Charles Hieken: -- as construed by the court below to confer patent monopoly over an unpatented element that is not the discovery of an inventor. Our brief also discusses whether a final judgment, dismissing a complaint for a patent infringement, can include an advisory finding not relevant to deciding the case or controversy between the parties that a patent is valid. We leave to our memorandum, filed last August, a discussion of respondent's motial -- motion to settle order in which respondent seeks to exclude certain material related to respondent's inequitable conduct in violation of the antitrust laws and misusing combination patents to restrain trade of non-patented goods. We turn, first, to a discussion of the scope of the combination patent monopoly. The combination patent here in suit is entitled convertible automobile folding top with automatic seal at the rear quarter. Now, the combination patent in suit here covers a combination of elements which function together to affect a water-tight seal at the rear quarter of the automobile. One of the elements in the patented combination is the unpatented fabric element. There is no separate claim to the fabric and, therefore, the fabric element is itself not patented. Ford and General Motors cars for the years in the early 1950s embodied the patented combination as original equipment. The petitioners make, sell, and on occasion install only replacements for the unpatented fabric element of the patented combination. As a result of this activity, respondent charged petitioners with infringement and contributory infringement. The District Court, the first time around, found both infringement and contributory infringement arising from the manufacture, installation, and sale of these unpatented replacement fabrics for both Ford and General Motors cars, and accordingly entered an interlocutory judgment. The Court of Appeals affirmed that judgment. This Court then granted certiorari and reversed. After denying respondent's petition for rehearing or any alternative, a motion for a clarification of opinion in which respondent advanced the same arguments that it had advanced in its brief on the merits and is now advancing in this hearing that it was entitled to patent monopoly over replacement fabrics for Ford cars even though it wasn't entitled to monopoly rights over replacement for General Motors cars. This Court then remanded the case directly to the Massachusetts District Court. The Massachusetts District Court, first, entered final judgment, dismissing the complaint with cause to petitioners and dismissing petitioners' counter claim without cause. At the same time, it held the patent valid. We move to amend and, accordingly, the District Court struck out the finding of validity from its final judgment and also amended the final judgment to expressly state that the dismissal of our counter claim was without prejudice. Respondent then appealed from this decision of the District Court, claiming that it was entitled to monopoly rights over the unpatented replacements for Ford cars. And, petitioners cross-appealed, claiming that the record, then before the court, required a conclusion that not only had respondent and its assignor misused the combination patent to restrain trade of non-patented replacement fabrics and was, therefore, barred for maintaining either an action for a direct or contributory infringement, but also had violated the antitrust laws. Well, the Court of Appeals vacated the District Court final judgment and reinstated that portion of its prior judgment that had been reversed by this Court dealing with replacement fabrics for Ford cars. And, they conferred patent monopoly over some unpatented replacement fabrics for Ford cars, depending upon the interpretation of a private agreement between respondent's assignor and the Ford Motor Company. In that private agreement, Ford had released -- or rather respondent's assignor had released Ford and owners of its cars from liability arising from the manufacture, use, and sale of the patented convertible automobile but expressly reserved the right and exercise the right to license the manufacture, use, and sale of the unpatented replacement fabrics. The Court of Appeals, in reviewing the decision of this Court, said that what the Court said in its opinion gave it little guidance, but what the Court did not say, it felt, meant that the Court was not deciding the question as to the unpatented fabrics for so-called “unlicensed Ford cars.” And, while the Court of Appeals did quote what this Court said was the principle and determinative question presented here, whether the owner of a combination patent comprised entirely of unpatented elements has an additional patent monopoly on the manufacture, sale, and use of the several unpatented components of the patented combination, the Court of Appeals did not quote the answer that this Court gave to that question. And, this Court answered that question by saying “no element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how difficult or costly replacement may be.” Now, it's silly to distinguish between the replacement fabrics for Ford cars and for General Motors cars because the replacement fabrics for Ford cars are just as unpatented as those for General Motors cars. And, this Court pointed out the basic fallacy in respondent's position in the prior opinion as follows, which is just as applicable today. They said the basic fallacy in respondent's position is that it requires ascribing to one element of the patented combination the status of patented invention in itself. Now, the interlocutory judgment that was reviewed and reversed previously by this Court dealt with replacement fabrics for both Ford and General Motors cars, and whatever was before the Court was finally disposed of. And, the Court of Appeals had no basis for reexamining the disposition of this case. The Court recently held so in NAACP versus Alabama in 360 U.S., and that case cited Siebel versus United States way back in 12 Peters. It is also inconsistent with the Mercoid cases to confer monopoly rights in the unpatented replacement fabrics for Ford cars. In the Mercoid cases, this Court decided that the combination patentee could not restrain trade or prevent competition in the sale of a non-patented element for original installation in a patented machine that was sold without the patentee's consent. A fortiori, the combination patentee cannot forbid the sale of a non-patented replacement fabric for a replacement installation in a patented machine that was sold with the patentee's consent. Now, respondent will say that it wasn't sold with the patentee's consent because it was only a release that was granted to the owners of the Ford cars. But, the fact is that respondent's assignor got $73,000 from the Ford Motor Company in exchange for release from all liability arising from the manufacture, use, and sale of these patented machines. It seems reasonably obvious that the respondent or its assignor could not have maintained an action for a direct infringement against the Ford car owner after it had released the owners of the Ford cars from liability and since a liability for contributory infringement is predicated upon their first being liable -- liability for a direct infringement. We do not see how respondent could possibly maintain an action for a contributory infringement. Moreover, if we accept respondent's contention in this case, we're going to be departing from a long line of patent antitrust cases in which this Court has consistently held that the patentee is forbidden from expanding the scope of this combination patent monopoly. That line of cases dates back to 1917 when this Court entered its opinion in the Motion Picture Patents case back in 243 U.S. And, only recently, in United States versus Loews, Inc., this Court restated the significance of that line of cases in the following manner. The Court said “these cases reflect a hostility to use of the statutorily granted patent monopoly to extend the patentee's economic control to unpatented products. The patentee is protected as to his invention but may not use his patent rights to exact tribute for other articles.” And, that's just exactly what respondent and its assignor have done in this case. They have expanded a pair of combination patent monopolies to restrain trade in these unpatented replacement fabrics and we say that that conduct is to be measured by the antirust laws, as this Court pointed out in the second Mercoid case, the legality of any attempt to bring unpatented goods within the protection of the patent is measured by the antirust laws, not the patent law. Now, the court below didn't say that the record didn't show an antirust law violation. The Court of Appeals said that the short answer to petitioner's claim, as appellants below seeking relief from the consequences of respondent's antitrust law violations, is that they never pleaded a cause of action under the antitrust laws. Well, I'm just going to read an excerpt from the pleading and you'll notice in the opinion of the court of -- it's pages 10-11, at the bottom of page 10, “you'll notice in the opinion of the Court of Appeals that they do not quote any portion of our pleading.” We said, in our answer in counter claim, said “Automobile Body Research Corporation,” that's respondent's assignor, “has entered into at least one licensing agreement and/or has caused others to be sublicensed under agreements improperly extending the scope of the claim's subject matter of said patent and has thereby misused said patent and has improperly restrained commerce.” And, on December 13, 1962, the Court of Appeals handed down its opinion in this case. 10 days before, this Court had reversed that very Court of Appeals in the case of Fullman versus Davis, and this is what the Court said in considering the sufficiency of a pleading. If the -- this was in 371 U.S. “if the underlying facts or circumstances relied upon by a pleader may be a proper subject of relief, he ought to be afforded an opportunity to test his claim on the merits.”
Byron R. White: (Inaudible)
Charles Hieken: Well, that -- I'm not to going to limit ourselves to that, Your Honor, because we also said “by virtue of these facts, Automobile Body Research Corporation has improperly created a monopoly and is misusing its patents and, accordingly, such misuse is a tribunal move to the plaintiff.”
Byron R. White: (Inaudible)
Charles Hieken: Entire --
Byron R. White: Plaintiff --
Charles Hieken: Pleading --
Byron R. White: (Inaudible)
Charles Hieken: Yes, Your Honor. Now, it's true that we did not cite the antitrust statutes but, as I read Fullman versus Davis and Conley versus Gibson in 355 U.S. which preceded it, I see no requirement that the complainant cite the statutes. After all, it's not a brief. It's just a complaint. And --
Byron R. White: (Inaudible)
Charles Hieken: Well, we had both in both ways, Your Honor. We further answered by way of counter claim and affirmatively sought declaratory relief holding that the patent had been misused and we also included a general prayer for relief asking the Court to give us whatever relief we're entitled to.
Byron R. White: Where is that?
Charles Hieken: Oh, that is -- well, we have, I believe on page 67 of the record. It seems to me, I remember the declaration for -- yes, 67. That this Court find and enter a decree herein, holding that said patent, number 2569724, has been used. That these defendants have judgment for cause and such other and further relief as equity may require to this Honorable Court may see the unjust. Now, it's true that there was not a specific prayer for treble damages but it is immaterial what our prayer for relief is because Rule 54 (c) of the Federal Rules of Civil Procedures expressly provides that, except as to a final judgment, except as to a party against whom a judgment is entered by default, every final judgment shall grant the relief to which the party in whose favor it is rendered is entitled even if the party has not demanded such relief in its pleadings.
Byron R. White: Is there (Inaudible)
Charles Hieken: Yes it is in the record Your Honor. The -- part of it is in the prior records, Your Honor.
Byron R. White: In another case?
Charles Hieken: In the -- in volume 1, we have part of our answer in counter claim, that's volume 1 on -- in number 21 October, term 60, starting at page 8.
Byron R. White: (Inaudible)
Charles Hieken: Yes -- yes it is because a motion for relief to use the record was granted at the time certiorari was granted. So, it is in the case, Mr. Justice White.
Speaker: (Inaudible)
Charles Hieken: To the antitrust laws? In the --
Speaker: (Inaudible)
Charles Hieken: No specific -- no, Your Honor. We rely on our statement that the --
Speaker: (Inaudible)
Charles Hieken: Well, we say that that when measured, that as -- that this is -- we're relying on the provisions of Rule 54 (c). We're saying that this pleading is sufficient to support the introduction of re -- of evidence in the record which, when the ru -- when the provisions of Rule 54 (c) are applied, entitled us to be relieved from the consequence of these antitrust law violations. This very same -- if you look at the Mercoid cases, the very same factual happenings were relied upon by the Court in finding both a misuse of the combination patent and a violation of the antitrust laws, and there are lower court decisions which point out that, so far as the facts are concerned, the facts which establish misuse are very close to those which establish an antitrust law violation.
Speaker: (Inaudible)
Charles Hieken: No, Your Honor. We did argue that we were entitled to relief, but since the interlocutory judgment reviewed by this Court before dealt only with the complaint for patent infringement, our rights to relief on the counter claim were not considered and it --
Speaker: (Inaudible)
Charles Hieken: No, Your Honor. There was -- only defensively. We argued misuse defensively.
Speaker: (Inaudible)
Charles Hieken: Go on.
Speaker: (Inaudible)
Charles Hieken: Yes.
Speaker: (Inaudible)
Charles Hieken: Your Honor.
Speaker: (Inaudible)
Charles Hieken: No, Your Honor.
Speaker: Well, this doesn't mean (Inaudible)
Charles Hieken: Yes, Your Honor. It had actually been on file but it was not printed in the record until the second appeal. An -- an interlocutory judgment dealing with antirust violations is not subject to appellate review, and only an interlocutory judgment for a patent infringement is. And, if you look at the judgment of the District Court, which is at -- in volume 1 of the prior record, pages 42-44, why, you'll see that there is absolutely no disposition of our counter claim. The sole disposition of our claim for concerning misuse is that it's a defense which I find clearly not made out. And, one of the elements that we rely upon in the present case in support of the judgment in our favor below is that there was additional evidence which came into the record which the courts below could have and should have looked at, concerning --
Byron R. White: (Inaudible)
Charles Hieken: Yes, Your Honor.
Byron R. White: (Inaudible)
Charles Hieken: Yes, Your Honor.
Byron R. White: And (Inaudible)
Charles Hieken: That is correct, Your Honor.
Byron R. White: (Inaudible)
Charles Hieken: That --
Byron R. White: And you came up here (Inaudible)
Charles Hieken: That isn't -- that is not correct, Your Honor. The -- the --
Byron R. White: (Inaudible)
Charles Hieken: No, I --
Byron R. White: (Inaudible)
Charles Hieken: No I'm -- I'm sorry, Your Honor. What -- what I meant to say was that our counter claim, asking for affirmative relief for a declaration the patent had been misused was not here before. The Court of Appeals said that we argued and briefed the question of misuse but that they did not consider our statement of questions presented as properly including the issue of misuse on that prior appeal.
Speaker: (Inaudible)
Charles Hieken: Yes, Your Honor. But it was -- this Court said in a footnote, misuse is not an issue in this case, and that the dissenting justices said misuse is not an issue in this case at this time. Now, it's going to be -- I don't have the time to really discuss the events that happened here, but I think it's perfectly clear form the record as to what happened in this case. That this is a case where this respondent, Shell Su Incorporation, was set up in the month of April of 1956, assigned a territorial grant limited to the Commonwealth of Massachusetts in this patent and, in that same month, brought this suit against these petitioners and the whole time the record shows that that's all this respondent has been doing is maintaining this suit against these petitioners. And, whenever its assignor wants some kind of an agreement to help it further its scheme to license this unpatented replacement fabrics, right away, the agreements flow from respondent, and whenever respondent needs some additional rights to come from respondent's assignor, why, respondent's assignor gladly assigns its -- whatever rights are needed, and that was shown in the record after the decision of the Court of Appeals. Respondent went all through this case until the judgment of the Court of Appeals, with just a territorial grant, limited the Commonwealth of Massachusetts. Then, after they win, or apparently have won, they get an assignment from respondent's assignor in which the rest of the rights in this combination patent to the United States is assigned to respondent. Then, respondent goes into the District Court and says “look, I have all the rights in this patent. Now, it's not necessary for the master to segregate damages between Massachusetts and the rest of the United States.” At the same time, he asked for a permanent injunction, forbidding us from selling these unpatented replacement fabrics and then denying these motions if this conduct apparently got too much for the District Court because it said that it was not at all satisfied with the plaintiff's ingenious appearing explanation as why it is trying to increase its bets now that its horse is practically across the finish line and, in all probability, a winner. So, this case finally comes down to this, Your Honors. An owner of a combination patent cannot treat an unpatented element of that combination as if it were patented. And, if he does, if an addition to deriving his profits from the patented machine on which the law gives him a monopoly, he also tries to derive his profits from the unpatented replacement elements necessary to the continued use and operation of the machine, he violates the antitrust laws and is subject to the consequences. We respectfully urge the Court to discourage other combination patentees from repeating the illegal activities apparent in this record by relieving petitioners of the consequences of respondent's antitrust law violations. Thank you.
Byron R. White: (Inaudible)
Charles Hieken: Yes, Your Honor.
Byron R. White: (Inaudible)
Charles Hieken: It isn't a claim of a patent, Your Honor. Our claim was this. The patent covered a -- it was a combination patent covering the entire convertible automobile automatic folding top, and that was the limit of his monopoly. He had the right to license the manufacture, use, and sale of the patented convertible automobile.
Byron R. White: (Inaudible)
Charles Hieken: Yes.
Byron R. White: And (Inaudible) licensee attempts to hold an infringer and thinking someone is infringing because he is making use of these parts that are patent -- patent this combination --
Charles Hieken: Yes.
Byron R. White: Making nuts and bolts.
Charles Hieken: Yes.
Byron R. White: And, the argument is whether there's fair weight if they get them all and it is not an infringement to make the nuts and bolts (Inaudible) they automatically violates the (Inaudible)
Charles Hieken: If the nut and bolt, as you say, is a non-patented element of the patented combination, yes, that is corre7ct. But, in the Mercoid case --
Byron R. White: (Inaudible)
Charles Hieken: Yes.
Byron R. White: (Inaudible) actually have to get (Inaudible)
Charles Hieken: Well, Your Honor, in 1944, 20 years ago, in an -- in a case where it wasn't a question of a replacement element, where the patentee was attempting to derive his profit from the original sale and use of the patented combination, this Court says that -- said that you have to look at the claims and you can only license in your -- what you claim and it's important that we have this rule. The statute says if you want to exercise patent monopoly over something, you have to particularly point out and distinctly claim the subject matter which you regard as the invention. And, this Court pointed out in General -- think it was General Electric Company versus Wabash Company that the importance of having these claims that is not only do the claim service as a basis by which the patent office examiner can examine the alleged inventive subject matter to compare to the -- with the prior or to see if it is an invention, but it also serves as a basis for letting an ordinary businessman know what is the scope of the monopoly of the combination of the patent monopoly. So, he ought to be able to pick up a patent document and see whether he makes an ordinary unpatented article, like this piece of fabric, whether he infringes the patent.
Byron R. White: (Inaudible)
Charles Hieken: Well, it's hard to say that this is a good faith mistake, Your Honor, when you see the f -- when you see the formation of this Shell Corporation.
Byron R. White: (Inaudible)
Charles Hieken: Was that considered wrong?
Byron R. White: (Inaudible)
Charles Hieken: I -- I think so, Your Honor, yes. The Court of Appeals -- as a matter of fact, the first time around, made the very serious error that they call the unpatented element of the patented combination. They called it patented, and the court pointed out of course, in accordance with a long line of decisions, that in order for a thing to be patented, it must be separately claimed. And, even in Morgan Envelope case, an old case. It was pointed out a long time ago that if you want to exercise patent monopoly over a non -- over a single element of a combination, you have to claim it separately in a valid patent. There was a case where the claim to the oval toilet-paper roll was held invalid and so, the patentee couldn't exercise monopoly rights on the combination of the holder in the toilet-paper roll.
William J. Brennan, Jr.: (Inaudible) view the fact that it (Inaudible) that, in any event, he could've (Inaudible) and may merely effect that that, in it of itself, would entitle him to (Inaudible) and it's only in the event that he had caused (Inaudible)
Charles Hieken: Excuse me.
William J. Brennan, Jr.: It's only in the event that he had caused (Inaudible) making the considered provision to repair that (Inaudible)
Charles Hieken: This -- this is a possible -- this is possible --
William J. Brennan, Jr.: (Inaudible)
Charles Hieken: way of -- it's an alternative ground. That's right, yes, Your Honor. But we say that --
William J. Brennan, Jr.: (Inaudible)
Charles Hieken: That is correct, Your Honor. In -- in as far as dealing with the complaint for patent infringement, yes, sir.
Byron R. White: Wouldn't the court have passed a -- wouldn't the court adhere the first case and, after you have reached your separate defense, (Inaudible)
Charles Hieken: I think so, Your Honor. I don't think it did. I think it just made the plain statement -- the plain logical statement that the making -- that the installation of a non-patented element in a patented combination is not a making of the patented combination and, therefore, not a direct infringement. The use of that unpatented element is not the use of the whole patented combination and, therefore, not --
Byron R. White: (Inaudible)
Charles Hieken: Oh --
Byron R. White: -- the infringement argument.
Charles Hieken: Yes Your Honor. And, there is no explanation as to why the court said misuse is not an issue in this case.
Byron R. White: Well, I don't think there's a perfectly obvious explanation (Inaudible) because we don't have to agree to it.
Charles Hieken: Right. I -- I agree, Your Honor.
Hugo L. Black: (Inaudible)
Charles Hieken: No, we don't know at the present time, Your Honor. There is evidence in the record which shows that petitioners have been held lia -- something several thousand dollars worth of attorney's fees in this case and every Court of Appeals decision that has considered the case has held that attorney's fees expend in connection with defending a patent infringement suit brought in violation of the antitrust laws, as a part of a combination conspiracy, is an element of damages to be trebled. Thank you.
Earl Warren: Mr. Pollock.
Elliott I. Pollock: Mr. Chief Justice and may it please the Court. When this case was argued here three years ago, the petitioner at that time was represented by Mr. Wolf and, also, the views of the government were expressed by Mr. Spritzer, appearing for the Solicitor General's Office. At that time, Mr. Wolf advanced the very arguments which were advanced during Mr. Hieken's main argument today. Mr. Spritzer, however, appearing for the Solicitor General's Office, declined to join Mr. Wolf in finding or in urging any antitrust violation or any misuse of the patent. And, he urged at that time that the essential issue in this case was one of direct infringement. Subsequently, three years ago, this Court rendered its decision in this case. And, at that time, the majority opinion, as well as the minority or dissenting opinion and the other opinions, all made it very clear that the real important issue here, the vital issue, was one of direct infringement. As a matter of fact, Mr. Justice Black's concurring opinion in the case termed that issue of direct infringement the crucial issue and went on to say that, since that was the crucial question, if you will, he felt that these other comments about misuse and the like were confusing and beside the point. Today, three years later, we are still concerned with this vital question of direct infringement, except that, today, we are concerned with a different aspect of it than was primarily here before the Court three years ago. Three years ago, the questions of Ford and General Motors cars and the distinctions between them were presented. However, no one seriously contended at that time that there was any error with respect to Ford cars. As a matter of fact, during colloquy with Mr. Spritzer, I recall that Mr. Justice Stewart pointed out that, in his understanding, Mr. Spritzer was advancing arguments only with respect to General Motors cars and that they did not apply to Ford cars. And, Mr. Spritzer conceded that that was the case and of course, in Mr. Brennan's concurring opinion, we find an expressed distinction made between Ford cars in the other subject matter. Now, what is this distinction? The first aspect that we're talking about, the General Motors cars that were primarily here three years ago are so-called “license structures.” And, at that time three years ago, the primary question before the Court related to a licensed user's liability when he repaired a structure -- a patented structure which he had acquired from some sanctioned source, such as the patentee or his licensee. Today, we are concerned with a different aspect, the Ford aspect, concerning in unlicensed user's liability when he repairs a structure covered by patent which was acquired from an infringing source. And, it is our view that these differences, this licensed-unlicensed distinction is so vital a distinction, so fundamental a distinction as to involve entirely different rationales, entirely different questions of public policy, entirely different lines of precedent and as to require entirely different results.
Byron R. White: (Inaudible)
Elliott I. Pollock: That is correct.
Byron R. White: (Inaudible)
Elliott I. Pollock: That is correct. It is our view -- the crux of our view, in effect, that even though what was discussed three years ago was found to be no more than repair, insofar as license structures were concerned, this is no defense as to unlicensed structure, in that, a repair of an unlicensed structure is itself an act of direct infringement since it perpetuates the infringement and prolongs its life.
Byron R. White: (Inaudible)
Elliott I. Pollock: Yes. Now, I believe we should go further than that, Mr. Justice White, simply because there are ways of aiding and abetting a repair which would not be liable under this. Insofar as discussion has been made regarding replacement of an unpatented part, the question actually before the Court in this direct infringement aspect is broader than that because repairs can be affected to an unlicensed structure without replacing any parts, so that we're not concerned with the replacement of a part as the essential question. If we have a combination of structure in which some part becomes broken, theoretically, we can make a repair by welding that part or by soldering it.
Byron R. White: (Inaudible)
Elliott I. Pollock: Because, in that case, he would be selling a staple article of commerce suitable for substantial non-infringing use. And, this is one of the expressed outs, if you will, in Section 271 (c).
Byron R. White: So what you have here involves the use only of --
Elliott I. Pollock: They can reuse -- the record is very clear on that point that the item which the petitioners were making could be used only on these Ford cars had no other use at all. It could not fit any other cars and had no other anticipated usage. Now, insofar as we are talking about repairs to an unlicensed structure, it is the act of repair which is the act of direct infringement, and that act of repair may be affected without replacing any parts. It could, of course, involve the replacement of parts. If the parts being replaced are standard articles of commerce such as nuts and bolts which you purchase at the corner hardware store, that hardware store is not a contributory infringer simply because he sells nuts and bolts because Congress has given him a specific out. If, however, the part being replaced is the part such as Aro was manufacturing, namely a part which they knowingly made for use in this combination and which they know -- which they knew had no other use whatsoever, then they are contributory infringers. It must be recalled that, insofar as we are concerned or argue was made regarding knowledge and the like, Aro well knew what it was doing. The record is very clear on that point. And, this Court, in its majority opinion last time expressly stated, and I'm quoting now from page 341 of this Court's opinion, “it is admitted that petitioners know that the purchasers intend to use the fabric for replacement purposes on automobile convertible tops which are covered by the claims of respondent's combination patent. And, such manufacture and sale with knowledge -- with that knowledge might well constitute contributory infringement under Section 271 (c) if, but only if, such a replacement by the purchaser himself would in itself constitute a direct infringement under Section 271 (a). So, we come down to the question of whether or not the replacement of a part by this Ford car owner, if you will, is an act of direct infringement and we contend it is. Now, I think it would be important for us to analyze very briefly the differences between the Ford and General Motors situations. We have, as Mr. Hieken asked for --
Byron R. White: (Inaudible) the owner of the sports car (Inaudible)
Elliott I. Pollock: That is correct.
Byron R. White: And so, he is (Inaudible)
Elliott I. Pollock: That is also correct.
Byron R. White: And then, they (Inaudible) that he replaced.
Elliott I. Pollock: That's correct.
Byron R. White: (Inaudible)
Elliott I. Pollock: Or from any other source.
Byron R. White: Do you say the (Inaudible)
Elliott I. Pollock: Yes. It is continued use of this infringing article which he has.
Byron R. White: (Inaudible)
Elliott I. Pollock: No, it is just a -- it's a prolongation of the infringement, if you will. It is a continuation of it. In the words of Mr. Justice Taft in one of the decisions we have cited, it is a perpetuation of the infringement.
Byron R. White: But this (Inaudible)
Elliott I. Pollock: Yes, it does, because presumably --
Byron R. White: (Inaudible)
Elliott I. Pollock: No, presumably, but for the repair, the infringement would've ceased at that point.Presumably, but for the repair, this thing would've gone on the scrap heap. And so, insofar as --
Hugo L. Black: (Inaudible)
Elliott I. Pollock: Well, I'm afraid I am not quite certain on --
Hugo L. Black: I don't -- you say that the top would have been discarded and put in the garbage can or something?
Elliott I. Pollock: We're assuming -- I understand, that --
Hugo L. Black: Are you assuming?
Elliott I. Pollock: No, I -- excuse me, sir. We are -- we are assuming that some act of repair was made at this time intentionally. I -- I would agree with you entirely, Mr. Justice Black, but if he had done nothing and had merely continued using this car with its dirty top, if you will, that is merely a continuation of the original direct infringement. It is a continuation of the infringing use which, itself, is direct infringement.
Hugo L. Black: Well, what do you do with last sentence of Justice Whittaker's opinion?
Elliott I. Pollock: If I may look at it, sir.
Hugo L. Black: What it says is “measured by this test of replacement of the fabrics involved in this case must be characterized as permissible repair, not reconstruction.”
Elliott I. Pollock: Yes.And he previously said that, in permissible repair, that you can't get anything?
Elliott I. Pollock: I read that particular statement, Mr. Justice Black, in the context in which it was given and I would invite this Court's attention, for example, to the fact that immediately before the statement here, Mr. Justice Whittaker set forth what I can consider to be the rationale for his statement. And, it says in here Mr. Justice Whittaker cited Leeds and Catlin, hired -- and also Wilson versus Simpson and he said “it is significant that each of the three cases of this court cited for that proposition holds that a license to use a patented combination includes the right to preserve its fitness for use so far as it maybe affected by wear or breakage.” So that, he was saying that, insofar as we are concerned with replacing a part which is worn out or broken, that replacement of such a worn out or broken part is implied from the license to use which the owner had. Now, there was no such license to use --
Hugo L. Black: (Inaudible)
Elliott I. Pollock: In order to --
Hugo L. Black: No element, not separately patented.
Elliott I. Pollock: That is correct.
Hugo L. Black: What does that say?
Elliott I. Pollock: It says “no element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it maybe to the patent combination and no matter how costly or difficult replacement may be.”
Hugo L. Black: What did he mean by that?
Elliott I. Pollock: I agree with that statement, except that we must understand that we are not here trying to monopolize an element. We are here monopolizing, if you will, the entire combination. There is no question but that Ford sold a complete combination of structure which was covered by the patent. There was no license. It was an infringement. And, when the purchaser bought that car and used it, he was using a complete combination. Now, certainly, had he repaired the structure by welding a part, we would not be concerned with the replacement of an unpatented part. We'd merely be concerned with whether or not that act of welding --
Hugo L. Black: But, if he cut out of patch, a piece of bolt, then that's different than welding?
Elliott I. Pollock: No. No, I consider it more of this act of repair. In -- in the case of an unlicensed structure, any act of repair is a continuation of this prolonged -- prolongation of this infringing use and, therefore, in itself, more direct infringement.
William J. Brennan, Jr.: Well, that --
Byron R. White: (Inaudible)
Elliott I. Pollock: The welding would, itself, be an act of direct infringement. Now, this is -- incidentally, supported by decisions of this Court, and I am primarily -- I primarily invite the Court's attention in the case of Wilson versus Union Tool in which Mr. Justice Brandeis spoke for a unanimous court on the question and pointed out that, in his view and in the Court's view at that time, the sale of repair parts, if you will, was an act of direct infringement since the installation of repair parts was an act of direct infringement in as much as the patentee had not been compensated. There is precedent for this -- for what I am saying. Moreover, there is precedent --
Byron R. White: I don't know that we've ever reached the precise point as to furnishing an unpatented element of a combination patent.I remember Brandeis' opinion, but that wasn't a combination patent, was it?
Elliott I. Pollock: Yes, I believe it was, Your Honor. I have the opinion here.
William O. Douglas: Because if you have this -- if you reach out this far as to obtain control over the use of unpatented parts of the combination, then you're really getting -- expanding the patent.
Elliott I. Pollock: No. We -- we consider, Mr. Justice Douglas --
William O. Douglas: In fact, in the Morton Salt case, where you add an unpatented commodity to it, that --
Elliott I. Pollock: I that concede, yes. But, in our view, what we are contending here is that what we are doing is precisely what Congress sanctioned in the 271 (c). There, they were concern with the replacement or the sale of a part of a combination. Mr. Federico, in his commentary on that particular statutory section, pointed out that the part we were concerned with is obviously a so-called unpatented part to the extent that there is no claim covering it directly since, if there were a claim covering it directly, there would be no need at all for Section 271 (c). So, Congress has sanctioned, if you will, a cause of action based upon sale of parts or actions regarding certain parts of a combination where only the combination has been claimed.
Hugo L. Black: Do you mean that every time a man gets a combination patent, that every part of it, for that -- although you couldn't possibly get patent, that every part of it is an infringement for somebody else to sell it?
Elliott I. Pollock: Not at all, Your Honor. As a matter of fact, this is a very rare circumstance. It's a rear circumstance where we have a person, such as petitioner, who is manufacturing a part of a combination which has no other earthly use but in this combination. That's the very rear case. Ordinarily, the combination could be -- every part of it could be manufactured. It would -- you'll find a wide diversity of uses for every part of the combination. We have a situation here though which is quite different and in which the facts actually fall directly within Section 271 (c). Congress has laid forth a series of factual test which may, in certain circumstances, be sufficient to hold a person a contributory infringer, provided he sells a part of a combination which meets certain factual test. And, it will be recalled that when this Court earlier decided the case, we -- the Court itself expressly said that, but for this question of direct infringement, petitioner's part did meet every one of these tests. And, again I refer to page 341 of the decision which I quoted earlier wherein this Court said that it is admitted that the petitioners know and do certain things, and sale, with that knowledge, might well constitute contributory under -- infringement, under 271 (c) if the replacement by the purchaser is an act of direct infringement. Now, in the majority opinion -- in this Court's majority opinion, it set forth what we conceive to be the rationale --
Hugo L. Black: That's really your question, isn't it? Was that we decided before whether it was a direct infringement?
Elliott I. Pollock: That is correct.
Hugo L. Black: To make a -- cut out a part of the top and call it a fit top.
Elliott I. Pollock: That's correct.
Hugo L. Black: The man who'd bought the top pays for it.
Elliott I. Pollock: That's correct. I believe that, historically, the situation was this. When this case was first filed, Your Honor, we urged that the defendant was a direct and contributory infringer as to both Ford and General Motors cars. In the case of Ford cars, there was no question at anytime throughout this litigation that there had been no license and, therefore, we said that, under established principles of law -- patent law, even if they did no more than repair that infringing Ford car, they were direct infringers. However, we recognized that General Motors cars were licensed and, therefore, it was our position as to them that this Act which they -- which petitioners were effecting was actually more than a mere repair. It was actually a reconstruction. Under the law, a license to use a patented combination includes an implied license to make repairs provided the repairs don't encroach upon this field of reconstruction, and we had urged that what the defendants were actually doing was reconstruction. The District Court agreed that this was an act of reconstruction and, therefore, held it --
Hugo L. Black: (Inaudible)
Elliott I. Pollock: Reconstruction of the complete combination.
Hugo L. Black: That's the (Inaudible)
Elliott I. Pollock: Yes. Yes, that is what we are contending.
Hugo L. Black: That's really the issue.
Elliott I. Pollock: That is what we were contending at that time. When we went to the Court of Appeals, the Court of Appeals agreed .When we came to this Court, this Court, considering this question of reconstruction, stated that no one part could be subject -- could constitute -- or the replacements of no one part could constitute a reconstruction of a combination. And, that no matter how vital that part was, no matter how important, how costly, how durable, and these were all tests which we had advanced, nevertheless, the replacement of such a part must be treated as no more than repair, not reconstruction. It is our view how --
Speaker: (Inaudible)
Elliott I. Pollock: Excuse me.
Speaker: Are you saying (Inaudible)
Elliott I. Pollock: No. I am saying that --
Speaker: (Inaudible)
Elliott I. Pollock: That's not my understanding of the Court of Appeals decision. My understanding of the Court of Appeals decision is that, to be consistent, we must this Court's earlier opinion three years ago as confining itself to General Motors cars since they were speaking at the various --
Hugo L. Black: (Inaudible)
Elliott I. Pollock: The Court -- the Court confined itself to licensed structures.
Hugo L. Black: Are you saying that it was making a distinction between those two?
Elliott I. Pollock: It's --
Hugo L. Black: Between this argument that's made about it.
Elliott I. Pollock: Not about the Ford cars, Your Honor. As I recall, Ford cars were mentioned. There was a general agreement that, actually, we weren't really concern about Ford cars. They were unlicensed. Mr. Spritzer and the others who argued confined themselves to how far this license to repair went, how far it could be implied from the original license to use. Under the facts of this case, those are General Motors cars situations. Now, as I understand the Court of Appeals decision below, what it said was that the District Court, ha -- in the first instance, had found two aspects of infringement, namely the aspect relating to licensed General Motors cars and the aspect relating to unlicensed Ford cars. It said that when petitioners, Aro, appealed the decision the first time, they didn't make much to do, if it all, about this Ford situation. That the only question that they really argued before them at this time, and this is not me saying this, this is the Court of Appeals in their decision saying it, they said the only question which they really argued at that time before them was this question of the licensed General Motors cars and whether it was repair or reconstruction.
Hugo L. Black: (Inaudible) they are reconstruction, but I can't, for the life of me, see whether it makes any difference whether they were licensed or unlicensed. I don't see anything in the Court's opinion that justifies this. The question is whether that is a reconstruction or making of a top.
Elliott I. Pollock: Yes, but the question of repair --
Hugo L. Black: This is a making of the top.
Elliott I. Pollock: No. No, it is our view -- obviously, let us consider the General Motors car owner. If he were driving the car down the street with his license, no one would contend that he was an infringer. The Ford car owner, however, merely driving his car down the street becomes an infringer.
Hugo L. Black: But what -- I understood, not in his driving down the street but the fact that he replaced a worn out part of it with a new part.
Elliott I. Pollock: That's true. And, he still has a combination of structure.
Hugo L. Black: And, the issue there is, isn't it, whether that is to be put in the classification of reconstruction of the top so it would be infringement, direct or indirect, whatever you want to call it, or whether it's just a repair?
Elliott I. Pollock: Yes, but the question --
Hugo L. Black: Which is permitted.
Elliott I. Pollock: The question of repair versus reconstruction, however, arises only when we have an originally licensed structure because --
William J. Brennan, Jr.: You're saying reconstruction is completely out of the case for Ford.
Elliott I. Pollock: That's right. We conceded, for purposes of this dis --
William J. Brennan, Jr.: You're saying that if this is repair, you concede that it is repair --
Elliott I. Pollock: Yes.
William J. Brennan, Jr.: To replace the worn out top --
Elliott I. Pollock: Yes.
William J. Brennan, Jr.: That, nevertheless, the repair was only an act of infringement that's entitled to the owner?
Elliott I. Pollock: Yes, as to the car owner, no matter what he does by way of repair, the Ford car owner, this indirect infringer, as to what he did with respect to his Ford car, he is still a direct infringer.
William J. Brennan, Jr.: Well, now, what your position on our decision last time left that question (Inaudible)
Elliott I. Pollock: It was my interpretation of the fact that you had concurred in the result that, actually, the Court had reached the decision by implication and that, by confining its decision to licensed structures by speaking throughout of the implied license which arises from a direct license to use, that they were actually speaking of only General Motors cars and that they were, in effect, to the extent the Ford situation was before them, were merely saying that they're -- that this rule that they are setting forth does not extend to unlicensed structures.
William J. Brennan, Jr.: Well, now, I'm still puzzled about this. Do you think, the last time, we decided the Ford issue in your favor?
Elliott I. Pollock: No, I don't. I don't think it was even before the --
William J. Brennan, Jr.: (Inaudible)
Elliott I. Pollock: Court.
Byron R. White: What do you mean it wasn't before the Court? The lower court -- the Court of Appeals affirmed the judgment.
Elliott I. Pollock: On the question which had been presented to them. And, as the Court of Appeals argue this time or as the Court of Appeals set forth this time --
Byron R. White: It was certainly presented in the District Court at this time.
Elliott I. Pollock: Yes, it was.
Byron R. White: But, why won't you present it in (Inaudible)
Elliott I. Pollock: I'm afraid you'll have to ask petitioners that they took --
Byron R. White: (Inaudible)
Elliott I. Pollock: They took -- no. Yes, they took an appeal and the only question --
Byron R. White: In light that the judgment was affirmed.
Elliott I. Pollock: Yes.
Byron R. White: The right was before them.
Elliott I. Pollock: I assume it was, except to the extent that the First --
Byron R. White: (Inaudible)
Elliott I. Pollock: Well, I say that, if I may, because the First Circuit rule say that they will consider only those questions which are presented to them. And, therefore, insofar as they affirm, they affirm with regard to those questions which petitioner presented to them. And, I say that they did not question their liability as to Ford cars when they first went up on an appeal. Now, I'm --
Byron R. White: But the District Court's view at this time (Inaudible) that, last time, they didn't consider (Inaudible)
Elliott I. Pollock: They said that it was not -- that was not seriously questioned the last time.
Byron R. White: They did consider it.
Elliott I. Pollock: Pardon me?
Byron R. White: They did consider it at that time.
Elliott I. Pollock: Yes, I suppose they did.
William J. Brennan, Jr.: Well, they certainly considered the board on this second law.
Elliott I. Pollock: It was the entire question before them.
Speaker: (Inaudible)
Elliott I. Pollock: It reversed and it was remanded for a judgment not inconsistent with the court's mandate.
Speaker: (Inaudible)
Elliott I. Pollock: No, but I would not consider that the Ford decision was inconsistent with this court's mandate. As a matter of fact, since Ford cars were unlicensed, I would consider it entirely consistent.
Speaker: (Inaudible)
Elliott I. Pollock: Sir?
Speaker: (Inaudible)
Elliott I. Pollock: I'm afraid I can't answer the question. I have -- I see that the word “reverse” was at the end of your decision, sir.
Speaker: (Inaudible)
Elliott I. Pollock: It meant that you -- it meant that the question that was presented to you was reversed. I might note, in that regard, with no attempted levity that when Mr. Spritzer appeared here, he said that the only question of public interest related to licensed structures. Now, if that has any bearing on the scope of this Court's reversal, the only question which the Government then thought was important was a licensed structure. They said they took no view with respect to unlicensed structure. The only thing that they urge was that this Court review -- reverse insofar as the court below had found that the replacement of parts were reconstruction of a licensed structure. They said that, insofar as a man has sold a structure, a patentee, he should be limited to that original sale, but they took no view with regard to what h --
Potter Stewart: (Inaudible) question that an amicus may choose to argue one part or --
Elliott I. Pollock: That is true.
Potter Stewart: Both.
Elliott I. Pollock: That is true.
Byron R. White: (Inaudible) slightly handled the Aro, parts that he misused, but (Inaudible)
Elliott I. Pollock: They argued --
Byron R. White: In the brief.
Elliott I. Pollock: Pardon me?
Byron R. White: Argued in brief just the use of that.
Elliott I. Pollock: Yes.
Byron R. White: (Inaudible)
Elliott I. Pollock: Yes, at length.
Byron R. White: (Inaudible)
Elliott I. Pollock: Yes.
Byron R. White: What's the issue of the argument (Inaudible) here.
Elliott I. Pollock: Yes.
Byron R. White: And, the court said what's in issue? I don't see how (Inaudible) was not an issue as (Inaudible) so that it would have to consider (Inaudible) separate defense as the court's side of the case.
Elliott I. Pollock: That is true.
Byron R. White: So, the only way to make it (Inaudible) whether it was mostly entirely the case (Inaudible)
Elliott I. Pollock: The -- the question actually, as I saw it at that time, was whether or not the court was talking about both General Motors and Ford cars. As a matter of fact, that was the basis for our motion for clarification since neither car had been mentioned at that time. And, the only way that I can personally interpret this Court's first opinion was that it was confined to General Motors cars since the decision throughout spoke of licensed structures, and this implied license to repair --
Byron R. White: (Inaudible) Ford can avoid the separate defense.
Elliott I. Pollock: Because misuse had been dropped as an issue on appeal below. It was never appealed. In other words --
Byron R. White: Do you mean the Court today, if at all, agreed to argue that it's invalid in here?
Elliott I. Pollock: That is true. They said it was not an issue since it had never been appealed, in effect, the -- and, insofar as it was a defense, the appellant below had abandoned that defense.
Byron R. White: Well, (Inaudible) Ford to raise, to move certiorari before the first case?
Elliott I. Pollock: As to whether they had abandoned it?
Byron R. White: No. Whether (Inaudible)
Elliott I. Pollock: I don't recall exactly. It was briefed extensively. I don't know that there was a question --
Byron R. White: (Inaudible)
Elliott I. Pollock: Yes.
Arthur J. Goldberg: (Inaudible)
Elliott I. Pollock: Yes.
Arthur J. Goldberg: (Inaudible) throughout, what you have encircled at page 17 (Inaudible)
Elliott I. Pollock: 17, Your Honor?
Arthur J. Goldberg: Page 17.
Elliott I. Pollock: Yes, and also, starting at the bottom of page 19, extending across page 20, I invite your attention to the cited quotations, for example, about a-third of the way down in which we have italicized certain portions.
Arthur J. Goldberg: That was in refer to licensed, (Inaudible) more specific than have him check (Inaudible)
Elliott I. Pollock: Yes.
Arthur J. Goldberg: It's very confusing the part of distinguishing (Inaudible)
Elliott I. Pollock: That's true.
Arthur J. Goldberg: (Inaudible)
Elliott I. Pollock: It definitely would, yes, Your Honor.
Arthur J. Goldberg: (Inaudible)
Elliott I. Pollock: No.
Arthur J. Goldberg: (Inaudible)
Elliott I. Pollock: No. I hope further than that and, perhaps, I better make my point right now in view of the like. My point is this, that both the direct -- both the majority opinion and the dissenting opinion made a clear point that we were concerned with two statutory sections here, 271 (a) and 271 (c). They said, as to 271 (a), which is a definition of direct infringement, it is very clear to the Court, and to every opinion that was rendered here, it was very clear that 271 (a) was intended to be declaratory of direct infringement law as it stood at that time and was intended to live intact the law of direct infringement. Now, what I have been arguing regarding replairs -- repairs of infringing structures represents direct infringement law which was around prior to enactment of Section 271 (a). We have in our brief, as a matter of fact, cited decisions not only from this Court but from every one of the Tenth Circuits, from the First through the Tenth Circuit, on that point and we have been able to find no opinion which holds to the contrary. So, we are saying that one of the principles of direct infringement law which was established at the time that Congress codified it and left it intact was this question of repairs to unlicensed structures. And, therefore, insofar as Congress had actually left the law intact, as the legislative history shows and as this Court conceded, they were leaving this principle intact as well.
Speaker: (Inaudible) now or any alternative or a clarification of the mandate.
Elliott I. Pollock: Yes, are --
Speaker: And both motions were denied.
Elliott I. Pollock: We presented the matter on this point, that the case was going back and we were not sure whether it was intended to extend to Ford and General Motors or merely to General Motors. Would the Court clarify it? And, that was denied.
Speaker: You didn't get any more light at that state.
Elliott I. Pollock: No. I make one further point, if I may, and that is that, with respect to Section 271 (c), what Aro was actually arguing here and seeking is an immunity for replacement parts manufacturers which they were denied by Congress. It will be recalled that, in this Court's first Aro decision, the Court held that the sale of a part, no matter of what nature for use in an originally licensed combination, was not an act for which a replacement part manufacturer could be held liable under 271 (c). If the Court now accepts Aro's present argument and holds that the same rule applies even as to unlicensed structures, the two Aro decisions taken together will, in effect, say that a replacement part manufacturer can never be liable for the sale of any part for installation on any combination which is either licensed or unlicensed. In my view, this completely sweeps the ambit. It completely -- it gives a replacement part manufacturer a complete immunity. Now, this Court has noted that during the legislative hearings preceding this enactment, 271 (c), replacement part manufacturers were very well-represented. They were as a matter of fact, in the words of the legislative history, the most vociferous objectors and, nevertheless, Congress has said that replacement part manufacturers should be liable in a proper case.
Hugo L. Black: In what?
Elliott I. Pollock: In a proper case. Now, we submit and it is our view that, insofar -- that if they are not liable in the case of an originally licensed structure or in the case of an originally unlicensed structure, there can never be a proper case, if you will. There would be no circumstance under which they could be held liable and they would, in effect, have immunity to liability under the statute which Congress refuse to give them.
Speaker: (Inaudible)
Elliott I. Pollock: It protected the actual terms of the lease where that Ford was protected and any car owners who had not at that time replaced because the release did not extend to cars where there had been replacement fabrics put on them. Moreover, the history shows that this question --
Speaker: (Inaudible)
Elliott I. Pollock: Yes -- no, it was -- well, we are bound by it. It was made before we came in.
Speaker: (Inaudible)
Elliott I. Pollock: That is true.
Speaker: (Inaudible)
Elliott I. Pollock: That is true.
Speaker: (Inaudible)
Elliott I. Pollock: That is true. We had tried -- or I understand from the record in this case, which is also very clear, there had been efforts made in order to try disposing of the entire thing. The Ford Motor Company was very clear that they were not going to pay one cent by way of compensation for acts of a person such as Aro. They refused to do it and that they gave us the reservation instead. They said if you want to get that kind of money, go against them and that's --
Hugo L. Black: (Inaudible) you draw a distinction between a man that had sold an automobile with your top on it. If he sells it, whether he sells it to somebody who's been licensed to make or use a car or whether he doesn't.
Elliott I. Pollock: That is one way that this distinction could arise, yes.
Hugo L. Black: And what you say is that this man, suppose they were guilty of direct infringement if they put in a repair on it of any kind.
Elliott I. Pollock: The man who is using the car without license is a direct infringer.
Hugo L. Black: Yes. So that, suppose he loses a nut, just one nut, and he goes and puts that nut back on there. He finds one somewhere in his garbage can or somewhere and he puts it on.Would he be an infringer then?
Elliott I. Pollock: Yes, he is.
Hugo L. Black: That he -- that makes him a new infringer?
Elliott I. Pollock: No. He is just continuing the same infringement.
Hugo L. Black: That's just continuing an old infringement.
Elliott I. Pollock: That is true. But, if he had gone to a hardware --
Hugo L. Black: Suppose he drives a nail in it.
Elliott I. Pollock: If he had done nothing, he would be an infringer.
Hugo L. Black: Well, what you are -- what you could do in this is to say that it has -- it's wholly immaterial to this case whether he did this to his top or something else.
Elliott I. Pollock: That is --
Hugo L. Black: He was an infringer and you ought to hold him liable as an original infringer.
Elliott I. Pollock: That's true and actually, we are trying to --
Hugo L. Black: And, this has nothing to do with it in reality.
Elliott I. Pollock: It -- it --
Hugo L. Black: It -- It's all beside the point, all he this talk about the top, isn't it?
Elliott I. Pollock: As to this question of repair of unlicensed structures, the question of the top is --
Hugo L. Black: It doesn't matter how big it is or how small or how insignificant. He bought it. He may know or not know that it was not licensed.
Elliott I. Pollock: The question --
Hugo L. Black: But he can't do a thing in the world to make his top a little more usable --
Elliott I. Pollock: The question --
Hugo L. Black: Well, unless you're suing him for infringement.
Elliott I. Pollock: The question of the top is germane insofar as we are to determine whether Aro is a contributory infringer.
William J. Brennan, Jr.: Now, what you're saying is that the hardware who supplied him with the nut was not be an infringer.
Elliott I. Pollock: Absolutely not, I mean they would --
William J. Brennan, Jr.: But, Aro is because what Aro supplies is --
Elliott I. Pollock: Is very special.
William J. Brennan, Jr.: Are pushed only to this particular combination.
Elliott I. Pollock: That is exactly right.
Hugo L. Black: Well, why -- why -- would he be liable if he went to the hardware store and wrote the note --
Elliott I. Pollock: Yes, we're --
Hugo L. Black: Of what was done?
Elliott I. Pollock: We're concerned with what the owner himself is doing. We're concerned with this owner's liability.
Hugo L. Black: If you're right on your contention, it brings back to us, doesn't it, the question that they've raised as to whether what you had was an invention which could be granted to patent under the constitution?
Elliott I. Pollock: They have not raised that.
Hugo L. Black: Yes they have, that' on one of the grounds.
Elliott I. Pollock: No. The validity of the patent has been conceded throughout.
Hugo L. Black: Yes, but that's one of the grounds that's argued here today. It's in their brief.
Elliott I. Pollock: No. There -- if I may, the point that they're making on the question of validity was that, in their view, there is no infringement and, therefore, a d -- an expressed finding of validity is merely advisory in nature and should not be found. They had never argued that the patent is invalid, never.
Hugo L. Black: So, they haven't raised that question?
Elliott I. Pollock: They had never argued that the patent is invalid. They had merely stated that, in their view, there should not be any expressed holding of validity as long as there is no infringement.
Hugo L. Black: What does this mean? Whether the constructions of Section 271 (c) by the Court of Appeals to convert the said monopoly over the unpatented replacement fabric, the Ford Motor Company is authorized by Article 1, Section 8 of the constitution --
Elliott I. Pollock: That --
Hugo L. Black: And, the fabric element itself is not the discovery of an inventor.
Elliott I. Pollock: They are speaking there of whether or not it was within the power of Congress to protect a part of a combination.
Hugo L. Black: Which is not an invention?
Elliott I. Pollock: No. They do not say that. As I read it --
Hugo L. Black: As I say, it's not the discovery of an invention.
Elliott I. Pollock: They're saying whether or not it was within the power of Congress to protect a part which itself was not, if you will, claimed. If w -- if a part --
Speaker: (Inaudible)
Elliott I. Pollock: Or could not be and this maybe arise not so much because of the lack of invention but because of the question of semantics. In this case, for example, the --
Hugo L. Black: (Inaudible) question of semantic. They hold him liable for getting a little closed top wouldn't make (Inaudible)
Elliott I. Pollock: Well, in this particular case, Mr. Justice Black, it was impossible to claim the top per se simply because the top must --
Hugo L. Black: It's treble damages, isn't it?
Elliott I. Pollock: Must be claimed an --
Hugo L. Black: You're trying to get treble damages against them, I take it.
Elliott I. Pollock: We -- no -- no, Your Honor. We have never gotten an injunction from them. We've got nothing but heartache, if you will. Thank you.
Byron R. White: Mr. Pollock, did you at any time (Inaudible)
Elliott I. Pollock: I frankly do not recall, except that I think that we may have argued at that time that the question was abandoned for failure to appeal and that, therefore, it was not a question which was --
Byron R. White: (Inaudible)
Elliott I. Pollock: I -- I frankly don't remember what was in the brief at the time. I -- I will rely on whatever I said at that time.