1. Whether the repair of a patented article constitutes infringement when the repair is made to unpatented components of the patented article and is in compliance with the possible repairs described within the patent.
2. Whether an alleged infringer's necessary use of a specialized technique in repairing an integral component of the patented device constitutes reconstruction if the patent failed to claim the use of the required technique or repair procedure.
1. No. The repair of a patented article is permissible when made in compliance with the types of repairs described in the article's patent. In general, repair of unpatented parts of a patented article is permissible, provided such repair does not result in the creation of a "new article," as prescribed by the Supreme Court in Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 128 U.S.P.Q. (BNA) 354 (1961).
2. No. A patent must claim the use of the technique necessary to repair the claimed invention for such repair of the invention to constitute infringement.
Appellant Bottom Line Management, Inc. ("Bottom Line") owns U.S. Pat. No. 5,070,775 ("the '775 patent"), directed to cooking platens used in commercial, two-sided cookers. Once worn, the platens can be refurbished and resold for less than the purchase price of a new component. Bottom Line brought a patent infringement action against Appellees Pan Man, Inc., and Garry T. Less (collectively, "Pan Man") in the U.S. District Court for the Eastern District of Kentucky. The district court dismissed Bottom Line's claim of infringement of the '755 patent on the grounds that Pan Man had not performed infringing reconstruction, but rather permissible repair of Bottom Line's invention. Bottom Line appealed.
In reviewing the district court's grant of summary judgment to Pan Man, the Court of Appeals for the Federal Circuit observed that the purchaser of a patented article has the right to make repairs necessary to enable the patented article to function properly unless the purchaser has waived that right by express agreement. This right extends to second-hand purchasers of patented articles. As Pan Man had not relinquished any such right, the Court determined that, as second-hand purchasers and resellers of Bottom Line's patented platens, Pan Man had made permissible repairs to the platens. The Federal Circuit noted that the repairs were limited to re-coating the platens' cooking surfaces and straightening bent studs or replacing broken studs by soldering. The Court equated this repair of shorter-life components of the patented device to the right of a purchaser to make repairs as set forth by the Supreme Court in Aro Manufacturing Company, "no more than the lawful right of the owner to repair his property." See Aro, 365 U.S. 336, 346, 128 U.S.P.Q. (BNA) 359. The Court found that Pan Man's component repairs made did not transform the patented original into a "new article," as defined in Aro. See id. Therefore, such repairs did not infringe the '775 patent.
The Court additionally rejected Bottom Line's argument that Pan Man' hand-welding new studs onto some platens constituted infringing reconstruction. Bottom Line argued that the patent had taught the required specialized procedure in its claim of "threaded studs welded to and projecting from the upper surface of said plate." The Court found that, while the claim in question may have taught indirectly what amounted to "very specialized welding," Bottom Line could not use teaching not claimed in the relevant patent to convert permissible repair into infringing reconstruction. Thus, the Federal Circuit affirmed the district court's grant of summary judgment to Pan Man.
Prepared by the liibulletin-patent Editorial Board.