Distinction Between Permissible Repair and Impermissible Reconstruction Is Whether the Part Is 'Readily Replaceable'

Author:Mr Paul Poirot
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit upheld a

summary judgment finding of non-infringement, ruling that the replacement of the

mold and carrier plate of an injection molding system was a permissible repair

rather than an impermissible reconstruction. Husky Injection Molding Sys.,

Ltd. v. R&D Tool & Eng'g Co., Case No. 01-1346 (Fed. Cir. May 17,


R&D had purchased one of Husky's injection molding

systems and informed the Husky salesman of its intent to use the system to make

replacement molds. Husky then sued R&D for contributory infringement of its

patented injection molding system that uses a carrier plate that corresponds to

a design-specific mold.

In the injection molding system, the carrier plate allows

preforms to be removed from the mold before the preform is completely cool.

Since the cooling process is the time-limiting step in the injection mold

process, moving the preform out of the mold for cooling increases production

rates. If a customer wishes to change the design of the preform, it must

generally buy both a new mold and a corresponding carrier plate. On average,

customers replace these parts every three to five years, prior to the end of

the useful lives of the mold and carrier plate.

Husky conceded that the molds are staple items of commerce

and, therefore, the sale of the molds alone does not constitute contributory

infringement. Husky also conceded that the replacement of a spent mold and

carrier plate for purposes of repair would not constitute reconstruction.

Husky's allegation was that the use of the replacement parts for unspent originals

constituted an impermissible reconstruction. The district court granted

R&D's motion for summary judgement of no contributory infringement. Husky


The Federal Circuit acknowledged that it has "struggled

for years to appropriately distinguish between repair of a patented machine and

reconstruction." The Court identified three repair/reconstruction

circumstances: the entire patented item is spent, and the alleged infringer

reconstructs it to make it useable again; a part is spent, and the spent part

is replaced to make the item useable; and the part is not spent but is replaced

to enable the machine to perform a different function.

The Court distinguished the second and third situations from

that of Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro 1),

a landmark case in which the Supreme Court set the rule that the replacement of

a spent part of a...

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