Caseflicks

Court of Appeals for the Federal Circuit • 2002

Husky Injection Molding Systems Ltd. v. R & D Tool & Engineering Co.

291 F.3d 780 | 2002 U.S. App. LEXIS 9514

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Takeaway

In short, this case holds that an owner of a patented combination may replace readily replaceable, unpatented components to adapt the machine to a new use; that lawful adaptation is akin to repair, not patent-infringing reconstruction.

Background

Husky owned a patent covering an injection-molding system used to make plastic preforms. The claimed system included an injection molding machine, a carrier plate containing cooling cavities, and mechanisms for moving, aligning, and transferring the newly molded preforms into those cavities. The mold and carrier plate were not separately patented.

Owners of Husky’s X-series systems commonly changed preform designs after three to five years. Doing so required a different mold and matching carrier plate. Husky sold these components separately and sold its systems without contractual restrictions requiring customers to purchase later replacement molds or carrier plates from Husky.

R & D made substitute mold-and-carrier-plate assemblies. It sold one to Grafco, a Husky-system owner, so Grafco could manufacture a different preform design. Husky sued R & D for contributory infringement, contending that replacing an unspent original mold and carrier plate with R & D’s assembly reconstructed the patented machine. Husky conceded that sale of a mold alone was not contributory infringement because molds were staple articles.

The district court granted R & D summary judgment of noninfringement. It held that the substitution was akin to permissible repair rather than impermissible reconstruction, relying principally on Wilbur-Ellis. It also concluded, alternatively, that Husky’s unrestricted sales created an implied license allowing purchasers to substitute the components. Husky appealed.

Issues

Issue #1

Whether R & D could be liable for contributory infringement when its customers replaced Husky-system molds and carrier plates with R & D substitute assemblies.

Holding

No. R & D could not contributorily infringe because its customers committed no direct infringement by making a permissible replacement of readily replaceable, unpatented components.

Reasoning

Contributory infringement under 35 U.S.C. § 271(c) requires direct infringement by a purchaser or user of the component. A seller may be liable for supplying a nonstaple component especially adapted for infringement, but that liability cannot exist if the customer’s use of the component is lawful.

The repair doctrine protects both the owner who repairs a patented combination and the supplier that provides the replacement component. Thus, if Grafco had a right to replace Husky’s mold-and-carrier-plate assembly, R & D’s sale of that assembly could not amount to contributory infringement.

Although Husky had also asserted inducement, the same repair defense applies to inducement as to contributory infringement. The dispositive question was therefore whether the customer’s substitution of the components was repair, or activity akin to repair, rather than reconstruction of the patented invention.

Issue #2

Whether replacing an unspent mold and carrier plate to make a different preform design was impermissible reconstruction or permissible activity akin to repair.

Holding

It was permissible activity akin to repair, not reconstruction. The mold and carrier plate were readily replaceable unpatented parts, and their substitution did not recreate the patented combination.

Reasoning

The repair-reconstruction distinction recognizes that a purchaser of a patented machine may maintain and adapt the machine, but may not make a new patented article after the original one has been spent. Supreme Court precedent permits replacement of a spent, unpatented component of a combination patent even if that component is essential, costly, or difficult to replace.

The doctrine also reaches some replacements of parts that are neither worn nor spent. In Wilbur-Ellis, adapting a fish-canning machine to use cans of another size was more than repair in the ordinary sense, but was sufficiently akin to repair because it improved the useful capacity of the purchased machine. Similarly, Surfco held that replacing surfboard fins with different fins was not reconstruction even where the original fins did not need replacement.

The relevant limiting inquiry is whether the component is genuinely and readily replaceable, rather than whether it is the invention’s essential feature or “heart.” The Supreme Court rejected a heart-of-the-invention test in Aro I: no individual, unpatented element of a combination claim is separately within the patent grant merely because it is important to the invention.

This case fell safely on the repair side of the line. Husky’s system was designed to permit replacement of the mold and carrier plate; customers typically bought a new matching assembly after several years to change preform designs; Husky itself sold substitute assemblies; and Husky quoted the system and the mold/carrier-plate assembly separately. Those facts established that the carrier plate and associated mold were readily replaceable parts.

Husky could not avoid that conclusion by arguing that voluntary replacement of an unspent part requires a special public-policy justification, such as improved safety. Wilbur-Ellis and Surfco recognize a purchaser’s right to modify a machine through replacement of a readily replaceable component, whether or not the modification serves an independent public-policy purpose.

Because replacing the mold and carrier plate did not recreate the patented injection-molding system, Husky’s customers did not infringe directly. The Federal Circuit therefore affirmed summary judgment for R & D and did not need to decide whether Husky’s unrestricted sales also gave purchasers an implied license to obtain replacements from others.