author: Mr. Justice Brennan delivered the opinion of the Court. Mr. Justice Powell,

text:
    INTERNATIONAL UNION OF OPERATING ENGINEERS, LOCAL 150, AFL-CIO v. FLAIR BUILDERS, INC.
    No. 71-41.
    Argued April 10, 1972
    Decided May 30, 1972
    BrenNAN, J., delivered the opinion of the Court, in which Douglas, Stewart, White, Marshall, BlackmuN, and Rehnquist, JJ., joined. Powell, J., filed a dissenting opinon, in which Burger, C. J., joined, post, p. 492.

      Bernard M. Baum argued the cause for petitioner. With him on the brief were Daniel S. Shulman and Robert H. Baum.

      J. Robert Murphy, by invitation of the Court, 405 U. S. 972, argued the cause and filed a brief as amicus curiae in support of the judgment below.
   Mr. Justice Brennan delivered the opinion of the Court.

In November 1968, petitioner brought an action in the United States District Court for the Northern District of Illinois, seeking damages and injunctive relief for an alleged breach by respondent of their collective-bargaining agreement. The complaint charged that since June 1, 1966, respondent had “continually violated” the contract by refusing to abide by any of its terms, including wage, hiring hall, and fringe benefit provisions. The agreement, which incorporated the terms of master contracts between petitioner and a local contractors’ association, provided for arbitration of “any difference . . . between the parties hereto which cannot be settled by their representatives, within 48 hours of the occurrence.”

The District Court dismissed petitioner’s action for failure to state a claim and noted, but did not pass upon, two additional contentions of the company — “that (1) no contract was ever created, and (2) . . . if consummated, the agreement was subsequently abandoned by the union.” No. 68-C-2091 (April 14, 1969) (unreported). The court suggested that the parties arbitrate the binding effect of their contract. When the company refused to arbitrate either that issue or “the subsequent issues of possible violations,” petitioner filed an amended complaint to compel arbitration.

In moving to dismiss the amended complaint, respondent again denied the existence of a binding agreement and argued that the Union’s delay in seeking arbitration constituted laches barring enforcement of the contract. The District Court initially denied the motion, holding that “if the employer consented to the alleged collective bargaining agreement, the laches issue should be decided by the arbitrator rather than the federal courts.” Id. (Aug. 26, 1969) (unreported). But after conducting an evidentiary hearing on the scope of the arbitration clause, the court entered an order dismissing the complaint. Id. (Dec. 4, 1969) (unreported). Though agreeing that respondent “was bound by the memorandum agreement to arbitrate labor disputes within the limits of the arbitration clause,” the court found that there had been no contact between the parties from the time of the signing in 1964 until the summer of 1968. It therefore concluded that the Union was guilty of laches in seeking enforcement:

“The master agreement contemplates initiation of arbitration proceedings if any dispute is not settled within 48 hours of its occurrence, and further provides that the Board of Arbitrators shall meet 'within six (6) days.’ Yet demand for arbitration was not made in this case until April, 1969, almost five years from Flair’s first alleged failure to comply with the contract and nearly three years from the inception of the alleged breach sought to be arbitrated.
“To require Flair to respond, through arbitration, to general charges of noncompliance with contract provisions allegedly beginning more than two years before this suit was filed would impose an extreme burden on its defense efforts. . . . [T]o compel arbitration would reward plaintiff for its own inaction and subject defendant to the risk of liability because of actions taken or not taken in reliance on plaintiff’s apparent abandonment.”

The Court of Appeals affirmed thé order by divided vote. 440 F. 2d 557 (1971). Its opinion read the memorandum of the District Court to hold that the collective-bargaining agreement was still in effect and that therefore the question for decision was “whether a court may properly dismiss the complaint on the basis of laches resulting from dilatory notification of the existence of a dispute in a suit brought to compel arbitration with regard to the dispute.” Id., at 557-558. The court then addressed this Court’s decision in John Wiley & Sons v. Livingston, 376 U. S. 543 (1964). There an employer refused to arbitrate on the ground that the union, among other things, had failed to follow grievance procedures required by the collective-bargaining agreement. We ordered arbitration, holding that “[o]nce it is determined . . . that the parties are obligated to submit the subject matter of a dispute to arbitration, 'procedural’ questions which grow out of the dispute and bear on its final disposition should be left to the arbitrator.” Id., at 557. The Court of Appeals distinguished Wiley on the ground that the procedural question there concerned “intrinsic” untimeliness, relating solely to the requirements of the contract. Here, on the other hand, the question was one of “extrinsic” untimeliness, based not on a violation of contract procedures but on the failure to give timely notice under the equitable doctrine of laches. Therefore, according to the court, the matter was within its province to decide, for “ 'we are not indulging in the judicially unwarranted task of interpreting the collective bargaining agreement.’ ” 440 F. 2d, at 560, quoting Amalgamated Clothing Workers v. Ironall Factories Co., 386 F. 2d 586, 591 (CA6 1967). We granted certiorari. 404 U. S. 982 (1971).

Petitioner contends that the Court of Appeals erred in limiting Wiley to cases of “intrinsic” delay because the issue of delay, whether “intrinsic” or not, “necessarily involves a determination of the merits of the dispute and bears directly upon the outcome and is accordingly for an arbitrator and not the federal court to decide.” Brief for Petitioner 21. In other words, petitioner argues that even if the parties have not agreed to arbitrate the laches issue, Wiley requires that the arbitrator resolve the question as an integral part of the underlying contract dispute.

We need not reach the question posed by petitioner, for we find that the parties did in fact agree to arbitrate the issue of laches here. Although respondent denies that it ever signed a binding contract with petitioner, the District Court found to the contrary and held that the company “was bound by the memorandum agreement to arbitrate labor disputes within the limits of the arbitration clause.” That clause applies to “any difference,” whatever it may be, not settled by the parties within 48 hours of occurrence. There is nothing to limit the sweep of this language or to except any dispute or class of disputes from arbitration. In that circumstance, we must conclude that the parties meant what they said— that “any difference,” which would include the issue of laches raised by respondent at trial, should be referred to the arbitrator for decision. The District Court ignored the plain meaning of the clause in deciding that issue.

Of course, nothing we say here diminishes the responsibility of a court to determine whether a union and employer have agreed to arbitration. That issue, as well as the scope of the arbitration clause, remains a matter for judicial decision. See Atkinson v. Sinclair Refining Co., 370 U. S. 238, 241 (1962). But once a court finds that, as here, the parties are subject to an agreement to arbitrate, and that agreement extends to “any difference” between them, then a claim that particular grievances are barred by laches is an arbitrable question under the agreement. Compare Iowa Beef Packers, Inc. v. Thompson, 405 U. S. 228 (1972). Having agreed to the broad clause, the company is obliged to submit its laches defense, even if “extrinsic,” to the arbitral process. The judgment of the Court of Appeals is

Reversed.

Mr. Justice Powell,

with whom The Chief Justice joins, dissenting.

Through the exercise of formal logic the majority reaches a result that I believe is unjust. A full statement of the facts is necessary to put this case in proper perspective. Hair Builders, Inc. (Flair), is a small independent construction firm. The International Union of Operating Engineers, Local 150, AFL-CIO (the Union), had a master collective-bargaining agreement in effect with many contractor associations in Flair’s area. On May 12, 1964, the Union and Flair signed a memorandum agreement which adopted the terms of the then-existing master bargaining agreement. The memorandum provided that Flair would be bound by any future master agreement entered between the Union and the contractor associations. Flair had only one employee at the time it signed the memorandum agreement with the Union. This employee joined the Union, but left Flair’s employment about two weeks later. His job was filled successively by employees who operated the only piece of equipment owned by Flair. None of these successor employees belonged to the Union.

In the ensuing years, Flair prospered and added a modest amount of additional equipment. By 1967 it owned four pieces. Throughout the period from May 1964 until the summer of 1968, Flair operated all of its equipment with nonunion employees. During this period of more than four years, Flair heard nothing whatever from the Union.

In 1966, without Flair’s knowledge, the Union and the contractor associations entered into a new master agreement which contained a provision that: “Should any difference arise between the parties hereto which cannot be settled by their representatives, within 48 hours of the occurrence, such difference shall be submitted to arbitration.” It further provided that the arbitrators should meet within six days after it was determined that the dispute could not be settled. Although Flair was not a party to the new 1966 master agreement, and received no notice of its execution from the Union, the District Court determined that Flair was “bound” by virtue of the incorporation provision in the memorandum agreement signed in 1964.

It is apparent that the Union either forgot about its 1964 agreement with Flair or considered Flair’s small operation to be of no consequence. For a long time everyone seemed happy, and things went well. Then in June 1968, four years after the agreement was entered, a Union business agent visited Flair. This was the first such visit since May 1964. The business agent found that Flair’s four employees were nonunion, and he also complained about their wages. Flair refused to recognize any obligation to the Union.

After the lapse of another five months, on November 7, 1968, the Union filed a complaint against Flair in the District Court seeking specific performance of the alleged collective-bargaining agreement and monetary damages in the amount of $100,000. Flair’s motion to dismiss for failure to state a cause of action was sustained by the District Court on April 14, 1969, in a memorandum opinion which suggested that the parties arbitrate their differences. Pursuant to leave of court, the Union filed an amended complaint on June 3, 1969, alleging that on April 18, 1969, the Union had demanded “immediate arbitration” and that Flair had refused. In its answer to the amended complaint, Flair asserted various defenses, including abandonment of the contract and laches in asserting “any purported rights or claims thereunder.”

After an evidentiary hearing, the District Court concluded that the Union had been “guilty of laches by its unjustified delay in the enforcement of its contract with defendant,” and dismissed the complaint. The Court of Appeals for the Seventh Circuit, with one judge dissenting, agreed that laches was a bar to the Union’s belated assertion of the right to arbitrate, and affirmed the judgment of the District Court.

In its opinion today, the Court looks solely at the clause in the master collective-bargaining agreement which provided for arbitration of “any difference” between the parties, and holds:

“[T]hat the parties meant what they said — that ‘any difference,’ which would include the issue of laches raised by respondent at trial, should be referred to the arbitrator for decision.”

Yet the phrase “any difference,” if given its normal meaning in a labor contract, refers to disputes relating to hours, wages, fringe benefits, seniority, grievances, and to other issues customarily arising within the terms of a collective-bargaining agreement. I cannot believe that this language was intended to include the arbitration of an equitable defense asserted against the enforceability of the entire contract. Indeed, the Union itself did not construe the language to cover arbitration of this issue, as it asserted no such claim until after the District Court suggested it.

But my dissent does not turn solely on an interpretation of the arbitration clause or of any other provision of the agreement. The defense of laches is equitable in nature. The customary situation in which it is invoked is where a contract does exist and, but for laches of one of the parties, would be enforceable. In this case, Flair relied in substance on two defenses: (i) that the 1964 memorandum agreement (the only agreement Flair ever signed) had been abandoned by the Union; and (ii) that even if it had not been abandoned and the arbitration clause was as broad as this Court construes it to be, the defense of laches was available as an affirmative defense. The essence of the latter defense is that the Union, by virtue of its conduct and Flair’s reliance thereon, was estopped and precluded from enforcing any and all provisions of the contract, including the arbitration clause. This position was sustained by the courts below. The Court of Appeals correctly held:

“The factual context of this appeal thus narrows the issue before us to the question of whether a party to a collective bargaining agreement which contains an arbitration clause may be so dilatory in making the existence of vaguely delineated disputes known to the other party that a court is justified in refusing to compel the submission of such disputes to arbitration.” 440 F. 2d 557, 559 (1971).

The District Court, which heard the testimony of the parties, emphasized the burden imposed upon Flair by the Union’s prolonged and unexplained delay and the ambiguity of its various positions:

“To require Flair to respond, through arbitration, to general charges of noncompliance with contract provisions allegedly beginning more than two years before this suit was filed would impose an extreme burden on its defense efforts. Especially is this so when, as demonstrated at the hearing, Flair understandably considered the contract to have been abandoned soon after its inception. Plaintiff has offered no explanation for its delay in enforcement; yet to compel arbitration would reward plaintiff for its own inaction and subject defendant to the risk of liability because of actions taken or not taken in reliance on plaintiff’s apparent abandonment.”

I am aware of the strong policy considerations in favor of the arbitration of union-management disputes. John Wiley & Sons v. Livingston, 376 U. S. 543 (1964). But neither Wiley, nor any other case to my knowledge, has forced arbitration upon a party in circumstances such as these, where the equitable doctrine of laches was clearly applicable and was asserted. We would be well advised to recall Chief Justice Marshall’s admonition:

“[I]t is desirable to terminate every cause upon its real merits, if those merits are fairly before the court, and to put an end to litigation where it is in the power of the court to do so.” Church v. Hubbart, 2 Cranch 187, 232 (1804).

The effect of today’s decision on Flair seems fairly clear. The Court’s opinion imposes on this small business the “extreme burden” that the District Court found would result from requiring arbitration. Mr. Justice Cardozo once observed that litigation is a rare and catastrophic experience for the vast majority of men. If Flair survives the long excursion to this Court, the arbitration that the majority requires, and a possible return to the District Court which already has ruled in its favor, it surely possesses more tenacity and better financial resources than the average small business. One may doubt whether many small businessmen would believe today’s result possible.

The effect of the Court’s decision also could be far reaching in the law of labor-management relations. It appears that the long-accepted jurisdiction of the courts may now be displaced whenever a collective-bargaining agreement contains a general arbitration clause similar to that here involved. If in such circumstances the affirmative defense of laches can no longer be invoked in the courts, what of other affirmative defenses that go to the enforceability of a contract? Does the Court’s opinion vest in arbitrators the historic jurisdiction of the courts to determine fraud or duress in the inception of a contract? It seems to me that the courts are far better qualified than any arbitrators to decide issues of this kind. These are not questions of “labor law,” nor are they issues of fact that arbitrators are peculiarly well qualified to consider. They are issues within the traditional equity jurisdiction of courts of law and issues which the courts below appropriately resolved. I would affirm the judgment of the Court of Appeals.

       Respondent’s attorney admitted as much in the hearing before the District Court. Though contending that the binding effect of the contract was an issue for the court, and not the arbitrator, he agreed that “laches is another thing. I can go along on this being an arbitrable question, I suppose, if you have got a contract . . . .” App. 93.

       It should be noted that this language was added to the master contract in 1966 without the knowledge of Flair, at a time when it had every reason to believe that the Union — from which it had heard nothing for more than two years — had abandoned the initial memorandum agreement of May 12, 1964. Flair had no union employees, and had received no demands or notices of any kind from the Union. But whatever the situation may have been in 1966, the subsequent history of this remarkable performance corroborates the view that neither Flair nor the Union was conscious of the existence of a collective-bargaining agreement or of a right to arbitrate anything.
      Even after a union business agent visited Flair’s jobsite in 1968 and discovered “a non-union employee operating a piece of equipment,” no action was taken by the Union until a suit for specific performance and damages was filed some five months later. No demand was made for arbitration, and no claim of any right to arbitration was made in the original complaint. The District Court, not the Union, first suggested the possibility of arbitration. In these circumstances, and with all respect, I find no support whatever in the record for the Court’s holding “that the parties did in fact agree to arbitrate.”

       See n. 1, supra.

       B. Cardozo, The Nature of the Judicial Process 128 (1921).


source: Caselaw Access Project

author: Mr. Justice Brennan delivered the opinion of the Court. Mr. Justice Blackmun, Mr. Justice Powell,

license: Public Domain

text:
    LAKE CARRIERS’ ASSN, et al v. MacMULLAN et al.
    No. 71-422.
    Argued March 22-23, 1972
    Decided May 30, 1972

      BreNNAN, J., delivered the opinion of the Court, in which Douglas, Stewart, White, and Marshall, JJ., joined. Black-mun, J., filed a statement concurring in the result, in which Rehnquist, J., joined, post, p. 513. Powell, J., filed a dissenting opinion, in which Burger, C. J., joined, post, p. 513.

      Scott H. Elder argued the cause for appellants. With him on the briefs was John A. Hamilton.

      Robert A. Derengoski, Solicitor General of Michigan, argued the cause for appellees. With him on the brief were Frank J. Kelley, Attorney General, and Jerome Maslowski and Francis J. Carrier, Assistant Attorneys General.
    Briefs of amid curiae urging reversal were filed by Robert A. Jenkins and Fenton F. Harrison for the Dominion Marine Assn., and by Nicholas J. Healy and Gordon W. Paulsen for Assuranceforeningen Gard et al.

      Louis J. Lefkowitz, Attorney General, pro se, Samuel A. Hirshowitz, First Assistant Attorney General, and Thomas F. Harrison and Philip Weinberg, Assistant Attorneys General, filed a brief for the Attorney General of New York as amicus curiae urging affirmance.
   Mr. Justice Brennan delivered the opinion of the Court.

This is an appeal from the judgment of a three-judge District Court, convened under 28 U. S. C. §§2281, 2284, dismissing a complaint to have the Michigan Watercraft Pollution Control Act of 1970, Mich. Comp. Laws Ann. § 323.331 et seg. (Supp. 1971), declared invalid and its enforcement enjoined. 336 F. Supp. 248 (1971). We noted probable jurisdiction, 404 U. S. 982 (1971), and affirm the District Court’s determination to abstain from decision pending state court proceedings.

The Michigan statute, effective January 1, 1971, provides in pertinent part:

“Sec. 3. (1) A person [defined in § 2 (i) to mean “an individual, partnership, firm, corporation, association or other entity”] shall not place, throw, deposit, discharge or cause to be discharged into or onto the waters of this state, any ... sewage [defined in § 2 (d) to mean “all human body wastes, treated or untreated”] ... or other liquid or solid materials which render the water unsightly, noxious or otherwise unwholesome so as to be detrimental to the public health or welfare or to the enjoyment of the water for recreational purposes.
“(2) It is unlawful to discharge, dump, throw or deposit . . . sewage . . . from a recreational, domestic or foreign watercraft used for pleasure or for the purpose of carrying passengers, cargo or otherwise engaged in commerce on the waters of this state.
“Sec. 4. (1) Any pleasure or recreational watercraft operated on the waters of this state which is moored or registered in another state or jurisdiction, if equipped with a pollution control device approved by that jurisdiction, may be approved by the [State Water Resources Commission of the Department of Natural Resources] to operate on the waters of this state.
“(2) A person owning, operating or otherwise concerned in the operation, navigation or management -of a watercraft [defined in § 2 (g) to include “foreign and domestic vessels engaged in commerce upon the waters of this state” as well as “privately owned recreational watercraft”] having a marine toilet shall not own, use or permit the use of such toilet on the waters of this state unless the toilet is equipped with 1 of the following pollution control devices:
“(a) A holding tank or self-contained marine toilet which will retain all sewage produced on the watercraft for subsequent disposal at approved dockside or onshore collection and treatment facilities.
“(b) An incinerating device which will reduce to ash all sewage produced on the watercraft. The ash shall be disposed of onshore in a manner which will preclude pollution.
“Sec. 8. . . . Commercial docks and wharfs designed for receiving and loading cargo and/or freight from commercial watercraft must furnish facilities, if determined necessary, as prescribed by the commission, to accommodate discharge of sewage from heads and galleys ; . . [of] the watercraft which utilize the docks or wharfs.
“Sec. 10. The commission may promulgate all rules necessary or convenient for the carrying out of duties and powers conferred by this act.
“Sec. 11. Any person who violates any provision of this act is guilty of a misdemeanor and shall be fined not more than $500.00. To be enforceable, the provision or the rule shall be of such flexibility that a watercraft owner, in carrying out the provision or rule, is able to maintain maritime safety requirements and comply with the federal marine and navigation laws and regulations.”

Appellees — the State Attorney General, the Department of Natural Resources and its Director, and the Water Resources Commission and its Executive Secretary — read these provisions as prohibiting the discharge of sewage, whether treated or untreated, in Michigan waters and as requiring vessels with marine toilets to have sewage storage devices.

Appellants — the Lake Carriers’ Association and individual members who own or operate federally enrolled and licensed Great Lakes bulk cargo vessels — challenge the Michigan law on a variety of grounds. They urge that the Michigan law is beyond the State’s police power and places an undue burden on interstate and foreign commerce, impermissibly interferes with uniform maritime law, denies them due process and equal protection of the laws, and is unconstitutionally vague. They also contend that the Michigan statute conflicts with or is pre-empted by federal law, primarily the Federal Water Pollution Control Act, as amended by the Water Quality Improvement Act of 1970, and is therefore invalid under the Supremacy Clause. Under the Water Quality Improvement Act, the Administrator of the Environmental Protection Agency is directed “[a]s soon as possible, after April 3, 1970, . . . [to] promulgate Federal standards of performance for marine sanitation devices . . . which shall be designed to prevent the discharge of untreated or inadequately treated sewage into or upon the navigable waters of the United States from new vessels and existing vessels, except vessels not equipped with installed toilet facilities.” 84 Stat. 100, 33 U. S. C. § 1163 (b)(1). These standards, which as of now are not issued, are to become effective for new vessels two years after promulgation and for existing vessels five years after promulgation. 84 Stat. 101, 33 U. S. C. § 1163 (c)(1). Thereafter, “no State . . . shall adopt or enforce any statute or regulation . . . with respect to the design, manufacture, or installation or use of any marine sanitation device on any vessel subject to the provisions of this section.” Id., § 1163 (f). However, “[u]pon application by a State, and where the Administrator determines that any applicable water quality standards require such a prohibition, he shall by regulation completely prohibit the discharge from a vessel of any sewage (whether treated or not) into those waters of such State which are the subject of the application and to which such standards apply.” Ibid. Thus, the federal law appears to contemplate sewage control through on-board treatment before disposal in navigable waters, unless the Administrator provides on special application for a complete prohibition on discharge in designated areas.

The District Court below did not reach the merits of appellants’ complaint on the ground that “the lack of a justiciable controversy precludes entry of this Court into the matter.” 336 F. Supp., at 253¡ “An overview of the factual situation presented by the evidence in this case,” said the District Court, “compels but one conclusion:''that the plaintiffs here are seeking an advisory opinion . . . Ibid. The District Court also found “compelling reasons to abstain from consideration of the matter in its present posture,” ibid. — namely, “the attitude of Michigan authorities who seek the cooperation of the industry in the implementation of its program and have not instigated, nor does it appear, threatened criminal prosecutions,” id., at 252; the availability of declaratory relief in Michigan courts; the possibility of a complete prohibition on the discharge of sewage in Michigan’s navigable waters under federal law; the absence of existing conflict between the Michigan requirements and other state laws; and the publication of proposed federal standards that might be considered by Michigan in the interpretation and enforcement of its statute.

Appellants now urge that their complaint does present an “actual controversy” within the meaning of the Declaratory Judgment Act, 28 U. S. C. § 2201, that is ripe for decision. We agree. The test to be applied, of course, is the familiar one stated in Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U. S. 270, 273 (1941): “Basically, the question in each case is whether . . . there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Compare, e. g., ibid., with, e. g., Golden v. Zwickler, 394 U. S. 103 (1969). Since, as appellees concede, the Michigan requirements on the discharge of sewage will be preempted when the federal standards become effective, the gist of appellants’ grievance is that, according to Michigan authorities, they are required under Michigan law to install sewage storage devices that (1) may become unnecessary once federal standards, authorizing discharge of treated sewage, become applicable or (2) may, in any event, conflict with other state regulations pending the promulgation and effective date of the federal standards. The immediacy and reality of appellants’ concerns do not depend, contrary to what the District Court may have considered, on the probability that federal standards will authorize discharge of treated sewage in Michigan waters or that other States will implement sewage control requirements inconsistent with those of Michigan. They depend instead only on the present effectiveness in fact of the obligation under the Michigan statute to install sewage storage devices. For if appellants are now under such an obligation, that in and of itself makes their attack on the validity of the law a live controversy, and not an attempt to obtain an advisory opinion. See, e. g., Southern Pacific Co. v. Arizona, 325 U. S. 761 (1945) (existing burden on interstate commerce justiciable controversy in absence of federal pre-emption or other conflicting state laws).

Regarding the present effectiveness in fact of a statutory obligation, the plurality opinion in Poe v. Ullman, 367 U. S. 497, 508 (1961), stated that a justiciable controversy does not exist where “compliance with [challenged] statutes is uncoerced by the risk of their enforcement.” That, however, is not this case. Although appellees have indicated that they will not prosecute under the Michigan act until adequate land-based pump-out facilities are available to service vessels equipped with sewage storage devices, they have sought on the basis of the act and the threat of future enforcement to obtain compliance as soon as possible. The following colloquy that occurred on oral argument here is instructive, Tr. of Oral Arg. 34-35:

“[Appellees]: . . . We urge that the leadtime for the construction or erection of pump-out facilities is necessary, and there would be no enforcement until pump-out facilities were available.
“Q. But you’re insisting that the carriers get ready to comply and-
“[Appellees]: Yes, sir.
“Q. —because if you wait until pump-out stations are ready to begin [servicing] tanks, then there will be another great delay?
“[Appellees]: Oh, yes, sir.
“Q. So you have a rather concrete confrontation with these carriers now, don’t you?
“[Appellees]: Yes, sir, we do. . . .”

Thus, if appellants are to avoid prosecution, they must be prepared, according to Michigan authorities, to retain all sewage on board as soon as pump-out facilities are available, which, in turn, means that they must promptly install sewage storage devices. In this circumstance, compliance is coerced by the threat of enforcement, and the controversy is both immediate and real. See, e. g., Pierce v. Society of Sisters, 268 U. S. 510 (1925); City of Altus, Oklahoma v. Carr, 255 F. Supp. 828, aff’d per curiam, 385 U. S. 35 (1966). See generally, e. g., Comment, 62 Col. L. Rev. 106 (1962).

Appellants next argue that the District Court erred in abstaining from deciding the merits of their complaint. We agree that abstention was hot proper on the majority of grounds given by the District Court, but hold that abstention was, nevertheless, appropriate for another reason suggested but not fully articulated in its opinion. Abstention is a "judge-made doctrine . .. , first fashioned in 1941 in Railroad Commission v. Pullman Co., 312 U. S. 496, [that] sanctions . . . escape [from immediate decision] only in narrowly limited ‘special circumstances,’ Propper v. Clark, 337 U. S. 472, 492,” Zwickler v. Koota, 389 U. S. 241, 248 (1967), justifying “the delay and expense to which application of the abstention doctrine inevitably gives rise.” England v. Medical Examiners, 375 U. S. 411, 418 (1964). The majority of circumstances relied on by the District Court in this case do not fall within that category. First, the absence of an immediate threat of prosecution does not argue against reaching the merits of appellants’ complaint. In Younger v. Harris, 401 U. S. 37 (1971), and Samuels v. Mackell, 401 U. S. 66 (1971), this Court held that, apart from “extraordinary circumstances,” a federal court may not enjoin a pending state prosecution or declare invalid the statute under which the prosecution was brought. The decisions there were premised on considerations of equity practice and comity in our federal system that have little force in the absence of a pending state proceeding. In that circumstance, exercise of federal court jurisdiction ordinarily is appropriate if the conditions for declaratory or injunctive relief are met. See generally Perez v. Ledesma, 401 U. S. 82, 93 (1971) (separate opinion).

Similarly, the availability of declaratory relief in Michigan courts on appellants’ federal claims is wholly beside the point. In Zwickler v. Koota, supra, at 248, we said:

“In thus [establishing jurisdiction for the exercise of] federal judicial power, Congress imposed the duty upon all levels of the federal judiciary to give due respect to a suitor’s choice of a federal forum for the hearing and decision of his federal constitutional claims. Plainly, escape from that duty is not permissible merely because state courts also have the solemn responsibility, equally with the federal courts, '. . . to guard, enforce, and protect every right granted or secured by the Constitution of the United States . . . ,’ Robb v. Connolly, 111 U. S. 624, 637.”

Compare, e. g., Askew v. Hargrave, 401 U. S. 476 (1971). The possibility that the Administrator of the Environmental Protection Agency may upon Michigan’s application forbid the discharge of even treated sewage in state waters and the asserted absence of present conflict between the Michigan requirements and other state laws are equally immaterial. Just as they do not diminish the immediacy and reality of appellants’ grievance, they do not call for abstention.

The last factor relied on by the District Court — the publication of proposed federal standards that might be considered by Michigan in the interpretation and enforcement of its statute — does, however, point toward considerations that fall within the “special circumstances” permitting abstention. The paradigm case for abstention arises when the challenged state statute is susceptible of “a construction by the state courts that would avoid or modify the [federal] constitutional question. Harrison v. NAACP, 360 U. S. 167. Compare Baggett v. Bullitt, 377 U. S. 360.” Zwickler v. Koota, supra, at 249. More fully, we have explained:

“Where resolution of'the federal constitutional question is dependent upon, or may be materially altered by, the determination of an uncertain issue of state law, abstention may be proper in order to avoid unnecessary friction in federal-state relations, interference with important state functions, tentative decisions on questions of state law, and premature constitutional adjudication. . . . The doctrine . . . contemplates that deference to state court adjudication only be made where the issue of state law is uncertain.” Harman v. Forssenius, 380 U. S. 528, 534 (1965).

That is precisely the circumstance presented here. The Michigan Watercraft Pollution Control Act of 1970 has not been construed in any Michigan court, and, as appellants themselves suggest in attacking it for vagueness, its terms are far from clear in particulars that go to the foundation of their grievance. It is indeed only an assertion by appellees that the Michigan law proscribes the discharge of even treated sewage in state waters. Section 3 (2) of the Act does state that “[i]t is unlawful to discharge . . . sewage . . . from a recreational, domestic or foreign watercraft used for pleasure or for [commerce] . . . ,” and § 4 (2) does require vessels equipped with toilet facilities to have sewage storage devices. Yet §3(1) seemingly contemplates the discharge of treated sewage by merely prohibiting any person from emitting sewage '‘which [renders] the water unsightly, noxious or otherwise unwholesome so as to be detrimental to the public health or welfare or to the enjoyment of the water for recreational purposes.” Moreover, § 11 provides that “[t]o be enforceable, the provision [of the Act] or the rule [presumably promulgated thereunder] shall be of such flexibility that a watercraft owner, in carrying out the provision or rule, is able to maintain maritime safety requirements and comply with the federal marine and navigation laws and regulations.” Michigan has thus demonstrated concern that its pollution control requirements be sufficiently flexible to accord with federal law. We do not know, of course, how far Michigan courts will go in interpreting the requirements of the state Watercraft Pollution Control Act in light of the federal Water Quality Improvement Act and the constraints of the United States Constitution. But we are satisfied that authoritative resolution of the ambiguities in the Michigan law is sufficiently likely to avoid or significantly modify the federal questions appellants raise to warrant abstention, particularly in view of the absence of countervailing considerations that we have found compelling in prior decisions. See, e. g., Harman v. Forssenius, supra, at 537; Baggett v. Bullitt, 377 U. S. 360, 378-379 (1964).

In affirming the decision of the District Court to abstain, we, of course, intimate no view on the merits of appellants’ claims. We do, however, vacate the judgment below and remand the case to the District Court with directions to retain jurisdiction pending institution by appellants of appropriate proceedings in Michigan courts. See Zwickler v. Koota, 389 U. S., at 244 n. 4.

It is so ordered.

Mr. Justice Blackmun,

with whom Mr. Justice Rehnquist joins, concurring in the result.

I agree that the complaint presents an actual controversy and that the District Court properly abstained. I therefore concur in the result and join the judgment of the Court.

Mr. Justice Powell,

with whom The Chief Justice joins, dissenting.

The three-judge court below assigned two grounds for dismissing appellants’ complaint: (i) there was no justiciable controversy warranting a declaratory judgment; and (ii) this was an appropriate case for abstention by the federal courts until the Michigan Act is construed by its courts. 336 F. Supp. 248 (1971). This Court today affirms the decision of the court below to abstain, despite rejecting virtually all of the premises upon which it was based.

The opinion of this Court concludes, contrary to the holding below, that the controversy is justiciable and that a case for declaratory judgment relief was stated. The Court also concluded that “abstention was not proper on the majority of grounds given by the District Court.” Nevertheless, and despite general disagreement with the trial court on the major issues, its decision to abstain is now affirmed.

As it seems to me that the central thrust of the Court’s reasoning (with which I agree) requires reversal rather than affirmance of this decision, I file this dissent.

There is indeed a serious present controversy, involving important federal issues, and posing for the Lake Carriers an immediate choice between the possibility of criminal prosecution or the expenditure of substantial sums of money for antipollution devices and equipment which may not be compatible with the federal regulations which admittedly in due time will be pre-emptive. This presents a classic case for declaratory relief, 28 U. S. C. § 2201, Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U. S. 270, 273 (1941). As the opinion of the Court states, “compliance [with the Michigan law] is coerced by the threat of enforcement, and the controversy is both immediate and real.”

On the second question, that of abstention, the Court finally finds a ground in the possibility that the state courts of Michigan may construe the statute in a way that will avoid the federal questions. But this is a slender reed on which to rest a judgment. The Michigan statute is not ambiguous on the issue which appellants deem the most critical, namely, whether they are required under Michigan law to install at considerable expense sewage storage devices that may become unnecessary when federal standards become applicable. Section 4 (2) of the Michigan Act is unequivocal, providing that vessels may not use marine toilets in Michigan waters unless equipped with:

“(a) A holding tank or self-contained marine toilet which will retain all sewage produced on the watercraft for subsequent disposal at approved dockside or onshore collection and treatment facilities.
“(b) An incinerating device which will reduce to ash all sewage produced on the watercraft. The ash shall be disposed of onshore in a manner which will preclude pollution.”

Section 3 (2) flatly prohibits the discharge of sewage into Michigan waters. These two sections unmistakably express Michigan’s decision in favor of retention or incineration of sewage aboard ships rather than its treatment and discharge into state waters.

The majority opinion of the Court views §3 (1) as affording some flexibility and room for interpretation. Yet, it seems clear from the context of the entire statute that §3(1) is a general statement of environmental purpose applicable to all persons (as defined), expressing the overall statutory objective of prohibiting pollution of Michigan waters. This section can hardly be construed to contradict the specific provisions of § 4 (2) which relate to the owners and operators of foreign and domestic vessels engaged in commerce upon Michigan waters. Indeed, the Michigan State Attorney General, the Department of Natural Resources and its Director, and the Water Resources Commission and its Executive Secretary all read the statute as “designed to prevent appellants and others in their class from pouring, their filth, no matter how well treated, into Michigan waters of the Great Lakes.” (Emphasis supplied.) Brief for Appellees 16.

Appellants have raised federal questions (as to the merits of which no opinion is expressed) which are important to the public as well as to the litigants. They have sought relief in a federal court, relying on “the duty upon all levels of the federal judiciary to give due respect to a suitor’s choice of a federal forum for the hearing and decision of his federal constitutional claims.” Zwickler v. Koota, 389 U. S. 241, 248 (1967). It seems probable that these federal questions will remain in their present posture, whatever interpretation may be placed upon the Michigan statute by a state court. The questions of congressional intent‘to preempt the regulation of marine sanitation devices and of multiple state regulatory schemes which may unduly burden interstate commerce are, in large measure, independent of the particular construction given the Michigan Act.

We have spoken previously of “the delay and expense to which application of the abstention doctrine inevitably gives rise.” England v. Medical Examiners, 375 U. S. 411, 418 (1964). The relegation to state courts of this important litigation, involving major federal issues and affecting every ship operating in Michigan waters, is likely to result in serious delay, substantial expense to the parties (including the State), and a prolonging of the uncertainty which now exists.

I would reverse the judgment below and direct the District Court to proceed on the merits.

       Appellants also contend that the Michigan law is pre-empted by the Steamboat Inspection Acts of Feb. 28, 1871, 16 Stat. 440, and of May 27, 1936, 49 Stat. 1380, as amended, 46 TJ. S. C. § 361 et seq. An amicus curiae, moreover, presses the contention, suggested in appellants’ complaint, that the Michigan law conflicts with the United States-Canadian Boundary Waters Treaty of 1909, 36 Stat. 2448, as well as enters into the domain of foreign affairs constitutionally reserved to the National Government. See Brief of Dominion Marine Association amicus curiae.

       The authority to administer the Water Quality Improvement Act, originally lodged in the Secretary of the Interior, was transferred to the Administrator of the Environmental Protection Agency by Reorganization Plan No. 3 of 1970, set out in the Appendix to Title 5 of the United States Code.

       “Sewage” is defined under the Act to mean “human body wastes and the wastes from toilets and other receptacles intended to receive or retain body wastes.” 84 Stat. 100, 33 U. S. C. § 1163 (a)(6).

       A notice of proposed standards was, however, published on May 12, 1971. See 36 Fed. Reg. 8739.

       The District Court also noted that “[w]ith regard to pre-emption, the Supreme Court in Swift & Co. v. Wickham, 382 TJ. S. Ill [1965], held that Supremacy Clause cases are not within the purview of a three judge court.” 336 F. Supp., at 253. Appellants correctly point out that in reinstating that rule, Wickham made clear that a three-judge court is the proper forum for all claims against the challenged statute so long as there is a nonfrivolous constitutional claim that constitutes a justiciable controversy and warrants, on allegations of irreparable harm, consideration for injunctive relief. See 382 U. S., at 122 n. 17, 125. Indeed, that was the explicit holding in Florida Lime & Avocado Growers, Inc. v. Jacobsen, 362 U. S. 73, 80-81 (1960), re-affirming prior cases. It is clear that appellants’ complaint satisfies this test if the constitutional issues raised are justiciable controversies. Since we hold, infra, that they are, three-judge court jurisdiction exists over all of appellants’ claims, including the Supremacy Clause issues.

       The Michigan authorities have so far generally refrained from prosecution because adequate land-based pump-out facilities are not yet available to service vessels equipped with sewage storage devices. See infra, at 507-508. After oral argument here, the Solicitor General of Michigan informed us “that local officials in Cheboygan County, Michigan, have ‘ticketed’ a Coast Guard Captain for discharging sewage into the waters of the Great Lakes.” However, “to assure the Court that Michigan will not depart from the representations it has made to the Court,” the Solicitor General stated that he is “taking immediate steps to quash the charge or have the local court stay its hand until” the decision here.

       Michigan has filed an application with the Administrator of the Environmental Protection Agency for a prohibition under 33 U. S. C. § 1163 (f) on the discharge of any sewage, treated or untreated, into all of the State’s waters subject to the Water Quality Improvement Act. The Administrator has indicated that any no-discharge regulation issued will not become effective before the effective date of the initial standards promulgated under § 1163 (b) (1). See 36 Fed. Reg. 8739-8740. Appellants argue that the Administrator’s authority to issue no-discharge regulations is narrow and could not encompass a complete prohibition on discharge throughout Michigan’s navigable waters. Since we find, infra, that the possibility of such a prohibition is immaterial to the issues answered here, we need not now decide this question.

       Appellants contend in this regard that the laws of other States dealing with the discharge of sewage are critically different from the Michigan statute in various respects. This question, too, we need not address, since we find, infra, that the presence or absence of conflicting state requirements is irrelevant.

       See n. 4, supra.

       Although appellees took an equivocal position on this question in oral argument here, see Tr. of Oral Arg. 36-39, the District Court below expressly found such a concession, see 336 F. Supp., at 255, and appellees repeated the concession in opposing appellants’ jurisdictional statement. See Brief in Support of Motion to Dismiss or Affirm 11. In any event, the terms of the Water Quality Improvement Act are clear that pre-emption occurs at least when the initial federal standards promulgated under the Act become effective. See 33 U. S. C. § 1163 (f), quoted in part, supra, at 503-504. See also 36 Fed. Reg. 8739-8740.

       Appellees stressed in oral argument here that “[t]he provision for pump-out facilities is no great mechanical accomplishment.” Tr. of Oral Arg. 35. This only reinforces the conclusion that appellants must, according to Michigan authorities, quickly get into a position to comply with the Michigan statute.

       In coming to a contrary conclusion, the District Court relied heavily on Public Serv. Comm’n v. Wycoff Co., 344 U. S. 237 (1952), where we held that declaratory relief was inappropriate in behalf of a carrier seeking a determination that its intrastate transportation constituted interstate commerce. The District Court’s reliance on that decision was misplaced. As the Court said in California Comm’n v. United States, 355 U. S. 534, 538-539 (1958), Wycoff Co. was a case “where a carrier sought relief in a federal court against a state commission in order 'to guard against the possibility,’ [344 U. S.], at 244, that the Commission would assume jurisdiction.” Here, as in California Comm’n, the confrontation between the parties has already arisen, and “[t]he controversy is present and concrete .” 355 U. S., at 539.

       The question of abstention, of course, is entirely separate from the question of granting declaratory or injunctive relief. See generally Golden v. Zwickler, 394 U. S. 103 (1969); Zwickler v. Koota, 389 U. S. 241 (1967).

       We assume that these provisions apply to commercial watercraft, though even this is not textually clear. Section 3 (2) in terms applies only to “recreational” vessels, while § 4 (2) — despite the expansive definition of “watercraft” in § 2 (g) — could be similarly limited in light of §4 (1), which governs only “pleasure or recreational watercraft.”

       The .Michigan courts may also see fit to interpret the Michigan statute in light of the other Supremacy Clause arguments that have have been made in this case. See n. 1, supra.

       In the latter regard, see, e. g., Government Employees v. Windsor, 353 U. S. 364 (1957).

       “It is unlawful to discharge, dump, throw or deposit garbage, litter, sewage or oil from a recreational, domestic or foreign watercraft used for pleasure or for the purpose of carrying passengers, cargo or otherwise engaged in commerce on the waters of this state.” State of Michigan Act 167, Public Acts of 1970, § 3 (2).

       By defining “sewage” in § 2 (d) of the Act to mean all human body wastes, treated or untreated (emphasis supplied), Michigan further precludes any possibility that discharge of treated sewage would be permitted.

       “A person shall not place, throw, deposit, discharge or cause to be discharged into or onto the waters of this state, any litter, sewage, oil or other liquid or solid materials which render the water unsightly, noxious or otherwise unwholesome so as to be detrimental to the public health or welfare or to the enjoyment of the water for recreational purposes.” State of Michigan Act 167, Public Acts of 1970, §3(1).

       Nor do I agree with the majority that § 11 of the Michigan Act affords a reason for abstention. Section 11 provides that any provision or rule under the Act “shall be of such flexibility that a watercraft owner ... is able to maintain maritime safety requirements and comply with the federal marine and navigation laws and regulations.” This language appears to relate only to federal safety, marine, and navigation laws and regulations. It does not refer to the Federal Water Pollution Control Act or to federal laws relating to pollution. It is difficult to believe that this single sentence in § 11 of the Michigan Act could be construed to nullify the other affirmative provisions prohibiting altogether the discharge of sewage.


author: Mr. Justice White delivered the opinion of the Court. Mr. Justice Blackmun,

text:
    DEEPSOUTH PACKING CO., INC. v. LAITRAM CORP.
    No. 71-315.
    Argued April 11, 1972
    Decided May 30, 1972
    White, J., delivered the opinion of the Court, in which Douglas, Brennan, Stewart, and Marshall, JJ., joined. Blackmun, J., filed a dissenting opinion, in which Burger, C. J., and Powell and Rehnquist, JJ., joined, post, p. 532.

      Harold J. Birch argued the cause for petitioner. With him on the briefs were C. Emmett Pugh and William W. Beckett.

      Guy W. Shoup argued the cause and filed a brief for respondent.

      Edward S. Irons and Mary Helen Sears filed a brief as amici curiae urging reversal.
   Mr. Justice White delivered the opinion of the Court.

The United States District Court for the Eastern District of Louisiana has written:

“Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight, but they did not evolve to satisfy man’s palate. Like other crustaceans, they wear their skeletons outside their bodies in order to shield their savory pink and white flesh against predators, including man. They also carry their intestines, commonly called veins, in bags (or sand bags) that run the length of their bodies. For shrimp to be edible, it is necessary to remove their shells. In addition, if the vein is removed, shrimp become more pleasing to the fastidious as well as more palatable.”

Such “gustatory” observations are rare even in those piscatorially favored federal courts blissfully situated on the Nation’s Gulf Coast, but they are properly recited in this case. Petitioner and respondent both hold patents on machines that devein shrimp more cheaply and efficiently than competing machinery or hand labor can do the job. Extensive litigation below has established that respondent, the Laitram Corp., has the superior claim and that the distribution and use of petitioner Deepsouth’s machinery in this country should be enjoined to prevent infringement of Laitram’s patents. Laitram Corp. v. Deepsouth Packing Co., 443 F. 2d 928 (CA5 1971). We granted certiorari, 404 U. S. 1037 (1972), to consider a related question: Is Deep-"south, barred from the American market by Laitram’s patents, also foreclosed by the patent laws from exporting its deveiners, in less than fully assembled form, Aor use abroad?

I

A rudimentary understanding of the patents in dispute is a prerequisite to comprehending the legal issue presented. The District Court determined that the Laitram Corp. held two valid patents for machinery used in the process of deveining shrimp. One, granted in 1954, accorded Laitram rights over a “slitter” which exposed the veins of shrimp by using water pressure and gravity to force the shrimp down an inclined trough studded with razor blades. As the shrimp descend through the trough their backs are slit by the blades or other knife-like objects arranged in a zig-zag pattern. The second patent, granted in 1958, covers a “tumbler,” “a device to mechanically remove substantially all veins from shrimp whose backs have previously been slit,” App. 127, by the machines described in the 1954 patent. This invention uses streams of water to carry slit shrimp into and then out of a revolving drum fabricated from commercial sheet metal. As shrimp pass through the drum the hooked “lips” of the punched metal, “projecting at an acute angle from the supporting member and having a smooth rounded free edge for engaging beneath the vein of a shrimp and for wedging the vein between the lip and the supporting member,” App. 131, engage the veins and remove them.

Both the slitter and the tumbler are combination patents; that is,

“[n]one of the parts referred to are new, and none are claimed as new; nor is any portion of the combination less than the whole claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the [machine] in the manner therein described, is stated to be the improvement, and is the thing patented.” Prouty v. Ruggles, 16 Pet. 336, 341 (1842).

The slitter’s elements as recited in Laitram’s patent claim were: an inclined trough, a “knife” (actually, knives) positioned in the trough, and a means (water sprayed from jets) to move the shrimp down the trough. The tumbler’s elements include a “lip,” a “support member,” and a “means” (water thrust from jets). As is usual in combination patents, none of the elements in either of these patents were themselves patentable at the time of the patent, nor are they now. The means in both inventions, moving water, was and is, of course, commonplace. (It is not suggested that Deepsouth infringed Laitram’s patents by its use of water jets.) The cutting instruments and inclined troughs used in slitters were and are commodities available for general use. The structure of the lip and support member in the tumbler were hardly novel: Laitram concedes that the inventors merely adapted punched metal sheets ordered from a commercial catalog in order to perfect their invention. The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions “the whole in some way exceed [ed] the sum of its parts.” Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950).

II

The lower court’s decision that Laitram held valid combination patents entitled the corporation to the privileges bestowed by 35 U. S. C. § 154, the keystone provision of the patent code. “[F]or the term of seventeen years” from the date of the patent, Laitram had “the right to exclude others from making, using, or selling the invention throughout the United States . . . .” The § 154 right in turn provides the basis for affording the patentee an injunction against direct, induced, and contributory infringement, 35 U. S. C. § 283, or an award of damages when such infringement has already occurred, 35 U. S. C. § 284. Infringement is defined by 35 U. S. C. § 271 in terms that follow those of § 154:

“(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, [directly] infringes the patent.
“(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
“(c) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.”

As a result of these provisions the judgment of Laitram’s patent superiority forecloses Deepsouth and its customers from any future use (other than a use approved by Laitram or occurring after the Laitram patent has expired) of its deveiners “throughout the United States.” The patent provisions taken in conjunction with the judgment below also entitle Laitram to the injunction it has received prohibiting Deepsouth from continuing to “make” or, once made, to “sell” deveiners “throughout the United States.” Further, Laitram may recover damages for any past unauthorized use, sale, or making “throughout the United States.” This much is not disputed.

But Deepsouth argues that it is not liable for every type of past sale and that a portion of its future business is salvageable. Section 154 and related provisions obviously are intended to grant a patentee a monopoly only over the United States market; they are not intended to grant a patentee the bonus of a favored position as a flagship company free of American competition in international commerce. Deepsouth, itself barred from using its deveining machines, or from inducing others to use them “throughout the United States,” barred also from making and selling the machines in the United States, seeks to make the parts of deveining machines, to sell them to foreign buyers, and to have the buyers assemble the parts and use the machines abroad. Accordingly, Deepsouth seeks judicial approval, expressed through a modification or interpretation of the injunction against it, for continuing its practice of shipping deveining equipment to foreign customers in three separate boxes, each containing only parts of the 1%-ton machines, yet the whole assemblable in less than one hour. The company contends that by this means both the “making” and the “use” of the machines occur abroad and Laitram’s lawful monopoly over the making and use of the machines throughout the United States is not infringed.

Laitram counters that this course of conduct is based upon a hypertechnical reading of the patent code that, if tolerated, will deprive it of its right to the fruits of the inventive genius of its assignors. “The right to make can scarcely be made plainer by definition . . . ,” Bauer v. O’Donnell, 229 U. S. 1, 10 (1913). Deepsouth in all respects save final assembly of the parts “makes” the invention. It does so with the intent of having the foreign user effect the combination without Laitram’s permission. Deepsouth sells these components as though they were the machines themselves; the act of assembly is regarded, indeed advertised, as of no importance.

The District Court, faced with this dispute, noted that three prior circuit courts had considered the meaning of “making” in this context and that all three had resolved the question favorably to Deepsouth’s position. See Hewitt-Robins, Inc. v. Link-Belt Co., 371 F. 2d 225 (CA7 1966); Cold Metal Process Co. v. United Engineering & Foundry Co., 235 F. 2d 224 (CA3 1956); and Radio Corp. of America v. Andrea, 79 F. 2d 626 (CA2 1935). The District Court held that its injunction should not be read as prohibiting export of the elements of a combination patent even when those elements could and predictably would be combined to form the whole.

“It may be urged that. . . [this] result is not logical .... But it is founded on twin notions that underlie the patent laws. One is that a combination patent protects only the combination. The other is that monopolies — even those conferred by patents — are not viewed with favor. These are logic enough.” 310 F. Supp. 926, 929 (1970).

The Court of Appeals for the Fifth Circuit reversed, thus departing from the established rules of the Second, Third, and Seventh Circuits. In the Fifth Circuit panel’s opinion, those courts that previously considered the question “worked themselves into ... a conceptual box” by adopting “an artificial, technical construction” of the patent laws, a construction, moreover, which in the opinion of the panel, “[subverted] the Constitutional scheme of promoting 'the Progress of Science and useful Arts’ ” by allowing an intrusion on a patentee’s rights, 443 F. 2d, at 938-939, citing U. S. Const., Art. I, § 8.

Ill

We disagree with the Court of Appeals for the Fifth Circuit. Under the common law the inventor had no right to exclude others from making and using his invention. If Laitram has a right to suppress Deepsouth’s export trade it must be derived from its patent grant, and thus from the patent statute. We find that 35 U. S. C. § 271, the provision of the patent laws on which Laitram relies, does not support its claim.

Certainly if Deepsouth’s conduct were intended to lead to use of patented deveiners inside the United States its production and sales activity would be subject to injunction as an induced or contributory infringement. But it is established that there can be no contributory infringement without the fact or intention of a direct infringement. “In a word, if there is no [direct] infringement of a patent there can be no contributory infringer.” Mercoid Corp. v. Mid-Continent Co., 320 U. S. 661, 677 (1944) (Frankfurter, J., dissenting on other grounds). Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S. 336, 341-342 (1961), succinctly articulates the law:

“It is plain that § 271 (c)- — a part of the Patent Code enacted in 1952 — made no change in the fundamental precept that there can be no contributory infringement in the absence of a direct infringement. That section defines contributory infringement in terms of direct infringement — -namely the sale of a component of a patented combination or machine for use 'in an infringement of such patent.’ ”

The statute makes it clear 'that it is not an infringement to make or use a patented product outside of the United States. 35 U. S. C. § 271. See also Dowagiac Mfg. Co. v. Minnesota Moline Plow Co., 235 U. S. 641, 650 (1915), Brown v. Duchesne, 19 How. 183 (1857). Thus, in order to secure the injunction it seeks, Laitram must show a § 271 (a) direct infringement by Deepsouth in the United States, that is, that Deepsouth “makes,” “uses,” or “sells” the patented product within the bounds of this country.

Laitram does not suggest that Deepsouth “uses” the machines. Its argument that Deepsouth sells the machines — based primarily on Deepsouth’s sales rhetoric and related indicia such as price — cannot carry the day unless it can be shown that Deepsouth is selling the “patented invention.” The sales question thus resolves itself into the question of manufacture: did Deepsouth “make” (and then sell) something cognizable under the patent law as the patented invention, or did it “make” (and then sell) something that fell short of infringement?

The Court of Appeals, believing that the word “makes” should be accorded “a construction in keeping with the ordinary meaning of that term,” 443 F. 2d, at 938, held against Deepsouth on the theory that “makes” “means what it ordinarily connotes — the substantial manufacture of the constituent parts of the machine.” Id., at 939. Passing the question of whether this definition more closely corresponds to the ordinary meaning of the term than that offered by Judge Swan in Andrea 35 years earlier (something is made when it reaches the state of final “operable” assembly), we find the Fifth Circuit’s definition unacceptable because it collides head on with a line of decisions so firmly embedded in our patent law as to be unassailable absent a congressional recasting of the statute.

We cannot endorse the view that the “substantial manufacture of the constituent parts of [a] machine” constitutes direct infringement when we have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts. “For as we pointed out in Mercoid v. Mid-Continent Investment Co., [320 U. S. 661, 676] a patent on a combination is a patent on the assembled or functioning whole, not on the separate parts.” Mercoid Corp. v. Minneapolis-Honey well Regulator Co., 320 U. S. 680, 684 (1944). See also Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 301:

“A combination is a union of elements, which may be partly old and partly new, or wholly old or wholly new. But whether new or old, the combination is a means — an invention — distinct from them.” Id., at 318.
“[0]ne element is not the combination. Indeed, all of the elements are not. To. be that — to be identical with the invention of the combination — they must be united by the same operative law.” Id., at 320.

And see Brown v. Guild, 23 Wall. 181 (1874). In sum,

“[i]f anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S., at 344.

It was this basic tenet of the patent system that led Judge Swan to hold in the leading case, Radio Corp. of America v. Andrea, 79 F. 2d 626 (1935), that unassembled export of the elements of an invention did not infringe the patent.

“[The] relationship is the essence of the patent.
. . No wrong is done the patentee until the combination is formed. His monopoly does not cover the manufacture or sale of separate elements capable of being, but never actually, associated to form the invention. Only when such association is made is there a direct infringement of his monopoly, and not even then if it is done outside the territory for which the monopoly was granted.” Id., at 628.

See also Cold Metal Process Co. v. United Engineering & Foundry Co., 235 F. 2d, at 230 (“We are in full accord with the rule thus laid down in the Andrea case and we think that the master and the district court were right in applying it here”); Hewitt-Robins, Inc. v. Link Belt Co., 371 F. 2d, at 229 (to the same effect).

We reaffirm this conclusion today.

IV

It is said that this conclusion is derived from too narrow and technical an interpretation of the statute, and that this Court should focus on the constitutional mandate

“[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . ,” Art. I, § 8,

and construe the statute in a manner that would, allegedly, better reflect the policy of the Framers.

We cannot accept this argument. The direction of Art. I is that Congress shall have the power to promote the progress of science and the useful arts. When, as here, the Constitution is permissive, the sign of how far Congress has chosen to go can come only from Congress. We are here construing the provisions of a statute passed in 1952. The prevailing law in this and other courts as to what is necessary to show a patentable invention when a combination of old elements is claimed was clearly evident from the cases when the Act was passed; and at that time Andrea, representing a specific application of the law of infringement with respect to the export of elements of a combination patent, was 17 years old. When Congress drafted § 271, it gave no indication that it desired to change either the law of combination patents as relevant here or the ruling of Andrea. Nor has it on any more recent occasion indicated that it wanted the patent privilege to run farther than it was understood to run for 35 years prior to the action of the Court of Appeals for the Fifth Circuit.

Moreover, we must consider petitioner’s claim in light of this Nation’s historical antipathy to monopoly and of repeated congressional efforts to preserve and foster competition. As this Court recently said without dissent:

"[I]n rewarding useful invention, the 'rights and welfare of the community must be fairly dealt with and effectually guarded.' Kendall v. Winsor, 21 How. 322, 329 (1859). To that end the prerequisites to obtaining a patent are strictly observed, and when the patent has issued the limitations on its exercise are equally strictly enforced.” Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964).

It follows that we should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought. No such signal legitimizes respondent’s position in this litigation.

In conclusion, we note that what is at stake here is the right of American companies to compete with an American patent holder in foreign markets. Our patent system makes no claim to extraterritorial effect; “these acts of Congress do not, and were not intended to, operate beyond the limits of the United States,” Brown v. Duchesne, 19 How., at 195; and we correspondingly reject the claims of others to such control over our markets. Cf. Boesch v. Graff, 133 U. S. 697, 703 (1890). To the degree that the inventor needs protection in markets other than those of this country, the wording of 35 U. S. C. §§ 154 and 271 reveals a congressional intent to have him seek it abroad through patents secured in countries where his goods are being used. Respondent holds foreign patents; it does not adequately explain why it does not avail itself of them.

y

In sum: the case and statutory law resolves this case against the respondent. When so many courts have so often held what appears so evident — a combination patent can be infringed only by combination — we are not prepared to break the mold and begin anew. And were the matter not so resolved, we would still insist on a clear congressional indication of intent to extend the patent privilege before we could recognize the monopoly here claimed. Such an indication is lacking. Accordingly, the judgment of the Court of Appeals for the Fifth Circuit is reversed and the case is remanded for proceedings consistent with this opinion.

It is so ordered.

Mr. Justice Blackmun,

with whom The Chief Justice, Mr. Justice Powell, and Mr. Justice Rehnquist join, dissenting.

Because our grant of certiorari was limited, 404 U. S. 1037 (1972), the customarily presented issues of patent validity and infringement are not before us in this case. I necessarily accept, therefore, the conclusion that the Laitram patents are valid and that the Deepsouth de-veining machine, when manufactured and assembled in the United States, is an infringement. The Court so concedes. The Court, however, denies Laitram patent law protection against Deepsouth’s manufacture and assembly when the mere assembly is effected abroad. It does so on the theory that there then is no “making” of the patented invention in the United States even though every part is made here and Deepsouth ships all the parts in response to an order from abroad.

With all respect, this seems to me to be too narrow a reading of 35 U. S. C. §§ 154 and 271 (a). In addition, the result is unduly to reward the artful competitor who uses another’s invention in its entirety and who seeks to profit thereby. Deepsouth may be admis-sive and candid or, as the Court describes it, ante, at 523 n. 5, “straightforward,” in its “sales rhetoric,” ante, at 527, but for me that rhetoric reveals the very iniquitous and evasive nature of Deepsouth’s operations. I do not see how one can escape the conclusion that the Deepsouth machine was made in the United States, within the meaning of the protective language of §§ 154 and 271 (a). The situation, perhaps, would be different were parts, or even only one vital part, manufactured abroad. Here everything was accomplished in this country except putting the pieces together as directed (an operation that, as Deepsouth represented to its Brazilian prospect, would take “less than one hour”), all much as the fond father does with his little daughter’s doll house on Christmas Eve. To say that such assembly, accomplished abroad, is not the prohibited combination and that it avoids the restrictions of our patent law, is a bit too much for me. The Court has opened the way to deny the holder of the United States combination patent the benefits of his invention with respect to sales to foreign purchasers.

I also suspect the Court substantially overstates when it describes Radio Corp. of America v. Andrea, 79 F. 2d 626 (CA2 1935), as a “leading case,” ante, at 529, and when it imputes to Congress, in drafting the 1952 statute, an awareness of Andrea’s “prevailing law,” ante, at 530. Andrea was seriously undermined only two years after its promulgation, when the Court of Appeals modified its decree on a second review. Radio Corp. of America v. Andrea, 90 F. 2d 612 (CA2 1937). Its author, Judge Swan himself, dissenting in part from the 1937 decision, somewhat ruefully allowed that his court was overruling the earlier decision. Id., at 615. I therefore would follow the Fifth Circuit’s opinion in the present case, 443 F. 2d 936 (1971), and would reject the reasoning in the older and weakened Andrea opinion and in the Third and Seventh Circuit opinions that merely follow it.

By a process of only the most rigid construction, the Court, by its decision today, fulfills what Judge Clark, in his able opinion for the Fifth Circuit, distressingly forecast:

“To hold otherwise [as the Court does today] would subvert the Constitutional scheme of promoting ‘the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.’ U. S. Const., art. I § 8 Cl. 8. It would allow an infringer to set up shop next door to a patent-protected inventor whose product enjoys a substantial foreign market and deprive him of this valuable business. If this Constitutional protection is to be fully effectuated, it must extend to an infringer who manufactures in the United States and then captures the foreign markets from the patentee. The Constitutional mandate cannot be limited to just manufacturing and selling within the United States. The in-fringer would then be allowed to reap the fruits of the American economy — technology, labor, materials, etc. — but would not be subject to the responsibilities of the American patent laws. We cannot permit an infringer to enjoy these benefits and then be allowed to strip away a portion of the patentee’s protection.” 443 F. 2d, at 939.

I share the Fifth Circuit’s concern and I therefore dissent.

         Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037, 1040 (1969).

       This patent expired shortly before argument in this court and is therefore not relevant to Laitram’s claim for injunctive relief. It is described, however, because Laitram claims damages for £>eep-south’s asserted past exportation of the parts of this machine.

       The machines were developed by two brothers who are now president and vice-president of the Laitram Corp. The patents are in their names, but have been assigned to the corporation.

       The District Court wrote:
      “Defendant urges that the [1958] patent is invalid as aggregative, anticipated by the prior art, obvious, described in functional language, overbroad, and indefinite. While it is clear that the elements in the . . . patent, especially the punch lip material, had been available for a considerable period of time, when combined they co-act in such a manner to perform a new function and produce new results.” 301 F. Supp., at 1063.

       Deepsouth is entirely straightforward in indicating that its course of conduct is motivated by a desire to avoid patent infringement. Its president wrote a Brazilian customer:
      “We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil.”
      Quoted in Laitram Corp. v. Deepsouth Packing Co., 443 F. 2d 928, 938 (CA5 1971).

       As shipped, Deepsouth’s tumbler contains a deveining belt different from Laitram’s support member and lip. But the Laitram elements are included in a separate box and the Deepsouth tumbler is made to accommodate the Laitram elements. The record shows that many customers will use the machine with the Laitram parts.

       Eor simplicity’s sake, we, like the lower courts, will discuss only Deepsouth’s claim as to permissible future conduct. It is obvious, however, that what we say as to the scope of the injunction in Lai-tram’s favor applies also to the calculation of damages that Laitram may recover.

       “But the right of property which a patentee has in his invention, and his right to its exclusive use, is derived altogether from these statutory provisions; and this court [has] always held that an inventor has no right of property in his invention, upon which he can maintain a suit, unless he obtains a patent for it, according to the acts of Congress; and that his rights are to be regulated and measured by these laws, and cannot go beyond them.” Brown v. Duchesne, 19 How. 183, 195 (1857).

       Deepsouth sold the less than completely assembled machine for the same price as it had sold fully assembled machines. Its advertisements, correspondence, and invoices frequently referred to a “machine,” rather than to a kit or unassembled parts. See Brief for Respondent 8-11.

       When § 271 was drafted and submitted to the Senate in 1952, Senator Saltonstall asked: “Does the bill change the law in any way or only codify the present patent laws?” Senator McCarran, Chairman of the Judiciary Committee, responded: “It codifies the present patent laws.” 98 Cong. Rec. 9323.

         See the discussion in Graham v. John Deere Co., 383 U. S. 1, 7 et seq. (1966).