Doctrine of Repair and Reconstruction

Doctrine of repair and reconstruction, or repair doctrine, in U.S. patent law allows a person who is authorized to produce, use, or distribute a patented item to repair and replace unpatented components.  Essentially, the owner of a patented property has a lawful right to repair or replace his/her property. 

The repair and reconstruction doctrine was established by Aro Mfg. Co. v. Convertible Top Replacement Co. 365 U.S. 336 (S. Ct. 1960) (Aro I).  In Aro I case, petitioner manufacturer produced replacement fabric for convertible tops, on which respondent manufacturer held a valid patent. Respondent had brought an action against petitioner for infringing patent and enjoining petitioner from manufacturing replacement fabrics for such tops. The court held that fabric used was an unpatented element of respondent's combination patent, which covered only the combination of certain components, one of which was a flexible top material. However, no claim that the fabric or its shape, pattern, or design constituted the invention was made in application or included in patent. Thus, the fabric was an unpatented element of respondent's combination patent. As an unpatented element of a combination patent, the fabric could be produced and sold to owners of convertibles to replace worn out tops in order to continue to utilize convertible top.

Therefore, under repair doctrine, an owner or licensee of a patented device or combination does not infringe the patent by replacing an unpatented element of the combination that has only a temporary period of usefulness, so that replacement is necessary for continued utilization of the machine or combination as a whole.

However, the repair doctrine is not a loophole for a person, who purchased a first patented device, to construct another patented device entirely from components purchased from unlicensed sources after the first patented device reaches the end of useful life.  This limitation to the repair and reconstruction doctrine was illustrated by Stukenborg v. United States, 372 F.2d 498, 153 USPQ 292 (Ct. Cl. 1967).  In the Stukenborg case, plaintiff patentees sued to recover from defendant government for its unauthorized use or manufacture of plaintiffs' inventions for turnbuckle assemblies. The court held that there was no infringement where defendant used components from unlicensed sources to replace like parts in assemblies from licensed sources.  However, the court found that infringement existed where defendant did not have an implied license to use turnbuckle assemblies constructed entirely from components defendant purchased from unlicensed sources.  In clarifying the repair and reconstruction doctrine, the Stukenborg court states that the mere fact that a person has an implied license to use a device that is covered by one set of claims does not give the person an implied license to use the device in combination with other devices in which the combination is covered by another set of claims. Id., at 748. 

The following is an illustration of the repair and reconstruction doctrine using an example fact pattern:

Fact Pattern: Consumer bought a Product A, protected by Patent A, comprising a Component B, protected by Patent B, and an unpatented Component C.  In order to repair Product A, Consumer buys Components B and C from unlicensed Supplier.

Summary of Conclusion:

1. By repairing Product A, Consumer does not infringe upon Patent A.
2. By using an unlicensed Component B, Consumer infringes upon Patent B.
3. By supplying Component B without a license, Supplier infringes upon Patent B.
4. By supplying Component C, Supplier does not directly or contributorily infringe upon Patent A.

 Analysis:

1. By repairing product A, does Consumer infringe Patent A?

Answer: No. 
Analysis: According to the repair doctrine, a patent monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact make a new article. Maintenance of the "use of the whole" of the patented combination through replacement of a spent, unpatented element does not constitute reconstruction. Aro I., 365 U.S. 336.

Therefore, when Consumer bought product A, Consumer has acquired the implied license to repair Product A without infringing upon Patent A.  Consequently, Consumer can buy Component B from a licensed source and Component C anywhere to repair Product A.

2. When repairing Product A by using Component B from an unlicensed source, does Consumer infringe upon Patent B?

Answer: Yes.
Analysis: The right of repair does not include the right to make, use or sell without authority parts or elements that are the subject of a separate claim or patent.  See, e.g. Stukenborg v. United States, 372 F.2d 498, 153 USPQ 292 (Ct. Cl. 1967); Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175, 1186, 228 USPQ 1, 8-9 (D. Del. 1985), aff'd, 790 F.2d 882, 229 USPQ 814 (Fed. Cir. 1986) ("Of course if a component used to repair a patented combination is itself patented, then a purchaser's authorization to use the patented component for repair without the patent holder's permission is severely restricted…..This court, however, has already determined that [the claim of the patent] does not read solely on the [the component at issue."); Medeco Security Locks, Inc. v. Lock Technology Corp., 199 USPQ 519 (S.D.N.Y. 1976)("Since each claim of a patent constitutes a separate grant of monopoly which must be read clear that the Medeco key is separately protected component part of the patented lock and key combination."); Esco Corp. v. Hensley Equip. Co., 251 F.Supp. 631, 148 USPQ 600 (N.D. Tex. 1966), aff'd, 383 F.2d 252 (5th Cir. 1967); National Malleable casting Co. v. American Steel Foundries, 182 F. 626, 639-41 (D. N.J. 1910); Singer Mfg. Co. v. Springfield Foundry Co., 34 F. 393 (C.C.D. Mass. 1888); Aiken v. Manchester Print Works, 1 F. Cas. 245 (No. 113) (C.C.D. N.H. 1865).

Therefore, the repair doctrine gives Consumer an implied license to Patent A when repairing Product A, but does not give Consumer an implied license to Patent B.  If Consumer uses a Component B from an unlicensed source, Consumer infringes upon Patent B.

3.  By selling to Consumer Component B without a license, does Supplier infringe upon Patent B?

Answer: Yes.
Analysis: As noted above, the right of repair does not include the right to make, use or sell without authority parts or elements that are the subject of a separate claim or patent.

In Esco Corp. v. Hensley Equip. Co., appellee, the assignee of an excavating teeth patent, sued appellant for patent infringement.  The patent embraces the complete machine, i.e., the excavating tooth, and also the two basic parts, wear point and adapter.  The Esco court decided that appellant infringed specific claims of the patent by manufacturing and selling patented wear points, and cannot be protected by the doctrine of legitimate repair.  To support its decision, the Esco court cited a holding from the Warner court, which states that to supply patented parts of a patented combination without authority from the patentee to purchasers of the combination is a direct infringement of the claims of the patent on the part and a contributory infringement of the claims of the patent on the combination. Warner & Swasey Co. v. Held, 256 F. Supp. 303, 311 (E.D.Wis., 1966).  In fact, the Warner court has stated clearly that there is a limitation upon the right of replacement, and the part replaced must be an unpatented part of the combination.  Id. at 311.

Therefore, by selling the patented Component B without a license, Supplier infringes upon Patent B.

4. By selling to Consumer the unpatented Component C, does Supplier directly or contributorily infringe upon Patent A?

Answer: No.
Analysis: In Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175 (D. Del. 1985), plaintiffs manufactured a tomato harvester that utilized a patented "header" component. Defendant sold replacement discs made to fit the header. Plaintiffs alleged patent infringement. The court held that the sale of an unpatented component of a combination patent was not direct infringement. Furthermore, because the replacement of the discs by purchasers was repair and not reconstruction of the header, the purchasers were not direct infringers and the defendant could not be held contributorily liable for selling the discs.

Therefore, Supplier does not directly or contributorily infringe upon Patent A by supplying Component C to Consumer.

Thanks for reading!
Connie
connie@patentonomy.com
www.patentonomy.com