| Aro Manufacturing Co. v. Convertible Top Replacement Co. | ||||||
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Supreme Court of the United States |
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| Argued October 13, 17, 1960 Decided February 27, 1961 |
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| Full case name | Aro Manufacturing Co. v. Convertible Top Replacement Co. | |||||
| Citations | 365 U.S. 336 (more) 81 S. Ct. 599; 5 L. Ed. 2d 592; 1961 U.S. LEXIS 1944; 128 U.S.P.Q. (BNA) 354 |
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| Prior history | Cert. to the United States Court of Appeals for the First Circuit | |||||
| Court membership | ||||||
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| Case opinions | ||||||
| Majority | Whittaker, joined by Douglas, Clark, Warren | |||||
| Concurrence | Black | |||||
| Concurrence | Brennan | |||||
| Dissent | Harlan, joined by Frankfurter, Stewart | |||||
Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961), is a United States Supreme Court case in which the Court redefined the U.S. patent law doctrine of repair and reconstruction. The decision is sometimes referred to as Aro I because several years later the Supreme Court readdressed the same issues in a second case involving the same parties—Aro II.[1]
The specific controversy in Aro concerned the replacement of a fabric top portion of an automobile convertible roof assembly. After some years, the tops became torn or discolored, often as a result of bird droppings, and owners wished to replace the cloth part without buying an entire new convertible top assembly.[2] The patent (U.S. Patent 2,569,724) covered the combination of the cloth and a number of metal parts that remained serviceable. Aro was a company that engaged in the supply of replacement cloth tops that fit various car models. Because Aro declined to pay a royalty to the patentee, patent infringement litigation followed.
Prior to the Supreme Court’s decision in Aro I, when a purchaser of a patented product replaced some components of the product (because they were worn or otherwise unsatisfactory to the owner of the product), US lower courts made the decision whether the conduct was permissible repair or impermissible reconstruction of the patented article by using a complex, multi-factor, balancing test. The courts weighed against one another factors such as the following, although there was no common denominator for them: the cost of the replaced component or components relative to the cost of the entire article, the number of replaced components versus the total number of components, the relative life spans of the different components, and whether the replaced component was the heart, essence, or “gist” of the invention. Thus the court of appeals had said in its opinion that the fabric "is not a minor or relatively inexpensive component" of the patented combination, or an element that would expectedly wear out after a very short period of use — although its "expectable life span" is shorter than that of the other components — and, for these reasons, it concluded that "an owner would [not] rationally believe that . . . he was making only a minor repair" in replacing the worn-out fabric, but that, instead, the replacement "would be counted a major reconstruction."[3]
The Supreme Court’s own few precedents, however, tended to paint with a broader brush instead of resorting to the foregoing factor analysis. The Supreme Court stated that “the distilled essence” of its case law had been stated by Judge Learned Hand in United States v. Aluminum Co. of America[4] as: "The [patent] monopolist cannot prevent those to whom he sells from . . . reconditioning articles worn by use, unless they in fact make a new article."[5] Accordingly, the Court rejected the factor analysis approach of lower courts to repair and reconstruction:
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. While there is language in some lower court opinions indicating that "repair" or "reconstruction" depends on a number of factors, it is significant that each of the three cases of this Court, cited for that proposition, holds that a license to use a patented combination includes the right "to preserve its fitness for use so far as it may be affected by wear or breakage."[6]
The Court accordingly ruled in favor of Aro, and declared this rule for such cases:
The decisions of this Court require the conclusion that reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to "in fact make a new article," after the entity, viewed as a whole, has become spent. In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity. …Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. Measured by this test, the replacement of the fabric involved in this case must be characterized as permissible "repair," not "reconstruction."