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Analysis of the Judgment

The principal privilege conferred by granting a patent is the right to exclude others from making,
using, and selling his invention during the life of the patent1. In enforcing this right, a patentee is
allowed to bring a tort action against anyone who, without the inventor's permission, makes, uses
or sells a device embodying a mechanism described by the claims of the inventor's patent or who
performs any combination of these acts2. However, a patentee attempting to use his patent to
obtain a monopoly upon an unpatented article of commerce is guilty of patent misuse and is
therefore barred from obtaining relief for patent infringement3.

Prior to the Supreme Court’s decision in this case, 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), U.S. 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.

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 while deciding the present
case upheld the principle laid down with respect to patents as laid down in the case of
United States v. Aloca4 where it was stated that the patent holder cannot prevent those to
whom he sells from reconditioning articles worn by use, unless they in fact make a new
article.

The judgment of the United States Supreme Court in the present case has been praised by many
critics on the ground that the judgment provides a more dearer, more well -defined standard. The
resulting benefit benefit to the producer and consumer of unpatented parts seems to

1
35 U.S.C. § 271 (1952) (The United States of America).
2
35 U.S.C. § 281 (1952) (The United States of America).
3
Motion Pictures Patents Company v. Universal Film, 243 U.S. 502 (1917) (The Supreme Court of the United
States of America).
4
United States v. Aloca, 148 F.2d 416 (1945) (The Court of the Second Circuit, The United States of America).
outweigh the risk of loss of creative incentive resulting from the rejection of the [prior,
multi-factor] test.5 However, in my opinion the judgment of the court is not a very sound one.
This is very substantiated with the fact that the United States Supreme Court in 1964 was
faced again with an identical question of law in 1964 in another case involving the same
parties where the Court itself held Aro. to be in contributory infringement of the
respondent's patent. The judgment in the present case gives one a feeling that the rights
afforded by a combination patent have been diminished, and it seems likely that findings of
forbidden reconstruction will in the future become exceedingly scarce6.

5
James C. Bageman, Contributory Infringement and the "Repair" Doctrine, 38 S. Cal. L. Rev. 363, 370–71 (1965).
6
Julius A. Shafran, 49 Cal. L. Rev. 988, 993 (1961).

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