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...