Repair vs. reconstruction of unpatented components of a patented article

By Mark Einsiedel, attorney, Fay Sharpe LLPMark Einsiedel

While they may have similar meanings to a layperson, the terms “repair” and “reconstruction” have been used by the courts to distinguish between those activities that are permissible and those that are prohibited with regard to a patented article once it has been placed into commerce by the patentee. Courts distinguish between the right to reproduce a substantially new article from the component parts of the patented article (akin to prohibited “reconstruction”) and the right to “preserve the useful life of the original [patented] article” (akin to “repair). Id.

“Repair” of a patented article is a complete defense to a claim of patent infringement. (See, e.g. Jazz Photo Corp v. Int’l Trade Comm’n, 264 F.3d 1094, 1101 (Fed. Cir. 2001)). That is, the purchaser of a patented article “has the rights of any owner of personal property, including the right to use it, repair it, modify it, discard it, or resell it.”

Actions that have historically been classified as permissible repair include the disassembly, refurbishing, cleaning, modification, or resizing of unpatented components of a patented system when such activities extend the useful life of the original article. “Reconstruction,” on the other hand, generally requires a more extensive showing of recreation of a new article made after the patented article has become spent. (See also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346 (1961). “Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property.”) That is, the aforementioned rights of ownership of a patented article specifically exclude “the right to construct an essentially new article on the template of the original, for the right to make the article remains with the patentee.” Admittedly, a determination of whether a certain set of activities constitutes permissible repair or prohibited reconstruction is not easy and is very fact-specific. Nonetheless, a careful review of the case law can begin to help separate these concepts.

In Wilbur Ellis Co. v. Kuther, 377 U.S. 422 (1964), the United States Supreme Court decided the purchaser engaged in extensive refurbishment, including the modification and resizing of at least six parts of a patented machine. While recognizing that these actions were more than customary repair of spent or broken components, the Court nonetheless found that the activities were “more like repair than reconstruction, for it extended the useful life of the original machine.” Similarly, in Dana Corp. v. Am. Precision Co., 827 F.2d 755 (Fed. Cir. 1987), the Federal Circuit found that the “rebuilding” of worn components, even done on a commercial scale, constituted permissible repair. Several other cases have likewise found that replacing or refurbishing unpatented components prior to their failure likewise extends the useful life of the patented article and is akin to repair.

In Sage Prods., Inc. v. Devon Indus., Inc., 45 F.3d 1575, 1578 (Fed. Cir. 1995), the Federal Circuit emphasized that the courts had “never said that an element is spent only when it is impossible to reuse it … we believe that when it is neither practical nor feasible to continue using an element that is intended to be replaced, that element is effectively spent.” For example, in Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445 (Fed. Cir. 1997), the purchaser modified unused printer cartridges, changing only the manner in which the cartridge’s cap was used. The Federal Circuit found that the purchaser’s modification was akin to a permissible repair, because it allowed customers to “use the cartridges for the duration of the life of the patented combination, rather than be limited by the duration of the ink supply in the cartridge.” The court continued, finding that even if the purchaser’s actions constituted a “making” of the patented printer cartridges (which would otherwise be infringing), “they were made from new and unused HP cartridges purchased from a legitimate source,” and the purchaser “d[id] not replace any of the elements recited in the claims.”

In comparison, the United States Supreme Court has found that impermissible reconstruction of a patented article, composed of unpatented components, “is limited to such a true reconstruction of the [article] as to in fact make a new article.” Also, in Sandvik Aktiebolag v. E.J. Co., 121 F.3d 669 (Fed. Cir. 1997), the Federal Circuit found impermissible reconstruction where a patented drill bit was “recreated” by constructing an entirely new cutting tip after the original cutting tip could no longer be reshaped and reused because a “new article” had been made after the patented article, “viewed as a whole, ha[d] become spent.”

Mark S. Einsiedel is an attorney with Fay Sharpe LLP. If you have questions about patents and patent law, reach him at meinsiedel@faysharpe.com or (216) 363-9000.