Henry v. A. B. Dick Co.
The Court ruled that a patent holder could sell a machine at a low price while requiring, through a license notice attached to it, that the buyer use only the patent holder's own ink and supplies with it — and that a dealer who knowingly sold rival ink for use with the machine could be sued for patent infringement.
The decision let patent owners use licensing restrictions to control an entire secondary market of unpatented supplies, a practice that three dissenting justices warned would let patent holders reach far beyond their inventions and swallow up state contract law.
“The property right to a patented machine may pass to a purchaser with no right of use, or with only the right to use in a specified way, or at a specified place, or for a specified purpose.”
The Court's core statement that patent holders can sell machines while retaining control over how they may be used.
How it got here: The case reached the Court on a certified question from the circuit court, under the 1891 appeals act, asking whether the ink dealer's sale amounted to contributory patent infringement.
The Case in Depth
What happened
A. B. Dick Company owned patents on a stencil-duplicating machine called the Rotary Mimeograph. It sold one to a New York woman, Christina Skou, with a notice attached limiting use of the machine to ink, paper, and supplies made by A. B. Dick. Sidney Henry, a New York ink dealer, sold Skou a can of rival ink, knowing of the restriction and expecting she would use it in the machine.
The question before the Court
Could a dealer be held liable for patent infringement for selling ink to a mimeograph owner, when her machine's license said it could only be used with ink made by the patent holder?
The Court's answer
Yes — the Court ruled that a patent holder can sell a patented machine subject to a clearly stated restriction limiting its use to supplies the patent holder also makes, and that using the machine in violation of that restriction is patent infringement, not just a broken promise. Because Christina Skou's mimeograph carried a notice restricting it to A. B. Dick's own ink and supplies, using rival ink would have infringed the patent itself.
Since Sidney Henry sold her rival ink knowing about the restriction and expecting it to be used on the machine, the Court held he could be sued as a contributory infringer for helping bring about that infringing use. The Court rejected the argument that such restrictions were merely private contract matters outside federal patent law, concluding instead that the dispute over the scope of the patent holder's rights made this a genuine patent case.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Manufacturers gained a powerful tool: selling patented machines cheaply while locking in profits by requiring buyers to purchase separate, unpatented supplies only from them, backed by the threat of a federal infringement suit against any rival supplier. Consumers and competing supply sellers faced restricted choices, and the ruling opened the door to widespread "tying" arrangements across patented products.
What changes now
The Court's answer to the certified question controls further proceedings back in the circuit court, which had already entered an injunction and ordered an accounting of profits and damages against the ink dealer; those remedies stand as consistent with this ruling. The decision immediately validated a licensing model many patent holders were already using nationwide, though the dissent predicted it would prompt further disputes over how far such restrictions could reach.
What this does not decide
The Court did not decide whether every conceivable restriction a patent holder might attach to a sale would be enforceable; it addressed only the specific license restriction on ink and supplies before it. The dissent argued the ruling's logic would sweep far more broadly, but the majority did not purport to resolve those hypothetical extensions.
Concurrences and dissents
How the Justices voted
Majority (1). Justice Lueton (author).
Dissent (1). Justice White (author).
Dissent — Justice White
“the effect of that ruling is to destroy, in a very large measure, the judicial authority of the States by unwarrantedly extending the Federal judicial power.”The dissent's central warning that the ruling improperly expands federal courts' reach at the expense of the states.
Chief Justice White argued the ruling wrongly let a patent holder use a mere sale-restriction notice to pull unpatented materials like ink into the scope of federal patent law, effectively letting patentees legislate new monopolies by contract. He warned this would strip state courts of authority over ordinary commercial disputes and override state public policy, citing a long line of prior decisions treating such restrictions as simple contract matters outside patent law. He would have held the ink dealer's sale outside the patent law entirely, leaving any remedy to ordinary contract or state-law claims. Read the full dissent →
How the Court got there
The legal reasoning, step by step
- The Court first addressed whether the case belonged in federal court at all, holding that a suit alleging infringement through violation of a sale restriction is a genuine patent-law case, not merely a contract dispute, because it turns on the scope of the patent holder's exclusive rights.
- The Court distinguished an unconditional sale of a patented item, which frees the item entirely from patent control, from a conditional sale where the patent holder keeps back part of the right to use the invention; only the unpermitted use in the latter situation remains within the patent's reach.
- Applying that distinction, the Court held that when a patent holder sells a machine subject to a clearly stated restriction on what supplies may be used with it, a buyer's use of forbidden supplies is an infringing use of the machine itself, not merely a broken promise.
- The Court reasoned that a seller who knowingly supplies the forbidden materials to that buyer, intending they be used with the restricted machine, is aiding an infringement and can be sued as a contributory infringer, extending the settled rule that anyone who intentionally helps another make unlawful use of a patented invention shares in the liability.
- Because the ink dealer sold the rival ink to the machine owner knowing of the restriction and expecting it would be used on the patented mimeograph, the Court concluded the certified question should be answered yes.
Doctrinal impact
Cases affected by this decision
Reaffirms Bement v. National Harrow Co. (186 U. S. 70)
Relied on for the rule that reasonable, non-illegal conditions patent holders attach to sales will be enforced by courts.
Reaffirms Mitchell v. Hawley (16 Wall. 544)
Used as authority that a patent holder who sells subject to restrictions keeps control over unpermitted uses.
Distinguishes Morgan Envelope Co. v. Albany Paper Co. (152 U. S. 425)
Held inapplicable because that case involved no license restriction tying the sale to specific supplies.
Distinguishes Bobbs-Merrill Co. v. Straus (210 U. S. 339)
Copyright resale-price case found not controlling because patent and copyright statutes differ in scope.