 and 34, which I suggest are squarely in point and controlling with respect to the law of this Court on the infringement of combination claims.

The first of those decisions both being written by Mr. Justice Hughes is the case of Woodward v. Hurd, the second Seim v. Hurd, both decided in 1914.

Now these two cases present the classic situations, as decided in the decisions of this Court with respect to what constitutes direct and what constitutes contributory infringement.

Here the patented device was again a three element combination, a rim, a wheel, a rim of the wheel, a tyre and wires which tighten the rubber tyre in the rim.

The two cases were brought, one against the man who sold all the parts, and the other against the man who bought the parts and assembled them for the first time and Woodward --

Chief Justice Warren E. Burger: I am sorry to interrupt you right there but would it make any difference, if it were not assembled for the first time, if it had been assembled and then disassembled?

Mr. Harold J. Birch: If it were first assembled Mr. Chief Justice, and then disassembled, the first assembly would concededly constitute an infringement, because the invention would be made within the United States.

If they are never put together in accordance the with these decisions, we are considering the invention is never made.

Therefore, any subsequent assembly outside of the country results in no invention of the combination claim ever being made.

Chief Justice Warren E. Burger: This is what the Fifth Circuit thought was the artificiality in part.

Mr. Harold J. Birch: That is correct and of course, we differ with Fifth Circuit very vigorously.

There is nothing artificial about granting a patent, and then restricting the patentee to the claim he solicited from the Patent Office.

Chief Justice Warren E. Burger: But do you see no artificiality in a different rule, applied to a situation where they would assemble a typewriter or the washing machine to see if it would function and run it through quality control tests, and then disassemble it and go through the process?

Mr. Harold J. Birch: No I do not, because those are the rules of our game, and I don't think they are artificial.

The statute says makes, that's the making of the invention.

Chief Justice Warren E. Burger: I guess that's what the Fifth Circuit disagreed with you, or they didn't regard this as a matter of rules of the game.

They wanted something more concrete apparently.

Mr. Harold J. Birch: Well, they went in not to the decisions of this Court, they were not even looked at, they were ignored.

They really didn't look at the statute at all, they based their decision on a theory of economic injustice.

But where as we ask is economic injustice involved?

Where that which is being done is right, and not a wrong.

Justice William H. Rehnquist: Well Mr. -- Mr. Birch, I think the Fifth Circuit regarded this thing as a subterfuge, and you can cite 20 cases and the impression remains in my mind that it still is a subterfuge.

Now, granted if it's a subterfuge permitted by law, and probably the Fifth Circuit should be reversed but it seems we’ve got to address ourself more than you do to the justice or the equity of it rather than just citing a bunch of cases.

Mr. Harold J. Birch: We are coming to that.

All I wanted to establish Mr. Justice Rehnquist is what the law was in this court and I think it's clear and there is no dissenting voice in any decision of the Court.

Now when we get to the policy decisions, several of them have been set forth in respondent's brief and also by the court below.

In the first place, they say that you should protect a foreign market for a domestic patentee.

I see no policy that requires or even suggests that a foreign market should be protected by a domestic patent, that patent is to protect the patentee in the United States.

271(a) clearly says that, if there is making, using or selling within the United States, it doesn't say Brazil.

Justice Byron R. White: Why don't you exempt sales abroad of the assembled merchandise.

Mr. Harold J. Birch: I don't think -- I think they are exempt.

That's the very point of the argument.

Justice Byron R. White: Right.

Mr. Harold J. Birch: If they blew -- you mean, if they’re assembled in the United States--

Justice Byron R. White: They’re assembled, but they are assembled when everybody agrees they are assembled to be sold only abroad.

Mr. Harold J. Birch: Yes.

Justice Byron R. White: No entry in the United States market.

Mr. Harold J. Birch: Because our law which as Mr. Justice Rehnquist has pointed out, if it's there, we have to content with it or reverse it.

Our law says there is no infringement unless it is made within the United States.

And if it is not, then there is no wrong to be enjoined.

That I think is the answer to the question.

Now, our understanding of the purpose of the patent, as very clearly pointed out again by Mr. Justice Douglas in the first Mercoid decision is that we have the public interest being paramount.

The right to freely compete being paramount.

And the only thing you subtract from that with the limited monopoly, that's given by a patent for a very limited purpose is that which is clearly within the scope of the grant and if a combination claim is awarded only because the combination is the invention, there is no infringement, there is nothing that should properly be taken away from the public, when that combination does not come into being, within the United States.

Perhaps --

Justice Byron R. White: I understand your latest argument that you would relegate the patentee to foreign patents to protect himself?

Mr. Harold J. Birch: I think that is his responsibility.

If he is going to employ the economy of the foreign country to make his money, if he is going to do his merchandising there, in accordance with the rules of the difference between our own state courts.

If someone is going to come in and use the economy of the state, they should go to that State Court for their redress, I think the same is true in the foreign country and the answer is yes.

Justice Byron R. White: Well except the juror that the impelling rule is your clients, not the patentee, is it not?

Your client was shipping these parts abroad.

Mr. Harold J. Birch: Well there is no reason for our client to do anything in the absence of a Brazilian patent.

Now there is a Brazilian patent and these parties are now involved in litigation, the customer that brought about this suit here is involved in litigation with Laitram in Brazil because they bought the parts.

Justice Byron R. White: That was my next question.

Mr. Harold J. Birch: Yes.

Justice Byron R. White: Whether there was a Brazilian patent.

Mr. Harold J. Birch: There is, and I have the complaint here in both Spanish and English, I cannot read the Spanish.

Justice Byron R. White: Of course, the only way for the patentee to protect themselves would be to get a patent in every country in the world?

Mr. Harold J. Birch: Well not necessarily, because shrimp show up in relatively few countries around the world.

I would answer you yes, whether our shrimp yes, but that's where he is making his money.

And I see no fair reason why he shouldn't be expected to use the patent system in the Courts of that country where he is making his money, in order to protect his invention there.

United States patents by definition do not have extraterritoriality.

Now there are some statements made in respondent's brief with respect to copyrights.

If the Court will examine those cases you will find that there are two copyrights that's in Appendix A, Mr. Chief Justice.

Copyrights also have no extraterritoriality.

The reason being that the copyright and the patent arose under the Patent clause of the constitution.

Trademarks and antitrust prosecution arose under the Commerce Clause and that's a whole different ball game.

But with regard to both patents and its copyrights, it's clear they are to have by the decisions to this Court and the lower Federal courts, no extraterritorial effect.

Now, the second policy consideration raised is that affirmance of Court below would prevent evasion of combination patents.

Our answer to that is that under the law of this Court and the law that has existed for 180 years and gone through a codification in 1952 reportedly without change, there is no evasion.

You have a right to operate outside the scope of claims and that's all that petitioner and people in the same position here did.

It's urged that there is discrimination between manufacturers of large devices and small devices.

The manufacturer of the small device has every opportunity to sell his device in parts as the manufacturer of the large device.

And notice that in the three conflicting cases, in the Second, Third and the Seventh Circuits all sorts of devices are involved.

In Andrea where the decision was against that of the Fifth Circuit, a radio was involved and it was a question of of whether the tools could or could not be put in with or without infringement.

In the Cold Metal case there was a three-element combination again of rolls, journals and bearings.

Then in the Hewitt-Robins case in 1965 and 1966 in the Seventh Circuit, there was a huge machine involved which were shipped in parts, a bridge, a reclaimer wheel and supporting structure.

But the small man has every bit as big an opportunity to send his equipment overseas unassembled as the large one.

Then the point is raised that unless the court below is affirmed, there will be a multiplicity of lawsuits.

That one escapes me completely.

As of the law now, with the three conflicting decisions squarely in point and the law of this Court stating that there is no infringement of a combination claim without assembling, there is no action that can be properly brought against the person who sells only the parts.

If the Fifth Circuit is affirmed on the other hand, you not only have direct infringement against the manufacturer of the parts, you have direct infringement against a factor who goes out as the man in Woodward v. Hurd did and buys all the parts, collects them together and resells them.

And then you will have an action for contributory infringement against every vendor who supplies a part that isn't a stable article of commerce if that part is especially adapted to go into the combination.

So as far as litigation is concerned, I think you are opening Pandora's box.

There will be a great multiplicity of lawsuits resulting from an affirmance of the court below.

Justice Potter Stewart: Mr. Birch, as I was reading the briefs in this case, I was hearkened back to the earlier days of my fatherhood when I used to spend the Christmas eve, sometimes a ball night and end up with a lot of bruised thumbs having purchased what I thought was a coaster wagon and come in a box, and instead of a coaster wagon there will be a lot of parts, that was up to mother and father to assemble.

Now let's assume that there was a good firm patent by somebody else on that particular kind of coaster wagon, would your argument go so far as to claim that the big box of disassembled parts to be put together at home by the buyer that that would not be an infringing?

Mr. Harold J. Birch: Not at all.

If the box was shipped outside of the United States and there was no assembling.

Justice Potter Stewart: Well, I might be infringing, when I put it together, but how about the person who sold the box of the disassembled parts to me?

Mr. Harold J. Birch: The Statute is specifically designed to take care of precisely that.

Justice Potter Stewart: He would be a contributory infringer.

Mr. Harold J. Birch: He would be a contributory infringer under 271 (c)

Justice Potter Stewart: C, but he would not be an infringer in your submission, is that correct?

Mr. Harold J. Birch: It would not be a -- but the same remedy would lie and the same recovery against the same defendant would be obtainable.

The fact that you are calling a contributory infringer in Section C.

Justice Byron R. White: Difference between a direct and contributory.

Mr. Harold J. Birch: Yes, the difference between direct and contributory is semantic as long as what occurs --.

Justice Potter Stewart: I would be the infringer assuming that I could ever get the thing assembled which --

Mr. Harold J. Birch: Yes, you too would be an infringer.

Justice Potter Stewart: And I would be the only direct infringer on the --

Mr. Harold J. Birch: That is correct but as has been pointed out in respondent's brief there is a rather strong policy in this country not to go around suing and the courts do not favor suits against individuals who would be in your position with the bruised fingers.

But --

Justice Potter Stewart: But the seller or the manufacturer of those disassembled parts would be contributory infringer --

Mr. Harold J. Birch: He would be a contributory.

Justice Potter Stewart: He would be in the United States and that's the only difference between my typical case and yours.

Mr. Harold J. Birch: That is correct and he could be sued and full recovery got from the man who manufactured and/or sold the parts.

It is only when you don't assemble in the United States that this question comes up.

And as the Andrea case had said this really isn't the technicality that it is accused of being, because no wrong is done and no wrong is done because no infringement occurs.

And if no infringement occurs, no liability and that is the firm policy behind those three decisions and I think that the decisions of this court backed that up completely.

I have --

Justice Potter Stewart: Does Deepsouth have in the United States?

Mr. Harold J. Birch: Deepsouth has one very small factory.

Justice Potter Stewart: That it assembled in that factory, all of these devices that are sold in the United States market.

Mr. Harold J. Birch: Everything that is sold by Deepsouth is made in one small building and I believe there is a total workforce of four or five.

Justice Potter Stewart: Four or five individuals?

Mr. Harold J. Birch: Individuals, that is correct.

Justice Potter Stewart: But for the United States market the three elements you mentioned are assembled, put together in that factory for all sales in the United States?

Mr. Harold J. Birch: No the completed device is not put together.

Two of the elements are.

The water header, the trough which is a reciprocating trough in the Deepsouth design are put together.

The razor blades, the long blades that go to full length of the trough are always supplied separately, perhaps for the reasons suggested before cut fingers and the like.

They are put together by the customer.

Deepsouth was held however to be an infringer under those circumstances and Laitram has full recourse against them under that decision just as if it had been manufactured entirely.

Now the belt conveyor or the deveiner has in fact, always been manufactured completely by Deepsouth.

I have just a few minutes Mr. Chief Justice, may I reserve them for rebuttal.

Chief Justice Warren E. Burger: You may.

Very well, Mr. Birch.

Mr. Shoup.

Argument of Guy W. Shoup

Mr. Guy W. Shoup: Mr. Chief Justice, may it please the Court.

First in direct answer to Mr. Birch, there is no controlling precedent on this matter before the court at all.

There is not one Supreme Court decision that relates this issue, it has been decided since this country was organized.

This is the first time it has come to this Court.

So you might say that what we are talking about here is the Fifth Circuit decision.

And possibly Andrea too.

Justice William O. Douglas: That's a second decision.

Mr. Guy W. Shoup: That was the second decision in the Radio case.

Justice William O. Douglas: And are the Fifth and the Second Circuit judge all to this --

Mr. Guy W. Shoup: Yes the Fifth, the Fifth Circuit put it very concisely saying that the District Judge followed the Second, Third and Seventh Circuits and then he said in the next sentence what he did not know was that we would refuse to follow and went on from there.

I would also like to put in perspective the word combination.

Justice Byron R. White: Do you think there's something in our case that within the case that if there are three elements making up the combination, two of them are manufactured here and one of them abroad, that there was no infringement, if the two that are made here are sold in this country or shipped abroad?

Mr. Guy W. Shoup: There is no Supreme Court case on that particular point, Your Honor.

Justice Byron R. White: Not even relevant to what a combination of patents do?

Mr. Guy W. Shoup: Well, there are cases interpreting combination patents but always in terms of the technical question of whether or not the claim for the patent read on the machine and operation or read on the substance.

Justice Byron R. White: Well in the event like this there would be no infringement --.

Mr. Guy W. Shoup: Well, there might possibly be contributory infringement but the facts of this case are fully not developed to answer that question.

271 (a) says whoever makes, uses, or sells.

Now what is it that is made, used, or sold?

Let's go to 35, to Section 101 of the Patent Law which defines patentable invention.

Patentable invention is the thing that the person can't make, use, or sell.

Justice Byron R. White: And that's here with the combination.

Mr. Guy W. Shoup: Well, in this case it would be a machine, Your Honor, because there are four types of things which are patentable inventions and that is set forth not in any of the parties briefs that are at Page 94 of the Appendix, the statute is set forth.

And there are four types of things that are patentable; machines, manufactures, compositions of matter, and processes.

Here we are talking about a machine, really two machines, but a machine and in this case, the seller calls it a machine, the buyer calls it a machine, the foreign government calls it a machine, the foreign customers private bank calls it a machine, the United States private bank for its letter of credit calls it a machine, a machine.

So I submit that a machine has been made and sold within the United States.

Justice Byron R. White: But it has to a patentable invention come up with --

Mr. Guy W. Shoup: A patentable invention, that's correct Your Honor, and but the invention, the word combination does not appear in the portion of the Patent Statute that defines patentable invention.

Justice Byron R. White: But these three elements alone wouldn't be a patentable invention?

Mr. Guy W. Shoup: If they had never been put forth --

Together.

Mr. Guy W. Shoup: Put together before.

Justice Byron R. White: Would they?

Mr. Guy W. Shoup: They would, if the man had in his mind, the idea of putting --

Justice Byron R. White: This couldn't file the patent obviously --describe these three items.

Mr. Guy W. Shoup: No, you cannot.

Justice Byron R. White: Never say anything about how they are going together and what they are going to --

Mr. Guy W. Shoup: You have to describe a cooperative relationship among the elements in order to obtain the patent.

Justice Byron R. White: If the elements are old?

Mr. Guy W. Shoup: If the elements are old or new, as a matter of fact, you got to describe some sort of relationship at any time.

The word old elements is almost not relevant to this case at all.

Let me go to something that Mr. Justice Blackmun said when he inquired about foreign patents which is quite relevant.

There are an excess of 100 jurisdictions in the world that have foreign patents and when a man has an idea that he thinks is commercially valuable, a clock starts running against them and that clock starts at different times in different parts of the world.

For example, in the United States, he puts his device on sale, he has one year to file.

Somewhere, in some other country in world, the minute he has to file before he tries to market his device.

So in the United States, he files his application in the United States and he put his device on the market before them, he is precluded from getting a patent in the foreign country.

I also might say that the litigation result was not commenced by the respondent, it was commenced by the customer petitioner and the extent of it has been the filling of a complaint and there was no summons ever served, the case as far as I know is completely defunct.

Unknown Speaker: (Inaudible)

Mr. Guy W. Shoup: No, back to Andrea, in Andrea 2, in Andrea 1, a statement was made, “No wrong was done the patentee until the combination is formed.”

What that clerk was saying is that the patentee did not have a cause of action.

They were stating a result and the sentence before that, that says, nor is this so highly technical as it might seem, seems to vindicate it.

A small amount of defensiveness on the part of the Court in handling that problem.

They come back to Andrea 2, they put the tubes in the radio.

They pull them apart and the Court says, it doesn't matter whether the parts are disconnected at the time of sale and Judge Swan says, aha, we have overruled Andrea 1 because we don't have to have final assembly at the time of sale, and I submit that Judge Swan viewed Andrea 2 correctly.

So what is before this Court is Andrea 2 and the case below.

Let's go to the perhaps most difficult case, the Hewitt-Robins case, the last case that considered this question, the ore reclaimer, the patent on the ore reclaimer issues in the United States.

I go to the Patent Office, I see the patent, it's an enormous device.

If I go to a manufacturer, we copy the exact pictures in the patent.

It's a huge thing, we sell it to the man in Turkey.

We never put the things together.

We just copy the patent.

That's the result of Hewitt-Robins.

The result is that any large device, or any device at all, large or small, can be copied exactly so long as there isn't some sort of an evanescent mechanical connection or electrical connection within the confines of United States.

Justice Potter Stewart: Well it's like the (Inaudible), if we come over here and copy, go back and make it.

Mr. Guy W. Shoup: That's right.

It's perfectly infringing.

I think in Hewitt-Robins however there were two or three points involved.

One of them was domestic, it's probably not relevant.

Now as to the economic run, Section 284 of the Patent Act provides for monetary recovery when someone infringes your patent.

Section 284 talks in terms of use of the invention.

In this case, use of the patented invention, and this use can encompass any one of the three acts of making, using, or selling.

So the patentee is entitled to a monetary recovery regardless of whether the man has made, used, or sold the invention.

Those acts are mutually exclusive.

In other words, you don't have to use if you make, you don't have to sell if you make, they are completely exclusive one from another.

And the economic (Inaudible) is the inability of the patentee in this case to collect from the person that has infringed his patent by making the patented machine.

Back to Andrea 2, and the majority opinion which says, infringement may not be avoided by a separation or division of courts which leaves to the purchaser a simple task of integration.

Reflecting on Andrea 1 which allows the hypothetical that I put of the man going to the Patent Office and copying and making all the parts in the United States selling in FOB in New York, San Francisco, New Orleans, wherever, and off they go.

Now, to answer petitioner's reply brief, they've made some remarks about freedom to copy right up to the extent of the claims of a patent and practically every time a patent is litigated in the United States, the scope of the claims is at issue and there are a number of doctrines that operate in favor of the patentee, there are a number of the doctrines that operate against the patentee, when these claims are put at issue.

So a narrow technical construction of makes or sells would be out of step with the judicial doctrine that is has developed over the last 150 years.

Examples of these, and they all occur in this case, as a matter of fact, are equivalence which allows the patentee to go, it doesn't hold them to the exact literal words of this claim.

Two examples, one of which was -- both of which were asserted, one of which was applied in this case, are file-wrapper estoppel or statements he makes to the Patent Office restrict him within the literal words of his claim.

Another example is a doctrine called negative equivalence even where the claim reads right on the machine, the patentee has to prove that the machine is even more an exact copy than the claim might indicate.

Justice Potter Stewart: We have no problem with equivalence here, do we?

Mr. Guy W. Shoup: Not whatsoever, but I was merely pointing out to the Court that there are a number of equitable doctrines that have developed to both limit and expand the patentee's rights during this Court interpretation of the patent system, and the Fifth Circuit correctly realized, I submit the lack of necessity for a legalistic construction of the word makes or sells.

The multiplicity of lawsuit argument that Mr. Birch made, it seems to me that you want to settle all disputes between the two parties who are really having a war in the same place, if at all possible.

Mr. Birch's suggestion would -- we must assume that the patentee is going to try and sell his machine wherever there is a market for it, whether it's in the United States, Brazil, Japan, wherever, under the result we urge, this dispute can be resolved in the United States Court and the patentee is not forced to go overseas and sue its customer or sue his perspective customer.

It could be settled, let's say, in one forum.

In this case -- in this situation, the result that we urge is a little bit analogous, for example, to the Blonder-Tongue case a year or so ago in this court where the patentee in effect cannot go around the United States and bring 11 lawsuits and get 11 cracks in having this patent help valid.

The affirmance of the case below, the decision below is completely concerned with the U.S. constitution because the quid pro quo in the Patent Clause of the constitution, is you get something for your disclosure.

In this case, with respect to the export market, you get nothing for your disclosure.

If this court reverses the court below, the result will be the complete exemption of exported patentable inventions namely machines from coverage of the United States patent or stated differently, the total emasculation of the United States patent system as it's applied to exported machines and articles of manufacture.

Now regardless of where those articles were destined for in any --

Chief Justice Warren E. Burger: Would that be true if patent had been obtained on the same machine in another country?

Mr. Guy W. Shoup: Excuse me, Your Honor, I don't understand your question.

Chief Justice Warren E. Burger: Suppose the patent had been obtained in Brazil or whatever other countries, would your conclusion follow or were you just addressing yourself to the coverage of the United States patent?

Mr. Guy W. Shoup: I was addressing myself to the coverage of the United States patent, yes.

Yes.

In a country where there would be manufacturing resources present and there might be a manufacturing competitor, it might be necessary to obtain a patent, patent in terms of patent?

I have nothing further to say other than this is a classic case of the substance in form and in recent decision substance is a preferred victor over forms and form should not triumphed here.

Thank you.

Chief Justice Warren E. Burger: Thank you, Mr. Shoup.

Mr. Birch, you have two minutes left.

Rebuttal of Harold J. Birch

Mr. Harold J. Birch: Thank you, Your Honor.

The brief of respondent has gone at great lengths and the same argument has been made here about the meaning of the word machine.

That is a red hearing.

What we are talking about here is the patented invention.

I think that was made clear by the questions from the bench.

You don't make a machine with an invoice or a letter or a letter of credit, you make it with nuts and bolts and wrenches and this was what was done only in Brazil.

Now there is no total emasculation of a man's rights, if he doesn't get a patent which covers him in the United States, whatever it is he's sold, if he can go into the foreign country and get it, he is protected.

Again, that's where he makes his profit, that's where his market is.

Now all of these equitable doctrines of doctrine of equivalence, doctrine of negative equivalence and the like, all depend upon something that Mr. Shoup has not mentioned and that is the making of an invention in the first place.

Unless an invention is made, there is no equivalent to worry about.

The point here is that an invention is not made in the combination sentence, and I believe it is most material as Mr. Justice Rehnquist brought up, that if the law is that you must assemble the combination in order to have something patentable, you must reverse.

That is the law of this Court.

It is no subterfuge, that is what the man got his patent for, a combination, unless the defendant makes it, there is no infringement.

That is a technicality, that's just giving the man what he has coming to him.

Justice Potter Stewart: And unless somebody makes it in the United States you say there can be no contributory infringement.

Mr. Harold J. Birch: That is correct, that is clear from Aro (ph).

Unless there is a direct infringement, there can be no contributory infringement and there is no direct infringement as we've pointed out in the Supreme Court cases before, are squarely on target, it didn't correct to say there is no authority, there is authority.

Thank you.

Chief Justice Warren E. Burger: Thank you Mr. Birch, thank you Mr. Shoup.

The case is submitted.