After spending $3.1M for “enterprise” software, and hundreds of hours implementing it, a glitch keeps occuring with aspects of an online ordering module. After a weekend of collaboration between the in-house IT staff, personnel from the vendor and an outside consulting firm, the functionality is restored with a re-written module of equivalent efficiency.
OK, now that the weekend has been ruined by that task, it’s Monday, and time to get back to the real work of an online enterprise. Let start the morning slow, with a coffee and thumbing through the mail. Oh, here’s a cease & desist letter from a small, licensing firm – what, the online ordering system is infringing?
Did that re-write constitute “permissible repair”? Is that interchangeable module a “component,” in the §271(c) or Eolas sense? Viewed as such, a bona fide user of enterprise software, who adapts or tweaks the system, may have a “repair” defense to infringement.
The Federal Circuit has applied the repair and reconstruction doctrine recently, in the Jazz Photo decisions. Their general rule is that “while ownership of a patented article does not include the right to create a substantially new article, it does include the right to preserve the useful life of the original article.” 264 F.3d at 1102. The “right to replace or modify a part of a patented device does not require that the part be spent or broken …[but] depends on the extent of the change.” Surfco, 262 F.3d at 1066. The re-write did “preserve” the life of the online ordering system, and to “replace” the module or to “modify” it did cause that IT dude to exclaim ‘righteous’ when the glitch was defeated.
Perhaps I enjoy the “repair and reconstruction” doctrine because it involves things of interest to me – convertibles, Aro Mfg., surfboards, Surfco, and equity. These doctrines of permissible repair, impermissible reconstruction, patent exhaustion, first sale and implied license are among the last areas of equity jurisdiction within the CAFC’s domain.
These doctrines extend to components, which the CAFC defined in Eolas to include executable applications. But then, a beauty of equitable doctrines is malleability and elasticity – just ask Mr. Festo or Mr. Markman. Should a “permissible repair” defense apply to software, or not? It can be as simple as predicting how the CAFC might treat software “repair” by applying precedent, such as that for the convertible top in Aro Mfg., or the cotton-bale tie in Simmons, 106 U.S. 89 (1889) or the toilet paper in Albany Perforated, 152 U.S. 425 (1894), or the gelatine band in Heyer, 263 U.S. 100 (1923) . Again, adapting the defense is all about equity, erudition and elasticity. So, a user of a software system, which must have had its components modified or repaired, should consider how this defense might be equitably applied.