As a community service, an educational series by the

IP and Business Law Offices of Howard L. Hoffenberg, Esq.

e inventions

and handling IP prosecution, business transactions and litigation.

Copyright 2010 The IP and Business Law Offices of Howard L. Hoffenberg, Esq. All Rights Reserved.

Return to Index of Tour of US Supreme Court Patent Cases from 1961 to 1999

HOLDING: (1) At times, Ford was licensed. For licensed sales, a patentee cannot impose a condition that replacement parts may be purchased only from a licensed supplier. The contrary term in the license is invalid. (2) At times Ford was not licensed. Where use infringes, repair does also, for it perpetuates the infringing use. (3) 35 USC 271(c) has a knowledge requirement that an alleged contributory infringer know that the combination for which its component was designed was both patented and infringing (not licensed to the user.). (4) A contributory infringer is not liable to disgorge its profits or pay a royality on its sales; for to do so would grant patent like protection to less than all of the claimed combination. (5) A contributory infringer is subject to an injunction; damages suffered by virtue of the prolongation of the use of the infringing article; damages from lost sales of spare parts by the patent owner itself, in a case of willful or bad-faith infringement recover punitive or "increased" damages under the statute's trebling provision. (6) A patentee could perhaps recover a royalty on sales of the patented article, even though such damages were primarily caused by the direct infringer, in a case where they could not be recovered from the direct infringer and its customers. (7) Any amount actually received from the direct infringer is a set off against this liability (no double recovery.)

MFG. CO. v. CONVERTIBLE

TOP, INC. [Aro II], 377 U.S. 476 (June 8, 1964

FACTS: A patent covered a combination of parts that make up a convertible top and not the fabric by itself. Initially, Ford had no license; but subsequently purchased a license on July 1, 1955. This license required purchase of replacement parts from Ford or Convertible Top. The patentee brought suit for contributory infringement against Aro who supplied replacement fabric to car owners.

Tour of US Supreme Court Patent Cases from 1961 to 1999

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A Fast and Easy Way to Learn the High Points of Patent Law and Related Anti-trust Law

Community Service and

Pro Bono

In addition to this education series, Mr. Hoffenberg gives of his time to benefit the community and contribute to the quality justice in the State of California. For many years, he served as a volunteer pro tem in the Municipal Court in traffic, landlord-tenant, small claims and short cause matters. Currently, Mr. Hoffenberg serves as a volunteer arbitrator for the Dispute Resolution Service in attorney-client fee disputes and as a quasi-volunteer mediator in the Court of Appeals.