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Aro Manufacturing Co., 377 U.S. 476 (1964)




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American Government

Aro Manufacturing Co., 377 U.S. 476 (1964)

From the U.S. Government Printing Office via GPO Access
 
Case:   ARO MANUFACTURING CO.

Case #: 377US476


NO. 75.  ARGUED FEBRUARY 17, 1964.  - DECIDED JUNE 8, 1964.  - 312 F.2D
52, REVERSED IN PART, AFFIRMED IN PART, AND REMANDED. 


RESPONDENT WAS THE ASSIGNEE OF CERTAIN TERRITORIAL RIGHTS IN A
COMBINATION PATENT FOR A TOP-STRUCTURE FOR CONVERTIBLE AUTOMOBILES. 
THE PATENT COVERED ONLY THE COMBINATION OF SEVERAL UNPATENTED
COMPONENTS AND MADE NO CLAIM TO INVENTION BASED ON THE FABRIC USED IN
THE TOP-STRUCTURE.  TOP-STRUCTURES USING THE PATENTED COMBINATION WERE
INCLUDED IN 1952-1954 CARS MADE BY GENERAL MOTORS CORP., PURSUANT TO A
PATENT LICENSE, AND BY FORD MOTOR CO., WHICH HAD NO LICENSE DURING THAT
PERIOD.   RESPONDENT FILED AN INFRINGEMENT SUIT AGAINST PETITIONERS,
WHO, WITHOUT A LICENSE, MADE AND SOLD REPLACEMENT FABRICS TO FIT CARS
USING THE PATENTED TOP-STRUCTURES.  THE PATENT OWNER (RESPONDENT'S
ASSIGNOR) NOTIFIED PETITIONERS ON JANUARY 2, 1954, THAT PETITIONERS'
SALE OF FABRICS TO FIT FORD TOPS WOULD BE CONTRIBUTORY INFRINGEMENT. 
ON JULY 21, 1955, FORD PAID THE PATENT OWNER $73,000, AND IT WAS AGREED
THAT FORD, ITS DEALERS, CUSTOMERS AND USERS, WERE RELEASED FROM ALL
CLAIMS OF INFRINGEMENT OF THE PATENT, OTHER THAN WITH RESPECT TO
"REPLACEMENT TOP FABRICS."  THE PATENT OWNER RESERVED THE RIGHT TO
LICENSE THE MANUFACTURE, USE AND SALE OF SUCH REPLACEMENT FABRICS UNDER
THE PATENT.  RESPONDENT'S CLAIM OF CONTRIBUTORY INFRINGEMENT WAS UPHELD
IN THE DISTRICT COURT AND THE COURT OF APPEALS.  THAT HOLDING WAS
REVERSED HERE (365 U.S. 336) ON THE GROUND THAT THE FABRIC REPLACEMENT
WAS PERMISSIBLE "REPAIR" AND NOT INFRINGING "RECONSTRUCTION," SO THAT
THERE WAS NO DIRECT INFRINGEMENT BY THE CAR OWNER TO WHICH PETITIONERS
COULD CONTRIBUTE.  ON REMAND, THE DISTRICT COURT DISMISSED THE
COMPLAINT AS TO BOTH GENERAL MOTORS AND FORD CARS.  THE COURT OF
APPEALS REINSTATED THE JUDGMENT FOR RESPONDENT WITH RESPECT TO FORD
CARS, HOLDING THAT, SINCE FORD HAD NOT BEEN LICENSED TO PRODUCE THE TOP
STRUCTURES ON THOSE CARS, PETITIONERS' SALE OF REPLACEMENT FABRICS FOR
THEM CONSTITUTED CONTRIBUTORY INFRINGEMENT EVEN THOUGH THE REPLACEMENT
WAS MERELY "REPAIR."  THE COURT OF APPEALS THUS CONCLUDED THAT ITS
"PREVIOUS DECISION IN THIS CASE WAS NOT REVERSED INSOFAR AS UNLICENSED
FORD CARS ARE CONCERNED."  HELD: 

1.  THIS COURT'S PREVIOUS DECISION DID NOT REVERSE THE COURT OF
APPEALS' HOLDING AS IT APPLIED TO FORD CARS.  P. 480. 

2.  PERSONS WHO PURCHASED CARS FROM FORD, WHICH INFRINGED THE PATENT
BY MANUFACTURING AND SELLING THEM WITH THE TOP-STRUCTURES, LIKEWISE
INFRINGED BY USING OR REPAIRING THE TOP-STRUCTURES; AND THE SUPPLIER OF
REPLACEMENT FABRICS FOR USE IN SUCH INFRINGING REPAIR WAS A
CONTRIBUTORY INFRINGER UNDER SEC. 271(C) OF THE PATENT CODE.  PP. 482
488. 

3.  A MAJORITY OF THE COURT IS OF THE VIEW THAT SEC. 271(C) REQUIRES
KNOWLEDGE BY THE ALLEGED CONTRIBUTORY INFRINGER, NOT MERELY THAT THE
COMPONENT SOLD BY HIM WAS ESPECIALLY DESIGNED FOR USE IN A CERTAIN
MACHINE OR COMBINATION, BUT ALSO THAT THE COMBINATION FOR WHICH THE
COMPONENT WAS DESIGNED WAS BOTH PATENTED AND INFRINGING.  PP. 488-493. 

(A)  THIS KNOWLEDGE REQUIREMENT AFFORDS PETITIONERS NO DEFENSE WITH
RESPECT TO REPLACEMENT-FABRIC SALES AFTER JANUARY 2, 1954, SINCE THEY
THEN HAD BEEN NOTIFIED OF FORD'S INFRINGEMENT.  PP. 489-491. 

(B)  PETITIONERS ARE NOT LIABLE FOR CONTRIBUTORY INFRINGEMENT WITH
RESPECT TO SALES BEFORE THAT DATE, ABSENT A SHOWING ON REMAND OF THEIR
PREVIOUS KNOWLEDGE OF FORD'S INFRINGEMENT.  P. 491. 

4.  THE PATENT OWNER'S ATTEMPT, IN THE AGREEMENT WITH FORD, TO
RESERVE THE RIGHT TO LICENSE FUTURE REPLACEMENT SALES WAS INVALID,
SINCE HE CANNOT IN GRANTING THE RIGHT TO USE PATENTED ARTICLES IMPOSE
CONDITIONS AS TO UNPATENTED REPLACEMENT PARTS TO BE USED WITH THOSE
ARTICLES.  AFTER JULY 21, 1955, FORD CAR OWNERS HAD AUTHORITY TO USE
AND REPAIR THE PATENTED TOP-STRUCTURES; HENCE THEY WERE NO LONGER
DIRECT INFRINGERS, AND HENCE PETITIONERS AS SELLERS OF REPLACEMENT
FABRICS FOR SUCH USE AND REPAIR WERE NOT CONTRIBUTORY INFRINGERS.  ARO
MFG. CO. V. CONVERTIBLE TOP REPLACEMENT CO., 365 U.S. 336, FOLLOWED. 
PP. 496-500. 

5.  THE AGREEMENT WITH FORD DID NOT ELIMINATE PETITIONERS' LIABILITY
FOR SALES PRIOR TO JULY 21, 1955, FOR, ALTHOUGH A CONTRIBUTORY
INFRINGER IS A SPECIES OF JOINT-TORTFEASOR, THE COMMON-LAW RULE BY
WHICH A RELEASE OF ONE JOINT-TORTFEASOR NECESSARILY RELEASED ANOTHER IS
NOT APPLIED TO CONTRIBUTORY INFRINGEMENT.  PP. 500-502. 

6.  FOR THE GUIDANCE OF THE DISTRICT COURT, FOUR JUSTICES EXPRESS THE
FOLLOWING VIEWS TO THE EFFECT THAT THE AGREEMENT OF JULY 21, 1955,
LIMITS THE DAMAGES THAT RESPONDENT MAY RECOVER FOR THE PRE-AGREEMENT
INFRINGEMENT: 

(A)  IN CONTRIBUTORY-INFRINGEMENT CASES AS IN OTHER INSTANCES OF
JOINT-TORTFEASORS' LIABILITY PAYMENT BY ONE JOINT-TORTFEASOR DIMINISHES
THE AMOUNT THAT MAY BE RECOVERED FROM ANOTHER.  P. 503. 

(B)  UNDER 35 U.S.C. SEC. 284, ONLY DAMAGES, OR LOSS TO THE PATENT
OWNER, ARE RECOVERABLE FOR INFRINGEMENT, AND NOT THE INFRINGER'S
PROFITS.  PP. 503-507. 

(C)  RESPONDENT'S DAMAGES SHOULD NOT BE MEASURED BY A ROYALTY ON
PETITIONERS' SALES OF REPLACEMENT FABRICS, SINCE RESPONDENT COULD NEVER
HAVE LICENSED THOSE SALES, WHICH INVOLVED UNPATENTED MATERIALS TO BE
USED IN THE MERE REPAIR OF PATENTED ARTICLES.  PP. 507-509. 

(D)  IF THE PAYMENT BY FORD TO THE PATENT OWNER WAS THE EQUIVALENT OF
THE ROYALTIES THE PATENT OWNER WOULD HAVE RECEIVED BY LICENSING FORD IN
THE FIRST INSTANCE, PETITIONERS WOULD BE LIABLE ONLY FOR NOMINAL
DAMAGES.  PP. 512-513. 

ARO MANUFACTURING CO., INC., ET AL. V. CONVERTIBLE TOP REPLACEMENT CO.,
INC. 

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FIRST
CIRCUIT. 

MR. JUSTICE BRENNAN DELIVERED THE OPINION OF THE COURT. 

RESPONDENT CONVERTIBLE TOP REPLACEMENT CO., INC., (CTR) ACQUIRED BY
ASSIGNMENT FROM THE AUTOMOBILE BODY RESEARCH CORPORATION (AB) ALL
RIGHTS FOR THE TERRITORY OF MASSACHUSETTS IN UNITED STATES PATENT NO.
2,569,724, KNOWN AS THE MACKIE-DULUK PATENT.  THIS IS A COMBINATION
PATENT COVERING A TOP-STRUCTURE FOR AUTOMOBILE "CONVERTIBLES." 
STRUCTURES EMBODYING THE PATENTED COMBINATION WERE INCLUDED AS ORIGINAL
EQUIPMENT IN 1952-1954 MODELS OF CONVERTIBLES MANUFACTURED BY THE
GENERAL MOTORS CORPORATION AND THE FORD MOTOR COMPANY.  THEY WERE
INCLUDED IN THE GENERAL MOTORS CARS BY AUTHORITY OF A LICENSE GRANTED
TO GENERAL MOTORS BY AB; FORD, HOWEVER, HAD NO LICENSE DURING THE 1952
1954 PERIOD, AND NO AUTHORITY WHATEVER UNDER THE PATENT UNTIL JULY 21,
1955, WHEN IT ENTERED INTO AN AGREEMENT, DISCUSSED LATER, WITH AB;
FORD'S MANUFACTURE AND SALE OF THE AUTOMOBILES IN QUESTION THEREFORE
INFRINGED THE PATENT.  PETITIONER ARO MANUFACTURING CO., INC. (ARO),
WHICH IS NOT LICENSED UNDER THE PATENT, PRODUCES FABRIC COMPONENTS
DESIGNED AS REPLACEMENTS FOR WORN-OUT FABRIC PORTIONS OF CONVERTIBLE
TOPS; UNLIKE THE OTHER ELEMENTS OF THE TOP-STRUCTURE, WHICH ORDINARILY
ARE USABLE FOR THE LIFE OF THE CAR, THE FABRIC PORTION NORMALLY WEARS
OUT AND REQUIRES REPLACEMENT AFTER ABOUT THREE YEARS OF USE.  ARO'S
FABRICS ARE SPECIALLY TAILORED FOR INSTALLATION IN PARTICULAR MODELS OF
CONVERTIBLES, AND THESE HAVE INCLUDED THE 1952-1954 GENERAL MOTORS AND
FORD MODELS EQUIPPED WITH THE MACKIE-DULUK TOP-STRUCTURES. 

CTR BROUGHT THIS ACTION AGAINST ARO IN 1956 TO ENJOIN THE ALLEGED
INFRINGEMENT AND CONTRIBUTORY INFRINGEMENT, AND TO OBTAIN AN
ACCOUNTING, WITH RESPECT TO REPLACEMENT FABRICS MADE AND SOLD BY ARO
FOR USE IN BOTH THE GENERAL MOTORS AND THE FORD CARS EMBODYING THE
PATENTED STRUCTURES.  THE INTERLOCUTORY JUDGMENT ENTERED FOR CTR BY THE
DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS, 119 U.S.P.Q. 122, AND
AFFIRMED BY THE COURT OF APPEALS FOR THE FIRST CIRCUIT, 270 F.2D 200,
WAS REVERSED HERE.  ARO MFG. CO. V. CONVERTIBLE TOP REPLACEMENT CO.,
365 U.S. 336 ("ARO I"), PETITION FOR REHEARING OR ALTERNATIVE MOTION
FOR AMENDMENT OR CLARIFICATION DENIED, 365 U.S. 890.  OUR DECISION
DEALT, HOWEVER, ONLY WITH THE GENERAL MOTORS AND NOT WITH THE FORD
CARS.  LIKE THE COURT OF APPEALS, WE TREATED CTR'S RIGHT TO RELIEF AS
DEPENDING WHOLLY UPON THE QUESTION WHETHER REPLACEMENT OF THE FABRIC
PORTIONS OF THE CONVERTIBLE TOPS CONSTITUTED INFRINGING
"RECONSTRUCTION" OR PERMISSIBLE "REPAIR" OF THE PATENTED COMBINATION. 
THE LOWER COURTS HAD HELD IT TO CONSTITUTE "RECONSTRUCTION," MAKING THE
CAR OWNER FOR WHOM IT WAS PERFORMED A DIRECT INFRINGER AND ARO, WHICH
MADE AND SOLD THE REPLACEMENT FABRIC, A CONTRIBUTORY INFRINGER; WE
DISAGREED AND HELD THAT IT WAS MERELY "REPAIR."  THE RECONSTRUCTION
REPAIR DISTINCTION IS DECISIVE, HOWEVER, ONLY WHEN THE REPLACEMENT IS
MADE IN A STRUCTURE WHOSE ORIGINAL MANUFACTURE AND SALE HAVE BEEN
LICENSED BY THE PATENTEE, AS WAS TRUE ONLY OF THE GENERAL MOTORS CARS;
WHEN THE STRUCTURE IS UNLICENSED, AS WAS TRUE OF THE FORD CARS, THE
TRADITIONAL RULE IS THAT EVEN REPAIR CONSTITUTES INFRINGEMENT.  THUS,
THE DISTRICT COURT HAD BASED ITS RULING FOR CTR WITH RESPECT TO THE
FORD CARS ON THE ALTERNATIVE GROUND THAT, EVEN IF REPLACEMENT OF THE
FABRIC PORTIONS CONSTITUTED MERELY REPAIR, THE CAR OWNERS WERE STILL
GUILTY OF DIRECT INFRINGEMENT, AND ARO OF CONTRIBUTORY INFRINGEMENT, AS
TO THESE UNLICENSED AND HENCE INFRINGING STRUCTURES.  119 U.S.P.Q. 122,
124.  THIS ASPECT OF THE CASE WAS NOT CONSIDERED OR DECIDED BY OUR
OPINION IN ARO I. 

ON REMAND, HOWEVER, ANOTHER JUDGE IN THE DISTRICT COURT READ OUR
OPINION AS REQUIRING THE DISMISSAL OF CTR'S COMPLAINT AS TO THE FORD AS
WELL AS THE GENERAL MOTORS CARS, AND ENTERED JUDGMENT ACCORDINGLY.  CTR
APPEALED THE DISMISSAL INSOFAR AS IT APPLIED TO THE FORD CARS, AND THE
COURT OF APPEALS REINSTATED THE JUDGMENT IN FAVOR OF CTR TO THAT
EXTENT.  312 F.2D 52.  IN OUR VIEW THE COURT OF APPEALS WAS CORRECT IN
HOLDING THAT ITS "PREVIOUS DECISION IN THIS CASE WAS NOT REVERSED
INSOFAR AS UNLICENSED FORD CARS ARE CONCERNED."  312 F.2D, AT 57. 
(FN1)  HOWEVER, WE GRANTED CERTIORARI, 372 U.S. 958, TO CONSIDER THAT
QUESTION, AND TO CONSIDER ALSO THE ISSUE THAT HAD NOT BEEN DECIDED IN
ARO I:  WHETHER ARO IS LIABLE FOR CONTRIBUTORY INFRINGEMENT, UNDER 35
U.S.C. SEC. 271(C), WITH RESPECT TO ITS MANUFACTURE AND SALE OF
REPLACEMENT FABRICS FOR THE FORD CARS.  (FN2)

                                              I. (FN3) 

CTR CONTENDS, AND THE COURT OF APPEALS HELD, THAT SINCE FORD
INFRINGED THE PATENT BY MAKING AND SELLING THE TOP-STRUCTURES WITHOUT
AUTHORITY FROM THE PATENTEE, (FN4) PERSONS WHO PURCHASED THE
AUTOMOBILES FROM FORD LIKEWISE INFRINGED BY USING AND REPAIRING THE
STRUCTURES; AND HENCE ARO, BY SUPPLYING REPLACEMENT FABRICS SPECIALLY
DESIGNED TO BE UTILIZED IN SUCH INFRINGING REPAIR, WAS GUILTY OF
CONTRIBUTORY INFRINGEMENT UNDER 35 U.S.C. SEC. 271(C).  IN ARO I, 365
U.S., AT 341-342, THE COURT SAID: 

"IT IS ADMITTED THAT PETITIONERS (ARO) KNOW THAT THE PURCHASERS
INTEND TO USE THE FABRIC FOR REPLACEMENT PURPOSES ON AUTOMOBILE
CONVERTIBLE TOPS WHICH ARE COVERED BY THE CLAIMS OF RESPONDENT'S
COMBINATION PATENT, AND SUCH MANUFACTURE AND SALE WITH THAT KNOWLEDGE
MIGHT WELL CONSTITUTE CONTRIBUTORY INFRINGEMENT UNDER SEC 271(C), IF,
BUT ONLY IF, SUCH A REPLACEMENT BY THE PURCHASER HIMSELF WOULD IN
ITSELF CONSTITUTE A DIRECT INFRINGEMENT UNDER SEC. 271(A), FOR IT IS
SETTLED THAT IF THERE IS NO DIRECT INFRINGEMENT OF A PATENT THERE CAN
BE NO CONTRIBUTORY INFRINGEMENT  ..  .   IT IS PLAIN THAT SEC. 271(C) -
A PART OF THE PATENT CODE ENACTED IN 1952 - MADE NO CHANGE IN THE
FUNDAMENTAL PRECEPT THAT THERE CAN BE NO CONTRIBUTORY INFRINGEMENT IN
THE ABSENCE OF A DIRECT INFRINGEMENT.  THAT SECTION DEFINES
CONTRIBUTORY INFRINGEMENT IN TERMS OF DIRECT INFRINGEMENT - NAMELY THE
SALE OF A COMPONENT OF A PATENTED COMBINATION OR MACHINE FOR USE 'IN AN
INFRINGEMENT OF SUCH PATENT.'  AND SEC. 271(A) OF THE NEW PATENT CODE,
WHICH DEFINES 'INFRINGEMENT,' LEFT INTACT THE ENTIRE BODY OF CASE LAW
ON DIRECT INFRINGEMENT.  THE DETERMINATIVE QUESTION, THEREFORE, COMES
DOWN TO WHETHER THE CAR OWNER WOULD INFRINGE THE COMBINATION PATENT BY
REPLACING THE WORN-OUT FABRIC ELEMENT OF THE PATENTED CONVERTIBLE TOP
ON HIS CAR  ..  ."" 

SIMILARLY HERE, TO DETERMINE WHETHER ARO COMMITTED CONTRIBUTORY
INFRINGEMENT, WE MUST FIRST DETERMINE WHETHER THE CAR OWNERS, BY
REPLACING THE WORN-OUT FABRIC ELEMENT OF THE PATENTED TOP-STRUCTURES,
COMMITTED DIRECT INFRINGEMENT.  WE THINK IT CLEAR, UNDER SEC. 271(A) OF
THE PATENT CODE AND THE "ENTIRE BODY OF CASE LAW ON DIRECT
INFRINGEMENT" WHICH THAT SECTION "LEFT INTACT," THAT THEY DID. 

OR SELLS ANY PATENTED INVENTION  ..  INNFRINGES THE PATENT."  IT IS NOT
CONTROVERTED - NOR COULD IT BE - THAT FORD INFRINGED BY MAKING AND
SELLING CARS EMBODYING THE PATENTED TOP-STRUCTURES WITHOUT ANY
AUTHORITY FROM THE PATENTEE.  IF FORD HAD HAD SUCH AUTHORITY, ITS
PURCHASERS WOULD NOT HAVE INFRINGED BY USING THE AUTOMOBILES, FOR IT IS
FUNDAMENTAL THAT SALE OF A PATENTED ARTICLE BY THE PATENTEE OR UNDER
HIS AUTHORITY CARRIES WITH IT AN "IMPLIED LICENSE TO USE."  ADAMS V.
BURKE, 17 WALL.  453, 456; UNITED STATES V. UNIVIS LENS CO., 316 U.S.
241, 249, 250-251.  BUT WITH FORD LACKING AUTHORITY TO MAKE AND SELL,
IT COULD BY ITS SALE OF THE CARS CONFER ON THE PURCHASERS NO IMPLIED
LICENSE TO USE, AND THEIR USE OF THE PATENTED STRUCTURES WAS THUS
"WITHOUT AUTHORITY" AND INFRINGING UNDER SEC. 271(A).  (FN5)  NOT ONLY
DOES THAT PROVISION EXPLICITLY REGARD AN UNAUTHORIZED USER OF A
PATENTED INVENTION AS AN INFRINGER, BUT IT HAS OFTEN AND CLEARLY BEEN
HELD THAT UNAUTHORIZED USE, WITHOUT MORE, CONSTITUTES INFRINGEMENT. 
BIRDSELL V. SHALIOL, 112 U.S. 485; UNION TOOL CO. V. WILSON, 259 U.S.
107, 114; SEE SANITARY REFRIGERATOR CO. V. WINTERS, 280 U.S. 30, 32-33;
GENERAL TALKING PICTURES CORP. V. WESTERN ELECTRIC CO., 305 U.S. 124,
127. 

IF THE OWNER'S USE INFRINGED, SO ALSO DID HIS REPAIR OF THE TOP
STRUCTURE, AS BY REPLACING THE WORN-OUT FABRIC COMPONENT.  WHERE USE
INFRINGES, REPAIR DOES ALSO, FOR IT PERPETUATES THE INFRINGING USE. 

"NO DOUBT  ..  A  PATENTED ARTICLE MAY BE REPAIRED WITHOUT MAKING THE
REPAIRER AN INFRINGER,  .. BUTT NOT WHERE IT IS DONE FOR ONE WHO IS.
IT IS ONLY WHERE THE DEVICE IN PATENTED FORM HAS COME LAWFULLY INTO THE
HANDS OF THE PERSON FOR OR BY WHOM IT IS REPAIRED THAT THIS IS THE
CASE.  IN OTHER WORDS, IF ONE WITHOUT RIGHT CONSTRUCTS OR DISPOSES OF
AN INFRINGING MACHINE, IT AFFORDS NO PROTECTION TO ANOTHER TO HAVE
MERELY REPAIRED IT; THE REPAIRER, BY SUPPLYING AN ESSENTIAL PART OF THE
PATENTED COMBINATION, CONTRIBUTING BY SO MUCH TO THE PERPETUATION OF
THE INFRINGEMENT."  UNION SPECIAL MACH. CO. V. MAIMIN, 161 F. 748, 750
(C.C.E.D. PA. 1908), AFF'D, 165 F. 440 (C.A.3D CIR. 1908). 

ACCORD, REMINGTON RAND BUSINESS SERV., INC., V. ACME CARD SYSTEM CO.,
71 F.2D 628, 630 (C.A. 4TH CIR. 1934), CERT. DENIED, 293 U.S. 622; 2
WALKER, PATENTS (DELLER ED. 1937), AT 1487.  CONSEQUENTLY REPLACEMENT
OF WORN-OUT FABRIC COMPONENTS WITH FABRICS SOLD BY ARO, HELD IN ARO I
TO CONSTITUTE "REPAIR" RATHER THAN "RECONSTRUCTION" AND THUS TO BE
PERMISSIBLE IN THE CASE OF LICENSED GENERAL MOTORS CARS, WAS NOT
PERMISSIBLE HERE IN THE CASE OF UNLICENSED FORD CARS.  HERE, AS WAS NOT
THE CASE IN ARO I, THE DIRECT INFRINGEMENT BY THE CAR OWNERS THAT IS
PREREQUISITE TO CONTRIBUTORY INFRINGEMENT BY ARO WAS UNQUESTIONABLY
ESTABLISHED. 

WEE TURN NEXT TO THE QUESTION WHETHER ARO, AS SUPPLIER OF REPLACEMENT
FABRICS FOR USE IN THE INFRINGING REPAIR BY THE FORD CAR OWNERS, WAS A
CONTRIBUTORY INFRINGER UNDER SEC. 271(C) OF THE PATENT CODE.  THAT

"WHOEVER SELLS A COMPONENT OF A PATENTED MACHINE, MANUFACTURE,
COMBINATION OR COMPOSITION, OR A MATERIAL OR APPARATUS FOR USE IN
PRACTICING A PATENTED PROCESS, 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 INFRINGER. 

WE THINK ARO WAS INDEED LIABLE UNDER THIS PROVISION. 

SUCH A RESULT WOULD PLAINLY HAVE OBTAINED UNDER THE CONTRIBUTORY
INFRINGEMENT CASE LAW THAT SEC. 271(C) WAS INTENDED TO CODIFY.  (FN6)
INDEED, MOST OF THE LAW WAS ESTABLISHED IN CASES WHERE, AS HERE, SUIT
WAS BROUGHT TO HOLD LIABLE FOR CONTRIBUTORY INFRINGEMENT A SUPPLIER OF
REPLACEMENT PARTS SPECIALLY DESIGNED FOR USE IN THE REPAIR OF
INFRINGING ARTICLES.  IN UNION TOOL CO. V. WILSON, SUPRA, 259 U.S., AT
113-114, THE COURT HELD THAT WHERE USE OF THE PATENTED MACHINES
THEMSELVES WAS NOT AUTHORIZED: 

"THERE WAS, CONSEQUENTLY, NO IMPLIED LICENSE TO USE THE SPARE PARTS
IN THESE MACHINES.  AS SUCH USE, UNLESS LICENSED, CLEARLY CONSTITUTED
AN INFRINGEMENT, THE SALE OF THE SPARE PARTS TO BE SO USED VIOLATED THE
INJUNCTION (ENJOINING INFRINGEMENT)." 

AS EARLY AS 1897, CIRCUIT JUDGE TAFT, AS HE THEN WAS, THOUGHT IT
"WELL SETTLED" THAT: 

"WHERE ONE MAKES AND SELLS ONE ELEMENT OF A COMBINATION COVERED BY A
PATENT WITH THE INTENTION AND FOR THE PURPOSE OF BRINGING ABOUT ITS USE
IN SUCH A COMBINATION HE IS GUILTY OF CONTRIBUTORY INFRINGEMENT AND IS
EQUALLY LIABLE TO THE PATENTEE WITH HIM WHO IN FACT ORGANIZES THE
COMPLETE COMBINATION."  THOMSON-HOUSTON ELEC.  CO. V. OHIO BRASS CO.,
80 F. 712, 721 (C.A. 6TH CIR. 1897). 

WHILE CONCEDING THAT IN THE CASE OF A MACHINE PURCHASED FROM THE
PATENTEE, ONE "MAY KNOWINGLY ASSIST IN ASSEMBLING, REPAIRING, AND
RENEWING A PATENTED COMBINATION BY FURNISHING SOME OF THE NEEDED
PARTS," JUDGE TAFT ADDED: "BUT, WHEN HE DOES SO, HE MUST ASCERTAIN, IF
HE WOULD ESCAPE LIABILITY FOR INFRINGEMENT, THAT THE ONE BUYING AND
USING THEM FOR THIS PURPOSE HAS A LICENSE, EXPRESS OR IMPLIED, TO DO
SO."  ID., AT 723.  SEE ALSO NATIONAL BRAKE & ELEC.  CO. V.
CHRISTENSEN, 38 F.2D 721, 723 (C.A. 7TH CIR. 1930), CERT. DENIED, 282
U.S. 864; REED ROLLER BIT CO. V. HUGHES TOOL CO., 12 F.2D 207, 211
(C.A. 5TH CIR. 1926); SHICKLE, HARRISON & HOWARD IRON CO. V. ST. LOUIS
CAR-COUPLER CO., 77 F. 739, 743 (C.A. 8TH CIR. 1896), CERT. DENIED, 166
U.S. 720.  THESE CASES ARE ALL AUTHORITY FOR THE PROPOSITION THAT "THE
RIGHT OF ONE, OTHER THAN THE PATENTEE, FURNISHING REPAIR PARTS OF A
PATENTED COMBINATION, CAN BE NO GREATER THAN THAT OF THE USER, AND HE
IS BOUND TO SEE THAT NO OTHER USE OF SUCH PARTS IS MADE THAN THAT
AUTHORIZED BY THE USER'S LICENSE."  NATIONAL MALLEABLE CASTING CO. V.
AMERICAN STEEL FOUNDRIES, 182 F. 626, 641 (C.C.D.N.J. 1910). 

IN ENACTING SEC. 271(C), CONGRESS CLEARLY SUCCEEDED IN ITS OBJECTIVE
OF CODIFYING THIS CASE LAW.  THE LANGUAGE OF THE SECTION FITS PERFECTLY
ARO'S ACTIVITY OF SELLING "A COMPONENT OF A PATENTED  ..  COOMBINATION
..  ,  CONSTITUTING A MATERIAL PART OF THE INVENTION,  ..  ESSPECIALLY
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."  INDEED, THIS IS THE ALMOST UNIQUE CASE
IN WHICH THE COMPONENT WAS HARDLY SUITABLE FOR ANY NONINFRINGING USE. 
(FN7)  ON THIS BASIS BOTH THE DISTRICT COURT ORIGINALLY, 119 U.S.P.Q.,
AT 124, AND THE COURT OF APPEALS IN THE INSTANT CASE, 312 F.2D, AT 57,
HELD THAT ARO WAS A CONTRIBUTORY INFRINGER WITHIN THE PRECISE LETTER OF
SEC. 271(C).  SEE ALSO ARO I, 365 U.S., AT 341.    HOWEVER, THE
LANGUAGE OF SEC. 271(C) PRESENTS A QUESTION, APPARENTLY NOT NOTICED BY
THE PARTIES OR THE COURTS BELOW, CONCERNING THE ELEMENT OF KNOWLEDGE
THAT MUST BE BROUGHT HOME TO ARO BEFORE LIABILITY CAN BE IMPOSED.  IT
IS ONLY SALE OF A COMPONENT OF A PATENTED COMBINATION "KNOWING THE SAME
TO BE ESPECIALLY MADE OR ESPECIALLY ADAPTED FOR USE IN AN INFRINGEMENT
OF SUCH PATENT" THAT IS CONTRIBUTORY INFRINGEMENT UNDER THE STATUTE. 
WAS ARO "KNOWING" WITHIN THE STATUTORY MEANING BECAUSE - AS IT ADMITS,
AND AS THE LOWER COURTS FOUND - IT KNEW THAT ITS REPLACEMENT FABRICS
WERE ESPECIALLY DESIGNED FOR USE IN THE 1952-1954 FORD CONVERTIBLE TOPS
AND WERE NOT SUITABLE FOR OTHER USE?  OR DOES THE STATUTE REQUIRE A
FURTHER SHOWING THAT ARO KNEW THAT THE TOPS WERE PATENTED, AND KNEW
ALSO THAT FORD WAS NOT LICENSED UNDER THE PATENT SO THAT ANY FABRIC
REPLACEMENT BY A FORD CAR OWNER CONSTITUTED INFRINGEMENT? 

ON THIS QUESTION A MAJORITY OF THE COURT IS OF THE VIEW THAT SEC.
271(C) DOES REQUIRE A SHOWING THAT THE ALLEGED CONTRIBUTORY INFRINGER
KNEW THAT THE COMBINATION FOR WHICH HIS COMPONENT WAS ESPECIALLY
DESIGNED WAS BOTH PATENTED AND INFRINGING.  (FN8)  WITH RESPECT TO MANY
OF THE REPLACEMENT-FABRIC SALES INVOLVED IN THIS CASE, ARO CLEARLY HAD
SUCH KNOWLEDGE.  FOR BY LETTER DATED JANUARY 2, 1954, AB INFORMED ARO
THAT IT HELD THE MACKIE-DULUK PATENT; THAT IT HAD GRANTED A LICENSE
UNDER THE PATENT TO GENERAL MOTORS BUT TO NO ONE ELSE; AND THAT "IT IS
OBVIOUS, FROM THE FOREGOING AND FROM AN INSPECTION OF THE CONVERTIBLE
AUTOMOBILE SOLD BY THE FORD MOTOR COMPANY, THAT ANYONE SELLING READY
MADE REPLACEMENT FABRICS FOR THESE AUTOMOBILES WOULD BE GUILTY OF
CONTRIBUTORY INFRINGEMENT OF SAID PATENTS."  THUS THE COURT'S
INTERPRETATION OF THE KNOWLEDGE REQUIREMENT AFFORDS ARO NO DEFENSE WITH
RESPECT TO REPLACEMENT-FABRIC SALES MADE AFTER JANUARY 2, 1954.  IT
WOULD APPEAR THAT THE OVERWHELMING MAJORITY OF THE SALES WERE IN FACT
MADE AFTER THAT DATE, SINCE THE OLDEST OF THE CARS WERE 1952 MODELS AND
SINCE THE AVERAGE LIFE OF A FABRIC TOP IS SAID TO BE THREE YEARS.  WITH
RESPECT TO ANY SALES THAT WERE MADE BEFORE THAT DATE, HOWEVER, ARO
CANNOT BE HELD LIABLE IN THE ABSENCE OF A SHOWING THAT AT THAT TIME IT
HAD ALREADY ACQUIRED THE REQUISITE KNOWLEDGE THAT THE FORD CAR TOPS
WERE PATENTED AND INFRINGING.  WHEN THE CASE IS REMANDED, A FINDING OF
FACT MUST BE MADE ON THIS QUESTION BY THE DISTRICT COURT, AND, UNLESS
ARO IS FOUND TO HAVE HAD SUCH PRIOR KNOWLEDGE, THE JUDGMENT IMPOSING
LIABILITY MUST BE VACATED AS TO ANY SALES MADE BEFORE JANUARY 2, 1954. 
AS TO SUBSEQUENT SALES, HOWEVER, WE HOLD, IN AGREEMENT WITH THE LOWER
COURTS, THAT ARO IS LIABLE FOR CONTRIBUTORY INFRINGEMENT WITHIN THE
TERMS OF SEC. 271(C). 

IN SEEKING TO AVOID SUCH LIABILITY, ARO RELIES ON THE MERCOID CASES. 
MERCOID CORP. V. MID-CONTINENT INVESTMENT CO., 320 U.S. 661; MERCOID
CORP. V. MINNEAPOLIS-HONEYWELL REGULATOR CO., 320 U.S. 680.  SINCE
THOSE CASES INVOLVED ESSENTIALLY AN APPLICATION OF THE DOCTRINE OF
PATENT MISUSE, WHICH IS NOT AN ISSUE IN THIS CASE, (FN9) THEY ARE NOT
SQUARELY APPLICABLE TO THE CONTRIBUTORY INFRINGEMENT QUESTION HERE.  ON
THE OTHER HAND, THEY ARE HARDLY IRRELEVANT.  THE COURT IN MERCOID SAID,
AMONG OTHER THINGS, THAT THE PRINCIPLE THAT "HE WHO SELLS AN UNPATENTED
PART OF A COMBINATION PATENT FOR USE IN THE ASSEMBLED MACHINE MAY BE
GUILTY OF CONTRIBUTORY INFRINGEMENT" COULD NO LONGER PREVAIL "AGAINST
THE DEFENSE THAT A COMBINATION PATENT IS BEING USED TO PROTECT AN
UNPATENTED PART FROM COMPETITION."  320 U.S., AT 668.  AS THE COURT
RECOGNIZED, ITS DEFINITION OF MISUSE WAS SUCH AS "TO LIMIT
SUBSTANTIALLY THE DOCTRINE OF CONTRIBUTORY INFRINGEMENT" AND TO RAISE A
QUESTION AS TO "WHAT RESIDUUM MAY BE LEFT."  320 U.S., AT 669.  SEE
REPORT OF THE ATTORNEY GENERAL'S NATIONAL COMMITTEE TO STUDY THE
ANTITRUST LAWS (1955), AT 252.  THE ANSWER TO ARO'S ARGUMENT IS THAT
CONGRESS ENACTED SEC. 271 FOR THE EXPRESS PURPOSE OF REINSTATING THE
DOCTRINE OF CONTRIBUTORY INFRINGEMENT AS IT HAD BEEN DEVELOPED BY
DECISIONS PRIOR TO MERCOID, AND OF OVERRULING ANY BLANKET INVALIDATION
OF THE DOCTRINE THAT COULD BE FOUND IN THE MERCOID OPINIONS.  SEE,
E.G., 35 U.S.C. SECS. 271(C), (D); HEARINGS, SUPRA, N. 6, AT 159, 161
162; AND THE ARO I OPINIONS OF MR. JUSTICE BLACK, 365 U.S., AT 348-349
AND NN. 3-4; MR. JUSTICE HARLAN, ID., AT 378, N. 6; AND MR. JUSTICE
BRENNAN, ID., AT 365-367.  HENCE, WHERE ARO'S SALE OF REPLACEMENT
FABRICS FOR UNLICENSED FORD CARS FALLS SQUARELY WITHIN SEC. 271(C), AND
WHERE ARO HAS NOT PROPERLY INVOKED THE MISUSE DOCTRINE AS TO ANY OTHER
CONDUCT BY CTR OR AB, MERCOID CANNOT SUCCESSFULLY BE EMPLOYED TO SHIELD
ARO FROM LIABILITY FOR CONTRIBUTORY INFRINGEMENT.  (FN10) 

THUS WE HOLD THAT, SUBJECT TO THE RESERVATION EXPRESSED AT PP. 488
491, SUPRA, WITH RESPECT TO SALES MADE BEFORE JANUARY 2, 1954, AND
SUBJECT TO THE FURTHER RESERVATIONS SET FORTH IN SUCCEEDING PARTS OF
THIS OPINION, ARO'S SALES OF REPLACEMENT FABRICS FOR USE IN THE FORD
CARS CONSTITUTED CONTRIBUTORY INFRINGEMENT UNDER SEC. 271(C). 

           II.  (FN11) 

ALTHOUGH WE THUS AGREE WITH THE COURT OF APPEALS THAT ARO WAS LIABLE
FOR CONTRIBUTORY INFRINGEMENT WITH RESPECT TO THE FORD CARS, WE FIND
MERIT IN A DEFENSE ASSERTED BY ARO.  IN OUR VIEW THIS DEFENSE NEGATIVES
ARO'S LIABILITY AS TO SOME OF THE REPLACEMENT FABRICS IN QUESTION AND,
AS TO THE OTHERS, REDUCES SUBSTANTIALLY - QUITE POSSIBLY TO A MERE
NOMINAL SUM - THE AMOUNT OF RECOVERY THAT CTR MAY BE AWARDED.  THE
DEFENSE IS BASED ON THE AGREEMENT OF JULY 21, 1955, BETWEEN FORD AND
AB.  SEE NOTE 4, SUPRA.  THIS AGREEMENT AFFECTED ARO'S LIABILITY
DIFFERENTLY, WE THINK, DEPENDING UPON WHETHER THE REPLACEMENT-FABRIC
SALES WERE MADE BEFORE OR AFTER THE AGREEMENT DATE.  WE SHALL FIRST
DISCUSS ITS EFFECT ON LIABILITY FOR THE SUBSEQUENT SALES. 

THE AGREEMENT WAS MADE AT A TIME WHEN, AS CTR STATES IN ITS BRIEF,
"FORD HAD ALREADY COMPLETED ITS MANUFACTURE OF ALL THE CARS HERE
INVOLVED."  UNDER IT, FORD AGREED TO PAY AB $73,000 FOR CERTAIN RIGHTS
UNDER THE PATENT, WHICH WERE DEFINED BY PARAGRAPH 1 OF THE AGREEMENT AS
FOLLOWS: 

"1. AB HEREBY RELEASES FORD, ITS ASSOCIATED COMPANIES  ..  ANND ITS
AND THEIR DEALERS, CUSTOMERS AND USERS OF ITS AND THEIR PRODUCTS, OF
ALL CLAIMS THAT AB HAS OR MAY HAVE AGAINST IT OR THEM FOR INFRINGEMENT
OF SAID PATENTS ARISING OUT OF THE MANUFACTURE, USE OR SALE OF DEVICES
DISCLOSED THEREIN AND MANUFACTURED BEFORE DECEMBER 31, 1955, OTHER THAN
THE 'REPLACEMENT TOP FABRICS' LICENSED UNDER PARAGRAPH 3." 

IN PARAGRAPH 3, AB LICENSED FORD TO MAKE AND SELL "REPLACEMENT TOP
FABRICS" FOR THE MACKIE-DULUK TOP-STRUCTURES, RECEIVING IN RETURN A
ROYALTY - SEPARATE FROM THE $73,000 LUMP-SUM PAYMENT - OF 5% OF THE NET
SALES.  AND IN PARAGRAPH 5, AB EXPRESSLY RESERVED THE RIGHT: 

"TO LICENSE UNDER  ..  SAAID MACKIE-DULUK PATENT  ..  THHE
MANUFACTURE, USE AND SALE OF REPLACEMENT TOP FABRICS OTHER THAN THOSE
SUPPLIED TO, MADE BY OR SOLD BY FORD  ..  TOO THE EXTENT THAT AB IS
ENTITLED TO RESERVE SUCH RIGHT UNDER 35 U.S.C.  SEC. 271 (1952)." 

IN A PRETRIAL MEMORANDUM FILED EARLY IN THE LAWSUIT, THE DISTRICT
COURT CONSTRUED THE AGREEMENT IN THE FOLLOWING MANNER, WHICH WE THINK
TO BE A CORRECT INTERPRETATION OF THE PARTIES' INTENTION: 

(1)  WITH RESPECT TO ALL PATENTED TOP-STRUCTURES MANUFACTURED BEFORE
JULY 21, 1955, AND ALL REPLACEMENT FABRICS INSTALLED BEFORE THAT DATE,
IT WAS A "RELEASE" TO THE PARTIES NAMED - THAT IS, FORD AND ITS
CUSTOMERS - OF THE CLAIMS FOR INFRINGEMENT BY MANUFACTURE, SALE, OR USE
OF THE PATENTED COMBINATION; 

(2)  WITH RESPECT TO ANY NEW STRUCTURES MANUFACTURED BETWEEN JULY 21
AND DECEMBER 31, 1955 (IT APPEARS THAT THERE WERE NO SUCH STRUCTURES),
THE AGREEMENT WAS A "FUTURE LICENSE" TO FORD AND ITS CUSTOMERS TO MAKE,
SELL, AND USE THE PATENTED COMBINATION, BUT "EXCEPTING REPLACEMENTS"
UNLESS THESE WERE PROVIDED BY FORD UNDER THE SPECIAL LICENSE GRANTED BY
PARAGRAPH 3; 

(3)  WITH RESPECT TO THE POST-JULY 21 STATUS OF STRUCTURES
MANUFACTURED BEFORE JULY 21, THE AGREEMENT WAS ALSO A "FUTURE LICENSE"
TO FORD AND ITS CUSTOMERS OF THE RIGHTS TO MAKE, SELL, AND USE, BUT
AGAIN, "EXCEPTING REPLACEMENTS" NOT PROVIDED BY FORD; AND 

(4)  THE AGREEMENT "DEMONSTRATED AN INTENTION NOT TO RELEASE" OR
LICENSE ANY PERSONS OTHER THAN FORD OR ITS CUSTOMERS; IN PARTICULAR,
THE PARTIES DID NOT INTEND TO RELEASE OR LICENSE CONTRIBUTORY
INFRINGERS LIKE ARO IN RESPECT OF REPLACEMENT FABRICS SOLD EITHER
BEFORE OR AFTER JULY 21. 

CONSIDERING THE LEGAL EFFECT OF THE AGREEMENT AS SO CONSTRUED, THE
DISTRICT COURT WENT ON TO RULE THAT IF THE FABRIC REPLACEMENT SHOULD BE
HELD TO CONSTITUTE REPAIR RATHER THAN RECONSTRUCTION (AS THIS COURT DID
SUBSEQUENTLY HOLD IN ARO I), THEN: 

(A)  ARO WOULD BE LIABLE FOR CONTRIBUTORY INFRINGEMENT AS TO
REPLACEMENTS MADE BEFORE JULY 21, 1955, SINCE "I DO NOT CONSTRUE THE
AGREEMENT TO RELEASE CONTRIBUTORY INFRINGERS FOR RIGHTS OF ACTION
ALREADY ACCRUED"; 

(B)  HOWEVER, DESPITE THE INTENTION OF THE PARTIES, ARO WOULD NOT BE
LIABLE AS TO REPLACEMENTS MADE AFTER JULY 21, 1955, SINCE "IF
REPLACEMENT IS LEGITIMATE REPAIR, NO AVERAGE OWNER CAN DO-IT-YOURSELF,
AND HE MUST BE FREE TO GO TO PERSONS IN THE POSITION OF DEFENDANTS
WITHOUT APPREHENSION ON THEIR PART." 

THE DISTINCTION BETWEEN PRE-AGREEMENT AND POST-AGREEMENT SALES
SUBSEQUENTLY BECAME IRRELEVANT TO THE DISTRICT COURT'S VIEW OF THE
CASE, WHEN IT HELD AFTER TRIAL THAT REPLACEMENT OF THE FABRICS
CONSTITUTED RECONSTRUCTION RATHER THAN REPAIR; THE COURT'S
INTERLOCUTORY JUDGMENT FOR CTR THUS HELD ARO LIABLE WITH RESPECT TO ALL
THE FORD CARS IN QUESTION.  WHEN THIS COURT IN ARO I REVERSED THE
RULING ON THE RECONSTRUCTION-REPAIR ISSUE, THE ONLY REFERENCE IN THE
OPINIONS TO THE FORD CARS TOOK THE VIEW THAT ARO SHOULD BE HELD LIABLE
ONLY IN RESPECT OF REPLACEMENTS MADE ON THOSE CARS "BEFORE JULY 21,
1955," 365 U.S., AT 368 (CONCURRING OPINION), AND THUS AGREED WITH THE
DISTINCTION ORIGINALLY DRAWN BY THE DISTRICT COURT.  THE PRESENT
OPINION OF THE COURT OF APPEALS, HOWEVER, IN REINSTATING THE FORD CAR
PORTION OF THE INTERLOCUTORY JUDGMENT FOR CTR WITHOUT CONSIDERATION OF
THIS DISTINCTION, APPEARS TO HAVE HELD ARO LIABLE IN RESPECT OF
REPLACEMENT FABRICS SOLD FOR THE 1952-1954 FORD CARS NOT ONLY BEFORE
JULY 21, 1955, BUT ALSO AFTER THAT DATE AND - SO LONG AS THE CARS
REMAIN ON THE ROAD - UP TO THE PRESENT AND INTO THE FUTURE. 

CTR'S ARGUMENT IN SUPPORT OF THIS RESULT EMPHASIZES THAT THE
AGREEMENT IN TERMS RAN IN FAVOR ONLY OF FORD AND FORD'S CUSTOMERS AND
NOT OF THIRD PARTIES LIKE ARO, AND THAT IT EXPRESSLY EXCEPTED
"REPLACEMENT TOP FABRICS" FROM THE SCOPE OF THE RIGHTS IT GRANTED. 
RELIANCE IS ALSO PLACED ON TESTIMONY THAT THE AMOUNT TO BE PAID BY FORD
UNDER THE AGREEMENT WAS SET AS LOW AS $73,000 ONLY BECAUSE OF A CLEAR
UNDERSTANDING BETWEEN THE PARTIES THAT SUCH PAYMENT WOULD NOT AFFECT
AB'S RIGHTS TO RECOVER FROM PERSONS IN THE POSITION OF ARO.  (FN12)
CTR THUS ARGUES: 

"IF THE FORD AGREEMENT HAD NEVER BEEN MADE AT ALL, IT IS CLEAR THAT
IT WOULD HAVE BEEN PROPER TO REQUIRE THAT ARO PAY ROYALTIES, INSOFAR AS
INFRINGING FORD CARS ARE CONCERNED, EVEN UP TO THE PRESENT TIME.  THIS
BEING THE CASE, IT IS CLEAR THAT IT WAS PROPER FOR THE AGREEMENT TO
EXPRESSLY RECOGNIZE AND TO EXPRESSLY EXCLUDE ARO'S LIABILITY FROM ITS
TERMS.  SINCE FORD REFUSED TO PURCHASE ANY RIGHTS FOR ARO, EITHER
BEFORE OR AFTER JULY 21, 1955, ARO IS LIABLE FOR ITS FORD REPAIR
ACTIVITIES BOTH BEFORE AND AFTER THAT DATE." 

INSOFAR AS REPLACEMENT FABRICS SOLD "AFTER THAT DATE" ARE CONCERNED,
WE DO NOT AGREE.  WE THINK THE AGREEMENT'S ATTEMPT TO RESERVE RIGHTS IN
CONNECTION WITH FUTURE SALES OF REPLACEMENT FABRICS WAS INVALID.  BY
THE AGREEMENT AB AUTHORIZED THE FORD CAR OWNERS, IN RETURN FOR A
PAYMENT FROM FORD, TO USE THE PATENTED TOP-STRUCTURES FROM AND AFTER
JULY 21, 1955.  SINCE THEY WERE AUTHORIZED TO USE THE STRUCTURES, THEY
WERE AUTHROIZED TO REPAIR THEM SO AS "TO PRESERVE THEIR FITNESS FOR USE
..  .""  ARO I, 365 U.S., AT 345, QUOTING LEEDS & CATLIN CO. V. VICTOR
TALKING MACHINE CO., 213 U.S. 325, 336.  THE CONTRARY PROVISIONS IN THE
AGREEMENT, PURPORTING TO RESTRICT THE RIGHT OF USE AND REPAIR BY
PROHIBITING FABRIC REPLACEMENT UNLESS DONE WITH FABRICS PURCHASED FROM
FORD OR SOME OTHER LICENSEE, STAND CONDEMNED BY A LONG LINE OF THIS
COURT'S DECISIONS DELIMITING THE SCOPE OF THE PATENT GRANT.  WHEN THE
PATENTEE HAS SOLD THE PATENTED ARTICLE OR AUTHORIZED ITS SALE AND HAS
THUS GRANTED TO THE PURCHASER AN "IMPLIED LICENSE TO USE," IT IS CLEAR
THAT HE CANNOT THEREAFTER RESTRICT THAT USE; "SO FAR AS THE USE OF IT
WAS CONCERNED, THE PATENTEE HAD RECEIVED HIS CONSIDERATION, AND IT WAS
NO LONGER WITHIN THE MONOPOLY OF THE PATENT."  ADAMS V. BURKE, 17
WALL.  453, 456.  IN PARTICULAR, HE CANNOT IMPOSE CONDITIONS CONCERNING
THE UNPATENTED SUPPLIES, ANCILLARY MATERIALS, OR COMPONENTS WITH WHICH
THE USE IS TO BE EFFECTED.  E.G., CARBICE CORP. V. AMERICAN PATENTS
DEVELOPMENT CORP., 283 U.S. 27; MERCOID CORP. V. MID-CONTINENT
INVESTMENT CO., 320 U.S. 661; UNITED STATES V. LOEWS, INC., 371 U.S.
38, 46.  IT FOLLOWS THAT HERE, WHERE THE PATENTEE HAS BY THE FORD
AGREEMENT EXPLICITLY AUTHORIZED THE PURCHASERS TO USE THE ARTICLES, THE
PATENTEE CANNOT THEREAFTER RESTRICT THAT USE BY IMPOSING A CONDITION
THAT REPLACEMENT PARTS MAY BE PURCHASED ONLY FROM A LICENSED SUPPLIER. 
WITH THE RESTRICTION THUS ELIMINATED FROM CONSIDERATION, IT IS CLEAR
THAT ARO CANNOT BE LIABLE FOR CONTRIBUTORY INFRINGEMENT IN CONNECTION
WITH SALES OF REPLACEMENT FABRICS MADE AFTER JULY 21, 1955.  AFTER THAT
DATE THE FORD CAR OWNERS HAD AUTHORITY FROM THE PATENTEE - INDEED, HAD
A "LICENSE" (FN13) - FULLY TO USE AND REPAIR THE PATENTED STRUCTURES. 
HENCE THEY DID NOT COMMIT DIRECT INFRINGEMENT UNDER SEC. 271(A) WHEN
THEY HAD THE FABRICS REPLACED; HENCE ARO, IN SELLING REPLACEMENT
FABRICS FOR THIS PURPOSE, DID NOT COMMIT CONTRIBUTORY INFRINGEMENT
UNDER SEC. 271(C).  THE CASE AS TO THE POST-AGREEMENT SALES IS THUS
SQUARELY RULED BY ARO I. IT WAS HELD THERE, DESPITE AB'S ATTEMPT TO
RESERVE THE RIGHT TO LICENSE SALES OF REPLACEMENT FABRICS, THAT GENERAL
MOTORS CAR OWNERS, WHO WERE AUTHORIZED TO USE THE PATENTED STRUCTURES
BY VIRTUE OF THE LICENSE GRANTED GENERAL MOTORS BY AB, PERFORMED
NOTHING MORE THAN "PERMISSIBLE REPAIR" WHEN THEY REPLACED THE WORN-OUT
FABRICS, AND HENCE THAT THERE WAS NO DIRECT INFRINGEMENT BY THE OWNERS
TO WHICH ARO, BY SELLING THE REPLACEMENT FABRICS, COULD CONTRIBUTE.  IN
OTHER WORDS, SINCE FABRIC REPLACEMENT WAS "REPAIR" RATHER THAN
"RECONSTRUCTION," IT WAS MERELY AN ASPECT OF THE USE OF THE PATENTED
ARTICLE, AND WAS THUS BEYOND THE PATENTEE'S POWER TO CONTROL AFTER THE
USE ITSELF HAD BEEN AUTHORIZED.  SO HERE, THE FORD CAR OWNERS WERE
AUTHORIZED TO USE THE PATENTED STRUCTURES AFTER JULY 21, 1955, BY
VIRTUE OF THE AGREEMENT BETWEEN AB AND FORD.  HENCE THEY WERE LIKEWISE
ENTITLED, DESPITE AB'S ATTEMPT TO RESERVE THIS RIGHT, TO PERFORM THE
"PERMISSIBLE REPAIR" OF REPLACING THE WORN-OUT FABRICS; HENCE, JUST AS
IN ARO I, THE CAR OWNERS BY REPLACING THE FABRICS COMMITTED NO DIRECT
INFRINGEMENT TO WHICH ARO'S SALES COULD CONTRIBUTE.  "IF THE PURCHASER
AND USER COULD NOT BE AMERCED AS AN INFRINGER CERTAINLY ONE WHO SOLD TO
HIM  ..  CAANNOT BE AMERCED FOR CONTRIBUTING TO A NON-EXISTENT
INFRINGEMENT."  ARO I, 365 U.S., AT 341. 

CTR WOULD HAVE IT THAT THIS RESULT IS INCONSISTENT WITH BIRDSELL V.
SHALIOL, 112 U.S. 485, AND UNION TOOL CO. V. WILSON, 259 U.S. 107.  IN
OUR VIEW IT IS NOT.  BIRDSELL ALLOWED THE PATENTEE TO HOLD ONE
INFRINGER LIABLE FOR USE OF THE PATENTED MACHINES AFTER OBTAINING A
JUDGMENT AGAINST ANOTHER INFRINGER FOR THE MANUFACTURE AND SALE OF THE
SAME MACHINES; UNION TOOL HELD INFRINGEMENT TO EXIST WHERE THE
DEFENDANT, AFTER BEING HELD LIABLE FOR THE MANUFACTURE AND SALE OF
CERTAIN INFRINGING MACHINES, SOLD SPARE PARTS FOR USE IN THE SAME
MACHINES.  BOTH CASES TURNED UPON THE FACT THAT THE PATENTEE HAD NOT
COLLECTED ON THE PRIOR JUDGMENT AND THUS HAD NOT RECEIVED ANY
COMPENSATION FOR THE INFRINGING USE OR, INDEED, ANY COMPENSATION AT
ALL.  (FN14)  HERE, IN  CONTRAST, THE AMOUNT PAID BY FORD UNDER THE
AGREEMENT WAS EXPRESSLY STATED TO INCLUDE COMPENSATION FOR THE USE OF
THE PATENTED STRUCTURES BY FORD'S PURCHASERS; MOREOVER, THE AGREEMENT
COVERED FUTURE USE AND IN THIS RESPECT OPERATED PRECISELY LIKE A
LICENSE, WITH THE RESULT THAT AFTER THE AGREEMENT DATE THERE WAS SIMPLY
NO INFRINGING USE FOR WHICH THE PATENTEE WAS ENTITLED TO COMPENSATION. 
SEE BIRDSELL V. SHALIOL, SUPRA, 112 U.S., AT 487.  IN SUM AB OBTAINED
ITS REWARD FOR THE USE OF THE PATENTED STRUCTURES UNDER THE TERMS OF
THE AGREEMENT WITH FORD; CTR CANNOT OBTAIN FROM ARO HERE ANOTHER REWARD
FOR THE SAME USE. 

WE THEREFORE HOLD, IN AGREEMENT WITH THE DISTRICT COURT'S ORIGINAL
VIEW, THAT ARO IS NOT LIABLE FOR REPLACEMENT-FABRIC SALES (FN15) MADE
AFTER JULY 21, 1955.  INSOFAR AS THE JUDGMENT OF THE COURT OF APPEALS
IMPOSES LIABILITY FOR SUCH SALES, IT IS REVERSED.  (FN16)

                        III.  (FN17) 

TURNING TO THE QUESTION OF REPLACEMENT-FABRIC SALES MADE BEFORE JULY
21, 1955, WE AGREE WITH THE DISTRICT COURT THAT THE AGREEMENT BETWEEN
AB AND FORD DID NOT NEGATIVE ARO'S LIABILITY FOR THESE SALES.  WITH
RESPECT TO THE POST-AGREEMENT SALES THE AGREEMENT NECESSARILY ABSOLVED
ARO OF LIABILITY, ITS INTENTION TO THE CONTRARY NOTWITHSTANDING,
BECAUSE IT HAD THE EFFECT OF PRECLUDING ANY DIRECT INFRINGEMENT TO
WHICH ARO COULD CONTRIBUTE.  WITH RESPECT TO THE PRE-AGREEMENT SALES,
HOWEVER, ARO'S CONTRIBUTORY INFRINGEMENT HAD ALREADY TAKEN PLACE AT THE
TIME OF THE AGREEMENT.  WHATEVER THE AGREEMENT'S EFFECT ON THE AMOUNT
RECOVERABLE FROM ARO - A MATTER TO BE DISCUSSED IN PART IV OF THIS
OPINION - IT CANNOT BE HELD, IN THE TEETH OF ITS CONTRARY LANGUAGE AND
INTENTION, TO HAVE ERASED THE EXTANT INFRINGEMENT. 

IT IS TRUE THAT A CONTRIBUTORY INFRINGER IS A SPECIES OF JOINT
TORTFEASOR, WHO IS HELD LIABLE BECAUSE HE HAS CONTRIBUTED WITH ANOTHER
TO THE CAUSING OF A SINGLE HARM TO THE PLAINTIFF.  SEE WALLACE V.
HOLMES, 29 FED. CAS. 74, 80 (NO. 17,100)(C.C.D. CONN. 1871); THOMSON
HOUSTON ELEC.  CO. V. OHIO BRASS CO., SUPRA, 80 F., AT 721; RICH, 21
GEO. WASH. L. REV. 521, 525 (1953).  IT IS ALSO TRUE THAT UNDER THE OLD
COMMON-LAW RULE, A RELEASE GIVEN TO ONE JOINT-TORTFEASOR NECESSARILY
RELEASED ANOTHER, EVEN THOUGH IT EXPRESSLY STATED THAT IT WOULD HAVE NO
SUCH EFFECT.  SEE PROSSER, TORTS (2D ED. 1955), AT 243-244.  UNDER THIS
RULE ARO'S ARGUMENT ON THIS POINT WOULD PREVAIL, SINCE THE AGREEMENT
DID RELEASE FORD'S PURCHASERS FOR THEIR INFRINGING USE OF THE TOP
STRUCTURES BEFORE THE AGREEMENT DATE, AND THAT WAS THE USE TO WHICH ARO
CONTRIBUTED.  SEE SCHIFF V. HAMMOND CLOCK CO., 69 F.2D 742, 746 (C.A.
7TH CIR. 1934), REVERSED FOR DISMISSAL AS MOOT, 293 U.S. 529.  BUT THE
RULE IS NOT APPLICABLE.  EVEN IN THE AREA OF NONPATENT TORTS, IT HAS
BEEN REPUDIATED BY STATUTE OR DECISION IN MANY IF NOT MOST STATES, SEE
PROSSER, SUPRA, AT 245, AND BY THE OVERWHELMING WEIGHT OF SCHOLARLY
AUTHORITY.  E.G., AMERICAN LAW INSTITUTE, RESTATEMENT OF TORTS (1939),
SEC. 885(1) AND COMMENTS B-D.  AND APPLICATION OF THE RULE TO
CONTRIBUTORY INFRINGEMENT HAS BEEN REJECTED BY THIS COURT.  IN BIRDSELL
V. SHALIOL, SUPRA, 112 U.S., AT 489, THE COURT APPLIED TO A PATENT CASE
THE PROPOSITION THAT "BY OUR LAW, JUDGMENT AGAINST ONE JOINT
TRESPASSER, WITHOUT FULL SATISFACTION, IS NO BAR TO A SUIT AGAINST
ANOTHER FOR THE SAME TRESPASS."  WHAT IS TRUE OF A JUDGMENT IS TRUE OF
A RELEASE.  SEE PROSSER, SUPRA, AT 241-244.  A RELEASE GIVEN A DIRECT
INFRINGER IN RESPECT OF PAST INFRINGEMENT, WHICH CLEARLY INTENDS TO
SAVE THE RELEASOR'S RIGHTS AGAINST A PAST CONTRIBUTORY INFRINGER, DOES
NOT AUTOMATICALLY SURRENDER THOSE RIGHTS.  THUS THE DISTRICT COURT WAS
CORRECT IN DENYING THAT "DEFENDANTS ARE ENTITLED TO THE FORTUITOUS
BENEFIT OF THE OLD JOINT TORT-FEASOR RULE."  THE MERE FACT THAT THE
AGREEMENT RELEASED FORD AND FORD'S CUSTOMERS FOR THEIR PAST
INFRINGEMENT DOES NOT NEGATE ARO'S LIABILITY FOR ITS PAST
INFRINGEMENT.  HENCE THE JUDGMENT OF THE COURT OF APPEALS, INSOFAR AS
IT RELATES TO FORD CAR REPLACEMENT-FABRIC SALES MADE BY ARO BEFORE JULY
21, 1955 - AND SUBJECT TO THE RESERVATION SET FORTH AT PP. 488-491,
SUPRA, WITH RESPECT TO SALES MADE BEFORE JANUARY 2, 1954 - IS AFFIRMED;
ACCORDINGLY, THE CASE IS REMANDED TO THE DISTRICT COURT FOR A
DETERMINATION OF DAMAGES AND FOR SUCH OTHER PROCEEDINGS AS THAT COURT
DEEMS APPROPRIATE. 

IV.  (FN18) 

THE CASE MUST NOW BE REMANDED FOR A DETERMINATION OF THE DAMAGES TO
BE RECOVERED FROM ARO IN RESPECT OF THE INFRINGING PRE-AGREEMENT
SALES.  IT IS TRUE THAT THE LOWER COURTS HAVE NOT YET EXPRESSLY
ADDRESSED THEMSELVES TO THE DAMAGES ISSUE, AND THAT THE PARTIES HAVE
NOT ARGUED IT HERE.  NEVERTHELESS, IT APPEARS THAT ALL CONCERNED IN
THIS LITIGATION HAVE SHARED A SPECIFIC ASSUMPTION AS TO THE MEASURE OF
DAMAGES THAT WOULD BE AVAILABLE TO CTR IF IT SUCCEEDED IN ESTABLISHING
INFRINGEMENT.  BECAUSE WE SHARPLY DISAGREE WITH THAT ASSUMPTION, AND
BECAUSE EXPRESSION OF OUR VIEWS MAY OBVIATE THE NEED UPON REMAND FOR
LENGTHY PROCEEDINGS BEFORE A MASTER IN THIS ALREADY OVER-LONG
LITIGATION, WE DEEM IT IN THE INTEREST OF EFFICIENT JUDICIAL
ADMINISTRATION TO EXPRESS THOSE VIEWS AT THIS TIME.  IN BRIEF, IT IS
OUR OPINION THAT THE FORD AGREEMENT, WHILE IT DOES NOT NEGATE ARO'S
LIABILITY FOR THE PRIOR SALES AS IT DOES FOR THE SUBSEQUENT ONES, DOES
HAVE THE EFFECT OF LIMITING THE AMOUNT THAT CTR CAN RECOVER FOR THE PRE
AGREEMENT INFRINGEMENT, AND PROBABLY OF PRECLUDING RECOVERY OF ANYTHING
MORE THAN NOMINAL DAMAGES. 

IF THE SUM PAID BY FORD FOR THE RELEASE OF IT AND ITS CUSTOMERS
CONSTITUTED FULL SATISFACTION TO AB FOR THE INFRINGING USE OF THE
PATENTED STRUCTURES, WE THINK IT CLEAR THAT CTR CANNOT NOW COLLECT
FURTHER PAYMENT FROM ARO FOR CONTRIBUTING TO THE SAME INFRINGING USE. 
THE RULE IS THAT: 

"PAYMENTS MADE BY ONE TORTFEASOR ON ACCOUNT OF A HARM FOR WHICH HE
AND ANOTHER ARE EACH LIABLE, DIMINISH THE AMOUNT OF THE CLAIM AGAINST
THE OTHER WHETHER OR NOT IT WAS SO AGREED AT THE TIME OF PAYMENT AND
WHETHER THE PAYMENT WAS MADE BEFORE OR AFTER JUDGMENT  ..  ."" 
RESTATEMENT OF TORTS, SUPRA, SEC. 885(3). 

IT HAS BEEN SAID THAT "ALL COURTS ARE AGREED" UPON SUCH A RULE. 
PROSSER, SUPRA, AT 246.  AND ITS APPLICABILITY TO CONTRIBUTORY
INFRINGEMENT CASES HAS BEEN CLEARLY INDICATED BY THIS COURT.  BIRDSELL
V. SHALIOL, SUPRA, 112 U.S., AT 488-489; SEE HAZELTINE CORP. V. ATWATER
KENT MFG. CO., 34 F.2D 50, 52 (D.C.E.D. PA. 1929).  INDEED, IF "ACTUAL
DAMAGES" OR "FULL COMPENSATION" PAID BY A MAKER-AND-SELLER CAN HAVE THE
EFFECT OF RELEASING A USER, AS WAS INDICATED IN BIRDSELL, SUCH A RESULT
SHOULD FOLLOW A FORTIORI WHERE, AS HERE, THE DAMAGES PAID WERE
EXPRESSLY STATED TO BE COMPENSATION FOR USE OF THE DEVICE, AND THE
PERSON SUBSEQUENTLY SUED IS A CONTRIBUTORY INFRINGER LIABLE MERELY FOR
CONTRIBUTING TO THE SAME INFRINGING USE.  IN SUCH A CASE FULL PAYMENT
BY OR ON BEHALF OF THE DIRECT INFRINGER LEAVES NOTHING TO BE COLLECTED
FROM THE CONTRIBUTORY INFRINGER.  WE THEREFORE FIND IT NECESSARY TO
CONSIDER WHETHER THE PAYMENT BY FORD TO AB CONSTITUTED FULL PAYMENT FOR
THE INFRINGING USE COMMITTED DIRECTLY BY FORD'S PURCHASERS AND
CONTRIBUTORILY BY ARO. 

THIS DEPENDS UPON THE MEASURE AND TOTAL AMOUNT OF RECOVERY TO WHICH
CTR AND AB ARE ENTITLED.  IN PARTICULAR, IF THEY ARE ENTITLED TO
RECOVER A ROYALTY FROM ARO ON THE INFRINGING SALES OF REPLACEMENT
FABRICS, IT IS CLEAR THAT NO SUCH RECOVERY WAS INCLUDED IN THE PAYMENT
FROM FORD, WHOSE REPRESENTATIVES "WEREN'T INTERESTED IN BUYING ANY SORT
OF A RELEASE OR LICENSE OR ANYTHING ELSE THAT WOULD HELP OUT THESE
REPLACEMENT TOP PEOPLE."  SEE NOTE 12, SUPRA.  CTR DOES CONTEND, AND
ALL INVOLVED IN THIS LITIGATION HAVE APPARENTLY ASSUMED, THAT A
JUDGMENT HOLDING ARO LIABLE FOR CONTRIBUTORY INFRINGEMENT WILL RESULT
IN RECOVERY OF SUCH A ROYALTY ON ARO'S SALES.  (FN19)  THIS IS THE
ASSUMPTION WITH WHICH WE DISAGREE.  IT IS OUR VIEW THAT DESPITE OUR
AFFIRMANCE OF THE JUDGMENT AGAINST ARO AS TO SALES MADE BEFORE THE
AGREEMENT DATE, NO SUCH ROYALTY WILL BE AVAILABLE TO CTR AS PART OF ITS
RECOVERY.  WE ARE, INDEED, DOUBTFUL THAT CTR CAN PROPERLY BE ALLOWED
RECOVERY OF ANYTHING MORE THAN NOMINAL DAMAGES FROM ARO. 

THE MEASURE OF RECOVERY FOR PATENT INFRINGEMENT IS GOVERNED BY 35
U.S.C. SEC. 284, WHICH PROVIDES:

"UPON FINDING FOR THE CLAIMANT THE COURT SHALL AWARD THE CLAIMANT
DAMAGES ADEQUATE TO COMPENSATE FOR THE INFRINGEMENT, BUT IN NO EVENT
LESS THAN A REASONABLE ROYALTY FOR THE USE MADE OF THE INVENTION BY THE
INFRINGER, TOGETHER WITH INTEREST AND COSTS AS FIXED BY THE COURT. 

"WHEN THE DAMAGES ARE NOT FOUND BY A JURY, THE COURT SHALL ASSESS
THEM.  IN EITHER EVENT THE COURT MAY INCREASE THE DAMAGES UP TO THREE
TIMES THE AMOUNT FOUND OR ASSESSED." 

IT IS PRESUMABLY THE LANGUAGE "IN NO EVENT LESS THAN A REASONABLE
ROYALTY" THAT HAS LED TO THE ASSUMPTION NOTED ABOVE.  BUT THAT
ASSUMPTION IGNORES THE FACT - CLEAR FROM THE LANGUAGE, THE LEGISLATIVE
HISTORY, AND THE PRIOR LAW - THAT THE STATUTE ALLOWS THE AWARD OF A
REASONABLE ROYALTY, OR OF ANY OTHER RECOVERY, ONLY IF SUCH AMOUNT
CONSTITUTES "DAMAGES" FOR THE INFRINGEMENT.  IT ALSO IGNORES THE
IMPORTANT DISTINCTION BETWEEN "DAMAGES" AND "PROFITS," AND THE
RELEVANCE OF THIS DISTINCTION TO THE 1946 AMENDMENT OF THE STATUTE. 

"IN PATENT NOMENCLATURE WHAT THE INFRINGER MAKES IS 'PROFITS'; WHAT
THE OWNER OF THE PATENT LOSES BY SUCH INFRINGEMENT IS 'DAMAGES.'" 
DUPLATE CORP. V. TRIPLEX SAFETY GLASS CO., 298 U.S. 448, 451.   PROFITS
AND DAMAGES HAVE TRADITIONALLY BEEN ALL-INCLUSIVE AS THE TWO BASIC
ELEMENTS OF RECOVERY.  PRIOR TO 1946, THE STATUTORY PRECURSOR OF THE
PRESENT SEC. 284 ALLOWED RECOVERY OF BOTH AMOUNTS, READING AS FOLLOWS: 

"UPON A DECREE BEING RENDERED IN ANY SUCH CASE FOR AN INFRINGEMENT
THE COMPLAINANT SHALL BE ENTITLED TO RECOVER, IN ADDITION TO THE
PROFITS TO BE ACCOUNTED FOR BY THE DEFENDANT, THE DAMAGES THE
COMPLAINANT HAS SUSTAINED THEREBY  ..  .""  R.S. SEC. 4921, AS AMENDED,
42 STAT. 392. 

BY THE 1946 AMENDMENT, ACT OF AUGUST 1, 1946, C. 726, SEC. 1, 60
STAT. 778, 35 U.S.C.  (1946 ED.), SECS. 67, 70, THE STATUTE WAS CHANGED
TO APPROXIMATELY ITS PRESENT FORM, WHEREBY ONLY "DAMAGES" ARE
RECOVERABLE.  (FN20)  THE PURPOSE OF THE CHANGE WAS PRECISELY TO
ELIMINATE THE RECOVERY OF PROFITS AS SUCH AND ALLOW RECOVERY OF DAMAGES
ONLY. 

"THE OBJECT OF THE BILL IS TO MAKE THE BASIS OF RECOVERY IN PATENT
INFRINGEMENT SUITS GENERAL DAMAGES, THAT IS, ANY DAMAGES THE
COMPLAINANT CAN PROVE, NOT LESS THAN A REASONABLE ROYALTY, TOGETHER
WITH INTEREST FROM THE TIME INFRINGEMENT OCCURRED, RATHER THAN PROFITS
AND DAMAGES."  H.R. REP. NO. 1587, 79TH CONG., 2D SESS. (1946), TO
ACCOMPANY H.R. 5311, AT 1-2; S. REP. NO. 1503, 79TH CONG., 2D SESS.
(1946), TO ACCOMPANY H.R. 5311, AT 2.  (FN21)    THERE CAN BE NO DOUBT
THAT THE AMENDMENT SUCCEEDED IN EFFECTUATING THIS PURPOSE; IT IS CLEAR
THAT UNDER THE PRESENT STATUTE ONLY DAMAGES ARE RECOVERABLE.  SEE,
E.G., RIC-WIL CO. V. E.B. KAISER CO., 179 F.2D 401, 407 (C.A. 7TH CIR.
1950), CERT. DENIED, 339 U.S. 958; LIVESAY WINDOW CO. V. LIVESAY
INDISTRIES, INC., 251 F.2D 469, 471-472 (C.A. 5TH CIR. 1958); LASKOWITZ
V. MARIE DESIGNER, INC., 119 F. SUPP. 541, 554-555 (D.C.S.D. CAL.
1954); CULLEN, 28 J. PAT.  OFF.  SOC. 838 (1946); WOLFF, 28 J. PAT. 
OFF.  SOC. 877 (1946). 

THE 1946 AMENDMENT IS OF CRUCIAL SIGNIFICANCE TO THE TOTAL AMOUNT OF
CTR'S RECOVERY AGAINST ARO AND HENCE TO THE AMOUNT, IF ANY, THAT MAY
STILL BE RECOVERED AFTER RECEIPT OF THE PAYMENT FROM FORD.   WHEN
RECOVERY OF THE INFRINGER'S PROFITS AS SUCH WAS ALLOWED, THE RULE WAS
THAT "COMPLAINANT'S DAMAGES ARE NO CRITERION OF DEFENDANT'S PROFITS";
IT WAS "IMMATERIAL THAT THE PROFITS MADE BY THE DEFENDANT WOULD NOT
HAVE BEEN MADE BY THE PLAINTIFF."  3 WALKER, PATENTS (DELLER ED. 1937),
SEC. 845, AT 2186.  AND IN CASES OF JOINT INFRINGEMENT THIS COURT WAS
SAID TO HAVE DECLARED THE DOCTRINE THAT, WHEREAS "WHEN THE TOTAL DAMAGE
SUSTAINED HAS BEEN PAID BY ONE TORT-FEASOR, THE DAMAGES CANNOT BE
DUPLICATED THROUGH A RECOVERY AGAINST ANOTHER," NEVERTHELESS, "EVERY
INFRINGER OF A PATENT RIGHT MAY BE MADE TO GIVE UP WHATEVER PROFITS HE
HAS DERIVED FROM THE INFRINGEMENT, AND  ..  ONNE INFRINGER IS NOT
RELIEVED BY PAYMENT BY ANOTHER INFRINGER, BUT EACH IS ACCOUNTABLE FOR
THE PROFITS WHICH HE HAS RECEIVED."  HAZELTINE CORP. V. ATWATER KENT
MFG. CO., SUPRA, 34 F.2D 50, 52.  UNDER SUCH A RULE, CTR MIGHT WELL
ARGUE THAT THE PAYMENT RECEIVED FROM FORD COULD HAVE NO EFFECT IN
PREVENTING IT FROM RECOVERING THE PROFITS MADE BY ARO - WHICH MIGHT
EVEN EXCEED THE AMOUNT OF A ROYALTY ON ARO'S SALES. 

BUT THE PRESENT STATUTORY RULE IS THAT ONLY "DAMAGES" MAY BE
RECOVERED.  THESE HAVE BEEN DEFINED BY THIS COURT AS "COMPENSATION FOR
THE PECUNIARY LOSS HE (THE PATENTEE) HAS SUFFERED FROM THE
INFRINGEMENT, WITHOUT REGARD TO THE QUESTION WHETHER THE DEFENDANT HAS
GAINED OR LOST BY HIS UNLAWFUL ACTS."  COUPE V. ROYER, 155 U.S. 565,
582.  THEY HAVE BEEN SAID TO CONSTITUTE "THE DIFFERENCE BETWEEN HIS
PECUNIARY CONDITION AFTER THE INFRINGEMENT, AND WHAT HIS CONDITION
WOULD HAVE BEEN IF THE INFRINGEMENT HAD NOT OCCURRED."  YALE LOCK MFG.
CO. V. SARGENT, 117 U.S. 536, 552.  THE QUESTION TO BE ASKED IN
DETERMINING DAMAGES IS "HOW MUCH HAD THE PATENT HOLDER AND LICENSEE
SUFFERED BY THE INFRINGEMENT.  AND THAT QUESTION IS PRIMARILY:  HAD THE
INFRINGER NOT INFRINGED, WHAT WOULD PATENT HOLDER-LICENSEE HAVE MADE?" 
LIVESAY WINDOW CO. V. LIVESAY INDUSTRIES, INC., SUPRA, 251 F.2D, AT
471. 

THUS, TO DETERMINE THE DAMAGES THAT MAY BE RECOVERED FROM ARO HERE,
WE MUST ASK HOW MUCH CTR SUFFERED BY ARO'S INFRINGEMENT - HOW MUCH IT
WOULD HAVE MADE IF ARO HAD NOT INFRINGED.  ASKING THAT QUESTION, WE MAY
ASSUME FIRST THAT THE AGREEMENT OF JULY 21, 1955, DID NOT EXIST AND
THAT AB HAD NOT COLLECTED A CENT FROM FORD.  EVEN ON THAT ASSUMPTION,
WE WOULD FIND IT DIFFICULT TO SEE WHY CTR'S DAMAGES SHOULD BE MEASURED
BY A ROYALTY ON ARO'S SALES.  CTR AND AB WERE NOT DEPRIVED OF SUCH A
ROYALTY BY ARO'S INFRINGEMENT, FOR THEY COULD NOT HAVE LICENSED ARO'S
SALES IN ANY EVENT; THEY WERE DENIED THE RIGHT TO DO SO IN ARO I, AND
WOULD STILL BE DENIED IT EVEN IF THEY HAD RECEIVED NO ROYALTIES ON THE
PATENTED COMBINATIONS THEMSELVES.  FOR THE RIGHT COULD NOT BE GRANTED
WITHOUT ALLOWING THE PATENTEE TO "DERIVE ITS PROFIT, NOT FROM THE
INVENTION ON WHICH THE LAW GIVES IT A MONOPOLY BUT FROM THE UNPATENTED
SUPPLIES WITH WHICH IT IS USED  ..  .""  MOTION PICTURE PATENTS CO. V.
UNIVERSAL FILM MFG. CO., 243 U.S. 502, 517; MERCOID CORP. V. MID
CONTINENT INVESTMENT CO., SUPRA, 320 U.S., AT 666-667.  IT WOULD BE
ABSURD TO SAY THAT WHAT CTR COULD NOT RECOVER FROM ARO IN ARO I AFTER
IT HAD LICENSED GENERAL MOTORS, IT COULD RECOVER HERE IF IT HAD STOOD
BY AND LET FORD INFRINGE - AS IT APPARENTLY DID, SEE P. 511, INFRA -
AND HAD THEN BROUGHT SUIT AGAINST ARO BEFORE SETTLING WITH FORD.  THE
RULES PROHIBITING EXTENSION OF THE PATENT MONOPOLY TO UNPATENTED
ELEMENTS ARE NOT SO READILY CIRCUMVENTED.  THIS DOES NOT MEAN, OF
COURSE, THAT CTR WOULD HAVE NO REMEDY FOR ARO'S CONTRIBUTORY
INFRINGEMENT.  IT COULD IN A PROPER CASE OBTAIN AN INJUNCTION; IT COULD
RECOVER SUCH DAMAGES AS HAD ACTUALLY BEEN SUFFERED FROM THE
CONTRIBUTORY INFRINGEMENT BY VIRTUE OF THE PROLONGATION OF THE USE OF
THE INFRINGING AUTOMOBILES; IT COULD IN A CASE OF WILLFUL OR BAD-FAITH
INFRINGEMENT RECOVER PUNITIVE OR "INCREASED" DAMAGES UNDER THE
STATUTE'S TREBLING PROVISION; AND IT COULD PERHAPS - WE EXPRESS NO VIEW
ON THE QUESTION - RECOVER FROM ARO A ROYALTY ON FORD'S SALES OF THE
PATENTED TOP-STRUCTURES, EVEN THOUGH SUCH DAMAGES WERE PRIMARILY CAUSED
NOT BY ARO'S INFRINGEMENT BUT BY FORD'S, IN A CASE WHERE THEY COULD NOT
BE RECOVERED FROM FORD OR FORD'S CUSTOMERS.  IT IS DIFFICULT TO
CONCEIVE OF ANY INSTANCE, HOWEVER, IN WHICH ACTUAL DAMAGES COULD
PROPERLY BE BASED ON A ROYALTY ON SALES OF AN UNPATENTED ARTICLE USED
MERELY TO REPAIR THE PATENTED STRUCTURE. 

IF CTR THUS COULD NOT COLLECT A ROYALTY ON ARO'S SALES IN THE ABSENCE
OF ANY PAYMENT FROM FORD, IT SURELY CANNOT DO SO HERE AFTER AB, IN
RETURN FOR $73,000, HAS RELEASED FORD AND FORD'S CUSTOMERS FROM
LIABILITY FOR THE DIRECT INFRINGEMENT TO WHICH ARO CONTRIBUTED.  ARE
THERE INDEED ANY ACTUAL DAMAGES THAT CTR CAN RECOVER FROM ARO AFTER
RECEIVING $73,000 FROM FORD?  THE ANSWER DEPENDS ON WHETHER CTR AND AB
SUFFERED ANY LOSS BY ARO'S INFRINGEMENT - WHICH DEPENDS IN TURN ON HOW
MUCH THEY WOULD HAVE MADE IF ARO HAD NOT INFRINGED.  BUT IN VIEW OF THE
MERELY CONTRIBUTORY NATURE OF ARO'S INFRINGEMENT, THIS LEADS IN TURN TO
THE QUESTION HOW MUCH CTR AND AB WOULD HAVE MADE IF FORD HAD NOT
INFRINGED; FOR IN THAT EVENT - AS WAS HELD IN ARO I WITH RESPECT TO THE
GENERAL MOTORS CARS, AND AS WE HAVE HELD IN PART II, SUPRA, WITH
RESPECT TO THE POST-AGREEMENT FORD CAR SALES - ARO COULD NOT HAVE
CONTRIBUTORILY INFRINGED.  IF FORD HAD NOT INFRINGED, AB WOULD HAVE
MADE A ROYALTY ON FORD'S SALES OF THE PATENTED TOP-STRUCTURES - AS IT
MADE SUCH A ROYALTY UNDER ITS LICENSE TO GENERAL MOTORS IN ARO I. THE
AMOUNT THAT WOULD THUS HAVE BEEN RECEIVED MUST BE COMPARED, HOWEVER,
WITH THE AMOUNT THAT AB IN FACT RECIEVED FROM FORD.  WE SHALL ASSUME
FOR THE PRESENT - ALTHOUGH CTR WILL HAVE AN OPPORTUNITY TO DISPROVE THE
ASSUMPTION UPON REMAND - THAT THE AMOUNT RECEIVED BY AB UNDER THE
AGREEMENT WAS THE SAME AMOUNT IT WOULD HAVE RECEIVED HAD IT LICENSED
FORD IN THE FIRST PLACE TO PRODUCE THE SAME NUMBER OF CONVERTIBLE
TOPS.  (FN22)  ON THIS ASSUMPTION, AB IS JUST AS WELL OFF NOW AS IT
WOULD HAVE BEEN IF FORD HAD NEVER INFRINGED THE PATENT.  AND SINCE IF
FORD HAD NOT INFRINGED, ARO COULD NOT HAVE CONTRIBUTORILY INFRINGED, IT
FOLLOWS THAT WHAT CTR AND AB WOULD HAVE MADE IF ARO HAD NOT INFRINGED
WAS PRECISELY WHAT THEY DID MAKE BY VIRTUE OF THE FORD AGREEMENT. 
THEIR PECUNIARY POSITION WAS NOT RENDERED ONE CENT WORSE BY THE TOTAL
INFRINGEMENT TO WHICH ARO CONTRIBUTED, AND HENCE THEY ARE NOT ENTITLED
ON THE ASSUMPTION STATED ABOVE AS TO THE PAYMENT BY FORD - TO ANYTHING
MORE THAN NOMINAL DAMAGES FROM ARO. 

TO ALLOW RECOVERY OF A ROYALTY ON ARO'S SALES AFTER RECEIPT OF THE
EQUIVALENT OF A ROYALTY ON FORD'S SALES, OR TO ALLOW ANY RECOVERY FROM
ARO AFTER RECEIPT OF FULL SATISFACTION FROM FORD, WOULD NOT ONLY
DISREGARD THE STATUTORY PROVISION FOR RECOVERY OF "DAMAGES" ONLY, BUT
WOULD BE AT WAR WITH VIRTUALLY EVERY POLICY CONSIDERATION IN THIS AREA
OF THE LAW.  IT WOULD ENABLE THE PATENTEE TO DERIVE A PROFIT NOT MERELY
ON UNPATENTED RATHER THAN PATENTED GOODS - AN ACHIEVEMENT PROSCRIBED BY
THE MOTION PICTURE PATENTS AND MERCOID CASES, SUPRA - BUT ON UNPATENTED
AND PATENTED GOODS.  IN THUS DOUBLING THE NUMBER OF REWARDS TO WHICH A
PATENTEE IS ENTITLED "UNDER OUR PATENT LAW AS WRITTEN," SEE MR. JUSTICE
BLACK CONCURRING IN ARO I, 365 U.S., AT 360, IT WOULD SERIOUSLY
RESTRICT THE PURCHASER'S LONG-ESTABLISHED RIGHT TO USE AND REPAIR AN
ARTICLE WHICH HE HAS LEGALLY PURCHASED AND FOR THE USE OF WHICH THE
PATENTEE HAS BEEN COMPENSATED.  SEE ADAMS V. BURKE, 17 WALL.  453.  THE
PATENTEE COULD ACHIEVE THIS RESULT, MOREOVER, BY THE SIMPLE TACTIC OF
NOT LICENSING OR SUING THE MANUFACTURER IN THE FIRST PLACE, BUT RATHER
STANDING BY WHILE THE DIRECT INFRINGEMENT OCCURS, THUS ALLOWING
CONTRIBUTORY INFRINGEMENTS TO SPRING UP AROUND HIM, WITH THE RESULT OF
BRINGING WITHIN THE REACH OF HIS MONOPOLY UNPATENTED ITEMS THAT WOULD
NEVER HAVE BEEN THERE IF THE MANUFACTURER HAD BEEN LICENSED FROM THE
START.  AND LITTLE IS SACRIFICED, FOR IT IS ALMOST POSSIBLE TO SUE OR
SETTLE WITH THE MANUFACTURER AT A LATER DATE.  THIS IN FACT SEEMS TO
HAVE BEEN THE STRATEGY THAT AB EMPLOYED HERE.  IT FIRST SENT FORD A
NOTICE OF INFRINGEMENT - ACCORDING TO THE DEPOSITION TESTIMONY OF AB'S
OWN COUNSEL - IN LATE 1953, "A DAY OR SO AFTER WE GOT THE PATENT."  YET
IT DID NOTHING TO STOP FORD'S INFRINGEMENT, AND DID NOT SETTLE WITH
FORD UNTIL 18 MONTHS LATER, BY WHICH TIME ALL THE AUTOMOBILES IN
QUESTION HAD BEEN MANUFACTURED.  IN VIEW OF THE APPARENTLY DELIBERATE
DELAY AND OF THE UNQUESTIONABLY SOLVENT STATUS OF THE INFRINGER, IT
INDEED SEEMS UNLIKELY THAT THE AMOUNT PAID FOR THE RELEASE WAS LESS
THAN WOULD HAVE BEEN PAID UNDER A LICENSE.  IN ANY EVENT, THE NOTION IS
INTOLERABLE THAT BY SUCH DELAY CTR AND AB COULD ENTITLE THEMSELVES TO
COLLECT FROM ARO WHAT THEY COULD NOT HAVE COLLECTED HAD FORD BEEN
LICENSED FROM THE START AS GENERAL MOTORS WAS. 

TO ACHIEVE SUCH A RESULT THROUGH USE OF THE CONTRIBUTORY INFRINGEMENT
DOCTRINE WOULD BE ESPECIALLY IRONIC, IN VIEW OF THE PURPOSE OF THAT
DOCTRINE AS SET FORTH IN CASE LAW AND COMMENTARY AND AS PRESENTED TO
THE CONGRESS IN URGING PASSAGE OF SEC. 271(C).  THAT PURPOSE IS
ESSENTIALLY, AS WAS STATED IN THE EARLIER VERSIONS OF THE BILL THAT
BECAME SEC. 271(C), "TO PROVIDE FOR THE PROTECTION OF PATENT RIGHTS
WHERE ENFORCEMENT AGAINST DIRECT INFRINGERS IS IMPRACTICABLE."  H.R.
5988, 80TH CONG., 2D SESS.; H.R. 3866, 81ST CONG., 1ST SESS.  AT THE
HEARINGS ON SEC. 271(C) ITSELF, MR. RICH, SEE N. 6, SUPRA, EXPLAINED TO
THE SUBCOMMITTEE THAT "THERE MAY BE TWENTY OR THIRTY PERCENT OF ALL THE
PATENTS THAT ARE GRANTED THAT CANNOT PRACTICALLY BE ENFORCED AGAINST
DIRECT INFRINGERS  ..  .""  HEARINGS, SUPRA, N. 6, AT 160.  (FN23)
SUCH A PURPOSE MIGHT HAVE BEEN APPLICABLE HERE IF CTR AND AB HAD BEEN
UNABLE TO ENFORCE THE PATENT AGAINST FORD (A RATHER UNLIKELY EVENT),
SINCE IT WOULD INDEED HAVE BEEN IMPRACTICAL TO SUE EVERY ONE OF THE CAR
OWNERS.  BUT WHERE THE PATENTEE HAS IN FACT ENFORCED THE PATENT AGAINST
SO SOLVENT AND ACCESSIBLE A DIRECT INFRINGER AS FORD, IT IS DIFFICULT
TO SEE WHY IT SHOULD THEN BE ALLOWED TO INVOKE THE CONTRIBUTORY
INFRINGEMENT DOCTRINE - DESIGNED FOR CASES "WHERE ENFORCEMENT AGAINST
DIRECT INFRINGERS IS IMPRACTICABLE" - SO AS TO ENFORCE THE PATENT A
SECOND TIME AND OBTAIN A REWARD THAT IT COULD NOT EXTRACT FROM A DIRECT
INFRINGER ALONE.  WHATEVER THE RESULT MIGHT HAVE BEEN UNDER THE OLD
"DAMAGES AND PROFITS" PROVISION, NO SUCH PERVERSION OF THE
CONGRESSIONAL PURPOSE IS POSSIBLE WITHIN THE RULE ALLOWING RECOVERY OF
"DAMAGES" ONLY. 

HENCE WE THINK THAT AFTER A PATENTEE HAS COLLECTED FROM OR ON BEHALF
OF A DIRECT INFRINGER DAMAGES SUFFICIENT TO PUT HIM IN THE POSITION HE
WOULD HAVE OCCUPIED HAD THERE BEEN NO INFRINGEMENT, HE CANNOT
THEREAFTER COLLECT ACTUAL DAMAGES FROM A PERSON LIABLE ONLY FOR
CONTRIBUTING TO THE SAME INFRINGEMENT.  THIS PRINCIPLE IS BUT AN
APPLICATION OF THE RULE THAT FULL SATISFACTION RECEIVED FROM ONE TORT
FEASOR PREVENTS FURTHER RECOVERY AGAINST ANOTHER.  IT IS CONSISTENT
WITH THE COURT'S OPINION IN BIRDSELL V. SHALIOL, SUPRA, 112 U.S., AT
488-489.  SEE ALSO GEORGE HAISS MFG. CO. V. LINK-BELT CO., 63 F.2D 479,
481 (C.A. 3D CIR. 1932); BUERK V. IMHAEUSER, NOTE 14, SUPRA, 4 FED.
CAS. 597.  AND IT IS SQUARELY IN ACCORD WITH A RECENT DECISION OF THE
COURT OF APPEALS FOR THE SECOND CIRCUIT.  FARRAND OPTICAL CO., INC., V.
UNITED STATES, 325 F.2D 328, 335 (C.A.2D CIR. 1963).  NOR IS THERE ANY
AUTHORITY, EVEN IN LOWER COURTS, DIRECTLY TO THE CONTRARY.  OF THE MANY
CASES CITED BY CTR FOR THE CORRECT PROPOSITION THAT USE OR REPAIR OF AN
INFRINGING STRUCTURE CONSTITUTES INFRINGEMENT, RELATIVELY FEW DEAL AT
ALL WITH THE QUESTION OF AMOUNT OF RECOVERY.  SOME OF THESE, IT IS
TRUE, DO ALLOW RECOVERY ON SALES OF INFRINGING MACHINES AND A FURTHER
RECOVERY ON SALES OF SPARE PARTS FOR THOSE MACHINES.  BUT THEY ARE ALL
DISTINGUISHABLE; EITHER THE PARTS THEMSELVES WERE PATENTED, (FN24) OR
THE INFRINGING PARTS-SUPPLIER HAD SOLD THE MACHINES AS WELL AND THUS
HAD ARGUABLY TAKEN THE SALES OF BOTH MACHINES AND PARTS AWAY FROM THE
PATENTEE, (FN25) OR THE OVERLAPPING RECOVERY ALLOWED FROM THE DIRECT
AND CONTRIBUTORY INFRINGERS WAS ONE OF PROFITS RATHER THAN DAMAGES. 
(FN26) 

IN THE FARRAND CASE, SUPRA, THE PAYMENT BY THE DIRECT INFRINGER WAS
MADE UNDER JUDICIAL DECREE, AND THERE COULD THUS BE NO QUESTION BUT
THAT IT REPRESENTED FULL COMPENSATION FOR THE INFRINGING USE.  WHERE A
PRIVATE RELEASE OF PAST INFRINGEMENT WHICH DOES NOT PURPORT TO RELEASE
OTHERS IS INVOLVED, THE ADEQUACY OF THE COMPENSATION MUST ALWAYS BE A
QUESTION OF FACT.  HENCE HERE, WHILE IT SEEMS UNLIKELY THAT FORD'S
PAYMENT UNDER THE AGREEMENT WAS ANY LESS THAN WOULD HAVE BEEN PAID
UNDER A LICENSE - THAT IS, ANYTHING LESS THAN FULL SATISFACTION TO AB
FOR THE INFRINGING USE COMMITTED DIRECTLY BY FORD'S PURCHASERS AND
CONTRIBUTORILY BY ARO - WE THINK THE CASE MUST NEVERTHELESS BE REMANDED
FOR FINDINGS ON THE QUESTION.  WE WOULD ALSO ALLOW THE LOWER COURTS TO
CONSIDER WHETHER ARO'S CONDUCT HAS BEEN SUCH AS TO WARRANT AN AWARD OF
PUNITIVE OR INCREASED DAMAGES, ALTHOUGH WE THINK THAT VERY UNLIKELY. 
                                           V. 

THE RESULT IS THAT THE JUDGMENT OF THE COURT OF APPEALS IS REVERSED
INSOFAR AS IT HOLDS ARO LIABLE FOR CONTRIBUTORY INFRINGEMENT WITH
RESPECT TO REPLACEMENT-FABRIC SALES MADE AFTER JULY 21, 1955.  THE
JUDGMENT IS AFFIRMED INSOFAR AS IT HOLDS ARO LIABLE WITH RESPECT TO
SALES MADE BEFORE THAT DATE, BUT SUBJECT TO THE RESERVATION BASED ON
THE KNOWLEDGE REQUIREMENT WITH RESPECT TO SALES MADE BEFORE JANUARY 2,
1954.  THE CASE IS REMANDED TO THE DISTRICT COURT FOR FURTHER
PROCEEDINGS CONSISTENT WITH THIS OPINION.  IT IS SO ORDERED.    FN1
THE REPAIR-VERSUS-RECONSTRUCTION ISSUE HAD BEEN THE ONLY ISSUE
EXPRESSLY CONSIDERED OR DECIDED BY THE COURT OF APPEALS ON REVIEW OF
THE DISTRICT COURT'S ORIGINAL INTERLOCUTORY JUDGMENT, SEE 270 F.2D, AT
202, AND WAS THUS THE FOCAL POINT OF THE BRIEFS AND ARGUMENTS HERE IN
ARO I. SEE, E.G., BRIEF FOR THE UNITED STATES AS AMICUS CURIAE, AT 2-3
AND N. 1; BUT SEE BRIEF FOR THE RESPONDENT, AT 73-76.  THAT THE COURT
CONSIDERED NO OTHER ISSUE, AND THUS DEALT ONLY WITH THE GENERAL MOTORS
AND NOT WITH THE FORD CARS, IS EVIDENT FROM ITS STATEMENT OF THE
"DETERMINATIVE QUESTION" AS BEING THAT OF REPAIR VERSUS RECONSTRUCTION,
365 U.S., AT 342; FROM ITS FAILURE TO CONSIDER THE BODY OF AUTHORITY
HOLDING THAT EVEN REPAIR OF AN INFRINGING ARTICLE CONSTITUTES
INFRINGEMENT; AND FROM, AMONG OTHER SUCH STATEMENTS IN ITS OPINION, SEE
ID., AT 344, 346, ITS RELIANCE ON THE PROPOSITION THAT "A LICENSE TO
USE A PATENTED COMBINATION INCLUDES THE RIGHT" TO REPAIR IT, ID., AT
345 - A PROPOSITION THAT OF COURSE WAS NOT APPLICABLE TO THE FORD CARS,
WHOSE OWNERS HAD PURCHASED THE PATENTED STRUCTURES FROM AN UNLICENSED
MANUFACTURER AND THUS HAD NO "LICENSE TO USE" THEM.  THE THREE OTHER
OPINIONS IN ARO I WERE LIKEWISE DIRECTED ENTIRELY TO THE ISSUE OF
REPAIR VERSUS RECONSTRUCTION, AND GAVE NO ATTENTION TO THE DIFFERENT
CONSIDERATIONS THAT WOULD COME INTO PLAY IN THE ABSENCE OF A LICENSE
FROM THE PATENTEE TO THE AUTOMOBILE MANUFACTURER.  THE CONCURRING
OPINION OF MR. JUSTICE BLACK, FOR EXAMPLE, RELIED ON THE PROPOSITION
THAT "ONE ROYALTY TO ONE PATENTEE FOR ONE SALE IS ENOUGH UNDER OUR
PATENT LAW AS WRITTEN," 365 U.S., AT 360, WHICH WOULD SEEM INAPPLICABLE
TO THE SITUATION PRESENTED BY THE FORD CARS, WHERE THE PATENTEE HAD NOT
RECEIVED ANY ROYALTY ON THE SALE OF THE PATENTED STRUCTURES.  SEE ALSO
ID., AT 354, 356, N. 9; AND SEE THE DISSENTING OPINION OF MR. JUSTICE
HARLAN.  365 U.S., AT 369, 373.  THE CONCURRING OPINION OF MR. JUSTICE
BRENNAN DID REFER TO THE PRESENCE IN THE CASE OF THE UNLICENSED FORD
CARS; IT STATED, 365 U.S., AT 368, THAT "THE JUDGMENT OF THE COURT OF
APPEALS MUST BE REVERSED, EXCEPT, HOWEVER, AS TO THE RELIEF GRANTED
RESPONDENT (CTR) IN RESPECT OF THE REPLACEMENTS MADE ON FORD CARS ..
.'   THAT THE AUTHOR OF THAT OPINION DID NOT UNDERSTAND THE COURT AS
HAVING RULED DIFFERENTLY ON THE FORD CAR QUESTION, OR AS HAVING RULED
ON IT AT ALL, IS SHOWN BY THE FACT THAT HE CONCURRED GENERALLY IN THE
RESULT, RATHER THAN CONCURRING IN PART AND DISSENTING IN PART.  THE
COURT SAID NOTHING TO INDICATE DISAGREEMENT WITH THIS INTERPRETATION OF
ITS OPINION AND DECISION. 

FN2  WE ALSO GRANTED ARO'S MOTION FOR LEAVE TO USE THE RECORD THAT
WAS BEFORE US IN ARO I. 372 U.S. 958. 

CTR HAS MADE A MOTION TO SETTLE THE RECORD, ASKING US TO DECLARE THAT
CERTAIN ITEMS DESIGNATED FOR PRINTING BY ARO DO NOT COMPRISE A PORTION
OF THE RECORD BEFORE THIS COURT.  WE POSTPONED FURTHER CONSIDERATION OF
THE MOTION UNTIL THE HEARING OF THE CASE ON THE MERITS.  375 U.S. 804. 
THE ITEMS IN QUESTION, WHICH WERE NOT INCLUDED IN THE RECORD IN ARO I,
CONSIST OF CERTAIN REQUESTS FOR ADMISSIONS AND ANSWERS THERETO, AND OF
MATERIALS INVOLVED IN AN ACCOUNTING PROCEEDING BEGUN AFTER THE ORIGINAL
AFFIRMANCE BY THE COURT OF APPEALS BUT SUBSEQUENTLY STAYED AND NEVER
COMPLETED.  A MOTION TO STRIKE THE SAME MATERIALS FROM THE RECORD WAS
MADE BY CTR IN THE COURSE OF THE SECOND APPEAL TO THE COURT OF APPEALS,
AND WAS DENIED BY THAT COURT "WITHOUT PREJUDICE TO RENEWAL IN ITS
BRIEF, AT THE ORAL ARGUMENT, OR UPON TAXATION OF COSTS."  CTR DID NOT
RENEW THE MOTION UPON BRIEF OR ORAL ARGUMENT IN THE COURT OF APPEALS,
BUT SAYS THAT IT STILL INTENDS TO DO SO UPON TAXATION OF COSTS IF COSTS
SHOULD EVER BE TAXED AGAINST IT BY THE COURT OF APPEALS.  BECAUSE OF
THESE EVENTS IN THE COURT OF APPEALS, THE MOTION IN THIS COURT IS ALSO
DENIED, WITHOUT PREJUDICE TO ITS RENEWAL UPON TAXATION OF COSTS IN THE
COURT OF APPEALS. 

FN3  THIS PART OF THE OPINION - WITH THE EXCEPTION OF THE POINT
DISCUSSED AT P. 488 AND NOTE 8, INFRA - EXPRESSES THE VIEWS OF JUSTICES
HARLAN, BRENNAN, STEWART, WHITE, AND GOLDBERG. 

FN4  THE CASE WILL BE CONSIDERED IN THIS PART OF THE OPINION WITHOUT
REFERENCE TO THE AGREEMENT MADE ON JULY 21, 1955, BETWEEN FORD AND AB,
AND THUS ON THE ASSUMPTION THAT FORD NEVER OBTAINED ANY AUTHORITY UNDER
THE PATENT.  THE EFFECT OF THAT AGREEMENT WILL BE CONSIDERED IN
SUCCEEDING PARTS OF THE OPINION. 

FN5  WE HAVE NO NEED TO CONSIDER WHETHER THE CAR OWNERS, IF SUED FOR
INFRINGEMENT BY THE PATENTEE, WOULD BE ENTITLED TO INDEMNITY FROM FORD
ON A BREACH OF WARRANTY THEORY.  IN FACT THEY WERE NOT SUED, AND WERE
RELEASED FROM LIABILITY BY THE AGREEMENT BETWEEN FORD AND AB. SEE
INFRA, AT 493-495. 

FN6  THE SECTION WAS DESIGNED TO "CODIFY IN STATUTORY FORM PRINCIPLES
OF CONTRIBUTORY INFRINGEMENT" WHICH HAD BEEN "PART OF OUR LAW FOR ABOUT
80 YEARS."  H.R. REP. NO. 1923 ON H.R. 7794, 82D CONG., 2D SESS., AT 9;
SEE ALSO CONGRESSMAN ROGERS' STATEMENT, HEARINGS BEFORE SUBCOMMITTEE
NO. 3 OF THE HOUSE JUDICIARY COMMITTEE ON H.R. 3760, 82D CONG., 1ST
SESS., AT 159: 

"THEN IN EFFECT THIS RECODIFICATION, PARTICULARLY AS TO SECTION 231
(WHICH BECAME SEC. 271 IN THE PATENT CODE OF 1952), WOULD POINT OUT TO
THE COURT, AT LEAST THAT IT WAS THE SENSE OF CONGRESS THAT WE REMOVE
THIS QUESTION OF CONFUSION AS TO WHETHER CONTRIBUTORY INFRINGEMENT
EXISTED AT ALL, AND STATE IN POSITIVE LAW THAT THERE IS SUCH A THING AS
CONTRIBUTORY INFRINGEMENT, OR AT LEAST IT BE THE SENSE OF CONGRESS BY
THE ENACTMENT OF THIS LAW THAT IF YOU HAVE IN THE MERCOID CASE (320
U.S. 661, 680) DONE AWAY WITH CONTRIBUTORY INFRINGEMENT, THEN WE
REINSTATE IT AS A MATTER OF SUBSTANTIVE LAW OF THE UNITED STATES AND
THAT YOU SHALL HEREAFTER IN A PROPER CASE RECOGNIZE OR HOLD LIABLE ONE
WHO HAS CONTRIBUTED TO THE INFRINGEMENT OF A PATENT. 

"THAT IS THE SUBSTANTIVE LAW THAT WE WOULD WRITE IF WE ADOPTED THIS

MR. GILES S. RICH, NOW JUDGE OF THE COURT OF CUSTOMS AND PATENT
APPEALS, THEN SPOKESMAN FOR PROPONENTS OF SEC. 271(C), ANSWERED THAT
THE STATEMENT OF THE BILL'S PURPOSE WAS "VERY EXCELLENT."  IBID.  SEE
ALSO 98 CONG. REC. 9323, 82D CONG., 2D SESS., JULY 4, 1952 (COLLOQUY OF
SENATORS SALTONSTALL AND MCCARRAN). 

FN7  ARO'S FACTORY MANAGER ADMITTED THAT THE FABRIC REPLACEMENTS IN
QUESTION NOT ONLY WERE SPECIALLY DESIGNED FOR THE FORD CONVERTIBLES BUT
WOULD NOT, TO HIS KNOWLEDGE, FIT THE TOP-STRUCTURES OF ANY OTHER CARS. 

FN8  THIS VIEW IS HELD BY THE CHIEF JUSTICE AND JUSTICES BLACK,
DOUGLAS, CLARK AND WHITE.  SEE THE OPINION OF MR. JUSTICE BLACK, POST,
PP. 524-528, AND OF MR. JUSTICE WHITE, POST, P. 514. 

JUSTICES HARLAN, BRENNAN, STEWART AND GOLDBERG DISSENT FROM THIS
INTERPRETATION OF THE STATUTE.  THEY ARE OF THE VIEW THAT THE KNOWLEDGE
CONGRESS MEANT TO REQUIRE WAS SIMPLY KNOWLEDGE THAT THE COMPONENT WAS
ESPECIALLY DESIGNED FOR USE IN A COMBINATION AND WAS NOT A STAPLE
ARTICLE SUITABLE FOR SUBSTANTIAL OTHER USE, AND NOT KNOWLEDGE THAT THE
COMBINATION WAS EITHER PATENTED OR INFRINGING.  THEIR REASONS MAY BE
SUMMARIZED AS FOLLOWS: 

(1)  NO OTHER RESULT WOULD HAVE BEEN CONSISTENT WITH THE
CONGRESSIONAL INTENTION TO CODIFY THE CASE LAW OF CONTRIBUTORY
INFRINGEMENT AS IT EXISTED PRIOR TO THIS COURT'S DECISION IN MERCOID
CORP. V. MID-CONTINENT INVESTMENT CO., 320 U.S. 661 - AND TO DO THIS
NOT ONLY IN GENERAL, SEE NOTE 6, SUPRA, AND P. 492, INFRA, BUT WITH
SPECIFIC REFERENCE TO THE KNOWLEDGE REQUIREMENT.  SEE HEARINGS, SUPRA,
NOTE 6, AT 159-160, 163-165.  UNDER THAT CASE LAW, LIABILITY WAS
ESTABLISHED BY A SHOWING THAT THE COMPONENT WAS SUITABLE FOR NO
SUBSTANTIAL USE OTHER THAN IN THE PATENTED COMBINATION, SINCE IT WAS
"THE DUTY OF THE DEFENDANT TO SEE TO IT THAT SUCH COMBINATIONS WHICH IT
IS INTENTIONALLY INDUCING AND PROMOTING SHALL BE CONFINED TO THOSE
WHICH MAY BE LAWFULLY ORGANIZED."  THOMSON-HOUSTON ELEC.  CO. V. OHIO
BRASS CO., SUPRA, 80 F., AT 720-723.  ACCORD, MERCOID CORP. V. MID
CONTINENT INVESTMENT CO., SUPRA, 320 U.S., AT 664; 3 WALKER, PATENTS
(DELLER ED. 1937), AT 1764-1765, AND CASES CITED.  SEE FREEDMAN V.
FRIEDMAN, 243 F.2D 364 (C.A. 4TH CIR. 1957). 

(2)  THE HOUSE COMMITTEE'S CHANGE IN THE LANGUAGE OF THE BILL
CONCERNING THE KNOWLEDGE REQUIREMENT, SEE THE OPINION OF MR. JUSTICE
BLACK, POST, PP. 524-528, WAS NOT INTENDED TO LIMIT LIABILITY TO CASES
WHERE THE ALLEGED CONTRIBUTORY INFRINGER HAD KNOWLEDGE OF THE PATENTED
OR INFRINGING NATURE OF THE COMBINATION; IT WAS INTENDED MERELY TO
ASSURE THAT THE STATUTE WOULD BE CONSTRUED TO REQUIRE KNOWLEDGE THAT
THE ARTICLE SOLD WAS A COMPONENT OF SOME COMBINATION AND WAS ESPECIALLY
DESIGNED FOR USE THEREIN, RATHER THAN SIMPLY KNOWLEDGE THAT THE ARTICLE
WAS BEING SOLD.  SEE, E.G., THE STATEMENT OF CONGRESSMAN CRUMPACKER,
HEARINGS, SUPRA, AT 175, OBJECTING TO THE ORIGINAL LANGUAGE ON THE
GROUND THAT "THE WAY IT IS PHRASED THE WORD 'KNOWINGLY' REFERS DIRECTLY
TO THE WORD 'SELLS.'"  SEE ALSO ID., AT 175-176.  WHILE THE
REPRESENTATIVES OF A MANUFACTURING CONCERN AND OF THE JUSTICE
DEPARTMENT DID URGE THE COMMITTEE TO ADOPT THE POSITION WHICH THE COURT
NOW HOLDS IT DID ADOPT, NONE OF THE CONGRESSMEN SAID ANYTHING TO
INDICATE AGREEMENT WITH THESE VIEWS OR DISAGREEMENT WITH THE CONTRARY
VIEW EXPRESSED BY THE SPOKESMAN FOR THE SPONSORS OF THE BILL.  THIS
VIEW, AS CLEARLY STATED ON SEVERAL OCCASIONS AT THE HEARINGS, WAS
THAT: 

"YOU KNOW THAT THE COMPONENT IS GOING INTO THAT MACHINE.  YOU DON'T
HAVE TO KNOW THAT IT IS PATENTED.  YOU DON'T HAVE TO KNOW THE NUMBER OF
THE PATENT, AND YOU DON'T HAVE TO KNOW THAT THE MACHINE THAT IT IS
GOING INTO CONSTITUTES AN INFRINGEMENT."  ID., AT 175; SEE ALSO ID., AT
160, 176. 

(3)  THE SUGGESTION THAT A PERSON CANNOT BE LIABLE EVEN FOR DIRECT
INFRINGEMENT WHEN HE HAS NO KNOWLEDGE OF THE PATENT OR THE INFRINGEMENT
IS CLEARLY REFUTED BY THE WORDS OF SEC. 271(A), WHICH PROVIDES THAT
"WHOEVER WITHOUT AUTHORITY MAKES, USES OR SELLS ANY PATENTED INVENTION
..  INNFRINGES THE PATENT," WITH NO MENTION OF ANY KNOWLEDGE
REQUIREMENT.  AND THE CASE LAW CODIFIED BY SEC. 271 HAS LONG RECOGNIZED
THE FUNDAMENTAL PROPOSITION THAT "TO CONSTITUTE AN INFRINGEMENT OF A
PATENT, IT IS NOT NECESSARY THAT THE INFRINGER SHOULD HAVE KNOWN OF THE
EXISTENCE OF THE PATENT AT THE TIME HE INFRINGED IT OR, KNOWING OF ITS
EXISTENCE, IT IS NOT NECESSARY THAT HE SHOULD HAVE KNOWN HIS DOINGS TO
CONSTITUTE AN INFRINGEMENT."  3 WALKER, PATENTS (DELLER ED. 1937), SEC.
453.  SEE, E.G., UNITED STATES V. BERDAN FIRE-ARMS MFG. CO., 156 U.S.
552, 566; SONTAG CHAIN STORES CO. V. NATIONAL NUT CO., 310 U.S. 281,
295; BOYDEN V. BURKE, 14 HOW.  575, 582. 

(4)  SECTION 287 OF 35 U.S.C., QUOTED IN THE OPINION OF MR. JUSTICE
BLACK, POST, P. 528, N. 14, DOES NOT REQUIRE A DIFFERENT CONCLUSION. 
THAT SECTION PREVENTS A PATENTEE FROM RECOVERING DAMAGES FOR
INFRINGEMENT UNLESS HE HAS MARKED THE PATENTED ARTICLE WITH NOTICE OF
THE PATENT.  SINCE A PATENTEE MAY HARDLY BE EXPECTED TO MARK THE
ARTICLE WHEN IT HAS NOT BEEN MANUFACTURED OR SOLD BY HIM, BUT RATHER BY
AN INFRINGER, THE SECTION HAS BEEN HELD NOT TO APPLY TO SUCH A
SITUATION.  WINE RY. APPLIANCE CO. V. ENTERPRISE RY. EQUIP.  CO., 297
U.S. 387.  THAT OF COURSE IS THE SITUATION HERE WITH RESPECT TO THE
FORD CARS. 

FN9  ARO DOES CONTEND HERE THAT RECOVERY BY CTR IS PRECLUDED BY
MISUSE OF THE PATENT, AND ALSO THAT SUCH MISUSE ENTITLES ARO TO AN
AWARD OF TREBLE DAMAGES FOR VIOLATION OF THE ANTITRUST LAWS.  ALTHOUGH
THE POINT WAS ARGUABLY RAISED BY ARO'S ORIGINAL ANSWER AND
COUNTERCLAIM, AND WAS DECIDED AGAINST ARO IN THE ORIGINAL OPINION OF
THE DISTRICT COURT, 119 U.S.P.Q., AT 122, N. 1, IT WAS SUBSTANTIALLY
ABANDONED ON THE FIRST APPEAL, AND HENCE WAS NOT RULED ON IN THE FIRST
OPINION OF THE COURT OF APPEALS.  ACCORDINGLY, THIS COURT'S OPINION IN
ARO I STATED THAT PATENT MISUSE "IS NOT AN ISSUE IN THIS CASE."  365
U.S., AT 344, N. 10; SEE ALSO THE DISSENTING OPINION OF MR. JUSTICE
HARLAN, 365 U.S., AT 376-377 AND N. 5.  ON REMAND, AFTER THE DISTRICT
COURT HAD DISMISSED WITHOUT PREJUDICE THE COUNTERCLAIM ALLEGING MISUSE,
THE COURT OF APPEALS HELD THAT NEITHER THE DEFENSE BASED ON MISUSE NOR
THE COUNTERCLAIM WAS IN THE CASE, THE DEFENSE HAVING BEEN "CLEARLY
ABANDONED" AND THE COUNTERCLAIM NEVER HAVING BEEN ADEQUATELY PLEADED. 
312 F.2D, AT 58.  WE DO NOT FIND ERROR IN THIS RULING, AND THUS HAVE NO
OCCASION TO CONSIDER ARO'S ALLEGATIONS OF PATENT MISUSE. 

FN10  WE HAVE NO DOUBT THAT SEC. 271(C) AS SO CONSTRUED AND APPLIED,
WITHIN THE LIMITATIONS SET FORTH IN THE SUCCEEDING PORTIONS OF THIS
OPINION, IS CONSTITUTIONAL. 

FN11  THIS PART OF THE OPINION EXPRESSES THE VIEWS OF JUSTICES
BRENNAN, STEWART, WHITE, AND GOLDBERG.  MR. JUSTICE HARLAN CONCURS IN
THE RESULT. 

FN12  COUNSEL FOR AB TESTIFIED ON DEPOSITION AS FOLLOWS: 

"I  ..  DEEFINITELY TOLD THEM THAT THERE WERE THESE OTHER REPLACEMENT
TOP MANUFACTURERS AND THAT IF WE WERE LEFT IN A POSITION TO COLLECT
ROYALTY FROM THEM, THAT OBVIOUSLY WE COULD GIVE FORD A LOWER RATE, AND
THAT IS WHAT FORD SAID THEY WANTED, THAT THEY WEREN'T INTERESTED IN
BUYING ANY SORT OF A RELEASE OR LICENSE OR ANYTHING ELSE THAT WOULD
HELP OUT THESE REPLACEMENT TOP PEOPLE  ..  .""    FN13  THE DISTRICT
COURT TERMED THE AGREEMENT A "FUTURE LICENSE" IN THIS RESPECT, AND AB'S
COUNSEL ON MORE THAN ONE OCCASION REFERRED TO IT AS A "RELEASE OR
LICENSE."  IT IS DIFFICULT TO SEE WHY IT SHOULD NOT BE CONSIDERED A
LICENSE INSOFAR AS IT RELATED TO FUTURE ACTIVITY, SEE DE FOREST RADIO
TEL. CO. V. UNITED STATES, 273 U.S. 236, 241, ALTHOUGH OF COURSE ITS
PROPER LABEL IS LESS IMPORTANT THAN ITS CLEAR EFFECT OF AUTHORIZING
FORD'S PURCHASERS TO MAKE FULL USE OF THE PATENTED STRUCTURES. 

FN14  IN BIRDSELL THE COURT RELIED ON THE FACT THAT ONLY NOMINAL
DAMAGES HAD BEEN AWARDED IN THE PRIOR SUIT.  112 U.S., AT 489.  IN
UNION TOOL THE COURT'S STATEMENT THAT THE PATENTEE HAD NOT "RECEIVED
ANY COMPENSATION WHATEVER FOR THE INFRINGEMENT BY USE OF THESE
MACHINES," 259 U.S., AT 113, WAS APPARENTLY BASED ON THE FACT THAT THE
DAMAGES AND PROFITS AWARDED BY THE PRIOR JUDGMENT HAD NOT YET BEEN
CALCULATED OR PAID.  SEE BRIEF FOR RESPONDENT, AT 37, AND THE OPINION
OF THE COURT OF APPEALS, 265 F. 669, 673 (C.A. 9TH CIR. 1920).  COMPARE
BUERK V. IMHAEUSER, 4 FED. CAS. 597 (NO. 2,108)(C.C.S.D.N.Y. 1876), 4
FED. CAS. 594 (NO. 2,107)(C.C.S.D.N.Y. 1876). 

FN15  THE DATE OF THE SALE BY ARO RATHER THAN THE DATE OF THE
INSTALLATION IN THE CAR BY THE PURCHASER FROM ARO SHOULD CONTROL, SINCE
IT IS THE ACT OF SALE THAT IS MADE CONTRIBUTORY INFRINGEMENT BY SEC.
271(C). 

FN16 SINCE ARO'S INFRINGEMENT THUS TERMINATED IN 1955, IT WOULD SEEM
THAT THE PERPETUAL INJUNCTION INCLUDED IN THE INTERLOCUTORY JUDGMENT
WOULD NO LONGER BE A PROPER ELEMENT OF RELIEF. 

FN17  THIS PART OF THE OPINION, LIKE PART I, EXPRESSES THE VIEWS OF
JUSTICES HARLAN, BRENNAN, STEWART, WHITE AND GOLDBERG. 

FN18  THIS PART OF THE OPINION EXPRESSES THE VIEWS OF JUSTICES
BRENNAN, STEWART, WHITE, AND GOLDBERG.  MR. JUSTICE HARLAN CONSIDERS
THAT THE MATTERS HERE DEALT WITH ARE NOT RIPE FOR DECISION AND SHOULD
BE LEFT FOR DETERMINATION IN THE FUTURE COURSE OF THIS LITIGATION. 

FN19  AB'S COUNSEL ASSERTED ON DEPOSITION:  "I BELIEVE WE WOULD HAVE
THE RIGHT TO ARRIVE AT ROYALTY AND OTHERWISE CONSIDER AS PATENTED THE
REPLACEMENT TOP  ..  .""  WHEN ASKED BY THE DISTRICT COURT AT A HEARING
CONCERNING A JUDGMENT BOND HOW MUCH HE EXPECTED TO RECOVER, CTR'S
COUNSEL REPLIED:  "I SUPPOSE A REASONABLE ROYALTY WOULD BE 5 PER CENT."
CONSIDERABLE EVIDENCE WAS INTRODUCED BEFORE THE MASTER AS TO ARO'S
INCOME FROM INFRINGING SALES AND AS TO ROYALTY RATES FIXED IN LICENSES
GRANTED BY CTR OR AB TO OTHER REPLACEMENT-FABRIC SUPPLIERS.  SEE ALSO
THE STATEMENT OF AB'S COUNSEL QUOTED IN NOTE 12, SUPRA, AND THE
STATEMENT IN CTR'S BRIEF QUOTED SUPRA, AT 496. 

FN20  IN THE 1952 CODIFICATION, SECS. 67 AND 70 OF THE 1946 CODE WERE
CONSOLIDATED IN THE PRESENT SEC. 284.  THE STATED PURPOSE WAS MERELY
"REORGANIZATION IN LANGUAGE TO CLARIFY THE STATEMENT OF THE STATUTES." 
H.R. REP. NO. 1923, 82D CONG., 2D SESS., AT 10, 29. 

FN21  SEE ALSO HEARING BEFORE THE HOUSE COMMITTEE ON PATENTS, 79TH
CONG., 2D SESS., ON H.R. 5231 (SUBSEQUENTLY AMENDED, REINTRODUCED, AND
REPORTED AS H.R. 5311), JAN. 29, 1946, E.G., PP. 2-3. 

FN22  NO ANSWER WAS GIVEN BY AB'S COUNSEL TO THE QUESTION HOW THE
$73,000 FIGURE HAD BEEN ARRIVED AT, EXCEPT TO SAY THAT IT WOULD HAVE
BEEN LARGER IF IT HAD BEEN INTENDED TO RELEASE CONTRIBUTORY INFRINGERS
AS WELL.  BUT THE FACT THAT PARAGRAPH 3 OF THE AGREEMENT PROVIDES FOR A
5% ROYALTY ON REPLACEMENT TOPS, AS THE GENERAL MOTORS LICENSE AGREEMENT
ALSO APPARENTLY DID, SUGGESTS THAT THE EFFECTIVE ROYALTY RECEIVED FROM
FORD FOR THE RIGHT TO MAKE AND SELL THE PATENTED TOP-STRUCTURES WAS THE
SAME AS THAT RECEIVED FROM GENERAL MOTORS. 

FN23  SEE ALSO THOMSON-HOUSTON ELEC.  CO. V. OHIO BRASS CO., SUPRA,
80 F. 712, 721; REP.  ATTY. GEN. NAT. COMM. TO STUDY THE ANTITRUST
LAWS, SUPRA, AT 252; RICH, 21 GEO. WASH. L. REV.  521, 542 (1953);
EASTMAN, 48 MICH. L. REV. 183, 187 (1949); NOTE, 66 YALE L.J. 132
(1956). 

FN24  REED ROLLER BIT CO. V. HUGHES TOOL CO., 12 F.2D 207, 209, 210
(C.A. 5TH CIR. 1926). 

FN25  NATIONAL BRAKE & ELEC.  CO. V. CHRISTENSEN, 38 F.2D 721 (C.A.
7TH CIR. 1930); GRAHAM V. MASON, 10 FED. CAS. 930 (NO. 5,672)(C.C.D.
MASS. 1872). 

FN26  E.G., CONMAR PRODUCTS CORP. V. TIBONY, 63 F. SUPP. 372, 374
(D.C.E.D.N.Y. 1945). 

MR. JUSTICE WHITE, CONCURRING. 

I AGREE WITH MY BROTHER BLACK THAT THE PLAIN LANGUAGE AND LEGISLATIVE
HISTORY OF SEC. 271(C) REQUIRE THE ALLEGED CONTRIBUTORY INFRINGER TO
HAVE KNOWLEDGE OF THE INFRINGING NATURE OF THE COMBINATION TO WHICH HE
IS CONTRIBUTING A PART.  OTHERWISE I SHARE MR. JUSTICE BRENNAN'S VIEW
OF THIS CASE. 

CASE OF THE DIRECT INFRINGER WHO MAKES OR USES THE PATENTED COMBINATION
AND SEC. 287 DOES NOT SAY THAT ONE WHO MAKES OR USES WITHOUT KNOWLEDGE
IS NOT INFRINGING.  IT SPECIFIES THAT THE "INFRINGER" IS NOT LIABLE FOR
DAMAGES UNTIL NOTICE OF THE "INFRINGEMENT."  IN ANY EVENT, SEC. 287, AS
MY BROTHER BRENNAN SAYS, IS NOT APPLICABLE HERE UNDER WINE RY.
APPLIANCE CO. V. ENTERPRISE RY. EQUIPMENT CO., 297 U.S. 387, BECAUSE
THE PATENTEE HAS NOT MANUFACTURED THE ARTICLE AND HAS HAD NO
OPPORTUNITY TO MARK IT IN ACCORDANCE WITH SEC. 287. 

HERE THE PATENTEE GAVE NOTICE TO ARO AND I THINK IT IS LIABLE ON FORD
TOPS SOLD BY IT AFTER THAT DATE, BUT NOT BEFORE, UNLESS IT HAD
KNOWLEDGE FROM OTHER SOURCES.  AFTER THE NOTICE DATE, THE KNOWLEDGE
REQUIREMENT OF SEC. 271(C) WAS SATISFIED AND THE USE OF FORD CARS BY
THE OWNERS THEREOF WAS DIRECT INFRINGEMENT PROVIDING THE NECESSARY
PREDICATE FOR CONTRIBUTORY INFRINGEMENT UNDER SEC. 271(C). 

MR. JUSTICE BLACK, WITH WHOM THE CHIEF JUSTICE, MR. JUSTICE DOUGLAS
AND MR. JUSTICE CLARK JOIN, DISSENTING. 

FOR A NUMBER OF REASONS I WOULD REVERSE THE JUDGMENT, AND REINSTATE
THE ORDER OF DISMISSAL OF THE DISTRICT COURT. 

                   I. 

WITH REGRET I FIND IT NECESSARY TO DISAGREE WITH THE INFERENCES THE
COURT DRAWS FROM THE PAST HISTORY OF THIS CASE.  RESPONDENT CONVERTIBLE
HELD EXCLUSIVE RIGHTS FOR MASSACHUSETTS IN A COMBINATION PATENT ON A
CONVERTIBLE AUTOMOBILE TOP, THE COMBINATION CONSISTING OF WOOD OR METAL
SUPPORTS, A FABRIC COVER, AND A MECHANISM TO SEAL THE FABRIC AGAINST
THE SIDE OF THE AUTOMOBILE IN ORDER TO KEEP OUT WEATHER.  NONE OF THE
ELEMENTS OF THE COMBINATION WAS PATENTED OR PATENTABLE.  DURING THE
YEARS IN QUESTION GENERAL MOTORS CORPORATION AND THE FORD MOTOR COMPANY
MANUFACTURED AUTOMOBILES WITH TOPS LIKE THOSE DESCRIBED IN THE PATENT. 
GENERAL MOTORS HAD A LICENSE FROM CONVERTIBLE AUTHORIZING IT TO DO SO.
FORD DID NOT.  PETITIONER ARO MANUFACTURED AND SOLD FABRIC REPLACEMENT
COVERS WHICH WERE PURCHASED BY OWNERS OF BOTH GENERAL MOTORS AND FORD
CARS WHEN THE COVERS ORIGINALLY INSTALLED ON THE CARS WORE OUT. 
CONVERTIBLE SETTLED A CLAIM IT MADE AGAINST FORD FOR DIRECT
INFRINGEMENT, AND DID NOT SUE FORD DEALERS OR FORD CAR OWNERS.  IT
MAINTAINED ALSO THAT THE INDIVIDUAL GENERAL MOTORS AND FORD CAR OWNERS
WHO REPLACED THEIR WORN-OUT COVERS WITH ARO REPLACEMENT COVERS BY DOING
SO DIRECTLY INFRINGED THE COMBINATION PATENT.  CONVERTIBLE DID NOT SUE
THE INDIVIDUAL CAR OWNERS WHO PATCHED OR REPLACED THE WORN-OUT FABRIC,
BUT IT DID BRING THIS SUIT AGAINST ARO, CHARGING THAT ARO BY SELLING
THE REPLACEMENT FABRIC THEREBY HELPED THE INDIVIDUAL CAR OWNERS
INFRINGE AND SO BECAME LIABLE AS A CONTRIBUTORY INFRINGER UNDER 35
U.S.C. SEC. 271(C).  (FN1)  THE DISTRICT COURT HELD THAT THE PATENT WAS
VALID AND THAT ARO HAD BEEN GUILTY OF CONTRIBUTORY INFRINGEMENT; IT
ENJOINED ARO FROM FURTHER ALLEGED INFRINGEMENTS AND ORDERED AN
ACCOUNTING TO DETERMINE THE DAMAGES DUE CONVERTIBLE FROM ARO'S SALES OF
REPLACEMENT FABRICS TO OWNERS BOTH OF GENERAL MOTORS AND OF FORD CARS. 
119 U.S.P.Q. 122.  THE COURT OF APPEALS AFFIRMED THE JUDGMENT, 270 F.2D
200, AND WE GRANTED CERTIORARI TO REVIEW IT. WE REVERSED THE JUDGMENT. 
ARO MFG. CO. V. CONVERTIBLE TOP REPLACEMENT CO., 365 U.S. 336.  WE
DENIED A PETITION FOR REHEARING OR ALTERNATIVE MOTION FOR AMENDMENT OR
CLARIFICATION IN WHICH CONVERTIBLE ARGUED THAT OUR REVERSAL APPLIED
ONLY TO REPLACEMENTS OF GENERAL MOTORS, AND NOT FORD, CARS.  365 U.S.
890. 

WHEN THE DISTRICT COURT RECEIVED THE MANDATE OF THIS COURT, IT
ENTERED JUDGMENT DISMISSING THE COMPLAINT ON THE GROUND THAT THIS
COURT'S DECISION AND MANDATE HAD REVERSED THE PRIOR JUDGMENT IN ITS
ENTIRETY.  BUT CONVERTIBLE APPEALED THE DISMISSAL TO THE COURT OF
APPEALS.  THAT COURT SAID: 

"THE PUZZLING QUESTION IS WHETHER THE SUPREME COURT IN REVERSING THIS
COURT INTENDED TO REVERSE IN TOTO OR ONLY TO REVERSE INSOFAR AS
REPLACEMENT TOPS FOR GENERAL MOTORS CARS WERE CONCERNED."  312 F.2D 52,
56 (C.A. 1ST CIR.). 

THEREUPON THE COURT OF APPEALS, REVERSING THE DISTRICT COURT'S ACTION
TAKEN IN OBEDIENCE TO THIS COURT'S MANDATE, HELD THAT THIS COURT WHEN
IT SAID "REVERSED" AT THE END OF ITS OPINION HAD MEANT TO REVERSE, NOT
THE ENTIRE JUDGMENT, BUT ONLY THAT PART OF THE JUDGMENT ENJOINING ARO
FROM SELLING REPLACEMENT FABRICS FOR GENERAL MOTORS CARS, WHICH WERE
MADE UNDER LICENSES, AND ORDERING AN ACCOUNTING FOR SUCH SALES IN THE
PAST; THE COURT OF APPEALS SAID THAT THIS COURT HAD IN EFFECT AFFIRMED
THE EARLIER JUDGMENT INSOFAR AS THAT JUDGMENT CONCERNED REPLACEMENTS
FOR FORD FABRICS.  THIS COURT TODAY, IN AFFIRMING THE COURT OF APPEALS'
JUDGMENT, SAYS: 

"OUR DECISION DEALT, HOWEVER, ONLY WITH THE GENERAL MOTORS AND NOT
WITH THE FORD CARS."  ANTE, P. 479. 

THE COURT'S STATEMENT OF WHAT WE DID IS, I THINK, COMPLETELY REFUTED
BY THE RECORD IN THIS CASE. 

THE OPINION OF THE COURT WAS DELIVERED BY MR. JUSTICE WHITTAKER. 
THAT OPINION WAS JOINED BY THE CHIEF JUSTICE, MR. JUSTICE BLACK, MR.
JUSTICE DOUGLAS, AND MR. JUSTICE CLARK.  THE GROUNDS FOR THE COURT'S
OPINION, AS I SHALL POINT OUT, APPLIED ALIKE TO THE REPAIR OF FORD CARS
WHICH HAD ORIGINALLY BEEN SOLD BY THE MANUFACTURER WITHOUT A LICENSE
FROM CONVERTIBLE, AND TO GENERAL MOTORS CARS THAT HAD BEEN SOLD WITH
SUCH A LICENSE.  MR. JUSTICE BRENNAN, HOWEVER, DISSENTED FROM THE
GROUNDS OF THE COURT'S OPINION ALTHOUGH HE CONCURRED IN THE JUDGMENT OF
REVERSAL "EXCEPT, HOWEVER, AS TO THE RELIEF GRANTED RESPONDENT IN
RESPECT OF THE REPLACEMENTS MADE ON FORD CARS BEFORE JULY 21, 1955." 
365 U.S., AT 368.  MR. JUSTICE HARLAN, JOINED BY JUSTICES FRANKFURTER
AND STEWART, DISSENTED FROM THE COURT'S OPINION AND FROM ITS JUDGMENT
IN ITS ENTIRETY.  365 U.S., AT 369.  HIS GROUNDS FOR DISSENTING FROM
THE COURT'S OPINION WERE SUBSTANTIALLY THE SAME AS THOSE OF MR. JUSTICE
BRENNAN.  (FN2)  THE DIFFERENCE BETWEEN MR. JUSTICE HARLAN'S DISSENT
AND MR. JUSTICE BRENNAN'S OPINION CONCURRING IN THE COURT'S JUDGMENT
"EXCEPT  ..  ASS TO THE RELIEF GRANTED  ..  INN RESPECT OF THE
REPLACEMENTS MADE ON FORD CARS" WAS A VERY MINOR ONE:  BOTH AGREED,
CONTRARY TO WHAT THE COURT DECIDED, THAT A PERSON COULD BE HELD LIABLE
FOR CONTRIBUTORY INFRINGEMENT OF A COMBINATION PATENT, EVEN THOUGH HE
FURNISHED A REPLACEMENT FOR ONLY A PART OF THE COMBINATION, IF THE PART
REPLACED WAS IMPORTANT ENOUGH FOR THE SUBSTITUTION TO AMOUNT TO
"RECONSTRUCTION" RATHER THAN MERELY "REPAIR" OF THE DEVICE; MR. JUSTICE
BRENNAN, HOWEVER, BELIEVED THAT THE QUESTION WHETHER THERE HAD BEEN A
"RECONSTRUCTION" WAS FOR THIS COURT TO DECIDE AS A MATTER OF LAW AND
THAT THERE HAD NOT BEEN A "RECONSTRUCTION" HERE, WHILE MR. JUSTICE
HARLAN SAID THAT THE TRIAL COURT'S FINDINGS THAT THERE HAD BEEN A
"RECONSTRUCTION" WERE DECISIVE. 

THE DIFFERENCE IN THE APPROACH OF JUSTICES HARLAN AND BRENNAN FROM
THAT OF MR. JUSTICE WHITTAKER, WRITING FOR THE COURT, IS RESPONSIBLE,
AS I READ THE RECORD, FOR THE FACT THAT WHILE THE COURT REVERSED THE
FORMER JUDGMENT IN ITS ENTIRETY, MR. JUSTICE BRENNAN WAS WILLING TO
REVERSE IT ONLY AS TO REPLACEMENT FABRICS SOLD FOR GENERAL MOTORS
CARS.  MR. JUSTICE BRENNAN BELIEVED THAT SINCE THE LICENSED GENERAL
MOTORS CARS AS BUILT DID NOT DIRECTLY INFRINGE THE PATENT AND ARO
CONTRIBUTED TO WHAT DID NOT AMOUNT TO A "RECONSTRUCTION" OF THEM, ARO
AS TO THEM WAS NOT A CONTRIBUTORY INFRINGER; THE FORD CARS, HOWEVER,
WERE BUILT BY THE MANUFACTURER WITHOUT A LICENSE FROM CONVERTIBLE, SO
FORD AND THE PURCHASERS WHO USED ITS CARS WERE ALLEGEDLY DIRECT
INFRINGERS, AND SINCE ARO HELPED FORD OWNERS CONTINUE TO USE INFRINGING
TOPS IT WAS A CONTRIBUTORY INFRINGER EVEN THOUGH THE REPLACEMENT COVERS
DID NOT "RECONSTRUCT" THE TOPS.  THE COURT, HOWEVER, IN MR. JUSTICE
WHITTAKER'S OPINION, REJECTED COMPLETELY THE NOTION THAT THERE COULD
EVER BE WITHIN THE MEANING OF SEC. 271(C) ANY CONTRIBUTORY INFRINGEMENT
- WHETHER BASED ON A FINDING OF "RECONSTRUCTION" OR ON SOME OTHER
THEORY - IN A CASE LIKE THIS ONE, WHERE THE PATENT WAS MERELY A
COMBINATION PATENT AND THE PARTY WHICH WAS SUED FOR INFRINGEMENT HAD
SOLD REPLACEMENTS FOR ONLY A PART OF THE COMBINATION.  THE COURT'S
OPINION RELIED ON THE FACT THAT THE FABRIC ARO USED WAS NOT ITSELF
PATENTED, THAT CONVERTIBLE HAD MADE NO CLAIM TO INVENTION BASED ON THE
FABRIC OR ITS SHAPE, PATTERN OR DESIGN, AND THAT A COMBINATION PATENT
GAVE ITS OWNER A MONOPOLY ON NOTHING BUT THE COMBINATION AS A WHOLE,
SINCE, MR. JUSTICE WHITTAKER SAID, "IF ANYTHING IS SETTLED IN THE
PATENT LAW, IT IS THAT THE COMBINATION PATENT COVERS ONLY THE TOTALITY
OF THE ELEMENTS IN THE CLAIM AND THAT NO ELEMENT, SEPARATELY VIEWED, IS
WITHIN THE GRANT."  365 U.S., AT 344.  THE EFFECT OF THE COURT'S
HOLDING WAS THAT SINCE THE TOP FABRIC WAS NOT ITSELF PATENTED,
CONVERTIBLE COULD NOT EXTEND ITS MONOPOLY PRIVILEGES REGARDING THE
COMBINATION AS A WHOLE TO THE UNPATENTED FABRIC COVER PART OF THE TOP. 
OBVIOUSLY, THIS HOLDING OF THE COURT AND THE REASONS MR. JUSTICE
WHITTAKER GAVE FOR IT DID NOT DEPEND ON WHETHER THE FABRIC WAS USED ON
A FORD OR ON A GENERAL MOTORS CAR.    MR. JUSTICE WHITTAKER AND THE
FOUR MEMBERS OF THE COURT WHO JOINED HIM WERE, OF COURSE, FAMILIAR WITH
THE ALLEGED DISTINCTION WHICH CONVERTIBLE TRIED TO DRAW BETWEEN ITS
RIGHTS WITH REFERENCE TO THE GENERAL MOTORS LICENSED CARS ON THE ONE
HAND AND THE FORD UNLICENSED CARS ON THE OTHER.  THE DISTRICT JUDGE IN
HIS OPINION DREW THE DISTINCTION, (FN3) CONVERTIBLE'S BRIEF IN THIS
COURT DREW THE DISTINCTION, (FN4) AND MR. JUSTICE BRENNAN DREW THE
DISTINCTION IN HIS OPINION BY CONCURRING IN THE COURT'S JUDGMENT WITH
RESPECT TO REPLACEMENT FABRICS FOR GENERAL MOTORS CARS BUT DISSENTING
WITH RESPECT TO THOSE FOR FORD CARS.  IT IS APPARENT, THEREFORE, THAT
TO THE MAJORITY WHO JOINED IN MR. JUSTICE WHITTAKER'S OPINION THE
ASSERTED DISTINCTION WAS SIMPLY IRRELEVANT, SINCE CONVERTIBLE AS THE
HOLDER OF A COMBINATION PATENT COULD UNDER NO CIRCUMSTANCES PREVENT
OTHERS FROM MAKING AND SUPPLYING UNPATENTED AND UNPATENTABLE
REPLACEMENT PARTS FOR ANY ELEMENT OF THE COMBINATION.  THE COURT'S
OPINION BY MR. JUSTICE WHITTAKER MADE IT CRYSTAL-CLEAR THAT THE COURT
WAS HOLDING THAT WITH RESPECT TO COMBINATION PATENTS LIKE THE ONE
HERE: 

"NO ELEMENT, NOT ITSELF SEPARATELY PATENTED, THAT CONSTITUTES ONE OF
THE ELEMENTS OF A COMBINATION PATENT IS ENTITLED TO PATENT MONOPOLY,
HOWEVER ESSENTIAL IT MAY BE TO THE PATENTED COMBINATION AND NO MATTER
HOW COSTLY OR DIFFICULT REPLACEMENT MAY BE."  365 U.S., AT 345. 

FINALLY, THE COURT DID NOT CONCLUDE ITS OPINION WITH THE WORDS
"REVERSED IN PART AND AFFIRMED IN PART," AS IT WOULD HAVE DONE IF LIKE
MR. JUSTICE BRENNAN IT HAD ACCEPTED CONVERTIBLE'S ASSERTED
DISTINCTION.  THE ORDER IN THE OPINION BY MR. JUSTICE WHITTAKER WAS
SIMPLY, "REVERSED," WHICH MEANT "REVERSED," NOT "REVERSED IN PART AND
AFFIRMED IN PART." 

IF ALL THIS COULD HAVE LEFT ANY DOUBT THAT THE COURT REVERSED THE
JUDGMENT OF THE COURT OF APPEALS IN ITS ENTIRETY RATHER THAN IN PART
ONLY, THAT DOUBT WOULD CERTAINLY HAVE BEEN REMOVED BY THE ACTION TAKEN
ON CONVERTIBLE'S PETITION FOR REHEARING OR ALTERNATIVE MOTION FOR
AMENDMENT OR CLARIFICATION OF THE COURT'S JUDGMENT.  THIS MOTION
SPECIFICALLY POINTED OUT THE ALLEGED DISTINCTION BETWEEN CONVERTIBLE'S
RIGHTS WITH RESPECT TO ARO'S REPLACEMENT FABRICS FOR THE TWO KINDS OF
CARS.  THE COURT DENIED THE MOTION AND THE PETITION FOR REHEARING, 365
U.S. 890, AND IN SO DOING REJECTED PRECISELY THE SAME ARGUMENT (FN5)
WHICH TODAY'S COURT IS NOW ACCEPTING.  SINCE THE MOTION AND PETITION
FOR REHEARING WERE REJECTED, FIVE JUSTICES MUST HAVE FOUND
CONVERTIBLE'S ARGUMENTS WITHOUT MERIT.  AT THAT TIME, APRIL 17, 1961,
MR. JUSTICE WHITTAKER WAS STILL A MEMBER OF THE COURT.  IT CAN BE
ASSUMED THAT THERE WERE FOUR VOTES FOR REHEARING - THOSE OF MR. JUSTICE
BRENNAN, WHO HAD NOT JOINED THE COURT'S JUDGMENT WITH REFERENCE TO THE
FABRIC REPLACEMENTS FOR FORD CARS, AND OF MR. JUSTICE HARLAN, MR.
JUSTICE FRANKFURTER, AND MR. JUSTICE STEWART, WHO HAD DISSENTED FROM
THE COURT'S OPINION IN ITS ENTIRETY.  FOUR VOTES COULD NOT GRANT THE
MOTION OR THE PETITION FOR REHEARING, BUT FIVE VOTES - THOSE OF MR.
JUSTICE HARLAN, MR. JUSTICE BRENNAN, MR. JUSTICE STEWART, MR. JUSTICE
WHITE, AND MR. JUSTICE GOLDBERG - NOW REVERSE THE EARLIER RULINGS OF
THIS COURT.  THIS IS, OF COURSE, PERMISSIBLE, BUT THERE IS NO REASON
WHY TODAY'S ACTION IN DEPARTING FROM THE PRIOR HOLDING SHOULD ALSO BE
POINTED TO AS, IN THE WORDS THE COURT OF APPEALS USED TO DESCRIBE OUR
PREVIOUS OPINION, A "PUZZLING QUESTION."  COMPARE LEGAL TENDER CASES,
12 WALL.  457, OVERRULING HEPBURN V. GRISWOLD, 8 WALL.  603.  AS TO THE
MERITS OF TODAY'S DEPARTURE FROM OUR PRIOR HOLDING, I THINK THAT THE
OLD MAJORITY WAS RIGHT AND THE NEW MAJORITY IS WRONG, FOR ALL OF THE
REASONS SET OUT IN MR. JUSTICE WHITTAKER'S OPINION FOR THE COURT AND IN
MY CONCURRING OPINION, 365 U.S., AT 346. 

       II. 

THE COURT NOW HOLDS THAT ALTHOUGH THE FABRIC USED ON THESE CAR TOPS
WAS UNPATENTED AND CLEARLY UNPATENTABLE, THE COMBINATION-PATENTEE
NEVERTHELESS IS FREE TO EXPAND ITS MONOPOLY BEYOND THE PATENT'S
BOUNDARIES THROUGH PERVENTING THE SALES OF THAT SINGLE ELEMENT, THE
UNPATENTED FABRIC.  THE NEW MAJORITY RELIES LARGELY ON 35 U.S.C. SEC.
271(C), AS DID MR. JUSTICE HARLAN, MR. JUSTICE FRANKFURTER, MR. JUSTICE
STEWART AND MR. JUSTICE BRENNAN THE FIRST TIME THIS CASE WAS HERE.  AS
I SAID, I AM SATISFIED WITH THE ANSWERS GIVEN TO THE NEW MAJORITY'S
INTERPRETATION OF SEC. 271(C) BY WHAT WAS SAID IN MR. JUSTICE
WHITTAKER'S OPINION FOR THE COURT AND IN MY CONCURRENCE.  BUT SINCE THE
NEW MAJORITY IS NOW GIVING CONVERTIBLE A LEGAL MONOPOLY OVER THE
UNPATENTED FABRIC COVER, I FIND IT NECESSARY TO REACH THE
CONSTITUTIONAL QUESTION URGED BY ARO. 

ARTICLE I, SEC. 8 OF THE CONSTITUTION GIVES CONGRESS THE POWER TO
"PROMOTE THE PROGRESS OF SCIENCE AND USEFUL ARTS, BY SECURING FOR
LIMITED TIMES TO AUTHORS AND INVENTORS THE EXCLUSIVE RIGHT TO THEIR
RESPECTIVE WRITINGS AND DISCOVERIES."  THE GRANTING OF PATENT
MONOPOLIES UNDER THIS CONSTITUTIONAL AUTHORITY REPRESENTS A VERY MINOR
EXCEPTION TO THE NATION'S TRADITIONAL POLICY OF A COMPETITIVE BUSINESS
ECONOMY, SUCH AS IS SAFEGUARDED BY THE ANTITRUST LAWS.  WHEN ARTICLES
ARE NOT PATENTABLE AND THEREFORE ARE IN THE PUBLIC DOMAIN, AS THESE
FABRIC COVERS WERE, TO GRANT THEM A LEGALLY PROTECTED MONOPOLY OFFENDS
THE CONSTITUTIONAL PLAN OF A COMPETITIVE ECONOMY FREE FROM PATENT
MONOPOLIES EXCEPT WHERE THERE ARE PATENTABLE "DISCOVERIES."  AND THE
GRANT OF A PATENT MONOPOLY TO THE FABRICS CAN NO MORE BE JUSTIFIED
CONSTITUTIONALLY BY CALLING THEIR SALE BY COMPETITORS "CONTRIBUTORY
INFRINGEMENT" THAN BY GIVING IT ANY OTHER LABEL.  CF. COMPCO CORP. V.
DAY-BRITE LIGHTING, INC., 376 U.S. 234; SEARS, ROEBUCK & CO. V. STIFFEL
CO., 376 U.S. 225. 

  III. 

THE COURT HOLDS, QUITE PROPERLY I THINK, THAT A PATENTEE CAN GET ONLY
ONE RECOVERY FOR ONE INFRINGEMENT, NO MATTER HOW MANY DIFFERENT PERSONS
TAKE PART IN THE INFRINGEMENT.  IN THIS CASE FORD, ALLEGEDLY A DIRECT
INFRINGER OF THE CONVERTIBLE PATENT, MADE A SETTLEMENT WITH CONVERTIBLE
FOR ALL PAST INFRINGEMENTS IN MAKING ITS CARS AND OBTAINED A LICENSE TO
USE THE PATENT IN THE FUTURE.  THE COURT HOLDS THAT WHILE THERE CAN BE
ONLY ONE RECOVERY FOR THE ALLEGED INFRINGEMENT WHICH FORD TURNED LOOSE
ON THE TRADE, CONVERTIBLE SHOULD NEVERTHELESS HAVE AN OPPORTUNITY TO
TRY TO PROVE, IF IT CAN, THAT IT SETTLED WITH FORD FOR LESS THAN THE
FULL AMOUNT OF ITS DAMAGES.  THIS, I THINK, BRINGS ABOUT AN UNJUST
RESULT WHICH THE PATENT LAW DOES NOT COMPEL.  HERE FORD, THE PRINCIPAL
INFRINGER, OBTAINED A COMPLETE RELEASE FROM ALL DAMAGES FOR ITS
INFRINGEMENT, AND I WOULD HOLD THAT INNOCENT PURCHASERS OF FORD CARS
CONTAINING THE INFRINGING DEVICES ARE ENTITLED TO BE RELEASED JUST AS
FORD HAS BEEN.  THERE IS CONSIDERABLE MERIT AND FAIRNESS IN THE IDEA
THAT COMPLETELY RELEASING FROM LIABILITY ONE OF SEVERAL PERSONS, ALL OF
WHOM ARE OBLIGATED TO ANOTHER, RELEASES THEM ALL.  THIS IS PARTICULARLY
SO IN THE AREA OF PATENT LAW, WHERE THE DOCTRINE OF CONTRIBUTORY
INFRINGEMENT IS RESTED ON THE BELIEF THAT A DIRECT INFRINGER MAY
SOMETIMES BE COLLECTION-PROOF, AND THAT IN SUCH A SITUATION THE
PATENTEE SHOULD BE GIVEN A CHANCE TO COLLECT ITS DAMAGES FROM A MORE
SOLVENT COMPANY WHICH KNOWINGLY AIDED THE INFRINGEMENT.  THE ORIGINAL
INFRINGEMENT, IF THERE WAS INFRINGEMENT HERE, (FN6) WAS FORD'S.
FAIRNESS WOULD REQUIRE THAT IF RECOVERY CAN BE HAD FROM THE CHIEF
WRONGDOER, HERE FORD, THE FIRST OBLIGATION OF THE INJURED PERSON IS TO
TRY TO HOLD FORD COMPLETELY RESPONSIBLE.  THIS SHOULD BE PARTICULARLY
TRUE IN INSTANCES LIKE THIS, WHERE ONE COMPANY INFRINGES A PATENT AND
SELLS GOODS WHICH ENTER INTO THE CHANNELS OF TRADE THROUGHOUT THE
NATION, THEREBY SUBJECTING AN UNTOLD NUMBER OF INNOCENT DEALERS, FUTURE
PURCHASERS, AND EVEN REPAIRMEN TO DAMAGES.  THE STATUTORY RIGHT TO SUE
FOR INFRINGEMENT - INVOLVING TREBLE DAMAGES, PUNITIVE DAMAGES,
ATTORNEY'S FEES, ETC. - SHOULD NOT BE CONSTRUED IN A WAY THAT PERMITS
UNNECESSARY HARASSMENT OF PEOPLE WHO HAVE BOUGHT THEIR GOODS IN THE
OPEN MARKET PLACE.  I CAN THINK OF NOTHING MUCH MORE UNFAIR THAN TO
VISIT THE INFRINGEMENT SINS OF A LARGE MANUFACTURER UPON THE THOUSANDS
OF ULTIMATE PURCHASERS WHO BUY OR USE ITS GOODS. 

     IV. 

FOR THE FOREGOING REASONS I BELIEVE THAT ARO SHOULD NOT BE HELD
LIABLE FOR ANY DAMAGES AT ALL AND THAT THE DISTRICT COURT SHOULD BE
ORDERED TO DISMISS THE CASE.  A MAJORITY OF THE COURT, HOWEVER, REMANDS
THE CASE FOR DETERMINATION OF WHETHER AND TO WHAT EXTENT ARO IS LIABLE
FOR DAMAGES.  WHETHER ARO IS LIABLE FOR ANY DAMAGES AT ALL DEPENDS ON
WHETHER IT AND THE PERSONS TO WHOSE INFRINGEMENT ARO IS ALLEGED TO HAVE
CONTRIBUTED CAN BE HELD LIABLE FOR DAMAGES EVEN THOUGH THEY MAY HAVE
HAD NO KNOWLEDGE THAT A PATENT COVERED THE TOP OR THAT THEIR CONDUCT
INFRINGED OR HELPED TO INFRINGE THAT PATENT.  I WOULD HOLD THAT UNLESS
THERE WAS SUCH KNOWLEDGE, THERE CAN BE NO INFRINGEMENT OR CONTRIBUTORY
INFRINGEMENT. 

(WHICH ARO IS ALLEGED TO BE), PROVIDES THAT WHOEVER SELLS A COMPONENT
OF A PATENTED COMBINATION "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  ..  SHHALL BE LIABLE AS A
CONTRIBUTORY INFRINGER."  (FN7)  USUALLY THE WORD "KNOWING" MEANS
"KNOWING," AND I AM UNWILLING TO SAY THAT IN SEC. 271(C) IT MEANS
"UNKNOWING."  THIS STATUTE TO ME MEANS RATHER PLAINLY THAT IN ORDER TO
VIOLATE IT, ONE WHO SELLS AN ARTICLE MUST KNOW THAT THE ARTICLE IS TO
BE USED "IN AN INFRINGEMENT OF SUCH PATENT" AND THAT IT IS "ESPECIALLY
MADE OR ESPECIALLY ADAPTED" FOR THAT PURPOSE.  FURTHERMORE, THE
LEGISLATIVE HISTORY OF THE STATUTE CONFIRMS THIS INTERPRETATION. 

AS ORIGINALLY DRAFTED SEC. 271(C) PROVIDED: 

"WHOEVER KNOWINGLY SELLS A COMPONENT OF A PATENTED  ..  COOMBINATION
..  ,  ESPECIALLY MADE OR ESPECIALLY ADAPTED FOR USE IN AN INFRINGEMENT
OF SUCH PATENT  ..  SHHALL BE LIABLE AS A CONTRIBUTORY INFRINGER." 
(FN8) 

SEVERAL TIMES THE HOUSE COMMITTEE CONSIDERING THE BILL WAS TOLD THAT
BECAUSE OF THE POSITION OF THE WORD "KNOWINGLY" IN THE SECTION IT WAS
NOT CLEAR EXACTLY HOW MUCH A PERSON HAD TO BE SHOWN TO HAVE KNOWN
BEFORE HE COULD BE HELD LIABLE AS A CONTRIBUTORY INFRINGER.  (FN9)
SOME WITNESSES EXPRESSED FEAR THAT THE SECTION MIGHT BE CONSTRUED TO
MEAN THAT A PERSON COULD BE HELD LIABLE FOR SELLING AN ARTICLE EVEN
THOUGH HE DID NOT KNOW THAT IT WAS ADAPTED FOR USE IN A PATENTED DEVICE
AND THAT IT WOULD BE USED IN AN INFRINGEMENT.  (FN10)  ON THE OTHER
HAND, ADVOCATES OF A BROAD LIABILITY FOR CONTRIBUTORY INFRINGEMENT SAID
THAT THERE SHOULD BE REQUIRED ONLY KNOWLEDGE THAT AN ARTICLE WAS TO BE
USED IN A PARTICULAR DEVICE - THAT A PERSON WOULD BE LIABLE AS A
CONTRIBUTORY INFRINGER EVEN IF HE DID NOT KNOW OF THE EXISTENCE OF ANY
PATENT AND OF ANY LIKELY INFRINGEMENT.  (FN11)  AFTER HEARING BOTH
SIDES THE HOUSE COMMITTEE CHANGED THE LANGUAGE OF THE BILL TO READ, AS
SEC. 271(C) NOW PROVIDES: 

"WHOEVER SELLS A COMPONENT OF A PATENTED  ..  COOMBINATION  ..  ,

KNOWING THE SAME TO BE ESPECIALLY MADE OR ESPECIALLY ADAPTED FOR USE IN
AN INFRINGEMENT OF SUCH PATENT  ..  SHHALL BE LIABLE AS A CONTRIBUTORY
INFRINGER."  (FN12) 

BOTH THE HOUSE AND SENATE REPORTS EXPLAINED THAT: 

"THIS LATTER PARAGRAPH IS MUCH MORE RESTRICTED THAN MANY PROPONENTS
OF CONTRIBUTORY INFRINGEMENT BELIEVE SHOULD BE THE CASE.  THE SALE OF A
COMPONENT OF A PATENTED MACHINE, ETC., MUST CONSTITUTE A MATERIAL PART
OF THE INVENTION AND MUST BE KNOWN TO BE ESPECIALLY MADE OR ESPECIALLY
ADAPTED FOR USE IN THE INFRINGEMENT BEFORE THERE CAN BE CONTRIBUTORY
INFRINGEMENT ..  .""  (FN13) 

THE HOUSE COMMITTEE THUS ATTEMPTED TO MAKE CLEAR THAT INNOCENT
PERSONS, WHO ACTED WITHOUT ANY KNOWLEDGE THAT THE GOODS THEY SOLD WERE
ADAPTED FOR USE IN THE INFRINGEMENT OF A PATENT WHICH THEY KNEW ABOUT,
COULD NOT BE HELD LIABLE AS A CONTRIBUTORY INFRINGERS.  IT IS HARD TO
BELIEVE THAT CONGRESS INTENDED TO HOLD PERSONS LIABLE FOR ACTS WHICH
THEY HAD NO REASON TO SUSPECT WERE UNLAWFUL, AND AS I HAVE POINTED OUT
THE LEGISLATIVE HISTORY SHOWS CONGRESS DID NOT.  THEREFORE I AM WHOLLY
UNWILLING TO CONSTRUE THE SECTION AS MEANING THAT ONE WHO SELLS AN
UNPATENTED AND UNPATENTABLE PIECE OF FABRIC TO BE USED TO REPAIR AN
AUTOMOBILE TOP CAN BE HELD LIABLE FOR TREBLE DAMAGES AS A CONTRIBUTORY
INFRINGER EVEN THOUGH HE HAD ABSOLUTELY NO KNOWLEDGE THAT THERE WAS A
PATENT ON THE TOP AND THAT THE TOP HAD BEEN SOLD WITHOUT A LICENSE, AND
COULD NOT, BECAUSE OF THIS LACK OF KNOWLEDGE, HAVE SOLD THE TOP
"KNOWING THE SAME TO BE ESPECIALLY MADE OR ESPECIALLY ADAPTED FOR USE
IN AN INFRINGEMENT OF SUCH PATENT." 

FURTHERMORE, TO JUSTIFY ITS RESULT THE COURT TODAY IN DEFINING
"CONTRIBUTORY INFRINGEMENT" EXPANDS THE COVERAGE OF SEC. 271(A), WHICH
DEALS WITH "DIRECT INFRINGEMENT," SO AS TO MAKE EVERY CONSUMER OR
REPAIRMAN WHO INNOCENTLY BUYS OR REPAIRS AN UNMARKED ARTICLE WHICH
INFRINGES A PATENT LIABLE FOR DAMAGES AS A DIRECT INFRINGER.  IN ORDER
FOR THERE TO BE CONTRIBUTORY INFRINGEMENT, THE COURT ADMITS, THERE MUST
BE A DIRECT INFRINGEMENT WHICH THE ALLEGED CONTRIBUTORY INFRINGER HAS
AIDED.  HERE FORD WAS A DIRECT INFRINGER, BUT ARO SOLD NOTHING TO
FORD.  AND SO, IN ORDER TO FIND A DIRECT INFRINGER WHO USED ARO
FABRICS, AND THEREBY JUSTIFY ITS RESULT, THE COURT SAYS THAT ANY
INDIVIDUAL WHO BUYS A PRODUCT SUCH AS AN AUTOMOBILE FROM AN INFRINGING
MANUFACTURER AND DEVOTES IT TO HIS PERSONAL USE IS WITHOUT MORE LIABLE
AS A DIRECT INFRINGER OF THE PATENT UNDER SEC. 271(A) - EVEN THOUGH HE
DID NOT KNOW THAT THE MANUFACTURER OF THE PRODUCT HAD INFRINGED SOME
PATENT, INDEED, EVEN THOUGH HE PERHAPS DID NOT KNOW WHAT A PATENT IS. 

THE COURT'S INTERPRETATION OF SEC. 271(A) CONCERNING THE LACK OF
NECESSITY FOR KNOWLEDGE BEFORE A PERSON CAN BE MULCTED IN DAMAGES FOR
DIRECT INFRINGEMENT IS STRANGELY INCONSISTENT WITH ANOTHER PROVISION OF
THE PATENT CODE, 35 U.S.C. SEC. 287, (FN14) WHICH STATES IN
UNEQUIVOCAL, EASILY UNDERSTOOD LANGUAGE THAT "NO DAMAGES SHALL BE
RECOVERED BY THE PATENTEE IN ANY ACTION FOR INFRINGEMENT, EXCEPT ON
PROOF THAT THE INFRINGER WAS NOTIFIED OF THE INFRINGEMENT AND CONTINUED
TO INFRINGE THEREAFTER."  YET THE COURT HERE IS HOLDING, WITH NO
SUPPORT IN ANY JUDICIAL PRECEDENT (FN15) AND CERTAINLY NONE IN COMMON
SENSE OR JUSTICE, THAT INNOCENT CONSUMERS OF PATENTED PRODUCTS AND
THOSE WHO EQUALLY INNOCENTLY DO NO MORE THAN REPAIR WORN-OUT PARTS CAN
BE SUBJECTED TO PUNITIVE OR TREBLE DAMAGES EVEN THOUGH THEY NEITHER
KNEW NOR SUSPECTED THAT ANY PATENT FORBADE THEM TO BUY, USE OR REPAIR
THOSE PRODUCTS.  IT WOULD BE ONE THING TO REQUIRE THOSE WHO SELL NEW
INVENTIONS FOR PROFIT TO CHECK THE RECORDS OF THE PATENT OFFICE.  IT IS
QUITE ANOTHER TO HOLD, AS THE COURT NOW DOES, THAT EVERY HOUSEWIFE,
PLUMBER, AND AUTO REPAIRMAN MUST DO SO. 

THE TREMENDOUS BURDEN THAT THE COURT'S CONSTRUCTION OF THE PATENT
LAWS WILL PUT ON INNOCENT BONA FIDE DEALERS IN OR PURCHASERS OF
UNPATENTED PRODUCTS (IF CONGRESS DOES NOT CHANGE THE COURT'S RULING)
CANNOT BE ACCURATELY PREDICTED.  THE NUMBER OF PATENTED APPLIANCES OF
VARIOUS KINDS IN AUTOMOBILES IS CERTAINLY NOT SMALL.  JUST A FEW OF
THOSE THAT HAVE APPEARED IN LITIGATION IN THE COURTS ARE WINDSHIELD SUN
VISORS, WHEEL ATTACHMENTS, DRIVE-SHAFT BUSHING ASSEMBLIES, AUTOMOBILE
HEATERS AND WINDSHIELD DEFROSTERS, STEERING STABILIZERS, SHOCK
ABSORBERS, PISTONS, STEERING GEAR CHECKS, STEERING WHEELS, RADIATOR
SHIELDS, CLUTCH RELEASE THRUST BEARINGS, MOUNTINGS FOR REAR-VIEW
MIRRORS, VACUUM-OPERATED GEAR-SHIFT MECHANISMS, SPARK PLUG AND COIL
CONNECTORS, WIRE SPRINGS FOR UPHOLSTERED SEAT STRUCTURES, STEERING GEAR
IDLER ARMS, WINDSHIELD WIPER BLADE ASSEMBLIES, AND OTHERS.  (FN16)
AFTER THE COURT'S OPINION IN THIS CASE IT WILL CERTAINLY BEHOOVE
PURCHASERS OF NEW OR SECOND-HAND CARS AND REPAIR SHOPS WHICH MEND THOSE
CARS TO HIRE EXPERTS, IF THEY CAN FIND THEM, IN ORDER TO TRY TO
ASCERTAIN WHETHER OR NOT ANY CAR WHICH THEY HAVE BOUGHT (MAYBE ON
CREDIT FROM A SECOND-HAND DEALER) OR ARE ASKED TO REPAIR IS A BOOBY
TRAP WAITING TO SUBJECT THEM TO SUITS FOR INFRINGEMENT BY REASON OF
SOME ONE OF THE CAR'S PATENTED APPLIANCES, THE NAME OR EXISTENCE OF
WHICH THE OWNER OF THE CAR MAY NOT EVEN SUSPECT.  AND AUTOMOBILES ARE
OF COURSE NOT THE ONLY EQUIPMENT IN WHICH ORDINARY PURCHASERS USE
PATENTED DEVICES.  PURCHASERS OF HOMES EQUIPPED WITH MODERN APPLIANCES,
AS WELL AS MILLIONS OF BUYERS OF CONSUMER GOODS IN GENERAL, MAY SOON BE
MADE UNHAPPILY AWARE OF THE BROAD SCOPE OF PATENTED MONOPOLIES AS
INTERPRETED BY THIS COURT.  ENTREPRENEURS IN THE NEW CORPORATE BUSINESS
OF SUING FOR INFRINGEMENTS (ARO CLAIMED THAT CONVERTIBLE WAS SUCH A
CORPORATION, SET UP WITH NO OTHER FUNCTION) MAY SOON BECOME AS COMMON
AS PATENTS THEMSELVES. 

NEITHER THE LANGUAGE NOR THE PURPOSE OF THE PATENT LAWS REQUIRES THAT
THEY BE CONSTRUED TO BRING ABOUT SUCH THREATS ON SO WIDE A SCALE TO THE
FREE FUNCTIONING OF OUR BUSINESS ECONOMY AND TO PURCHASERS OF PATENTED
APPLIANCES WHO ARE WHOLLY INNOCENT OF ANY INTENTION TO INFRINGE
PATENTS.  I DO NOT BELIEVE THAT IN CONSTRUING THE PATENT LAWS WE SHOULD
ATTRIBUTE TO CONGRESS THE PURPOSE OF BRINGING ABOUT SUCH UNREASONABLE,
ABSURD AND WHOLLY UNJUST RESULTS.  CF.  UNITED STATES V. AMERICAN
TRUCKING ASSNS., INC., 310 U.S. 534, 542-544; CHURCH OF THE HOLY
TRINITY V. UNITED STATES, 143 U.S. 457, 459.  I CANNOT BELIEVE THAT
CONGRESS INTENDED TO SUBJECT TO DAMAGES THOUSANDS OF ULTIMATE CONSUMERS
WHO DO NOT KNOW AND HAVE NO REASON TO SUSPECT THAT LAWSUITS ARE LURKING
IN EVERY PATENTED CONTRIVANCE CONCEALED SOMEWHERE WITHIN THE HIDDEN
RECESSES OF THEIR AUTOMOBILES. 

I WOULD REVERSE THE JUDGMENT OF THE COURT OF APPEALS AND SEND THE
CASE BACK TO THE DISTRICT COURT WITH INSTRUCTIONS TO DISMISS IT. 

FN1  "WHOEVER SELLS A COMPONENT OF A PATENTED MACHINE, MANUFACTURE,
COMBINATION OR COMPOSITION, OR A MATERIAL OR APPARATUS FOR USE IN
PRACTICING A PATENTED PROCESS, 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 NON-INFRINGING USE,
SHALL BE LIABLE AS A CONTRIBUTORY INFRINGER."  66 STAT. 811, 35 U.S.C.
SEC. 271(C). 

FN2  MR. JUSTICE BRENNAN'S OPINION SAID: 

"MY BROTHER HARLAN'S DISSENT COGENTLY STATES THE REASONS WHY I ALSO
THINK THAT IS TOO NARROW A STANDARD OF WHAT CONSTITUTES IMPERMISSIBLE
'RECONSTRUCTION.'"  365 U.S., AT 362. 

FN3  119 U.S.P.Q., AT 124. 

FN4  ONE OF CONVERTIBLE'S ARGUMENT HEADINGS READ, "THE PROPOSED RULES
OF LAW PROPOUNDED BY ARO AND THE GOVERNMENT CANNOT, UNDER THE FACTS OF
THIS CASE, EXTEND TO FORD CARS."  BRIEF FOR RESPONDENT, ARO MFG. CO. V.
CONVERTIBLE TOP REPLACEMENT CO., NO. 21, 1960 TERM, P. 73.  THE
ARGUMENT EXTENDED OVER THE NEXT SEVERAL PAGES.  ID., PP. 73-76. 

FN5  RESPONDENT'S PETITION FOR A LIMITED REHEARING:  OR, IN THE
ALTERNATIVE, MOTION FOR AMENDMENT OR CLARIFICATION OF THE COURT'S
OPINION, ARO MFG. CO. V. CONVERTIBLE TOP REPLACEMENT CO., NO. 21, 1960
TERM, PP. 1-13.  THAT THE REPLACEMENT FOR FORD CARS SHOULD BE TREATED
DIFFERENTLY FROM THOSE FOR GENERAL MOTORS CARS WAS THE ONLY ARGUMENT
MADE IN THE PETITION AND MOTION. 

FN6  FOR DISCUSSION OF THE DOUBTFUL VALIDITY OF THIS COMBINATION
PATENT, SEE MY CONCURRING OPINION IN THE FORMER DECISION OF THIS CASE,
365 U.S., AT 350-352. 

FN7  (EMPHASIS SUPPLIED.) 

FN8  SEC 231(C), H.R. 3760, 82D CONG., 1ST SESS. 

FN9  SEE, E.G., HEARINGS BEFORE SUBCOMMITTEE NO. 3, COMMITTEE ON THE
JUDICIARY, ON H.R. 3760, 82D CONG., 1ST SESS., SER.  NO. 9, P. 215. 

FN10  THE CHIEF ENGINEER AND CHAIRMAN OF THE BOARD OF A COMPANY WHICH
MANUFACTURES INSTRUMENTS TO CUSTOMERS' SPECIFICATIONS TESTIFIED: 

"WE MAKE A LARGE NUMBER OF DEVICES AND PEOPLE COME TO US IN THE
INDUSTRY FROM DISTANT POINTS  .. .   WHEN YOU REALIZE THAT THERE ARE
SOME 600,000 PATENTS AND MILLIONS OF CLAIMS INVOLVED UNDER THE PRESENT
STATUS TO THIS BILL,  ..  ANND WE BECOME LIABLE AS CONTRIBUTORY
INFRINGERS, YOU CAN SEE IT WOULD BE IMPOSSIBLE FOR US TO KNOW IN ALL
CASES WHETHER WE INFRINGED OR NOT  ..  .  

"'KNOWINGLY SELLS' WILL THUS BECOME HIGHLY CONTROVERSIAL, AND IT WILL
BE CONSTRUED BY VARIOUS PATENT LAWYERS TO MEET THEIR PARTICULAR
SITUATION."  ID., AT 141-142. 

WHEN A WITNESS FROM THE ANTITRUST DIVISION OF THE JUSTICE DEPARTMENT
RAISED THE SAME OBJECTION, THE FOLLOWING EXCHANGE TOOK PLACE: 

"CONGRESSMAN BRYSON.  IT SEEMS TO ME THAT IF HE SELLS IT AT ALL HE
KNOWS HE SELLS IT. 

"MR. FUGATE OF THE JUSTICE DEPARTMENT.  HE KNOWS HE SELLS IT; BUT, AS
IN THIS CASE THAT I MENTIONED, THE CUTTER OF THE METAL PLATE ACCORDING
TO A SPECIAL PATTERN DIDN'T KNOW THAT THAT WAS TO BE USED IN AN
INFRINGING MANNER, THAT IT WAS TO BE USED IN A PATENTED COMBINATION. 

"CONGRESSMAN ROGERS.  INASMUCH AS YOU RECOGNIZE THAT THE LAW STILL
GIVES A CAUSE OF ACTION AGAINST THE CONTRIBUTOR WHO HELPS INFRINGE,
WOULD THERE BE ANY OBJECTION ON THE PART OF THE JUSTICE DEPARTMENT TO
CLARIFY THAT LAW IN DEFINITE WORDS SO THAT THERE WOULD NOT BE THE
CONFUSION THAT THE GENTLEMEN HAVE TESTIFIED TO?"  ID., AT 164-165. 

FN11  MR. GILES S. RICH OF THE NATIONAL COUNCIL OF PATENT LAW
ASSOCIATIONS STATED: 

"'KNOWINGLY SELLS A COMPONENT OF A PATENTED MACHINE' MEANS TO US THAT
YOU KNOW THAT THE COMPONENT IS GOING INTO THAT MACHINE.  YOU DON'T HAVE
TO KNOW THAT IT IS PATENTED.  YOU DON'T HAVE TO KNOW THE NUMBER OF THE
PATENT, AND YOU DON'T HAVE TO KNOW THAT THE MACHINE THAT IT IS GOING
INTO CONSTITUTES AN INFRINGEMENT.  YOU JUST KNOW ITS ULTIMATE
DESTINATION."  ID., AT 175. 

FN12  (EMPHASIS SUPPLIED.) 

FN13  H.R. REP. NO. 1923, 82D CONG., 2D SESS., P. 9; S. REP. NO.
1979, 82D CONG., 2D SESS., P. 8. 

FN14  "PATENTEES, AND PERSONS MAKING OR SELLING ANY PATENTED ARTICLE
FOR OR UNDER THEM, MAY GIVE NOTICE TO THE PUBLIC THAT THE SAME IS
PATENTED, EITHER BY FIXING THEREON THE WORD 'PATENT' OR THE
ABBREVIATION 'PAT.', TOGETHER WITH THE NUMBER OF THE PATENT, OR WHEN,
FROM THE CHARACTER OF THE ARTICLE, THIS CAN NOT BE DONE, BY FIXING TO
IT, OR TO THE PACKAGE WHEREIN ONE OR MORE OF THEM IS CONTAINED, A LABEL
CONTAINING A LIKE NOTICE.  IN THE EVENT OF FAILURE SO TO MARK, NO
DAMAGES SHALL BE RECOVERED BY THE PATENTEE IN ANY ACTION FOR
INFRINGEMENT, EXCEPT ON PROOF THAT THE INFRINGER WAS NOTIFIED OF THE
INFRINGEMENT AND CONTINUED TO INFRINGE THEREAFTER, IN WHICH EVENT
DAMAGES MAY BE RECOVERED ONLY FOR INFRINGEMENT OCCURRING AFTER SUCH
NOTICE.  FILING OF AN ACTION FOR INFRINGEMENT SHALL CONSTITUTE SUCH
NOTICE."  66 STAT. 813, 35 U.S.C. SEC. 287. 

FN15  THE CASES WHICH THE COURT CITES AS CONTRARY TO THIS VIEW
NEITHER CONSIDERED NOR DECIDED THE ISSUE WHETHER INNOCENT PERSONS
ENTIRELY UNAWARE THAT THEIR CONDUCT WOULD EITHER INFRINGE OR CONTRIBUTE
TO THE INFRINGEMENT OF A PATENT CAN BE HELD LIABLE AS DIRECT OR
CONTRIBUTORY INFRINGERS.  WINE RY. APPLIANCE CO. V. ENTERPRISE RY.
EQUIPMENT CO., 297 U.S. 387, HELD THAT A PRIMARY INFRINGER, LIKE FORD
HERE, WHICH ORDERED MANUFACTURED FOR ITSELF AND WHICH SOLD FOR PROFIT A
PATENTED DOOR-LATCH COULD NOT ESCAPE LIABILITY FOR INFRINGEMENT SIMPLY
BECAUSE A STATUTORY NOTICE OF THE PATENT WAS NOT MARKED ON THE
INFRINGING LATCHES.  THE COURT POINTED OUT THAT THE PATENTEE HAD NEVER
HAD AN OPPORTUNITY TO ATTACH A NOTICE BECAUSE THE INFRINGER WAS
PRODUCING THE LATCHES WITHOUT THE PATENTEE'S KNOWLEDGE.  THE SITUATION
IN THE CASE BEFORE US, INVOLVING AN ASSERTED LIABILITY OF CONSUMERS OF
UNMARKED GOODS, RATHER THAN A SELLER OF THOSE GOODS FOR PROFIT, DOES
NOT EVEN REMOTELY RESEMBLE THAT IN WINE.  IN NONE OF THE OTHER CASES
RELIED ON WAS SEC. 287 INTERPRETED OR EVEN CONSIDERED BY THE COURT. 

FN16  SEE 35 U.S.C.A. SEC. 271, N. 139. 



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