Fromberg, Inc. v. Gross Manufacturing Co.
FROMBERG, INC. v. GROSS MANUFACTURING COMPANY, Inc.
- Proceeding
- district
- Area
- civil
- Panel
- Jesse W. Curtis, Sr. (author)
Analysis
The court considered the defendant's motion for summary judgment in a patent infringement suit involving tire repair cartridges. The court granted the motion, holding that the defendant's sale of replacement rubber plugs did not infringe the plaintiff's patent because the plugs were unpatented components with only temporary usefulness.
| What the court decided | The model |
|---|---|
Defendant's motion for summary judgment is granted.“Motion for summary judgment is, therefore, granted.” | agree with court The court correctly applied the doctrine established in Aro Manufacturing Co. v. Convertible Top Replacement Co. and Morgan Envelope Co. v. Albany Paper Co. The rubber plug is an unpatented component that is consumed or has a temporary period of usefulness in the patented combination. Under established patent law, the sale of such components by a third party does not constitute infringement of the patent on the combination, as it is considered repair rather than reconstruction. The facts regarding the nature of the plug and the patent claim appear undisputed, supporting the grant of summary judgment. |
The order itself: sound — The order is legally sound. It correctly identifies the applicable legal standard for determining whether the sale of replacement parts constitutes infringement (the repair/reconstruction distinction). It accurately cites binding Supreme Court precedent (Aro and Morgan Envelope) that supports the conclusion that unpatented components with temporary usefulness can be replaced without infringing the patent on the combination. The application of these facts to the specific product (tire repair cartridge with replaceable rubber plug) is logical and consistent with the cited authorities.
Opinion — Curtis
CURTIS, District Judge.
The plaintiff manufactures and sells tire repair cartridges consisting of an elongated shell, somewhat like a rifle shell but open on both ends, and a cylindrical rubber plug compressed within the shell. It is the purpose of this shell, when used with an applicator, to dispense the rubber plug therein contained into an opening in the tire to repair the same. In order to re-use the metal shell it is only necessary to place therein another rubber plug. Neither the shell nor the rubber plug are patentable components, but it is the combination which is claimed as a subject of the patent in suit.
The defendant manufactures and sells rubber repair plugs adaptable for reloading plaintiff’s metal shells and teaches its customers that its plugs may be used to reload plaintiff’s empty shells by following simple instructions furnished by defendant. Defendant also purchases plaintiff’s cartridges and sells tire repair kits consisting of one of plaintiff’s cartridges, ready for use, and 20 or more rubber plugs of défendant’s manufacture, furnishing therewith instructions as to how to refill plaintiff’s shells.
Upon these facts plaintiff sues for infringement of its patent and the matter comes before us on defendant’s motion for summary judgment. Defendant urges that all the facts hereinabove stated are undisputed and that they establish non-infringement. With this conclusion we agree.
Plaintiff contends that the process of reloading the shell is in fact a “reconstruction” of the original cartridge, rather than a “repair” of it, under the cases holding that "reconstruction” is not permissible under the patent, while “repair” is. There are, no doubt, many cases holding that where the manufacture and sale of a single element of a patented combination with the intent that it shall be used with the other elements and so complete the combination, is an infringement if the use of the added elements constitutes a “reconstruction” of the original device, but not, if it constitutes only a “repair”. Morgan Envelope Company v. Albany Paper Company, 152 U.S. 425, 14 S.Ct. 627, 38 L.Ed. 500. But as pointed out in the Morgan Envelope case, these cases have no application to one where the element made by the alleged infringer is an article of manufacture, perishable in its nature, which it is the object of the mechanism to deliver, and which must be renewed periodically whenever the device is put to use. Although it cannot be said in the instant case that the rubber plug is perishable, it nevertheless has only a temporary use in the patentable combination.
In Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 343, note 9, 81 S.Ct. 599, 5 L.Ed. 592, the Court stated: “Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425 [14 S.Ct. 627, 38 L.Ed. 500] and Heyer v. Duplicator Mfg. Co., 263 U.S. 100 [44 S.Ct. 31, 68 L.Ed. 189], held that an owner or licensee of a patented ma*743chine or combination does not infringe the patent by replacing an unpatented element of the combination which has only a temporary period of usefulness (emphasis ours), so that replacement is necessary for continued utilization of the machine or combination as a whole”.
The plaintiff, having once sold its cartridge, is no longer entitled to the protection of its patent on the device sold, and the defendant, as a purchaser, may therefor without infringement replace, or advise others to replace, an unpatented component thereon with one of defendant’s own design and manufacture.
Motion for summary judgment is, therefore, granted.