The U.S. Court of Appeals for the Federal Circuit upheld asummary judgment finding of non-infringement, ruling that the replacement of themold and carrier plate of an injection molding system was a permissible repairrather than an impermissible reconstruction. Husky Injection Molding Sys.,Ltd. v. R&D Tool & Eng'g Co., Case No. 01-1346 (Fed. Cir. May 17,2002). R&D had purchased one of Husky's injection moldingsystems and informed the Husky salesman of its intent to use the system to makereplacement molds. Husky then sued R&D for contributory infringement of itspatented injection molding system that uses a carrier plate that corresponds toa design-specific mold. In the injection molding system, the carrier plate allowspreforms to be removed from the mold before the preform is completely cool.Since the cooling process is the time-limiting step in the injection moldprocess, moving the preform out of the mold for cooling increases productionrates. If a customer wishes to change the design of the preform, it mustgenerally 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 ofthe useful lives of the mold and carrier plate. Husky conceded that the molds are staple items of commerceand, therefore, the sale of the molds alone does not constitute contributoryinfringement. Husky also conceded that the replacement of a spent mold andcarrier plate for purposes of repair would not constitute reconstruction.Husky's allegation was that the use of the replacement parts for unspent originalsconstituted an impermissible reconstruction. The district court grantedR&D's motion for summary judgement of no contributory infringement. Huskyappealed. The Federal Circuit acknowledged that it has "struggledfor years to appropriately distinguish between repair of a patented machine andreconstruction." The Court identified three repair/reconstructioncircumstances: the entire patented item is spent, and the alleged infringerreconstructs it to make it useable again; a part is spent, and the spent partis replaced to make the item useable; and the part is not spent but is replacedto enable the machine to perform a different function. The Court distinguished the second and third situations fromthat of Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro 1),a landmark case...
Distinction Between Permissible Repair and Impermissible Reconstruction Is Whether the Part Is 'Readily Replaceable'
|Author:||Mr Paul Poirot|
|Profession:||McDermott Will & Emery|
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