Electric Auto-Lite Co. v. P. & D. MFG. CO.
109 F.2d 566 · 1940 U.S. App. LEXIS 3950 · 44 U.S.P.Q. (BNA) 377
February 13, 1940 · Docket 170
Headnotes
Generated summaries- Headnote 1
The court held that the sale of breaker‑arms that substitute worn contact points is covered by the patentee’s implied repair license, because the parts are used to make the ignition apparatus function as intended, not to create a new article or to increase price.
- Headnote 2
The opinion emphasized that the defendant did nothing to further the repairmen’s practices, and therefore could not be held responsible for the alleged infringing replacements.
- Headnote 3
The court held that merely reproducing the plaintiff’s unpatented ignition components does not violate unfair‑competition law unless it misleads customers into believing the copies are the plaintiff’s goods.
- Headnote 4
The opinion stated that the defendant cannot be held responsible for unscrupulous repairmen’s substitutions absent any conduct by the supplier to further those practices, citing precedents.
- Headnote 5
The decision held that mere duplication of unpatented ignition components is lawful unless the similarity is used to mislead customers into believing the copied goods are those of the plaintiff, citing prior cases.
- Headnote 6
The court held that the defendant’s sale of breaker‑arms that substitute for worn contact points was permissible because the parts merely restored the patented ignition device to its usual condition, and there was no evidence the replacements were intended to raise prices.
- Headnote 7
The decision noted that the defendant did nothing to further the practices of unscrupulous repairmen, and therefore could not be held responsible for their substitutions.
- Headnote 8
The opinion stated that reproducing the plaintiff’s unpatented ignition components is lawful absent evidence that the similarity would mislead customers into believing the defendant’s goods were the plaintiff’s.
- Headnote 9
The court held that sales of breaker‑arms that replace worn‑out parts were not infringement because they merely restored the patented device to normal use and were sold at a low price, citing Wilson v. Simpson and Heyer v. Duplicator Mfg. Co.
- Headnote 10
The opinion stated that the defendant is not responsible for substitutions made by unscrupulous repairmen if it does nothing to further their practices, citing Miller Rubber Co. and Krem‑Ko Co. cases.
- Headnote 11
The court held that reproducing unpatented ignition components is permissible absent misleading customers, referencing Crescent Tool Co. and Cheney Bros. decisions on unfair competition.
- Headnote 12
The court held that the defendant’s sale of "breaker‑arms" that replace worn‑out contact points was permissible because the patentee’s implied license allows repair. No evidence showed the parts were sold to sabotage or to raise repair prices.
- Headnote 13
The court held that merely reproducing the plaintiff’s unpatented ignition components is permissible; liability arises only if the similarity misleads customers into believing the goods come from the plaintiff.
- Headnote 14
The decision noted that the defendant did not encourage the unscrupulous repairmen who installed the breaker‑arms, and therefore the supplier was not liable for their infringing actions.
- Headnote 15
The court held that replacing a worn‑out contact point or breaker‑arm restores the patented ignition device to its ordinary use. Because the patentee intends the buyer to enjoy the article beyond the life of the shortest‑lived part, such replacement falls within the implied repair license, absent sabotage or price‑inflating motive.
- Headnote 16
The court found no contributory infringement where the defendant’s “service parts” were advertised jointly with the original manufacturer and the record showed no knowledge that the parts would be used in infringing devices; joint advertising defeats the requisite intent and non‑staple requirement.
- Headnote 17
Copying the plaintiff’s unpatented ignition components was not unlawful because no likelihood of consumer confusion existed; similarity alone does not create an unfair‑competition violation.
- Headnote 18
The defendant was not held responsible for infringing substitutions made by unscrupulous repairmen, as the supplier did not encourage or participate in the repairmen’s practices.
- Headnote 19
The opinion explained that the license must be understood to permit replacement of a part if it is cheaper or more practical than rebuilding the old part, otherwise the license would be meaningless.
- Headnote 20
The defendant’s joint catalogue with Delco‑Remy and Northeast for “service parts” showed joint advertising, which defeats a finding of contributory infringement absent evidence of use in infringing articles.
- Headnote 21
The court noted that the defendant could not be held responsible for unscrupulous repairmen’s substitutions because the defendant did nothing to further such practices.
- Headnote 22
The court found that claims 3 and 11 of the Wollenweber patent were anticipated by the earlier Ericson and Schwarze patents and therefore could not be enforced.
- Headnote 23
The opinion held that duplicating the plaintiff’s unpatented ignition components is permissible, except where such similarity misleads customers into believing the goods are from the plaintiff.
- Headnote 24
The court held that the defendant’s “breaker‑arms” that replace worn‑out contact points were lawful replacements. The implied repair license covers such parts unless the replacement is used merely to raise the price of repair, which the record did not show.
- Headnote 25
The court found that the defendant’s joint catalogue with Delco‑Remy and Northeast for “service parts” could not constitute contributory infringement, and without proof that the parts were used in infringing devices, liability does not attach.
- Headnote 26
The opinion stated that the defendant is not responsible for substitutions performed by unscrupulous repairmen when it does nothing to further their practices, and cited precedent that a supplier’s liability is limited to its own conduct.
- Headnote 27
The court concluded that claims 3 and 11 of the Wollenweber patent are not valid because they are anticipated by the earlier Ericson and Schwarze patents, and therefore cannot be enforced.
- Headnote 28
The opinion explained that copying the plaintiff’s unpatented ignition components is lawful, except where the similarity misleads customers into believing they are purchasing the plaintiff’s goods; the court cited precedent on this principle.
- Headnote 29
The court reversed the lower court’s decree and dismissed the bill, finding no basis in the record to sustain the plaintiff’s claims and concluding that there was no reason to alter the earlier disposition.
Opinion
We decided these appeals in 1935 (2 Cir., 78 F.2d 700) but granted a rehearing because of the disqualification of one member of the original court, not known at the time. The case is in two parts: unfair competition, and patent infringement. As to the first, we need add nothing to what we said before; it is difficult to imagine a more open attempt to secure the monopoly of an industry without the aid of a patent. There is nothing unlawful in copying the unpatented products of another dealer down to the last detail, except in so far as the resulting similarity may become a means of securing his customers through their belief, so induced, that your goods are his. Crescent Tool Co. v. Kilborn & Bishop Co., 2 Cir., 247 F. 299; Cheney Bros. v. Doris Silk Corp., 2 Cir., 35 F.2d 279. The conditions of marketing in the case at bar precluded any such possibility, for car owners do not see the replacing parts when they are put into the machine, and would not recognize them as the plaintiff’s if they did. The defendant is not responsible for substitutions made by unscrupulous repairmen, if it does nothing to further their practices. Miller Rubber Co. v. Behrend, 2 Cir., 242 F. 515, 518; Krem-Ko Co. v. R. G. Miller & Sons, 2 Cir., 68 F.2d 872.
The alleged patent infringements were of two classes: (1) the replacement of new, for worn-out, parts in distributors and other ignition devices, sold by the plaintiff and others; and (2) the direct infringement of the Wollenweber patent (No. 1,669,888). As to the first, so far as the defendant’s “breaker-arms” and the like replaced worn-out parts of apparatus sold by the plaintiff, the sales were not infringements at all. The plaintiff’s argument appears to be that when a “contact point”, for example, is worn out, the buyer is licensed to replace only that, though to do so will cost more than to buy and install the “breaker-arm” which contains it. In Automotive Equipment Co. v. Connecticut T. & E. Co., 19 F.2d 990, the Third Circuit had exactly that situation before it, and held that it was an infringement to substitute the “breaker-arm”, but we understand that that was because it was cheaper to put in the point. Alhough that seems surprising as matter, of fact, the decision need not embarrass us, for we agree that if the repairman puts in a “breaker-arm” merely to run up a larger bill, it is not within the scope of the implied license, though even then the maker may not be liable. Be that as it may, there is no evidence of that sort in this record; “breaker-arms” sell for less than a dollar, and it is not to be gratuitously assumed that the trade practice was merely sabotage to raise the cost. The theory on which the repair of a patented article is allowed at all is that the patentee intends the buyer to have a longer use of it than the life of the shortest-lived part. Wilson v. Simpson, 9 How. 109, 126, 13 L.Ed. 66; Heyer y. Duplicator Mfg. Co., 263 U.S. 100, 44 S. Ct. 31, 68 L.Ed. 189. While in the nature of things there can be no rule as to where repair ends and reconstruction begins, clearly the implied license must be understood to cover a reasonable enjoyment of the privilege; and if it is cheaper to insert a new part than to cobble the old one back into service, the license covers just that; if it did not, the very presupposition on which it rests would be falsified.
In ‘addition to the supply of new parts for apparatus sold by the plaintiff, it charges the defendant with supplying repair parts for infringing articles sold by others. It is of course true that as to these the plaintiff gave no implied license, and, if the evidence stopped there, we should have to consider the validity of the patents. But, when scrutinized, the charge becomes baseless, and merely serves further to illustrate the plaintiff’s purpose to centre in itself a monopoly of the whole business. The only evidence that the defendant has furnished repair parts to the users of infringing apparatus concerns “Delco-Remy” and “Northeast” parts, sold by the United Motors Service, a branch of the Delco Remy Corporation. The plaintiff, in conjunction with that company and four others, got up and published a joint catalogue for the year 1932, in which appear, side by side, the “service parts” of both companies. The sale of parts, jointly advertised in this way, certainly could not be an infringement, and the defendant could not in its turn be a contributory infringer, unless it were. The plaintiff also vaguely charges that the defendant sells repair parts for apparatus sold by still other manufacturers, but we can find nothing in the record to support the assertion. It is apparent that the whole point is an afterthought anyway; the judge did not mention it in his opinion, it .does not appear in the assignments of error, and -the bill of particulars mentioned only “Delco-Remy” and “Northeast” parts.
Finally, we think that claims 3 and 11 of Wollenweber’s patent are not valid over Ericson (No. 1,385,368) and Schwarze (No. 1,286,803); and we can see no reason to add to the discussion of that question in our earlier opinion.
Other points are raised, but they too were adequately dealt with before. After carefully going over the case again, we can find no reason to change our first disposition of it.
Decree reversed; bill dismissed. •