William J. Brennan, Jr.

“ The language of the section fits perfectly Aro's activity of selling 'a component of a patented * * * combination * * *, constituting a material part of the invention, * * * 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.' Indeed, this is the almost unique case in which the component was hardly suitable for any noninfringing use. ”

“ 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 patent.' Thus the Court's interpretation of the knowledge requirement affords Aro no defense with respect to replacement-fabric sales made after January 2, 1954. ”

“ 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. ”

“ 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, 5 S.Ct., at 245-246. ”

“ 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 § 271 (a) . [4] 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, 5 S.Ct. ”

“ 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. ”

“ Petitioner Aro Manufacturing Co., Inc. (Aro) , which is not licensed under the patent, produces fabric components designed as replacements for wornout fabric portions of convertible tops; unlike the other elements of the topstructure, which ordinarily are usable for the life of the car, the fabric portion normally wears out and requires eplacement 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. ”

“ 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. ”

“ The case as to the post-agreement sales i 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. ”

“ 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. ”

“ 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 ”

“ 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. ”

“ 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. [15] This is the assumption with which we disagree. It is our view that despite ou 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. ”

“ Mercoid Corp. v. Mid-Continent Investment Co., supra, 320 U.S., at 666-667, 64 S.Ct., at 272. 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 i 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. ”

“ Hence, where Aro's sale of replacement fabrics for unlicensed Ford cars falls squarely within § 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. ”

“ Livesay Window Co. v. Livesay Industries, 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' ”