-
1
-
-
79951611630
-
-
See, e.g., Christina Bohannan & Herbert Hovenkamp, IP and Antitrust: Reformation and Harm, 51 B.C. L. REV. 905 (2010)
-
See, e.g., Christina Bohannan & Herbert Hovenkamp, IP and Antitrust: Reformation and Harm, 51 B.C. L. REV. 905 (2010).
-
-
-
-
2
-
-
79951597210
-
-
On the divide between antitrust and IP approaches to misuse generally, see 1 HERBERT Hovenkamp et al., IP and Antitrust: An Analysis of Antitrust Principles Appued to Intellectual Property Law ch. 3 (2d ed. 2010)
-
On the divide between antitrust and IP approaches to misuse generally, see 1 HERBERT Hovenkamp et al., IP and Antitrust: An Analysis of Antitrust Principles Appued to Intellectual Property Law ch. 3 (2d ed. 2010)
-
-
-
-
3
-
-
79951637699
-
-
and Thomas F. Cotter, Misuse, 44 Hous. L. REV. 901 (2007). For arguments that patent misuse should not be limited to antitrust violations, see Robin C. Feldman, The Insufficiency of Antitrust Analysis for Patent Misuse, 55 HASTINGS L.J. 39g (2003), and Robert J. Hoerner, The Decline (and Fall?) of the Patent Misuse Doctrine in the Federal Circuit, 69 ANTITRUST LJ. 669 (2001). For arguments that copyright misuse should not be defined exclusively by antitrust law
-
and Thomas F. Cotter, Misuse, 44 Hous. L. REV. 901 (2007). For arguments that patent misuse should not be limited to antitrust violations, see Robin C. Feldman, The Insufficiency of Antitrust Analysis for Patent Misuse, 55 HASTINGS L.J. 39g (2003), and Robert J. Hoerner, The Decline (and Fall?) of the Patent Misuse Doctrine in the Federal Circuit, 69 ANTITRUST LJ. 669 (2001). For arguments that copyright misuse should not be defined exclusively by antitrust law
-
-
-
-
4
-
-
79951662940
-
-
see Ilan Charnelle, The Justification and Scope of the Copyright Misuse Doctrine and Its Independence of the Antitrust Laws, g UCLA ENT. L. REV. 167 (2002), Brett Frischmann & Dan Moylan, The Evolving Common Law Doctrine of Copyright Misuse: A Unified Theory and Its Application to Software, 15 BERKELEY TECH. LJ. 865 (2000)
-
see Ilan Charnelle, The Justification and Scope of the Copyright Misuse Doctrine and Its Independence of the Antitrust Laws, g UCLA ENT. L. REV. 167 (2002), Brett Frischmann & Dan Moylan, The Evolving Common Law Doctrine of Copyright Misuse: A Unified Theory and Its Application to Software, 15 BERKELEY TECH. LJ. 865 (2000)
-
-
-
-
5
-
-
79951643750
-
-
Ramsey Hanna, Note, Misusing Antitrust: The Search for Functional Copyright Misuse Standards, 46 STAN. L. REV. 401 (1994), and Kathryn Judge, Note, Rethinking Copyright Misuse, 57 STAN. L. REV. goi (2004)
-
Ramsey Hanna, Note, Misusing Antitrust: The Search for Functional Copyright Misuse Standards, 46 STAN. L. REV. 401 (1994), and Kathryn Judge, Note, Rethinking Copyright Misuse, 57 STAN. L. REV. goi (2004).
-
-
-
-
6
-
-
79951641473
-
-
E.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942) (articulating the modern misuse doctrine for the first time and applying it to a tie of a patented salt-injection machine to unpatented salt), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
E.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942) (articulating the modern misuse doctrine for the first time and applying it to a tie of a patented salt-injection machine to unpatented salt), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006);
-
-
-
-
7
-
-
79951595882
-
-
Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 461-63 (1938) (deciding a pre-misuse case involving tying of a patented process for installing asphalt emulsion on roads to the unpatented emulsion)
-
Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 461-63 (1938) (deciding a pre-misuse case involving tying of a patented process for installing asphalt emulsion on roads to the unpatented emulsion);
-
-
-
-
8
-
-
79951600641
-
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) (same, involving tying of a patented refrigeration box and dry ice)
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) (same, involving tying of a patented refrigeration box and dry ice);
-
-
-
-
9
-
-
79951622750
-
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917) (same, involving tying of a patented film projector and unpatented film)
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917) (same, involving tying of a patented film projector and unpatented film);
-
-
-
-
10
-
-
79951596349
-
-
Henry v. A.B. Dick Co., 224 U.S. 1 (1912) (same, involving tying of a patented mimeograph machine and unpatented stencils, paper, and ink), overruled by Motion Picture Patents, 243 U.S. 502
-
Henry v. A.B. Dick Co., 224 U.S. 1 (1912) (same, involving tying of a patented mimeograph machine and unpatented stencils, paper, and ink), overruled by Motion Picture Patents, 243 U.S. 502.
-
-
-
-
11
-
-
79951656564
-
-
See, e.g., Morton Salt, 314 U.S. 488
-
See, e.g., Morton Salt, 314 U.S. 488.
-
-
-
-
12
-
-
79951598881
-
-
See infra notes 47-54 and accompanying text
-
See infra notes 47-54 and accompanying text.
-
-
-
-
13
-
-
79951601037
-
-
See infra text accompanying notes 59-73
-
See infra text accompanying notes 59-73.
-
-
-
-
14
-
-
79951651249
-
-
See discussion infra Part IVA.4
-
See discussion infra Part IVA.4.
-
-
-
-
15
-
-
79951656563
-
-
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 973, 979 (4th Cir. 1990) (finding misuse in computer-aided design ("CAD") licensor's restriction forbidding licensee from developing any GAD program)
-
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 973, 979 (4th Cir. 1990) (finding misuse in computer-aided design ("CAD") licensor's restriction forbidding licensee from developing any GAD program);
-
-
-
-
16
-
-
79951650846
-
-
see discussion infra Part IV.B. Brulotte v. Thys Co., 379 U.S. 29 (1964) (involving the licensor of a hop-picking machine requiring royalties to be paid past die expiration date of patents)
-
see discussion infra Part IV.B. Brulotte v. Thys Co., 379 U.S. 29 (1964) (involving the licensor of a hop-picking machine requiring royalties to be paid past die expiration date of patents);
-
-
-
-
17
-
-
79951643329
-
-
see discussion infra Part IV.C
-
see discussion infra Part IV.C.
-
-
-
-
18
-
-
79951610820
-
-
See, e.g.. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 517 (ig1?) (noting the relevance of the Clayton Act's anti-tying provision, currently codified at 15 U.S.C. § 14 (2006), which had been passed in 1914 and which "confirmed" its resolution of the case)
-
See, e.g.. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 517 (ig1?) (noting the relevance of the Clayton Act's anti-tying provision, currently codified at 15 U.S.C. § 14 (2006), which had been passed in 1914 and which "confirmed" its resolution of the case);
-
-
-
-
19
-
-
79951616875
-
-
see also Mercoid Corp. v. Minneapolis-Honeywell Regulator Co. (Mercoid II), 320 U.S. 680, 684 (1944) ("The legality of any attempt to bring unpatented goods within the protection of the patent is measured by the anti-trust laws not by the patent law.")
-
see also Mercoid Corp. v. Minneapolis-Honeywell Regulator Co. (Mercoid II), 320 U.S. 680, 684 (1944) ("The legality of any attempt to bring unpatented goods within the protection of the patent is measured by the anti-trust laws not by the patent law.").
-
-
-
-
20
-
-
79951630146
-
-
One exception, which is rarely invoked, applies in breach-of-contract claims for violation of a license agreement, where courts have also recognized an equitable defense of patent misuse when the misuse occurs in the license subject to the breach. The leading case is Brulotte, which went up to die Supreme Court from a state-law breach-of-contract claim when the licensee stopped paying royalties on a contract that called for the royalties to be paid after the patent expired
-
One exception, which is rarely invoked, applies in breach-of-contract claims for violation of a license agreement, where courts have also recognized an equitable defense of patent misuse when the misuse occurs in the license subject to the breach. The leading case is Brulotte, which went up to die Supreme Court from a state-law breach-of-contract claim when the licensee stopped paying royalties on a contract that called for the royalties to be paid after the patent expired.
-
-
-
-
21
-
-
79951620382
-
-
See Thys Co. v. Brulotte, 382 P.2d 271 (Wash. 1963), rev'd, Brulotte, 379 U.S. 29. On Brulotte and post-expiration royalties, see discussion infra Part IV.C. Another exception is diat parties can bring declaratoryjudgment actions to determine whether an IP holder has committed misuse
-
See Thys Co. v. Brulotte, 382 P.2d 271 (Wash. 1963), rev'd, Brulotte, 379 U.S. 29. On Brulotte and post-expiration royalties, see discussion infra Part IV.C. Another exception is diat parties can bring declaratoryjudgment actions to determine whether an IP holder has committed misuse.
-
-
-
-
22
-
-
79951626271
-
-
See, e.g., Allan Block Corp. v. Cnty. Materials Corp., 512 F.3d gi2 (yfh Cir. 2008) (recognizing declaratory-judgment action claiming that licensor's conduct constituted misuse)
-
See, e.g., Allan Block Corp. v. Cnty. Materials Corp., 512 F.3d gi2 (yfh Cir. 2008) (recognizing declaratory-judgment action claiming that licensor's conduct constituted misuse)
-
-
-
-
23
-
-
79951594500
-
-
MACTEC, Inc. v. Gorelick, 427 F.jd 821 (10th Cir. 2005) (same)
-
MACTEC, Inc. v. Gorelick, 427 F.jd 821 (10th Cir. 2005) (same);
-
-
-
-
24
-
-
79951660955
-
-
B. Braun Med., Inc. v. Abbott Labs., i24F.3d 1419 (Fed. Cir. 1997) (same)
-
B. Braun Med., Inc. v. Abbott Labs., i24F.3d 1419 (Fed. Cir. 1997) (same).
-
-
-
-
25
-
-
79951604593
-
-
See, e.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 494 (1942) (finding that infringement defendant was a competing maker of salt injection machines and was not injured by the salt tie), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
See, e.g., Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 494 (1942) (finding that infringement defendant was a competing maker of salt injection machines and was not injured by the salt tie), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006).
-
-
-
-
26
-
-
79951655673
-
-
See, e.g., B.B. Chem. Co. v. Ellis, 314 U.S. 495,498 (1942) (stating that patentee could resume enforcement of patent once misuse was purged)
-
See, e.g., B.B. Chem. Co. v. Ellis, 314 U.S. 495,498 (1942) (stating that patentee could resume enforcement of patent once misuse was purged);
-
-
-
-
27
-
-
79951663367
-
-
see also U.S. Gypsum v. Nat'l Gypsum Co., 352 U.S. 457 (1957) (holding that patentee may not recover royalties for the period during which misuse continued prior to when it was purged)
-
see also U.S. Gypsum v. Nat'l Gypsum Co., 352 U.S. 457 (1957) (holding that patentee may not recover royalties for the period during which misuse continued prior to when it was purged)
-
-
-
-
28
-
-
79951597624
-
-
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 n.g (gth Cir. 1997) ("Copyright misuse does not invalidate a copyright, but precludes its enforcement during the period of misuse.")
-
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 n.g (gth Cir. 1997) ("Copyright misuse does not invalidate a copyright, but precludes its enforcement during the period of misuse.").
-
-
-
-
29
-
-
79951610824
-
-
See Cotter, supra note 2, at 903
-
See Cotter, supra note 2, at 903.
-
-
-
-
30
-
-
79951615567
-
-
243 U.S. 502
-
243 U.S. 502.
-
-
-
-
31
-
-
79951659757
-
-
Id. at 505. The patentee licensed another company to manufacture and sell the projector and required it to post this license on a plate affixed to the machine: The sale and purchase of this machine gives only die right to use it solely with moving pictures containing the invention of reissued patent No. 12,192, leased by a licensee of the Motion Picture Patents Company ⋯. The removal or defacement of this plate terminates the right to use this machine
-
Id. at 505. The patentee licensed another company to manufacture and sell the projector and required it to post this license on a plate affixed to the machine: The sale and purchase of this machine gives only die right to use it solely with moving pictures containing the invention of reissued patent No. 12,192, leased by a licensee of the Motion Picture Patents Company ⋯. The removal or defacement of this plate terminates the right to use this machine.
-
-
-
-
32
-
-
79951610397
-
-
Id. at 506-07
-
Id. at 506-07.
-
-
-
-
33
-
-
79951593190
-
-
On the history of the attempt by the so-called "Edison trust" to monopolize the motion-picture industry, see MICHAEL CONANT, ANTITRUST IN THE MOTION PICTURE INDUSTRY 16-21, 77-80 (1960), Benjamin B. Hampton, A History of the Movies 8-11, 17-24, 34-35, 64-76, 79-81 (1931)
-
On the history of the attempt by the so-called "Edison trust" to monopolize the motion-picture industry, see MICHAEL CONANT, ANTITRUST IN THE MOTION PICTURE INDUSTRY 16-21, 77-80 (1960), Benjamin B. Hampton, A History of the Movies 8-11, 17-24, 34-35, 64-76, 79-81 (1931)
-
-
-
-
34
-
-
79951645714
-
-
Mae D. Huettic, economic Control of the motion Picture Industry: A Study in Industrial Organization 9-12 (1944), Lewis Jacobs, The Rise of the American Film 8, 81-85, 88> 164-65, 291-92 (1939), and Barak Y. Orbach, Reel Law: a Legal History of the American motion Picture Industry (forthcoming 2010)
-
Mae D. Huettic, economic Control of the motion Picture Industry: A Study in Industrial Organization 9-12 (1944), Lewis Jacobs, The Rise of the American Film 8, 81-85, 88> 164-65, 291-92 (1939), and Barak Y. Orbach, Reel Law: a Legal History of the American motion Picture Industry (forthcoming 2010).
-
-
-
-
35
-
-
79951602020
-
-
Note
-
The first-sale doctrine, sometimes called the doctrine of patent exhaustion, long antedates both misuse and antitrust doctrine. It holds that once a patentee has sold a patented article, he loses the ability to impose furdier restrictions on post-sale activity. The doctrine originated in Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549 (1852) ("[W]hen the machine passes to die hands of the purchaser, it is no longer within the limits of the [patent] monopoly."). The doctrine applies only to sales, but in MPPC the projector had in fact been sold, not leased or licensed. MPPC overruled the Court's decision five years earlier in Henry v. A.B. Dick Co., 224 U.S. 1 (1912), which had refused to apply die first-sale doctrine to a post-sale restriction requiring die seller of a patented mimeograph machine to use only die patentee's paper, ink, and stencils. Recendy die Supreme Court reaffirmed die vitality of die first-sale doctrine and used it to invalidate a form of reach-dirough royalty agreement See Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008). For further discussion of die first-sale doctrine and reach-through royalty agreements
-
-
-
-
36
-
-
79951645074
-
-
see infra text accompanying notes 153-54
-
see infra text accompanying notes 153-54.
-
-
-
-
37
-
-
79951665195
-
-
See 243 U.S. at 520 (Holmes, J., dissenting)
-
See 243 U.S. at 520 (Holmes, J., dissenting).
-
-
-
-
38
-
-
79951662667
-
-
See discussion supra text accompanying notes 11-14. si
-
See discussion supra text accompanying notes 11-14. si.
-
-
-
-
39
-
-
79951628309
-
-
MPPQ 243 U.S. at 518-19
-
MPPQ 243 U.S. at 518-19.
-
-
-
-
40
-
-
79951661809
-
-
See discussion infra Part III.B
-
See discussion infra Part III.B.
-
-
-
-
41
-
-
79951599303
-
-
283 U.S. 27 (1931)
-
283 U.S. 27 (1931).
-
-
-
-
42
-
-
79951649102
-
-
Id. at 28
-
Id. at 28.
-
-
-
-
43
-
-
79951641913
-
-
Id. at 29 (internal quotation marks omitted)
-
Id. at 29 (internal quotation marks omitted).
-
-
-
-
44
-
-
79951612965
-
-
Id
-
Id.
-
-
-
-
45
-
-
79951596765
-
-
Id. at 30
-
Id. at 30.
-
-
-
-
46
-
-
79951642509
-
-
"Contributory" patent infringement is an action by some third party that causes another to commit direct patent infringement
-
"Contributory" patent infringement is an action by some third party that causes another to commit direct patent infringement.
-
-
-
-
47
-
-
79951608297
-
-
See 35 U.S.C. § 271 (c) (2006)
-
See 35 U.S.C. § 271 (c) (2006).
-
-
-
-
48
-
-
79951600640
-
-
Carbice, 283 U.S. at 31 (citations omitted)
-
Carbice, 283 U.S. at 31 (citations omitted).
-
-
-
-
49
-
-
79951619508
-
-
Id. at 31-32 (quoting Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502,517 (1917)
-
Id. at 31-32 (quoting Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502,517 (1917))
-
-
-
-
50
-
-
79951653255
-
-
Id. at 33-34
-
Id. at 33-34.
-
-
-
-
51
-
-
79951608299
-
-
Id. at 3411.4
-
Id. at 3411.4.
-
-
-
-
52
-
-
79951632917
-
-
See supra notes 29-30
-
See supra notes 29-30.
-
-
-
-
53
-
-
79951596344
-
-
302 U.S. 458, 460 (1938)
-
302 U.S. 458, 460 (1938).
-
-
-
-
54
-
-
79951622352
-
-
A "macadam" road is made of crushed stone bound together with a binding material such as tar. See ROY BEVEREUX, JOHN LOUDON MCADAM: CHAPTERS IN THE HISTORY OF HIGHWAYS (1936)
-
A "macadam" road is made of crushed stone bound together with a binding material such as tar. See ROY BEVEREUX, JOHN LOUDON MCADAM: CHAPTERS IN THE HISTORY OF HIGHWAYS (1936).
-
-
-
-
55
-
-
79951612089
-
-
Leitch, 302 U.S. at 460
-
Leitch, 302 U.S. at 460.
-
-
-
-
56
-
-
79951616440
-
-
Id. at 460-61
-
Id. at 460-61.
-
-
-
-
57
-
-
79951659307
-
-
Id. at 463
-
Id. at 463.
-
-
-
-
58
-
-
79951609118
-
-
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 489 (1942), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 489 (1942), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006).
-
-
-
-
59
-
-
79951619984
-
-
See id. at 491
-
See id. at 491.
-
-
-
-
60
-
-
79951640177
-
-
See supra note 17 (discussing literature on how the tie was part of an attempt to monopolize the entire commercial film market in the United States)
-
See supra note 17 (discussing literature on how the tie was part of an attempt to monopolize the entire commercial film market in the United States).
-
-
-
-
61
-
-
79951662666
-
-
Morton Salt, 314 U.S. at 493
-
Morton Salt, 314 U.S. at 493.
-
-
-
-
62
-
-
79951614307
-
-
See supra note 11 (noting a few exceptions)
-
See supra note 11 (noting a few exceptions).
-
-
-
-
63
-
-
79951642935
-
-
Morton Salt, 314 U.S. at 493; accord B.B. Chem. Co. v. Ellis, 314 U.S. 495 (1942) (finding misuse where licensing of process patent was contingent on the use of patentee's materials and prohibiting patentee from enforcing die patent until die misuse was purged)
-
Morton Salt, 314 U.S. at 493; accord B.B. Chem. Co. v. Ellis, 314 U.S. 495 (1942) (finding misuse where licensing of process patent was contingent on the use of patentee's materials and prohibiting patentee from enforcing die patent until die misuse was purged).
-
-
-
-
64
-
-
79951634683
-
-
Morton Salt, 314 U.S. at 493
-
Morton Salt, 314 U.S. at 493.
-
-
-
-
65
-
-
79951663366
-
-
Although the Supreme Court's decision in Mercoid Corp. v. Mid-Continent Investment Co. (Mercoid I), 320 U.S. 66t (1944), closely followed these earlier cases, it will not be discussed in great depth in the text, mainly because Congress explicidy overruled it in die 1952 Patent Act. There, Mid-Continent sued Mercoid for selling a combustion stoker switch whose sole use was as part of a heating system over which Mid-Continent held a combination patent. The Court acknowledged that Mercoid manufactured and sold die switches for use in die patented system and Uierefore assumed "that Mercoid did not act innocendy."
-
Although the Supreme Court's decision in Mercoid Corp. v. Mid-Continent Investment Co. (Mercoid I), 320 U.S. 66t (1944), closely followed these earlier cases, it will not be discussed in great depth in the text, mainly because Congress explicidy overruled it in die 1952 Patent Act. There, Mid-Continent sued Mercoid for selling a combustion stoker switch whose sole use was as part of a heating system over which Mid-Continent held a combination patent. The Court acknowledged that Mercoid manufactured and sold die switches for use in die patented system and Uierefore assumed "that Mercoid did not act innocendy."
-
-
-
-
66
-
-
79951606799
-
-
Id. at 664
-
Id. at 664.
-
-
-
-
67
-
-
79951604596
-
-
Nevertheless, die Court refused to hold Mercoid liable for contributory infringement. Citing its earlier cases, die Court refused to allow Mid-Continent to expand its patent over the combination to include control over die individual unpatented elements of die combination. The Court explained as follows: The patent is for a combination only. Since none of die separate elements of die combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly⋯. If a limited monopoly over the combustion stoker switch were allowed, it would not be a monopoly accorded inventive genius by die patent laws but a monopoly born of a commercial desire to avoid die rigors of competition fostered by die anti-trust laws. If such an expansion of the patent monopoly could be effected by contract, die integrity of the patent system would be seriously compromised
-
Nevertheless, die Court refused to hold Mercoid liable for contributory infringement. Citing its earlier cases, die Court refused to allow Mid-Continent to expand its patent over the combination to include control over die individual unpatented elements of die combination. The Court explained as follows: The patent is for a combination only. Since none of die separate elements of die combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly⋯. If a limited monopoly over the combustion stoker switch were allowed, it would not be a monopoly accorded inventive genius by die patent laws but a monopoly born of a commercial desire to avoid die rigors of competition fostered by die anti-trust laws. If such an expansion of the patent monopoly could be effected by contract, die integrity of the patent system would be seriously compromised.
-
-
-
-
68
-
-
79951589141
-
-
Id. at 667-68
-
Id. at 667-68.
-
-
-
-
69
-
-
79951598099
-
-
Congress subsequendy overruled Mercoid /with § 271 (c) of die 1952 Patent Act, which states tiiat: (c) Whoever offers to sell or sells within die United States or imports into the United States 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 noninfringing use, shall be liable as a contributory infringer
-
Congress subsequendy overruled Mercoid /with § 271 (c) of die 1952 Patent Act, which states tiiat: (c) Whoever offers to sell or sells within die United States or imports into the United States 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 noninfringing use, shall be liable as a contributory infringer.
-
-
-
-
70
-
-
79951609972
-
-
U.S.C. § 271(c) (2006) (emphasis added). Section 271(d) of the Act also clarified diat patent holders would not be guilty of misuse for enforcing their rights against such contributory infringers
-
U.S.C. § 271(c) (2006) (emphasis added). Section 271(d) of the Act also clarified diat patent holders would not be guilty of misuse for enforcing their rights against such contributory infringers.
-
-
-
-
71
-
-
79951638950
-
-
Id. § 271(d). For a detailed examination of the problems raised by Mercoid I and Congress's response, see Dawson Chemical Co. v. Rohm & Hass Co., 448 U.S. 176, 203-13 (1980)
-
Id. § 271(d). For a detailed examination of the problems raised by Mercoid I and Congress's response, see Dawson Chemical Co. v. Rohm & Hass Co., 448 U.S. 176, 203-13 (1980).
-
-
-
-
72
-
-
79951638117
-
-
35 U.S.C. § 271 (d). On this legislation, see Richard Calkins, Patent Law: The Impact of the 1988 Patent Misuse Reform Act and Noerr-Pennington Doctrine on Misuse Defenses and Antitrust Counterclaims, 38 Drake L. Rev. 175, 197 (1989), which argues diat die same requirement of market power in die tying product required in antitrust law should control misuse law
-
35 U.S.C. § 271 (d). On this legislation, see Richard Calkins, Patent Law: The Impact of the 1988 Patent Misuse Reform Act and Noerr-Pennington Doctrine on Misuse Defenses and Antitrust Counterclaims, 38 Drake L. Rev. 175, 197 (1989), which argues diat die same requirement of market power in die tying product required in antitrust law should control misuse law.
-
-
-
-
73
-
-
79951598878
-
-
Prior to the 1988 Act, die Supreme Court had held diat at least in antitrust tying cases involving patented tying products, die patent created a presumption of market power in the tying product sufficient to establish market power for diat offense. See United States v. Loew's, Inc., 371 U.S. 38 (1962) (extending die presumption to copyright), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
Prior to the 1988 Act, die Supreme Court had held diat at least in antitrust tying cases involving patented tying products, die patent created a presumption of market power in the tying product sufficient to establish market power for diat offense. See United States v. Loew's, Inc., 371 U.S. 38 (1962) (extending die presumption to copyright), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006);
-
-
-
-
74
-
-
79951654112
-
-
Int'l Salt Co. v. United States, 332 U.S. 392 (1947), overruled by III. Tool Works, 547 U.S. 28 (holding diat die fact diat a tying product was patented created a presumption of market power). As noted, however, die 1988 Act required a showing of market power in order to establish patent misuse by tying. In light of die 1988 Act's requirement, die Supreme Court overruled International Salt and Loew's in Illinois Tool Works, 547 U.S. 28. As a result, market power cannot be presumed from die existence of a patent and must be proved for purposes of bodi antitrust and misuse doctrine
-
Int'l Salt Co. v. United States, 332 U.S. 392 (1947), overruled by III. Tool Works, 547 U.S. 28 (holding diat die fact diat a tying product was patented created a presumption of market power). As noted, however, die 1988 Act required a showing of market power in order to establish patent misuse by tying. In light of die 1988 Act's requirement, die Supreme Court overruled International Salt and Loew's in Illinois Tool Works, 547 U.S. 28. As a result, market power cannot be presumed from die existence of a patent and must be proved for purposes of bodi antitrust and misuse doctrine.
-
-
-
-
75
-
-
79951662665
-
-
S. REP. No. 100-492, at 17-18 (1988). On this legislative history, see Joel R. Bennett, Patent Misuse: Must an Alleged Infringer Prove an Antitrust Violation!, 17 AIPLA QJ. 1 (1989), Kenneth J. Burchfiel, Patent Misuse and Antitrust Reform: "Blessed Be the Tie?," 4 HARV. J.L. & TECH. 1, 2 n.g (1991), and Jere M. Webb & Lawrence A. Locke, Recent Development, Intellectual Property Misuse: Developments in the Misuse Doctrine, 4 HARV. J.L. & TECH. 257, 264-65 (1991)
-
S. REP. No. 100-492, at 17-18 (1988). On this legislative history, see Joel R. Bennett, Patent Misuse: Must an Alleged Infringer Prove an Antitrust Violation!, 17 AIPLA QJ. 1 (1989), Kenneth J. Burchfiel, Patent Misuse and Antitrust Reform: "Blessed Be the Tie?," 4 HARV. J.L. & TECH. 1, 2 n.g (1991), and Jere M. Webb & Lawrence A. Locke, Recent Development, Intellectual Property Misuse: Developments in the Misuse Doctrine, 4 HARV. J.L. & TECH. 257, 264-65 (1991)
-
-
-
-
76
-
-
79951617338
-
-
35 U.S.C.§ 271(d)
-
35 U.S.C.§ 271(d).
-
-
-
-
77
-
-
79951638947
-
-
See, e.g., Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1001-02, 1003 n.12 (Fed. Cir. 1986) ("To sustain a misuse defense involving a licensing arrangement not held to have been per se anticompetitive by the Supreme Court, a factual determination must reveal that the overall effect of the license tends to restrain competition unlawfully in an appropriately defined relevant market." (footnote omitted)
-
See, e.g., Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1001-02, 1003 n.12 (Fed. Cir. 1986) ("To sustain a misuse defense involving a licensing arrangement not held to have been per se anticompetitive by the Supreme Court, a factual determination must reveal that the overall effect of the license tends to restrain competition unlawfully in an appropriately defined relevant market." (footnote omitted));
-
-
-
-
78
-
-
79951645260
-
-
see alsoVa.. Panel Corp. v. Mac Panel Co., 133 F-3d 860, 868 (Fed. Cir. 1997) (noting that misuse occurs when the patent holder has "impermissibly broadened the 'physical or temporal scope' of the patent grant with anticompetitive effect" (quoting Windsurfing Int'l, 782 F.2d at 1001)
-
see alsoVa.. Panel Corp. v. Mac Panel Co., 133 F-3d 860, 868 (Fed. Cir. 1997) (noting that misuse occurs when the patent holder has "impermissibly broadened the 'physical or temporal scope' of the patent grant with anticompetitive effect" (quoting Windsurfing Int'l, 782 F.2d at 1001));
-
-
-
-
79
-
-
79951658879
-
-
Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 703-04, 708 (Fed. Cir. 1992) (suggesting that misuse largely tracks antitrust, although it might occasionally reach more broadly)
-
Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 703-04, 708 (Fed. Cir. 1992) (suggesting that misuse largely tracks antitrust, although it might occasionally reach more broadly).
-
-
-
-
80
-
-
79951652456
-
-
459 F.3d 1328, 1339 (Fed. Cir. 2006) (quoting C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998)
-
459 F.3d 1328, 1339 (Fed. Cir. 2006) (quoting C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998));
-
-
-
-
81
-
-
79951598576
-
-
see Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556, 1563 (Fed. Cir. 1989) (distinguishing misuse from antitrust violation)
-
see Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556, 1563 (Fed. Cir. 1989) (distinguishing misuse from antitrust violation);
-
-
-
-
82
-
-
79951647400
-
-
Senza-Gel Corp. v. Seiffhart, 803 F.2d 661, 669-71 (Fed. Cir. 1986) (finding misuse but no antitrust violation where the patentee tied its meat-deboning process and its deboning machine because the process and machine did not constitute "separate products," as antitrust tying law requires)
-
Senza-Gel Corp. v. Seiffhart, 803 F.2d 661, 669-71 (Fed. Cir. 1986) (finding misuse but no antitrust violation where the patentee tied its meat-deboning process and its deboning machine because the process and machine did not constitute "separate products," as antitrust tying law requires);
-
-
-
-
83
-
-
79951649962
-
-
cf. Transitron Elec. Corp. v. Hughes Aircraft Co., 487 F. Supp. 885, 892-93 (D. Mass. 1980), affd, 649 F.2d 871 (1st Cir. 1981) (explaining that misuse has a less stringent standing requirement and lighter burden of proof than an antitrust claim)
-
cf Transitron Elec. Corp. v. Hughes Aircraft Co., 487 F. Supp. 885, 892-93 (D. Mass. 1980), affd, 649 F.2d 871 (1st Cir. 1981) (explaining that misuse has a less stringent standing requirement and lighter burden of proof than an antitrust claim).
-
-
-
-
84
-
-
79951599763
-
-
Scruggs, 459 F.3d at 1339 (quoting Monsanto Co. v. McFarling, 363 F.3d 1336, 1341 (Fed. Cir. 2004)
-
Scruggs, 459 F.3d at 1339 (quoting Monsanto Co. v. McFarling, 363 F.3d 1336, 1341 (Fed. Cir. 2004));
-
-
-
-
85
-
-
79951666948
-
-
see also Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953, at * 8 (Fed. Cir. Aug. 30, 2010) (en banc) (reiterating this policy)
-
see also Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953, at * 8 (Fed. Cir. Aug. 30, 2010) (en banc) (reiterating this policy).
-
-
-
-
86
-
-
79951612087
-
-
Scruggs, 459 F.3d at 1339
-
Scruggs, 459 F.3d at 1339;
-
-
-
-
87
-
-
79951604594
-
-
see also McFarling, 363 F.3d at 1341 (finding that it is not misuse for the developer of a patented, genetically modified seed to prevent fanners from planting second-generation seeds)
-
see also McFarling, 363 F.3d at 1341 (finding that it is not misuse for the developer of a patented, genetically modified seed to prevent fanners from planting second-generation seeds);
-
-
-
-
88
-
-
79951665595
-
-
Hearing Components, Inc. v. Shure, Inc., No. 9:07-^-104, 2009 WL 815526 (E.D. Tex. Mar. 26, 2oog) (quoting C.R. Bard Co., 157 F.3d at 1372) (holding that false marking of a patented product is not patent misuse)
-
Hearing Components, Inc. v. Shure, Inc., No. 9:07-^-104, 2009 WL 815526 (E.D. Tex. Mar. 26, 2oog) (quoting C.R. Bard Co., 157 F.3d at 1372) (holding that false marking of a patented product is not patent misuse);
-
-
-
-
89
-
-
79951649098
-
-
Delano Farms Co. v. Cal. Table Grape Comm'n, 623 F. Supp. 2d 1144, 1178-80 (E.D. Cal. 2009) (holding that it is not misuse to collect royalties prior to patent issuance or to prevent reproduction of patented grape vines)
-
Delano Farms Co. v. Cal. Table Grape Comm'n, 623 F. Supp. 2d 1144, 1178-80 (E.D. Cal. 2009) (holding that it is not misuse to collect royalties prior to patent issuance or to prevent reproduction of patented grape vines);
-
-
-
-
90
-
-
79951650847
-
-
Hear-Wear Techs., LLC v. Phonak, LLC, No. 07-CV-0212-CVU-SAJ, 2008 WL 747086, at * 6∼7 (N.D. Okla. Mar. 18, 2008) (Finding the collective activity of four patentees in hearing-aid market to exclude rivals could constitute misuse as well as antitrust violation)
-
Hear-Wear Techs., LLC v. Phonak, LLC, No. 07-CV-0212-CVU-SAJ, 2008 WL 747086, at * 6∼7 (N.D. Okla. Mar. 18, 2008) (Finding the collective activity of four patentees in hearing-aid market to exclude rivals could constitute misuse as well as antitrust violation).
-
-
-
-
91
-
-
79951665596
-
-
173 F. App'x 832, 835 (Fed. Cir. 2006) (holding that die lower "court erred in reading the statute to preclude a Finding of patent misuse unless the tied patents involved multiple products"), rev'd on other grounds, 2010 WL 3385953
-
173 F. App'x 832, 835 (Fed. Cir. 2006) (holding that die lower "court erred in reading the statute to preclude a Finding of patent misuse unless the tied patents involved multiple products"), rev'd on other grounds, 2010 WL 3385953;
-
-
-
-
92
-
-
79951616438
-
-
see also Senza-Gel, 803 F.2d 661 at 669-70 (same). On the "separate products" requirement in tying law, see Times-Picayune Publishing Co. v. United States, 345 U.S. 594, 614 (1953) (tying of advertising in morning and evening editions of newspaper not unlawful because the two constituted a single "product"), and 10 Phillip E. Areeda & Herbert Hovenkamp, Antitrust Law \\ 1741-51 (2ded. 2004) (discussing die separate-products requirement of a tying claim, die test courts use to determine die legality of a tying arrangement, and the factors courts consider in diat determination)
-
see also Senza-Gel, 803 F.2d 661 at 669-70 (same). On the "separate products" requirement in tying law, see Times-Picayune Publishing Co. v. United States, 345 U.S. 594, 614 (1953) (tying of advertising in morning and evening editions of newspaper not unlawful because the two constituted a single "product"), and 10 Phillip E. Areeda & Herbert Hovenkamp, Antitrust Law \\ 1741-51 (2ded. 2004) (discussing die separate-products requirement of a tying claim, die test courts use to determine die legality of a tying arrangement, and the factors courts consider in diat determination).
-
-
-
-
93
-
-
79951607650
-
-
See USM Corp. v. SPS Techs., Inc., 694 F.2d 505 (7th Cir. 1982) (stating that misuse is to be tested by antitrust principles)
-
See USM Corp. v. SPS Techs., Inc., 694 F.2d 505 (7th Cir. 1982) (stating that misuse is to be tested by antitrust principles);
-
-
-
-
94
-
-
79951609117
-
-
Pandier Pumps & Equip. Co. v. Hydrocraft, Inc., 468 F.2d 225 (7th Cir. 1972) (suggesting diat antitrust and misuse principles are die same)
-
Pandier Pumps & Equip. Co. v. Hydrocraft, Inc., 468 F.2d 225 (7th Cir. 1972) (suggesting diat antitrust and misuse principles are die same);
-
-
-
-
95
-
-
79951623626
-
-
see also Nat'l Presto Indus, v. Black & Decker (U.S.) Inc., 760 F. Supp. 699, 702-03 (N.D. 111. 1991) (following USM and saying diat, "generally speaking, claims of patent misuse have been tested by conventional antitrust principles")
-
see also Nat'l Presto Indus, v. Black & Decker (U.S.) Inc., 760 F. Supp. 699, 702-03 (N.D. 111. 1991) (following USM and saying diat, "generally speaking, claims of patent misuse have been tested by conventional antitrust principles").
-
-
-
-
96
-
-
79951625860
-
-
Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7di Cir. 2003) (describing a challenged practice as akin to misuse even diough the market-power requirement under antitrust law had not been established)
-
Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7di Cir. 2003) (describing a challenged practice as akin to misuse even diough the market-power requirement under antitrust law had not been established).
-
-
-
-
97
-
-
79951666490
-
-
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3dsi6, 521 (9th Cir. 1997) ("We agree widi die Fourth Circuit diat a defendant in a copyright infringement suit need not prove an antitrust violation to prevail on a copyright misuse defense.")
-
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3dsi6, 521 (9th Cir. 1997) ("We agree widi die Fourth Circuit diat a defendant in a copyright infringement suit need not prove an antitrust violation to prevail on a copyright misuse defense.");
-
-
-
-
98
-
-
79951618671
-
-
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 978-79 (4di Cir. 1990) (holding that in copyright, misuse reaches more broadly dian antitrust)
-
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 978-79 (4di Cir. 1990) (holding that in copyright, misuse reaches more broadly dian antitrust);
-
-
-
-
99
-
-
79951646554
-
-
see also Apple Inc. v. Psystar Corp., No. C 08-03251 WHA, 2009 WL 303046, at *3∼4 (N.D. Cal. Feb. 6, 2009) (holding diat tying of Apple operating system to Apple computers was sufficient to state a claim of misuse at die pleading stage widiout inquiring into whedier die tie constituted an antitrust violation), amended by 93 U.S.P.Q.2d (BNA) 1272, 1272 (N.D. Cal. Dec. 15, 2009) (finding no misuse and granting Apple a permanent injunction against Psystar "following summary judgment in its favor on claims of copyright infringement and violations of die Digital Millennium Copyright Act")
-
see also Apple Inc. v. Psystar Corp., No. C 08-03251 WHA, 2009 WL 303046, at *3∼4 (N.D. Cal. Feb. 6, 2009) (holding diat tying of Apple operating system to Apple computers was sufficient to state a claim of misuse at die pleading stage widiout inquiring into whedier die tie constituted an antitrust violation), amended by 93 U.S.P.Q.2d (BNA) 1272, 1272 (N.D. Cal. Dec. 15, 2009) (finding no misuse and granting Apple a permanent injunction against Psystar "following summary judgment in its favor on claims of copyright infringement and violations of die Digital Millennium Copyright Act").
-
-
-
-
100
-
-
79951668860
-
-
10 Phillip E. Areeda, Einer Elhauge & Herbert Hovenkamp, Antitrust Law § 1781 (I4 (2ded. 2004)
-
10 Phillip E. Areeda, Einer Elhauge & Herbert Hovenkamp, Antitrust Law § 1781 (I4 (2ded. 2004).
-
-
-
-
101
-
-
79951649101
-
-
Id
-
Id.
-
-
-
-
102
-
-
79951667993
-
-
Cotter, supra note 2, at 949-63 (arguing that antitrust law, with minor adjustments, should provide the standard for patent misuse)
-
Cotter, supra note 2, at 949-63 (arguing that antitrust law, with minor adjustments, should provide the standard for patent misuse);
-
-
-
-
103
-
-
79951639749
-
-
Thomas F. Cotter, Four Questionable Rationales for the Patent Misuse Doctrine 21-22 (Minn. Legal Studies Research Paper No. 10-30, 2010), ("[I]n theory there could be a role for some limited applications of misuse beyond the scope of antitrust, though I believe that such instances are likely to be rare."). "If patent misuse doctrine cannot be scrapped altogether," he argues, it could be reformed by imposing a standing doctrine and "clarifying exactly how a patentee goes about purging misuse."
-
Thomas F. Cotter, Four Questionable Rationales for the Patent Misuse Doctrine 21-22 (Minn. Legal Studies Research Paper No. 10-30, 2010), available at http://papers.ssrn.eom/sol3/papers.cfmPabstract-id:s1616275("[I]n theory there could be a role for some limited applications of misuse beyond the scope of antitrust, though I believe that such instances are likely to be rare."). "If patent misuse doctrine cannot be scrapped altogether," he argues, it could be reformed by imposing a standing doctrine and "clarifying exactly how a patentee goes about purging misuse."
-
-
-
-
104
-
-
79951660957
-
-
Id. at 22
-
Id. at 22.
-
-
-
-
105
-
-
79951632742
-
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917)
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917);
-
-
-
-
106
-
-
79951608689
-
-
see supra text accompanying notes 15-21
-
see supra text accompanying notes 15-21.
-
-
-
-
107
-
-
79951644179
-
-
United States v. Loew's Inc., 371 U.S. 38 (1962) (adopting presumption of market power for copyrighted tying product), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
United States v. Loew's Inc., 371 U.S. 38 (1962) (adopting presumption of market power for copyrighted tying product), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006);
-
-
-
-
108
-
-
79951589660
-
-
nt'l Salt Co. v. United States, 332 U.S. 392 (1947) (adopting presumption of market power for patented tying product), overruled by III. Tool Works, 547 U.S. 28
-
Int'l Salt Co. v. United States, 332 U.S. 392 (1947) (adopting presumption of market power for patented tying product), overruled by III. Tool Works, 547 U.S. 28.
-
-
-
-
109
-
-
79951632290
-
-
547 U.S. 28. In Illinois Tool Works, the holder of a patent on a printhead system for inkjet printers conditioned the sale of its patented system on die purchase of its own unpatented ink
-
547 U.S. 28. In Illinois Tool Works, the holder of a patent on a printhead system for inkjet printers conditioned the sale of its patented system on die purchase of its own unpatented ink.
-
-
-
-
110
-
-
79951650410
-
-
Id. at 32. The Court held that the tying claim was not actionable under the antitrust laws absent proof of market power in the printhead system, and that the patent alone did not give rise to a presumption of market power
-
Id. at 32. The Court held that the tying claim was not actionable under the antitrust laws absent proof of market power in the printhead system, and that the patent alone did not give rise to a presumption of market power.
-
-
-
-
111
-
-
79951622749
-
-
Id. at 42-43. The Court overruled its earlier presumption that a patent automatically confers market power "[a]fter considering the congressional judgment reflected in the 1988 [Patent Misuse Reform Act] amendment," which made market power a requirement for patent misuse, as well as "extensive scholarly commentary and a change in position by the administrative agencies charged with enforcement of the antitrust laws."
-
Id. at 42-43. The Court overruled its earlier presumption that a patent automatically confers market power "[a]fter considering the congressional judgment reflected in the 1988 [Patent Misuse Reform Act] amendment," which made market power a requirement for patent misuse, as well as "extensive scholarly commentary and a change in position by the administrative agencies charged with enforcement of the antitrust laws."
-
-
-
-
112
-
-
79951589140
-
-
Id. at 33-43. In doing so, it described the presumption of market power as "a vestige of the Court's historical distrust of tying arrangements."
-
Id. at 33-43. In doing so, it described the presumption of market power as "a vestige of the Court's historical distrust of tying arrangements."
-
-
-
-
113
-
-
79951607649
-
-
Id. at 38. "Over the years, however, this Court's strong disapproval of tying arrangements has substantially diminished. Rather than relying on assumptions, in its more recent opinions the Court has required a showing of market power in the tying product."
-
Id. at 38. "Over the years, however, this Court's strong disapproval of tying arrangements has substantially diminished. Rather than relying on assumptions, in its more recent opinions the Court has required a showing of market power in the tying product."
-
-
-
-
114
-
-
79951598579
-
-
Id. at 35
-
Id. at 35.
-
-
-
-
115
-
-
79951646121
-
-
For discussions of the traditional leveraging view, see Donald F. Turner, The Validity of Tying Arrangements Under the Antitrust Laws, 72 HARV. L. Rev. 50, 59-62 (1958), and William B. Lockhart & Howard R. Sacks, The Relevance of Economic Factors in Determining Whether Exclusive Arrangements Violate Section 3 of the Clayton Act, 65 Harv. L. Rev. 913, 944 (1952)
-
For discussions of the traditional leveraging view, see Donald F. Turner, The Validity of Tying Arrangements Under the Antitrust Laws, 72 HARV. L. Rev. 50, 59-62 (1958), and William B. Lockhart & Howard R. Sacks, The Relevance of Economic Factors in Determining Whether Exclusive Arrangements Violate Section 3 of the Clayton Act, 65 Harv. L. Rev. 913, 944 (1952).
-
-
-
-
116
-
-
79951657006
-
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27, 28 (1931)
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27, 28 (1931);
-
-
-
-
117
-
-
79951608688
-
-
see supra text accompanying notes 23-32
-
see supra text accompanying notes 23-32.
-
-
-
-
118
-
-
79951630579
-
-
Carbice, 283 U.S. at 31-32
-
Carbice, 283 U.S. at 31-32.
-
-
-
-
119
-
-
79951621900
-
-
Id. at 32
-
Id. at 32.
-
-
-
-
120
-
-
79951588288
-
-
Id. at 33
-
Id. at 33.
-
-
-
-
121
-
-
79951605953
-
-
See supra text accompanying notes 39-40 (discussion of the Morton Salt case)
-
See supra text accompanying notes 39-40 (discussion of the Morton Salt case).
-
-
-
-
122
-
-
79951616876
-
-
See supra text accompanying notes 34-38 (discussion of the Leitch case)
-
See supra text accompanying notes 34-38 (discussion of the Leitch case).
-
-
-
-
123
-
-
79951660610
-
-
Mercoid I, 320 U.S. 661 (1944)
-
Mercoid I, 320 U.S. 661 (1944);
-
-
-
-
124
-
-
79951645258
-
-
Mercoid ll, 320 U.S. 680 (1944)
-
Mercoid ll, 320 U.S. 680 (1944).
-
-
-
-
125
-
-
79951610398
-
-
Leitch Mfg. Co. v. Barber Co., 302 U.S. 458,460 (1938) (emphasis added)
-
Leitch Mfg. Co. v. Barber Co., 302 U.S. 458,460 (1938) (emphasis added).
-
-
-
-
126
-
-
79951639305
-
-
Id. at 463
-
Id. at 463.
-
-
-
-
127
-
-
79951592295
-
-
The original critique came from Ward Bowman in 1957. Ward S. Bowman, Jr., Tying Arrangements and the Leverage Problem, 67 YALE L.J. 19,35 (1957) (discrediting leverage theory). Since then, numerous writers have criticized the theory
-
The original critique came from Ward Bowman in 1957. Ward S. Bowman, Jr., Tying Arrangements and the Leverage Problem, 67 YALE L.J. 19,35 (1957) (discrediting leverage theory). Since then, numerous writers have criticized the theory.
-
-
-
-
128
-
-
79951593611
-
-
See, e.g., Richard S. Markovits, Tie-ins, Leverage, and the American Antitrust Laws, 80 YALE L.J. 195 (1970)
-
See, e.g., Richard S. Markovits, Tie-ins, Leverage, and the American Antitrust Laws, 80 YALE L.J. 195 (1970);
-
-
-
-
129
-
-
79951620587
-
-
Richard S. Markovits, Tie-ins, Reciprocity, and the Leverage Theory, 76 YALE L.J. 1397 (1967)
-
Richard S. Markovits, Tie-ins, Reciprocity, and the Leverage Theory, 76 YALE L.J. 1397 (1967);
-
-
-
-
130
-
-
79951619510
-
-
Richard A. Posner, The Chicago School of Antitrust Analysis, 127 U. Pa. L. Rev. 925 (1979)
-
Richard A. Posner, The Chicago School of Antitrust Analysis, 127 U. Pa. L. Rev. 925 (1979);
-
-
-
-
131
-
-
79951623625
-
-
Charles J. Smaistrla, Note, An Analysis of Tying Arrangements: Invalidating the Leveraging Hypothesis, 61 TEX. L. REV. 893 (1983)
-
Charles J. Smaistrla, Note, An Analysis of Tying Arrangements: Invalidating the Leveraging Hypothesis, 61 TEX. L. REV. 893 (1983);
-
-
-
-
132
-
-
79951656119
-
-
Keith K. Wollenberg, Note, An Economic Analysis of Tie-in Sales: Re-examining the Leverage Theory, 39 STAN. L. Rev. 737(1987)
-
Keith K. Wollenberg, Note, An Economic Analysis of Tie-in Sales: Re-examining the Leverage Theory, 39 STAN. L. Rev. 737(1987).
-
-
-
-
133
-
-
76649121847
-
-
See, e.g., Einer Elhauge, Tying Bundled Discounts, and the Death of the Single Monopoly Profit Theory, 123 HARV. L. REV. 397 (2009) (arguing that the critique of leverage theory is overstated)
-
See, e.g., Einer Elhauge, Tying Bundled Discounts, and the Death of the Single Monopoly Profit Theory, 123 HARV. L. REV. 397 (2009) (arguing that the critique of leverage theory is overstated);
-
-
-
-
134
-
-
0346462168
-
-
Robin Cooper Feldman, Essay, Defensive Leveraging in Antitrust, 87 Geo. LJ. 2079, 2093-94 (1999) (arguing for a defensive leverage dieory which would recognize that a monopolist may maintain and prolong its monopoly through leverage behavior)
-
Robin Cooper Feldman, Essay, Defensive Leveraging in Antitrust, 87 Geo. LJ. 2079, 2093-94 (1999) (arguing for a defensive leverage dieory which would recognize that a monopolist may maintain and prolong its monopoly through leverage behavior);
-
-
-
-
135
-
-
79951591403
-
-
Louis Kaplow, Extension of Monopoly Power Through Leverage, 85 COLUM. L. REV. 515 (1985) (endorsing a limited version of the leveraging theory)
-
Louis Kaplow, Extension of Monopoly Power Through Leverage, 85 COLUM. L. REV. 515 (1985) (endorsing a limited version of the leveraging theory).
-
-
-
-
136
-
-
79951655675
-
-
547 U.S. 28 (2006)
-
547 U.S. 28 (2006);
-
-
-
-
137
-
-
79951615566
-
-
see supra text accompanying note 63
-
see supra text accompanying note 63.
-
-
-
-
138
-
-
79951665597
-
-
See, e.g., Mercoid I, 320 U.S. 661, 661 (1944) (tied product was an unpatented thermostat switch)
-
See, e.g., Mercoid I, 320 U.S. 661, 661 (1944) (tied product was an unpatented thermostat switch);
-
-
-
-
139
-
-
79951588286
-
-
Mercoid II, 320 U.S. 680, 680 (1944) (same)
-
Mercoid II, 320 U.S. 680, 680 (1944) (same);
-
-
-
-
140
-
-
79951629160
-
-
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942) (common table salt), overruled by III. Tool Works, 547 U.S. 28
-
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942) (common table salt), overruled by III. Tool Works, 547 U.S. 28;
-
-
-
-
141
-
-
79951649099
-
-
Leitch, 302 U.S. at 458 (unpatented chemical emulsion produced by numerous firms)
-
Leitch, 302 U.S. at 458 (unpatented chemical emulsion produced by numerous firms);
-
-
-
-
142
-
-
79951631871
-
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) (unpatented dry-ice commodity)
-
Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) (unpatented dry-ice commodity);
-
-
-
-
143
-
-
79951610821
-
-
see also Hodosh v. Block Drug Co., 833 F.2d 1575 (Fed. Cir. 1987) (stating that it could be misuse for the patentee of a mediod for desensitizing teeth to incorporate it into toothpaste and refuse to license the mediod apart from sales of die toodipaste)
-
see also Hodosh v. Block Drug Co., 833 F.2d 1575 (Fed. Cir. 1987) (stating that it could be misuse for the patentee of a mediod for desensitizing teeth to incorporate it into toothpaste and refuse to license the mediod apart from sales of die toodipaste);
-
-
-
-
144
-
-
79951660189
-
-
Senza-Gel Corp. v. Seiflhart, 803 F.2d 661 (Fed. Cir. 1986) (affirming district court's conclusion tfiat inquiry into anticompetitive effects was unnecessary and finding misuse for die owner of a process patent that required an unpatented machine for its implementation to refuse to license the patent except along with sales of die machine)
-
Senza-Gel Corp. v. Seiflhart, 803 F.2d 661 (Fed. Cir. 1986) (affirming district court's conclusion tfiat inquiry into anticompetitive effects was unnecessary and finding misuse for die owner of a process patent that required an unpatented machine for its implementation to refuse to license the patent except along with sales of die machine);
-
-
-
-
145
-
-
79951609116
-
-
Rex Chainbelt Inc. v. Harco Prods., Inc., 512 F.2d 993, 1001-03 (gdi Cir. 1975) (finding, widiout discussion of power or competitive effect other dian die existence of the patent itself, that it was bodi misuse and an antitrust violation for the defendant to refuse to license its method patent except in conjunction with sales of an unpatented product)
-
Rex Chainbelt Inc. v. Harco Prods., Inc., 512 F.2d 993, 1001-03 (gdi Cir. 1975) (finding, widiout discussion of power or competitive effect other dian die existence of the patent itself, that it was bodi misuse and an antitrust violation for the defendant to refuse to license its method patent except in conjunction with sales of an unpatented product);
-
-
-
-
146
-
-
79951624042
-
-
Beckman Instruments, Inc. v. Technical Dev. Corp., 433 F.2d 55 (7th Cir. 1970) (holding that tying of unpatented goods could be misuse with no discussion of anticompetitive effects)
-
Beckman Instruments, Inc. v. Technical Dev. Corp., 433 F.2d 55 (7th Cir. 1970) (holding that tying of unpatented goods could be misuse with no discussion of anticompetitive effects);
-
-
-
-
147
-
-
79951619118
-
-
Rocform Corp. v. Acitelli-Standard Concrete Wall, Inc., 367 F.2d 678, 680 (6th Cir. 1966) (finding misuse in patent holder's tying of patent to odier patents and to unpatented materials and services widiout inquiring into power or anticompetitive effect)
-
Rocform Corp. v. Acitelli-Standard Concrete Wall, Inc., 367 F.2d 678, 680 (6th Cir. 1966) (finding misuse in patent holder's tying of patent to odier patents and to unpatented materials and services widiout inquiring into power or anticompetitive effect).
-
-
-
-
148
-
-
79951605954
-
-
35 U.S.C.§ 271(d) (2006)
-
35 U.S.C.§ 271(d) (2006).
-
-
-
-
149
-
-
79951621458
-
-
See Julie E. Cohen, Reverse Engineering and the Rise of Electronic Vigilantism: Intellectual Property Implications of "Lock-Out" Programs, 68 S. CAL. L. REV. 1091, 1192-94 (1995) (arguing that the misuse doctrine is more suitable than antitrust doctrine for addressing harms to innovation)
-
See Julie E. Cohen, Reverse Engineering and the Rise of Electronic Vigilantism: Intellectual Property Implications of "Lock-Out" Programs, 68 S. CAL. L. REV. 1091, 1192-94 (1995) (arguing that the misuse doctrine is more suitable than antitrust doctrine for addressing harms to innovation);
-
-
-
-
150
-
-
79951662939
-
-
Frischmann & Moylan, supra note 2, at 927-30 (positing that the misuse doctrine should be used to remedy restraints on innovation that might not constitute antitrust violations)
-
Frischmann & Moylan, supra note 2, at 927-30 (positing that the misuse doctrine should be used to remedy restraints on innovation that might not constitute antitrust violations).
-
-
-
-
151
-
-
79951632289
-
-
See, e.g., Morton Salt, 314 U.S. at 491-92 (stating that it constitutes misuse for patentee to impose a restraint creating a "monopoly not within the grant")
-
See, e.g., Morton Salt, 314 U.S. at 491-92 (stating that it constitutes misuse for patentee to impose a restraint creating a "monopoly not within the grant");
-
-
-
-
152
-
-
79951643330
-
-
Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1001 (Fed. Cir. 1986) (maintaining that misuse has occurred if patentee "has impermissibly broadened the 'physical or temporal scope' of the patent grant with anticompetitive effect" (quoting Blonder-Tongue Labs., Inc. v. Univ. of 111. Found., 402 U.S. 313, 343 (1971)
-
Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 1001 (Fed. Cir. 1986) (maintaining that misuse has occurred if patentee "has impermissibly broadened the 'physical or temporal scope' of the patent grant with anticompetitive effect" (quoting Blonder-Tongue Labs., Inc. v. Univ. of 111. Found., 402 U.S. 313, 343 (1971)));
-
-
-
-
153
-
-
79951624493
-
-
Sanofi-Syndielabo v. Apotex, Inc., No. 02 Civ. 2255(SHS), 2006 WL 3103321 (S.D.N.Y. Nov. 2, 2006) (stating that Morton Salt addressed an example of misuse in a patentee's attempt to "restrain trade beyond the scope of the patent")
-
Sanofi-Syndielabo v. Apotex, Inc., No. 02 Civ. 2255(SHS), 2006 WL 3103321 (S.D.N.Y. Nov. 2, 2006) (stating that Morton Salt addressed an example of misuse in a patentee's attempt to "restrain trade beyond the scope of the patent");
-
-
-
-
154
-
-
79951650849
-
-
Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 275 F. Supp. 2d 543, 557 (D.N.J. 2003) (defining "copyright misuse" as an attempt by a copyright holder "to extend its monopoly beyond the scope of the copyright laws in an anticompetitive manner")
-
Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 275 F. Supp. 2d 543, 557 (D.N.J. 2003) (defining "copyright misuse" as an attempt by a copyright holder "to extend its monopoly beyond the scope of the copyright laws in an anticompetitive manner");
-
-
-
-
155
-
-
79951616439
-
-
In re Napster, Inc. Copyright Litig., 191 F. Supp. 2d 1087, 1106 (N.D. Cal. 2002) (same)
-
In re Napster, Inc. Copyright Litig., 191 F. Supp. 2d 1087, 1106 (N.D. Cal. 2002) (same);
-
-
-
-
156
-
-
79951622353
-
-
Hoffman-La Roche Inc. v. Genpharm Inc., 50 F. Supp. 2d 367, 378 (D.N.J. 1999) (same)
-
Hoffman-La Roche Inc. v. Genpharm Inc., 50 F. Supp. 2d 367, 378 (D.N.J. 1999) (same);
-
-
-
-
157
-
-
79951601465
-
-
Amgen, Inc. v. Chugai Pharm. Co., 706 F. Supp. 94 (D. Mass. 1989) (calling "patent misuse" an attempt to go "beyond the scope of the patent")
-
Amgen, Inc. v. Chugai Pharm. Co., 706 F. Supp. 94 (D. Mass. 1989) (calling "patent misuse" an attempt to go "beyond the scope of the patent");
-
-
-
-
158
-
-
79951640601
-
-
USM Corp. v. Standard Pressed Steel Co., 453 F. Supp. 743, 748-49 (N.D. 111. 1978) ("[P]atent misuse consists of an attempt by the patent holder to gain for himself rights not inherent in the patent itself, or to extend his monopoly beyond that legally granted to him."), affd in part, vacated in pari on other grounds sub nam., USM Corp. v. SPS Techs., Inc., 694 F.2d 505 (7th Cir. 1982)
-
USM Corp. v. Standard Pressed Steel Co., 453 F. Supp. 743, 748-49 (N.D. 111. 1978) ("[P]atent misuse consists of an attempt by the patent holder to gain for himself rights not inherent in the patent itself, or to extend his monopoly beyond that legally granted to him."), affd in part, vacated in pari on other grounds sub nam., USM Corp. v. SPS Techs., Inc., 694 F.2d 505 (7th Cir. 1982);
-
-
-
-
159
-
-
79951644180
-
-
see also Feldman, supra note 2, at 449 (arguing that misuse should apply to licensing restrictions that extend either the scope or duration of patent protection)
-
see also Feldman, supra note 2, at 449 (arguing that misuse should apply to licensing restrictions that extend either the scope or duration of patent protection).
-
-
-
-
160
-
-
79951617340
-
-
See Brulotte v. Thys Co., 379 U.S. 29, 33 (1964) ("A patent empowers the owner to exact royalties as high as he can negotiate with the leverage of that monopoly. But to use that leverage to project those royalty payments beyond the life of the patent is analogous to an effort to enlarge the monopoly of the patent by tieing [sic] the sale or use of the patented article to the purchase or use of unpatented ones.")
-
See Brulotte v. Thys Co., 379 U.S. 29, 33 (1964) ("A patent empowers the owner to exact royalties as high as he can negotiate with the leverage of that monopoly. But to use that leverage to project those royalty payments beyond the life of the patent is analogous to an effort to enlarge the monopoly of the patent by tieing [sic] the sale or use of the patented article to the purchase or use of unpatented ones.");
-
-
-
-
161
-
-
79951590111
-
-
see also Feldman, supra note 2, at 413 ("The doctrine of patent misuse rests on the notion that a patent holder may not try to extend the time or scope of the patent grant")
-
see also Feldman, supra note 2, at 413 ("The doctrine of patent misuse rests on the notion that a patent holder may not try to extend the time or scope of the patent grant").
-
-
-
-
162
-
-
79951658013
-
-
Monsanto Co. v. Scruggs, 342 F. Supp. 2d 568 (N.D. Miss. 2004), affd, 459 F.3d 1328 (Fed. Cir. 2006)
-
Monsanto Co. v. Scruggs, 342 F. Supp. 2d 568 (N.D. Miss. 2004), affd, 459 F.3d 1328 (Fed. Cir. 2006).
-
-
-
-
163
-
-
79951595879
-
-
Windsurfing Int'l, Inc., 782 F.2d at 1001 (quoting Blonder-Tongue Labs., Inc., 402 U.S. at 343)
-
Windsurfing Int'l, Inc., 782 F.2d at 1001 (quoting Blonder-Tongue Labs., Inc., 402 U.S. at 343);
-
-
-
-
164
-
-
79951651618
-
-
see also Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953, at *8 (Fed. Cir. Aug. 30, 2010) (en banc) ("While proof of an antitrust violation shows that the patentee has committed wrongful conduct having anticompetitive effects, that does not establish misuse of the patent in suit unless the conduct in question restricts the use of that patent and does so in one of the specific ways that have been held to be outside the otherwise broad scope of the patent grant.")
-
see also Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953, at *8 (Fed. Cir. Aug. 30, 2010) (en banc) ("While proof of an antitrust violation shows that the patentee has committed wrongful conduct having anticompetitive effects, that does not establish misuse of the patent in suit unless the conduct in question restricts the use of that patent and does so in one of the specific ways that have been held to be outside the otherwise broad scope of the patent grant.").
-
-
-
-
165
-
-
79951659753
-
-
See Feldman, supra note 2, at 413-14 ("The problem of identifying commercial behavior that extends the time and scope of the grant, however, would be more nuanced and difficult than the early decisions might have suggested. As the doctrine developed further in the 1950s and ig6os, patent holders asked the courts for additional freedom in defining contract terms. Recognizing the need for some flexibility in commercial arrangements, courts would struggle with behaviors that nominally appeared to extend the time or scope of die patent but seemed acceptable under patent principles.")
-
See Feldman, supra note 2, at 413-14 ("The problem of identifying commercial behavior that extends the time and scope of the grant, however, would be more nuanced and difficult than the early decisions might have suggested. As the doctrine developed further in the 1950s and ig6os, patent holders asked the courts for additional freedom in defining contract terms. Recognizing the need for some flexibility in commercial arrangements, courts would struggle with behaviors that nominally appeared to extend the time or scope of die patent but seemed acceptable under patent principles.");
-
-
-
-
166
-
-
0345867332
-
-
see also J.H. Reichman & Jonathan A. Franklin, Privately Legislated Intellectual Property Rights: Reconciling Freedom of Contract with Public Good Uses of Information, 147 U. Pa. L. Rev. 875, 923 (1999) ("[0]ne cannot easily separate applications of die misuse doctrine from an analysis of die declared scope and limits of such entitlments.")
-
see also J.H. Reichman & Jonathan A. Franklin, Privately Legislated Intellectual Property Rights: Reconciling Freedom of Contract with Public Good Uses of Information, 147 U. Pa. L. Rev. 875, 923 (1999) ("[0]ne cannot easily separate applications of die misuse doctrine from an analysis of die declared scope and limits of such entitlments.");
-
-
-
-
167
-
-
0346186906
-
-
Note, Clarifying the Copyright Misuse Defense: The Role of Antitrust Standards and First Amendment Values, 104 Harv. L. Rev. 1289, 1295 (1991) ("The Supreme Court in Morton Salt and its progeny has defined patent misuse simply as an extension of die patentee's monopoly beyond die lawful 'scope' of the patent grant and applied die doctrine widi litde elaboration of what marks the boundaries of the patent 'monopoly.'")
-
Note, Clarifying the Copyright Misuse Defense: The Role of Antitrust Standards and First Amendment Values, 104 Harv. L. Rev. 1289, 1295 (1991) ("The Supreme Court in Morton Salt and its progeny has defined patent misuse simply as an extension of die patentee's monopoly beyond die lawful 'scope' of the patent grant and applied die doctrine widi litde elaboration of what marks the boundaries of the patent 'monopoly.'").
-
-
-
-
168
-
-
79951630145
-
-
See infra Part IV.A.4
-
See infra Part IV.A.4.
-
-
-
-
169
-
-
79951624492
-
-
The U.S. Constitution gives Congress die power to enact patent and copyright laws in order "[t]o promote the Progress of Science and useful Arts," U.S. CONST, art. I, § 8, cl. 8, which involves both encouraging innovation and preserving access to die public domain
-
The U.S. Constitution gives Congress die power to enact patent and copyright laws in order "[t]o promote the Progress of Science and useful Arts," U.S. CONST, art. I, § 8, cl. 8, which involves both encouraging innovation and preserving access to die public domain.
-
-
-
-
170
-
-
79951655674
-
-
ee also Reichman & Franklin, supra note 84, at 925 (arguing that "consumer-driven doctrines of misuse" such as die antitrust approach "would not adequately sensitize courts to the kind of public-interest concerns familiar from classical intellectual property laws-including concerns about die ability of die educational, scientific, research, and library communities to access the building blocks of knowledge at affordable prices")
-
See also Reichman & Franklin, supra note 84, at 925 (arguing that "consumer-driven doctrines of misuse" such as die antitrust approach "would not adequately sensitize courts to the kind of public-interest concerns familiar from classical intellectual property laws-including concerns about die ability of die educational, scientific, research, and library communities to access the building blocks of knowledge at affordable prices").
-
-
-
-
171
-
-
79951594499
-
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 519 (1917)
-
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 519 (1917).
-
-
-
-
172
-
-
79951647864
-
-
911 F.2d 970, 973, 978-79 (4th Cir. 1990) ("[A] misuse need not be a violation of antitrust law in order to comprise an equitable defense to an infringement action.")
-
911 F.2d 970, 973, 978-79 (4th Cir. 1990) ("[A] misuse need not be a violation of antitrust law in order to comprise an equitable defense to an infringement action.");
-
-
-
-
173
-
-
79951653678
-
-
note
-
see Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772 (5th Cir. 1999) (finding copyright misuse after refusing to find an antitrust violation because market power could not be shown). But see Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1180-81 (1st Cir. 1994) (stating that copyright misuse requires a showing of market power and other elements of an antitrust claim), abrogated by Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010); Bellsouth Adver. & Publ'g Corp. v. Donnelley Info. Publ'g, Inc., 933 F.2d 952, 961 (11th Cir. 1991) (refusing to find copyright misuse because there was no antitrust violation), vacated on other grounds, 977 F-2d 1435 (nth Cir. 1992).
-
-
-
-
174
-
-
79951589661
-
-
See Lasercomb, 911 F.2d at 973 (quoting the license as saying that "[licensee agrees during the term of this Agreement and for one (1) year after the termination of this Agreement, that it will not write, develop, produce or sell or assist others in the writing, developing, producing or selling computer assisted die making software, directly or indirectly without Lasercomb's prior written consent")
-
See Lasercomb, 911 F.2d at 973 (quoting the license as saying that "[licensee agrees during the term of this Agreement and for one (1) year after the termination of this Agreement, that it will not write, develop, produce or sell or assist others in the writing, developing, producing or selling computer assisted die making software, directly or indirectly without Lasercomb's prior written consent").
-
-
-
-
175
-
-
79951627070
-
-
The court relied on Berlenbach v. Anderson 6f Thompson Ski Co., 329 F.2d 782 (9th Cir. 1964), which found patent misuse in a license agreement that prevented the licensee from distributing any equipment of the same type as that involved in the licensing agreement
-
The court relied on Berlenbach v. Anderson 6f Thompson Ski Co., 329 F.2d 782 (9th Cir. 1964), which found patent misuse in a license agreement that prevented the licensee from distributing any equipment of the same type as that
-
-
-
-
176
-
-
79951609970
-
-
See also Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516 (gth Cir. 1997) (finding copyright misuse where an owner of a medical-reference system that provided encoding for the filing of Medicare and Medicaid claims licensed it on the condition that the licensee not develop a competing coding system)
-
See also Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516 (gth Cir. 1997) (finding copyright misuse where an owner of a medical-reference system that provided encoding for the filing of Medicare and Medicaid claims licensed it on the condition that the licensee not develop a competing coding system).
-
-
-
-
177
-
-
79951660191
-
-
See, e.g., Davidson & Assocs., Inc. v. Internet Gateway, 334 F. Supp. 2d 1164 (E.D. Mo. 2004) (refusing to find that a license restriction forbidding reverse engineering constituted copyright misuse). Absent such a restriction, copying solely for the purpose of reverse engineering is lawful and constitutes fair use under copyright law. See Sony Computer Entm't, Inc. v. Connectix Corp., 203 F-3d 596 (gth Cir. 2000) (making a copy of software for purposes of reverse engineering constitutes fair use)
-
See, e.g., Davidson & Assocs., Inc. v. Internet Gateway, 334 F. Supp. 2d 1164 (E.D. Mo. 2004) (refusing to find that a license restriction forbidding reverse engineering constituted copyright misuse). Absent such a restriction, copying solely for the purpose of reverse engineering is lawful and constitutes fair use under copyright law. See Sony Computer Entm't, Inc. v. Connectix Corp., 203 F-3d 596 (gth Cir. 2000) (making a copy of software for purposes of reverse engineering constitutes fair use);
-
-
-
-
178
-
-
79951652455
-
-
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520-28 (9th Cir. 1992) (same)
-
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1520-28 (9th Cir. 1992) (same);
-
-
-
-
179
-
-
79951609971
-
-
note
-
see also Pamela Samuelson & Suzanne Scotchmer, TheLaw and Economics of Reverse Engineering, 111 Yale L.J. 1575, 1584 n.39 (2002) (noting that most reverse engineering is lawful and arguing that it is socially valuable in many industries). For a severe critique of restraints on reverse engineering, see Craig Zieminski, Game Over for Reverse Engineering1!: How the DMCA and Contracts Have Affected Innovation, 13 J. TECH. L. & POL\ 289 (2008), which argues that copyright licenses forbidding reverse engineering are eidier preempted or else constitute copyright misuse. For a similar critique, see Daniel Laster, The Secret Is Out: Patent Law Preempts Mass Market License Terms Barring Reverse Engineering for Interoperability Purposes, 58 Baylor L. REV. 621 (2006).
-
-
-
-
180
-
-
79951609551
-
-
See Lawrence D. Graham & Richard O. Zerbe, Jr., Economically Efficient Treatment of Computer Software: Reverse Engineering, Protection, and Disclosure, 22 RUTGERS COMPUTER & TECH. L.J. 61 (1996) (noting that reverse engineering is a permissible spillover from the innovations of predecessors). In general, IP law does not give rights holders the power to capture the value of every spillover. See Brett M. Frischmann & Mark A. Lemley, Essay, Spillovers
-
See Lawrence D. Graham & Richard O. Zerbe, Jr., Economically Efficient Treatment of Computer Software: Reverse Engineering, Protection, and Disclosure, 22 RUTGERS COMPUTER & TECH. L.J. 61 (1996) (noting that reverse engineering is a permissible spillover from the innovations of predecessors). In general, IP law does not give rights holders the power to capture the value of every spillover. See Brett M. Frischmann & Mark A. Lemley, Essay, Spillovers
-
-
-
-
181
-
-
33846964906
-
-
See Brett M.Frischmann &Mark A. Lemley, Essay, Spillovers, 107 COLUM. L. Rev. 257 (2007) (arguing that spillovers are pervasive and diat uncompensated spillovers tend to enhance rather than diminish innovation)
-
See Brett M.Frischmann &Mark A. Lemley, Essay, Spillovers, 107 COLUM. L. Rev. 257 (2007) (arguing that spillovers are pervasive and diat uncompensated spillovers tend to enhance rather than diminish innovation).
-
-
-
-
182
-
-
79951663799
-
-
For serious indictments of the patent and copyright systems, see James BESSEN & Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put INNOVATORS AT RISK 46-72 (2008) (arguing, among other things, that the broad scope and fuzziness of boundaries of patent protection inhibit innovation)
-
For serious indictments of the patent and copyright systems, see James BESSEN & Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put INNOVATORS AT RISK 46-72 (2008) (arguing, among other things, that the broad scope and fuzziness of boundaries of patent protection inhibit innovation);
-
-
-
-
183
-
-
84929735751
-
-
Michele Boldrin & David K. Levine, Against Intellectual monopoly (2008) (arguing for abolition of IP laws on the ground that first-mover advantages are sufficient to facilitate most worthwhile innovation)
-
Michele Boldrin & David K. Levine, Against Intellectual monopoly (2008) (arguing for abolition of IP laws on the ground that first-mover advantages are sufficient to facilitate most worthwhile innovation);
-
-
-
-
184
-
-
79951639307
-
-
Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the courts Can Solve It 95-100 (2009) (describing die problem of patent overbreaddi and Congressional attempts to fix it)
-
Dan L. Burk & Mark A. Lemley, The Patent Crisis and How the courts Can Solve It 95-100 (2009) (describing die problem of patent overbreaddi and Congressional attempts to fix it);
-
-
-
-
185
-
-
79951645073
-
-
Michael Heller, The Gridlock Economy: How Too Much Ownership Wrecks Markets, Stops Innovation, and Costs Lives (2008) (asserting that too much ownership of intellectual property causes a tragedy of die anticommons, which has die effect of decreasing radier dian increasing innovation)
-
Michael Heller, The Gridlock Economy: How Too Much Ownership Wrecks Markets, Stops Innovation, and Costs Lives (2008) (asserting that too much ownership of intellectual property causes a tragedy of die anticommons, which has die effect of decreasing radier dian increasing innovation);
-
-
-
-
186
-
-
10944256273
-
-
([I]t is uncertain whedier any copyright protection, let alone die amount conferred by current law, is necessary to enable audiors and publishers to recover die fixed costs diat must be incurred to generate die socially optimal output of expressive works.)
-
WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE of Intellectual Property Law 110 (2003) ("[I]t is uncertain whedier any copyright protection, let alone die amount conferred by current law, is necessary to enable audiors and publishers to recover die fixed costs diat must be incurred to generate die socially optimal output of expressive works.");
-
(2003)
The Economic Structure of Intellectual Property Law
, vol.110
-
-
Landes, W.L.1
Posner, R.A.2
-
187
-
-
79951613422
-
-
Bohannan & Hovenkamp, supra note 1 (arguing diat overbreaddi and vagueness in die scope of IP rights direatens to retard innovation and impede economic growth)
-
Bohannan & Hovenkamp, supra note 1 (arguing diat overbreaddi and vagueness in die scope of IP rights direatens to retard innovation and impede economic growth);
-
-
-
-
188
-
-
77949282050
-
-
Tunjen Chiang, Fixing Patent Boundaries, 108 Mich. L. Rev. 523, 527-31 (2009) (arguing diat post-issuance patent amendments diat broaden patent claims should be prohibited because diey do nothing to increase die patentee's ex ante incentives to innovate while discouraging further improvements on the patented technology)
-
Tunjen Chiang, Fixing Patent Boundaries, 108 Mich. L. Rev. 523, 527-31 (2009) (arguing diat post-issuance patent amendments diat broaden patent claims should be prohibited because diey do nothing to increase die patentee's ex ante incentives to innovate while discouraging further improvements on the patented technology);
-
-
-
-
189
-
-
79951634682
-
-
Jay P. Kesan & Andres A. Gallo, The Political Economy of the Patent System, 87 N.C. L. Rev. 1341 (2009) (describing the influence of special interests on current patent-reform efforts)
-
Jay P. Kesan & Andres A. Gallo, The Political Economy of the Patent System, 87 N.C. L. Rev. 1341 (2009) (describing the influence of special interests on current patent-reform efforts).
-
-
-
-
190
-
-
79951597207
-
-
See generally Thomas F. Cotter, The Procompetitive Interest in Intellectual Property Law, 48 WM. & MaryL. Rev. 483, 487 (2006) (demonstrating and critiquing the proposition that "[o]n occasion, IP law condemns conduct on the part of IP owners-or excuses otherwise infringing activity on the part of IP defendants-for the express purpose of promoting competition ⋯[,] even though antitrust law-if it were to apply at all-typically would not condemn similar conduct on the part of the IP owner")
-
See generally Thomas F. Cotter, The Procompetitive Interest in Intellectual Property Law, 48 WM. & MaryL. Rev. 483, 487 (2006) (demonstrating and critiquing the proposition that "[o]n occasion, IP law condemns conduct on the part of IP owners-or excuses otherwise infringing activity on the part of IP defendants-for the express purpose of promoting competition ⋯[,] even though antitrust law-if it were to apply at all-typically would not condemn similar conduct on the part of the IP owner").
-
-
-
-
191
-
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79951604595
-
-
See, e.g., Lasercomb Am., Inc. v. Reynolds, gi 1 F.2d 970,973, 979 (4th Cir. 1990)
-
See, e.g., Lasercomb Am., Inc. v. Reynolds, gi 1 F.2d 970,973, 979 (4th Cir. 1990).
-
-
-
-
192
-
-
79951660956
-
-
See, e.g., Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003)
-
See, e.g., Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003)
-
-
-
-
193
-
-
79951662938
-
-
HOVENKAMPETAL.,iranote 2,§ 3.3a1
-
HOVENKAMPETAL.,iranote 2,§ 3.3a1.
-
-
-
-
194
-
-
79951598879
-
-
See N. Pac. Ry. Co. v. United States, 356 U.S. 1, 6 (1958) (assessing the requirement). The requirement refers to the amount of tied sales in terms of dollars, not to a share of any particular market. AREEDA & HOVENKAMP
-
See N. Pac. Ry. Co. v. United States, 356 U.S. 1, 6 (1958) (assessing the requirement). The requirement refers to the amount of tied sales in terms of dollars, not to a share of any particular market. AREEDA & HOVENKAMP, supra note 54, at 1 1721 b 1;
-
-
-
-
195
-
-
79951633819
-
-
see also, e.g., United States v. Loew's, Inc., 371 U.S. 38, 49-50 (1962) (looking at the dollar volume of tied sales in cases involving block booking of copyrighted motion pictures), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006
-
see also, e.g., United States v. Loew's, Inc., 371 U.S. 38, 49-50 (1962) (looking at the dollar volume of tied sales in cases involving block booking of copyrighted motion pictures), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006.
-
-
-
-
196
-
-
79951593192
-
-
35 U.S.C.§ 271(d)(5) (2006)
-
35 U.S.C.§ 271(d)(5) (2006).
-
-
-
-
197
-
-
79951597627
-
-
See supra notes 67-68 and accompanying text
-
See supra notes 67-68 and accompanying text.
-
-
-
-
198
-
-
79951586975
-
-
See supra text accompanying notes 69-73
-
See supra text accompanying notes 69-73.
-
-
-
-
199
-
-
42649125986
-
-
See, e.g., David McGowan, Essay, What Tool Works Tells Us About Tailoring Patent Misuse Remedies, 102 Nw. U. L. REV. 421, 423-24 (2008) (arguing that ties such as in the Morton Salt case are used as price-discrimination devices and that "[m]ost analysts today think this sort of metering and price discrimination is either beneficial or, at least, not very worrisome as an economic matter")
-
See, e.g., David McGowan, Essay, What Tool Works Tells Us About Tailoring Patent Misuse Remedies, 102 Nw. U. L. REV. 421, 423-24 (2008) (arguing that ties such as in the Morton Salt case are used as price-discrimination devices and that "[m]ost analysts today think this sort of metering and price discrimination is either beneficial or, at least, not very worrisome as an economic matter");
-
-
-
-
200
-
-
79951597626
-
-
see also Cotter, supra note 94, at 548 (stating that the author "remain[s] skeptical of die view diat IP law should inhibit price discrimination schemes as a matter of course")
-
see also Cotter, supra note 94, at 548 (stating that the author "remain[s] skeptical of die view diat IP law should inhibit price discrimination schemes as a matter of course").
-
-
-
-
201
-
-
79951635987
-
-
243 U.S. 502 (1917); seesupratext accompanying notes 15-21
-
243 U.S. 502 (1917); seesupratext accompanying notes 15-21.
-
-
-
-
202
-
-
79951596762
-
-
See sources cited supra note 17
-
See sources cited supra note 17.
-
-
-
-
203
-
-
79951627903
-
-
United States v. Microsoft Corp., 87 F. Supp. 2d 30, 51 & n.6 (D.D.C. 2000), ajjfd in part, rev'd inpart, 253 F.3d 34 (D.C. Cir. 2001) (en banc) (per curiam)
-
United States v. Microsoft Corp., 87 F. Supp. 2d 30, 51 & n.6 (D.D.C. 2000), ajjfd in part, rev'd inpart, 253 F.3d 34 (D.C. Cir. 2001) (en banc) (per curiam).
-
-
-
-
204
-
-
79951649527
-
-
See 459 F.3d 1328 (Fed. Cir. 2006)
-
See 459 F.3d 1328 (Fed. Cir. 2006).
-
-
-
-
205
-
-
79951659755
-
-
See 459 F.3d 1328 (Fed. Cir. 2006)
-
See 459 F.3d 1328 (Fed. Cir. 2006).
-
-
-
-
206
-
-
79951604168
-
-
See id. at 1344 (Dyk.J., dissenting)
-
See id. at 1344 (Dyk.J., dissenting).
-
-
-
-
207
-
-
79951587847
-
-
See infra text accompanying notes 114-116
-
See infra text accompanying notes 114-16.
-
-
-
-
208
-
-
79951614734
-
-
See supra text accompanying note 107
-
See supra text accompanying note 107.
-
-
-
-
209
-
-
79951633820
-
-
See United States v. Microsoft Corp., 87 F. Supp. 2d 30, 51 & n.6 (D.D.C. 2000), ajfd inpari, rev'd inpart, 253 F.3d 34 (D.C. Cir. 2001) (en banc) (per curiam) (antitrust case)
-
See United States v. Microsoft Corp., 87 F. Supp. 2d 30, 51 & n.6 (D.D.C. 2000), ajfd inpari, rev'd inpart, 253 F.3d 34 (D.C. Cir. 2001) (en banc) (per curiam) (antitrust case).
-
-
-
-
210
-
-
79951590519
-
-
See id. at 65, 67
-
See id. at 65, 67.
-
-
-
-
211
-
-
79951654113
-
-
350 F-3d 640,647 (7th Cir. 2003)
-
350 F-3d 640,647 (7th Cir. 2003).
-
-
-
-
212
-
-
79951663364
-
-
Id. at 642-43
-
Id. at 642-43.
-
-
-
-
213
-
-
79951600186
-
-
Id. at 643
-
Id. at 643.
-
-
-
-
214
-
-
79951618243
-
-
Id. at 647
-
Id. at 647.
-
-
-
-
215
-
-
79951649529
-
-
note
-
Assessment Techs., LLC v. WIREdata, Inc., 361 F.3CI 434, 437 (7th Cir. 2004). Contra Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330 (9th Cir. 1995). In Triad, die Ninth Circuit permitted the manufacturer of specialized computers to maintain a copyright-infringement action against independent service organizations who copied the plaintiffs diagnostics software. The court also held that there was no misuse based on an attempt to expand coverage of the copyright because copyright protection extended to the servicing of the computers as well as the diagnostics software. Furthermore, the court indicated that misuse would occur only if Triad had attempted to prevent the independent repairers from developing their own diagnostics software independendy.
-
-
-
-
216
-
-
79951613424
-
-
Id
-
Id.
-
-
-
-
217
-
-
79951658012
-
-
WIREdata, 350 F.3d at 647
-
WIREdata, 350 F.3d at 647.
-
-
-
-
218
-
-
79951639748
-
-
Id
-
Id.
-
-
-
-
219
-
-
79951606798
-
-
note
-
Id. On the difference between antitrust and misuse the court wrote: No effort has been made by WIREdata to show that AT has market power merely by virtue of its having a copyright on one system for compiling valuation data for real estate tax assessment purposes. Cases such as Lasercomb, however, cut misuse free from antitrust, pointing out that die cognate doctrine of patent misuse is not so limited, though a difference is that patents tend to confer greater market power on dieir owners than copyrights do, since patents protect ideas and copyrights, as we have noted, do not. The argument for applying copyright misuse beyond the bounds of antitrust, besides die fact diat confined to antitrust die doctrine would be redundant, is that for a copyright owner to use an infringement suit to obtain property protection, here in data, diat copyright law clearly does not confer, hoping to force a setdement or even achieve an outright victory over an opponent that may lack the resources or the legal sophistication to resist effectively, is an abuse of process.
-
-
-
-
220
-
-
79951631870
-
-
Id. (citation omitted)
-
Id. (citation omitted).
-
-
-
-
221
-
-
79951593191
-
-
See, e.g., Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969) (holding that package licensing of patents constituted patent misuse)
-
See, e.g., Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969) (holding that package licensing of patents constituted patent misuse);
-
-
-
-
222
-
-
79951664670
-
-
United States v. Loew's, Inc., 371 U.S. 38 (1962) (condemning block booking of copyrighted motion pictures), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006)
-
United States v. Loew's, Inc., 371 U.S. 38 (1962) (condemning block booking of copyrighted motion pictures), overruled by 111. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S. 28 (2006);
-
-
-
-
223
-
-
79951659756
-
-
Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 339 U.S. 827 (1950) (refusing to find that patent package licensing constituted misuse when the package license agreement was entered voluntarily), overruled in part by Lear, Inc. v. Adkins, 395 U.S. 653 (1969). The Court's distinction between "imposed" and "voluntary" package licenses continues to have some traction
-
Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 339 U.S. 827 (1950) (refusing to find that patent package licensing constituted misuse when the package license agreement was entered voluntarily), overruled in part by Lear, Inc. v. Adkins, 395 U.S. 653 (1969). The Court's distinction between "imposed" and "voluntary" package licenses continues to have some traction.
-
-
-
-
224
-
-
79951617339
-
-
See, e.g., Well Surveys, Inc. v. Perfo-Log, Inc., 396 F.2d 15, 17 (10th Cir. 1968) (noting that noncoercive package licensing is permissible)
-
See, e.g., Well Surveys, Inc. v. Perfo-Log, Inc., 396 F.2d 15, 17 (10th Cir. 1968) (noting that noncoercive package licensing is permissible);
-
-
-
-
225
-
-
79951657456
-
-
Bayer AG v. Housey Pharm., Inc., 228 F. Supp. 2d 467, 470 (D. Del. 2002) (stating that package licensing is not misuse where licensees entered the agreement voluntarily)
-
Bayer AG v. Housey Pharm., Inc., 228 F. Supp. 2d 467, 470 (D. Del. 2002) (stating that package licensing is not misuse where licensees entered the agreement voluntarily);
-
-
-
-
226
-
-
79951590518
-
-
cf. Schor v. Abbott Labs., 457 F.3d 608 (7th Cir. 2006) (rejecting an antitrust challenge to package licensing of AIDS drugs ordinarily taken together)
-
cf. Schor v. Abbott Labs., 457 F.3d 608 (7th Cir. 2006) (rejecting an antitrust challenge to package licensing of AIDS drugs ordinarily taken together).
-
-
-
-
227
-
-
79951618670
-
-
See Cotter, supra note 2, at 921 & n.101 (finding some plausibility in the leverage theory of package licensing)
-
See Cotter, supra note 2, at 921 & n.101 (finding some plausibility in the leverage theory of package licensing).
-
-
-
-
228
-
-
79951609969
-
-
35 U.S.C. § 271(d) (2006) (providing that absent tying-product power, it shall not be misuse eidier to require the licensee to purchase a separate product or to acquire "a license to rights in another patent")
-
35 U.S.C. § 271(d) (2006) (providing that absent tying-product power, it shall not be misuse eidier to require the licensee to purchase a separate product or to acquire "a license to rights in another patent").
-
-
-
-
229
-
-
79951605955
-
-
note
-
Neither of the Supreme Court's treatments of package licensing as patent misuse confronted any issue of foreclosure of competition or innovation. In Automatic Radio, the Supreme Court found that a package license might be reasonable when numerous and complex technologies create uncertainty about which patents a licensee will need. It approved the lower court's conclusion that the package was "a convenient mode of operation designed by the parties to avoid the necessity of determining whether each type of petitioner's product embodies any of the numerous Hazeltine Patents." Automatic Radio, 339 U.S. at 833. This "convenience" rationale led the Court to believe that the agreement to use the package was "voluntary," and therefore valid.
-
-
-
-
230
-
-
79951596764
-
-
Id. at 834
-
Id. at 834.
-
-
-
-
231
-
-
79951598098
-
-
note
-
Subsequently, in Zenith Radio, the Court found misuse. It distinguished Automatic Radio by suggesting that in the earlier case the package license agreement had been entered voluntarily, while in the latter case it was compelled. Further, in the latter case, die patentee required die payment of royalties even on products Uiat did not employ any of die licensed patents. In distinguishing Automatic Radio die Court wrote: It could easily be, as the Court indicated in Automatic Radio, Uiat die licensee as well as the patentee would find it more convenient and efficient from several standpoints to base royalties on total sales than to face die burden of figuring royalties based on actual use. If convenience of die parties radier dian patent power dictates die total-sales royalty provision, there are no misuse of die patents and no forbidden conditions attached to die license. But we do not read Automatic Radio to audiorize die patentee to use the power of his patent to insist on a total-sales royalty and to override protestations of die licensee that some of his products are unsuited to die patent or diat for some lines of his merchandise he has no need or desire to purchase die privileges of die patent. In such event, not only would royalties be collected on unpatented merchandise, but die obligation to pay for nonuse would clearly have its source in die leverage of die patent.
-
-
-
-
232
-
-
79951648307
-
-
Zenith Radio, 395 U.S. at 138-39 (footnote omitted)
-
Zenith Radio, 395 U.S. at 138-39 (footnote omitted).
-
-
-
-
233
-
-
79951598578
-
-
Cf. United States v. Microsoft Corp., 253 F.3d 34, 64-66 (D.C. Cir. 2001) (en banc) (per curiam) (finding that the "commingling" of die code for die Windows operating system and die Internet Explorer web browser-a "technological" package license-was unlawful under die antitrust laws because it tended to foreclose die Netscape web browser from the market)
-
Cf. United States v. Microsoft Corp., 253 F.3d 34, 64-66 (D.C. Cir. 2001) (en banc) (per curiam) (finding that the "commingling" of die code for die Windows operating system and die Internet Explorer web browser-a "technological" package license-was unlawful under die antitrust laws because it tended to foreclose die Netscape web browser from the market).
-
-
-
-
234
-
-
79951635986
-
-
See, e.g., Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953 (Fed. Cir. Aug. 30, 2010) (en banc)
-
See, e.g., Princo Corp. v. Int'l Trade Comm'n, No. 2007-1386, 2010 WL 3385953 (Fed. Cir. Aug. 30, 2010) (en banc);
-
-
-
-
235
-
-
79951612964
-
-
U.S. Philips Corp. v. Int'l Trade Comm'n, 424 F.3d 1179 (Fed. Cir. 2005)
-
U.S. Philips Corp. v. Int'l Trade Comm'n, 424 F.3d 1179 (Fed. Cir. 2005).
-
-
-
-
236
-
-
79951642934
-
-
424 F.3d at 1193-94 (finding diat package licensing is not misuse because diere is no foreclosure, which in this case required a showing diat an existing competitor's technology was excluded)
-
424 F.3d at 1193-94 (finding diat package licensing is not misuse because diere is no foreclosure, which in this case required a showing diat an existing competitor's technology was excluded).
-
-
-
-
237
-
-
79951624491
-
-
Id. at 1194
-
Id. at 1194.
-
-
-
-
238
-
-
79951644181
-
-
The court stated as follows: The Commission assumed that there was a foreclosure of competition because compact disc manufacturers would be induced to accept licenses to the technology covered by the Farla and Iwasaki patents and therefore would be unwilling to consider alternatives. As noted, however, there was no evidence before the Commission that any manufacturer had actually refused to consider alternatives to the technology covered by those patents or for that matter that any commercially viable alternative actually existed. Mat 1198
-
The court stated as follows: The Commission assumed that there was a foreclosure of competition because compact disc manufacturers would be induced to accept licenses to the technology covered by the Farla and Iwasaki patents and therefore would be unwilling to consider alternatives. As noted, however, there was no evidence before the Commission that any manufacturer had actually refused to consider alternatives to the technology covered by those patents or for that matter that any commercially viable alternative actually existed. Mat 1198.
-
-
-
-
239
-
-
79951636843
-
-
Id. at 1190
-
Id. at 1190.
-
-
-
-
240
-
-
79951611629
-
-
See United States v. Microsoft Corp., 253 F.3d 34, 67-69 (D.C. Cir. 2001) (en banc) (per curiam) (finding "commingling" of Windows platform and Internet Explorer browser code anticompetitive because Windows customers received Internet Explorer automatically and had litde incentive to install a second web browser)
-
See United States v. Microsoft Corp., 253 F.3d 34, 67-69 (D.C. Cir. 2001) (en banc) (per curiam) (finding "commingling" of Windows platform and Internet Explorer browser code anticompetitive because Windows customers received Internet Explorer automatically and had litde incentive to install a second web browser).
-
-
-
-
241
-
-
79951661378
-
-
At least since the 1960s, the courts have recognized a "blocking exception" to the package-licensing rules
-
At least since the 1960s, the courts have recognized a "blocking exception" to the package-licensing rules.
-
-
-
-
242
-
-
79951621040
-
-
See, e.g., Int'l Mfg. Co. v. Landon, Inc., 336 F.2d 723, 729 (9th Cir. 1964) (noting that it is not unlawful to package two blocking patents together for licensing purposes because "[n]o commercially feasible device could be manufactured under one of the patents without infringing die other")
-
See, e.g., Int'l Mfg. Co. v. Landon, Inc., 336 F.2d 723, 729 (9th Cir. 1964) (noting that it is not unlawful to package two blocking patents together for licensing purposes because "[n]o commercially feasible device could be manufactured under one of the patents without infringing die other");
-
-
-
-
243
-
-
79951660190
-
-
see also Gilbert Goller, Competing, Complementary and Blocking Patents: Their Role in Determining Antitrust Violations in the Areas of Cross-Licensing Patent Pooling and Package Licensing 50 J. Pat. & TRADEMARK OFF. SOC'Y 723 (1968) (noting value of package licensing in cases involving blocking patents)
-
see also Gilbert Goller, Competing, Complementary and Blocking Patents: Their Role in Determining Antitrust Violations in the Areas of Cross-Licensing Patent Pooling and Package Licensing 50 J. Pat. & TRADEMARK OFF. SOC'Y 723 (1968) (noting value of package licensing in cases involving blocking patents);
-
-
-
-
244
-
-
79951653679
-
-
Daniel P. Homiller, Patent Misuse in Patent Pool Licensing: From National Harrow to "The Nine No-Nos" to Not Likely, 2006 DUKE L. & TECH. REV. 7 (tracing out die history of litigation involving licensing practices covering blocking patents)
-
Daniel P. Homiller, Patent Misuse in Patent Pool Licensing: From National Harrow to "The Nine No-Nos" to Not Likely, 2006 DUKE L. & TECH. REV. 7 (tracing out die history of litigation involving licensing practices covering blocking patents);
-
-
-
-
245
-
-
79951644182
-
-
Joseph Scott Miller, Standard Setting Patents, and Access Lock-in: RAND Licensing and the Theory of the Firm, 40 IND. L. REV. 351 (2007) (discussing die benefits of package licensing for blocking patents)
-
Joseph Scott Miller, Standard Setting Patents, and Access Lock-in: RAND Licensing and the Theory of the Firm, 40 IND. L. REV. 351 (2007) (discussing die benefits of package licensing for blocking patents).
-
-
-
-
246
-
-
79951624490
-
-
339 U.S. 827 (1950), overruled in part by\jt3.t, Inc. v. Adkins, 395 U.S. 653 (1969)
-
339 U.S. 827 (1950), overruled in part by\jt3.t, Inc. v. Adkins, 395 U.S. 653 (1969).
-
-
-
-
247
-
-
79951600185
-
-
Id.at 833
-
Id.at 833.
-
-
-
-
248
-
-
79951646553
-
-
See In re Recombinant DNA Tech. Patent & Contract Litig., 850 F. Supp. 769, 774 (S.D. Ind. 1994) (denying summary judgment against a misuse claim where licensee of recombinant microorganisms for production of insulin had to agree not to use such organisms from any competitor without licensor's permission)
-
See In re Recombinant DNA Tech. Patent & Contract Litig., 850 F. Supp. 769, 774 (S.D. Ind. 1994) (denying summary judgment against a misuse claim where licensee of recombinant microorganisms for production of insulin had to agree not to use such organisms from any competitor without licensor's permission).
-
-
-
-
249
-
-
79951633392
-
-
See, e.g., Cnty. Materials Corp. v. Allan Block Corp., 502 F.3d 730 (7th Cir. 2007) (holding that a covenant not to compete in a pure manufacturing license that permitted licensee to manufacture two competing concrete blocks was not per se misuse). Older decisions tended to find misuse
-
See, e.g., Cnty. Materials Corp. v. Allan Block Corp., 502 F.3d 730 (7th Cir. 2007) (holding that a covenant not to compete in a pure manufacturing license that permitted licensee to manufacture two competing concrete blocks was not per se misuse). Older decisions tended to find misuse.
-
-
-
-
250
-
-
79951662245
-
-
See, e.g., Nat'l Lockwasher Co. v. George K. Garrett Co., 137 F.2d 255 (3d Cir. 1943) (finding misuse where manufacturing licensee of specialized washers agreed that during the term of the license it would not manufacture any competing washers)
-
See, e.g., Nat'l Lockwasher Co. v. George K. Garrett Co., 137 F.2d 255 (3d Cir. 1943) (finding misuse where manufacturing licensee of specialized washers agreed that during the term of the license it would not manufacture any competing washers);
-
-
-
-
251
-
-
79951644183
-
-
Krampe v. Ideal Indus., Inc., 347 F. Supp. 1384 (N.D. 111. 1972) (similar)
-
Krampe v. Ideal Indus., Inc., 347 F. Supp. 1384 (N.D. 111. 1972) (similar).
-
-
-
-
252
-
-
79951606797
-
-
911 F.2d 970, 979 (4th Cir. 1990); see supra text accompanying notes 88-90
-
911 F.2d 970, 979 (4th Cir. 1990); see supra text accompanying notes 88-90.
-
-
-
-
253
-
-
79951646124
-
-
Lasercomb, 911 F.2d at 978
-
Lasercomb, 911 F.2d at 978.
-
-
-
-
254
-
-
79951630580
-
-
Id. (footnote omitted)
-
Id. (footnote omitted);
-
-
-
-
255
-
-
79951629593
-
-
see also Berlenbach v. Anderson & Thompson Ski Co., 329 F.2d 782 (9th Cir. 1964) (finding misuse where manufacturing licensee of patented ski equipment promised not to develop or manufacture any equipment other than that which it made under licensor's license)
-
see also Berlenbach v. Anderson & Thompson Ski Co., 329 F.2d 782 (9th Cir. 1964) (finding misuse where manufacturing licensee of patented ski equipment promised not to develop or manufacture any equipment other than that which it made under licensor's license);
-
-
-
-
256
-
-
79951651617
-
-
cf. Compton v. Metal Prods., Inc., 453 F.2d 38, 44 (4th Cir. 1971) (finding an unlawful restraint of trade in a licensor's promise to a manufacturing licensee that the licensor wovdd not develop any equipment in competition with the licensee)
-
cf. Compton v. Metal Prods., Inc., 453 F.2d 38, 44 (4th Cir. 1971) (finding an unlawful restraint of trade in a licensor's promise to a manufacturing licensee that the licensor wovdd not develop any equipment in competition with the licensee).
-
-
-
-
257
-
-
79951651250
-
-
563 F.3d 1301 (Fed. Cir.), vacated, 583 F.3d 1380 (Fed. Cir. 2009). The Federal Circuit recendy held en banc that an alleged horizontal agreement between Sony and Philips to suppress Sony's technology in favor of Philips' technology was not patent misuse. 2010 WL 3385953, at amp;z.ast;10 (Fed. Cir. Aug. 30, 2010) (en banc). Further, the court found that even if the alleged agreement impermissibly extended the patent's scope, it did not have a demonstrable anticompetitive effect because diere was no evidence that Sony or any of the licensees would have made the technology commercially or technically viable
-
563 F.3d 1301 (Fed. Cir.), vacated, 583 F.3d 1380 (Fed. Cir. 2009). The Federal Circuit recendy held en banc that an alleged horizontal agreement between Sony and Philips to suppress Sony's technology in favor of Philips' technology was not patent misuse. 2010 WL 3385953, at amp;z.ast;10 (Fed. Cir. Aug. 30, 2010) (en banc). Further, the court found that even if the alleged agreement impermissibly extended the patent's scope, it did not have a demonstrable anticompetitive effect because diere was no evidence that Sony or any of the licensees would have made the technology commercially or technically viable.
-
-
-
-
258
-
-
79951626272
-
-
Id. at *18
-
Id. at *18.
-
-
-
-
259
-
-
79951605527
-
-
Princo, 563 F.3CI at 1303 & n. 1
-
Princo, 563 F.3CI at 1303 & n. 1.
-
-
-
-
260
-
-
79951627069
-
-
Id. at 1305-06, 1309-10
-
Id. at 1305-06, 1309-10.
-
-
-
-
261
-
-
79951610823
-
-
Princo, 2010 WL 3385953, at *i-2
-
Princo, 2010 WL 3385953, at *i-2.
-
-
-
-
262
-
-
79951624925
-
-
Princo, 563 F.3d at 1313 (stating that Princo's argument was essentially that "Philips committed patent misuse by agreeing with Sony to not license Lagadec in a manner allowing 'the further development of the Lagadec technology and the possibility of competition between that technology and its own ⋯.'" (quoting Reply Brief of Appellants at 3, Princo, 563 F.3d 1301 (No. 2007-1386)
-
Princo, 563 F.3d at 1313 (stating that Princo's argument was essentially that "Philips committed patent misuse by agreeing with Sony to not license Lagadec in a manner allowing 'the further development of the Lagadec technology and the possibility of competition between that technology and its own ⋯.'" (quoting Reply Brief of Appellants at 3, Princo, 563 F.3d 1301 (No. 2007-1386)).
-
-
-
-
263
-
-
79951595876
-
-
As the court explained: Princo contends that Philips and Sony agreed from the outset to license Lagadec, a potential competitor to [their] pool patents, in a way that would necessarily prevent it from ever becoming a commercially viable alternative technology that might compete with the Orange Book standard. The essential nature of the Lagadec patent to the Orange Book standard cannot justify the refusal to allow it to be licensed for non-Orange Book purposes⋯. In contrast to tying arrangements, there are no benefits to be obtained from an agreement between patent holders to forgo separate licensing of competing technologies ⋯
-
As the court explained: Princo contends that Philips and Sony agreed from the outset to license Lagadec, a potential competitor to [their] pool patents, in a way that would necessarily prevent it from ever becoming a commercially viable alternative technology that might compete with the Orange Book standard. The essential nature of the Lagadec patent to the Orange Book standard cannot justify the refusal to allow it to be licensed for non-Orange Book purposes⋯. In contrast to tying arrangements, there are no benefits to be obtained from an agreement between patent holders to forgo separate licensing of competing technologies ⋯.
-
-
-
-
264
-
-
79951636842
-
-
Id.at 1315
-
Id.at 1315.
-
-
-
-
265
-
-
79951647399
-
-
Princo, 2010 WL 3385953, at *n ("Thus, it does not follow from the possible existence of an antitrust violation with respect to Sony's Lagadec patent that Philips is guilty of patent misuse with respect to the Raaymakers patents.")
-
Princo, 2010 WL 3385953, at *n ("Thus, it does not follow from the possible existence of an antitrust violation with respect to Sony's Lagadec patent that Philips is guilty of patent misuse with respect to the Raaymakers patents.").
-
-
-
-
266
-
-
79951598880
-
-
Id. at*i5-i7
-
Id. at*i5-i7.
-
-
-
-
267
-
-
79951620381
-
-
Id. at*i
-
Id. at*i.
-
-
-
-
268
-
-
79951645259
-
-
Id. at *i6 (emphasis added)
-
Id. at *i6 (emphasis added).
-
-
-
-
269
-
-
79951587846
-
-
See id. at * 16-17 (noting that Princo bore the burden of demonstrating that the suppression of nascent technology had an actual adverse effect on competition by showing that "there was a 'reasonable probability' that the Lagadec technology, if available for licensing, would have matured into a competitive force in the storage technology market")
-
See id. at * 16-17 (noting that Princo bore the burden of demonstrating that the suppression of nascent technology had an actual adverse effect on competition by showing that "there was a 'reasonable probability' that the Lagadec technology, if available for licensing, would have matured into a competitive force in the storage technology market");
-
-
-
-
270
-
-
79951597209
-
-
Kloth v. Microsoft Corp., 444 F.3d 312, 323-24 (4th Cir. 2006) (denying an antitrust claim for Microsoft's interference with Intel's development of a multi-platform chip because plaintiff's dieory required excessive speculation about whedier the chip ever would have succeeded)
-
Kloth v. Microsoft Corp., 444 F.3d 312, 323-24 (4th Cir. 2006) (denying an antitrust claim for Microsoft's interference with Intel's development of a multi-platform chip because plaintiff's dieory required excessive speculation about whedier the chip ever would have succeeded);
-
-
-
-
271
-
-
79951595877
-
-
Aviation Upgrade Techs., Inc. v. Boeing Co., 78 F. App'x 623 (9th Cir. 2003) (denying standing to nascent firm that had no experience in die market, no plant, no employees ouier tiian its principal, no financing, and did not have required FAA certification)
-
Aviation Upgrade Techs., Inc. v. Boeing Co., 78 F. App'x 623 (9th Cir. 2003) (denying standing to nascent firm that had no experience in die market, no plant, no employees ouier tiian its principal, no financing, and did not have required FAA certification);
-
-
-
-
272
-
-
79951595878
-
-
Bourns, Inc. v. Raychem Corp., 331 F.3d 704 (gdi Cir. 2003) (refusing to grant antitrust standing to an electronics firm that had no experience in, and was unprepared to begin, manufacturing foil-wrapped polymers for use in surge protectors)
-
Bourns, Inc. v. Raychem Corp., 331 F.3d 704 (gdi Cir. 2003) (refusing to grant antitrust standing to an electronics firm that had no experience in, and was unprepared to begin, manufacturing foil-wrapped polymers for use in surge protectors);
-
-
-
-
273
-
-
79951661807
-
-
Ashley Creek Phosphate Co. v. Chevron USA, Inc., 315 F.3d 1245 (lodi Cir. 2003) (stating mat a firm mat owned some mineral leases but had not yet determined whether entry into phosphate production would be profitable, had not obtained financing, and had no experience in production lacked antitrust standing)
-
Ashley Creek Phosphate Co. v. Chevron USA, Inc., 315 F.3d 1245 (lodi Cir. 2003) (stating mat a firm mat owned some mineral leases but had not yet determined whether entry into phosphate production would be profitable, had not obtained financing, and had no experience in production lacked antitrust standing).
-
-
-
-
274
-
-
79951622354
-
-
The Princo dissent criticized the majority for finding no misuse without requiring Philips to justify die restrictive licensing arrangement. Princo, 2010 WL 3385953, at *2i (Dyk, J., dissenung) (stating diat "antitrust violations may constitute misuse; that a presumption of anticompetitive effect flows from an agreement not to compete; and diat die burden rests on die patent holder to justify such an agreement")
-
The Princo dissent criticized the majority for finding no misuse without requiring Philips to justify die restrictive licensing arrangement. Princo, 2010 WL 3385953, at *2i (Dyk, J., dissenung) (stating diat "antitrust violations may constitute misuse; that a presumption of anticompetitive effect flows from an agreement not to compete; and diat die burden rests on die patent holder to justify such an agreement").
-
-
-
-
275
-
-
79951589662
-
-
See, e.g., Hovenkamp ET AL., supra note 2, § 3.3c (concluding diat patent-term extensions can sometimes lock in a patentee's market power and serve to perpetuate its monopoly, but arguing against per se condemnation)
-
See, e.g., Hovenkamp ET AL., supra note 2, § 3.3c (concluding diat patent-term extensions can sometimes lock in a patentee's market power and serve to perpetuate its monopoly, but arguing against per se condemnation);
-
-
-
-
276
-
-
79951618241
-
-
Feldman, supra note 2, at 400, 414 (citing Brulottev. Thys Co., 379 U.S. 29 (1964), as an example of unwarranted extension of die time of die patent)
-
Feldman, supra note 2, at 400, 414 (citing Brulottev. Thys Co., 379 U.S. 29 (1964), as an example of unwarranted extension of die time of die patent).
-
-
-
-
277
-
-
79951594036
-
-
A related issue concerns die collection of royalties on unpatented goods, where some courts have also seen an unwarranted extension of die power of die patent holder to force the licensee to pay for things that were not covered by any patent
-
A related issue concerns die collection of royalties on unpatented goods, where some courts have also seen an unwarranted extension of die power of die patent holder to force the licensee to pay for things that were not covered by any patent.
-
-
-
-
278
-
-
79951660611
-
-
See, e.g., Cummer-Graham Co. v. Straight Side Basket Corp., 142 F.2d 646 (sdi Cir. 1944) (finding misuse where licensor of patented basket-making machine measured die royalty by die number of unpatented baskets produced and fixed die price to be charged for diem). Other decisions have found misuse when the patentee compelled the payment of royalties on goods that did not employ die patent
-
See, e.g., Cummer-Graham Co. v. Straight Side Basket Corp., 142 F.2d 646 (sdi Cir. 1944) (finding misuse where licensor of patented basket-making machine measured die royalty by die number of unpatented baskets produced and fixed die price to be charged for diem). Other decisions have found misuse when the patentee compelled the payment of royalties on goods that did not employ die patent.
-
-
-
-
279
-
-
79951613423
-
-
Note
-
See, e.g., Zenidi Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 133-40 (ig6g). In most cases, it seems that extending royalties over unpatented goods does not exclude anyone, and die royalty provision is very likely no more dian a device for measuring die licensee's output for purposes of computing die royalty. As die cridque of die leverage theory shows, a patentee generally cannot obtain more royaldes than die licensee is willing to pay simply by enlarging die base upon which royalties must be measured. In a few cases, however, royaldes on unpatented products may consdtute an exclusionary pracdce.
-
-
-
-
280
-
-
79951624041
-
-
note
-
See, for example, United States v. Microsoft Corp., 56 F.3d 1448, 1451 (D.C. Cir. 1995), which condemned Microsoft's use of contract terms requiring computer manufacturers to pay a royalty for each computer diey sold, whedier or not diat computer bore Microsoft's Windows operating system. In that situation, die only way a rival could supply its operating system for such a computer was by offering it free of charge or else requiring die customer to pay for die second operating system. The court denied summary judgment to Microsoft on diis practice, which was alleged to "deter [computer manufacturers] from using competing operating systems during die life of meir contracts widi Microsoft." Id.
-
-
-
-
281
-
-
79951627497
-
-
379 U.S at 29-30
-
379 U.S at 29-30.
-
-
-
-
282
-
-
79951621901
-
-
Id. at 30-33
-
Id. at 30-33.
-
-
-
-
283
-
-
79951605098
-
-
Id. at 33
-
Id. at 33.
-
-
-
-
284
-
-
79951610399
-
-
Id. at 33-34
-
Id. at 33-34.
-
-
-
-
285
-
-
79951597208
-
-
At the time Brulotte was decided, the patent term was seventeen years from the date the patent issued
-
At the time Brulotte was decided, the patent term was seventeen years from the date the patent issued.
-
-
-
-
286
-
-
79951666046
-
-
See Brulotte, 379 U.S. at 31 (noting that the Washington Supreme Court, in interpreting the licensing agreement at issue, had held that "the period during which royalties were required was only 'a reasonable amount of time over which to spread die payments for the use of die patent'" (quoting Thys Co. v. Brulotte, 382 P.2d 271, 291 (Wash. 1963)), overruled by Brulotte, 379 U.S. 29)
-
See Brulotte, 379 U.S. at 31 (noting that the Washington Supreme Court, in interpreting the licensing agreement at issue, had held that "the period during which royalties were required was only 'a reasonable amount of time over which to spread die payments for the use of die patent'" (quoting Thys Co. v. Brulotte, 382 P.2d 271, 291 (Wash. 1963)), overruled by Brulotte, 379 U.S. 29).
-
-
-
-
287
-
-
79951589663
-
-
To the contrary, requiring royalties on unpatented technology might actually encourage new entrants who are not bound by die license and will be able to undercut the former patentee's price
-
To the contrary, requiring royalties on unpatented technology might actually encourage new entrants who are not bound by die license and will be able to undercut the former patentee's price.
-
-
-
-
288
-
-
79951663798
-
-
The Brulotte approach to misuse for royalty extensions has been criticized in a number of cases. Aldiough courts have felt obliged to follow it in clearly analogous cases, they have appropriately refused to expand its reach in any way
-
The Brulotte approach to misuse for royalty extensions has been criticized in a number of cases. Aldiough courts have felt obliged to follow it in clearly analogous cases, they have appropriately refused to expand its reach in any way.
-
-
-
-
289
-
-
79951596345
-
-
See, e.g., Zila, Inc. v. Tinnell, 502 F.3d 1014 (gth Cir. 2007) (criticizing Brulotteand limiting it to domestic patent licenses)
-
See, e.g., Zila, Inc. v. Tinnell, 502 F.3d 1014 (gth Cir. 2007) (criticizing Brulotteand limiting it to domestic patent licenses);
-
-
-
-
290
-
-
79951625410
-
-
Scheiber v. Dolby Labs., Inc., 2g3 F.3CI 1014 (7th Cir. 2002) (Posner, J.) (severely criticizing Brulotte but stating that the court was obliged to follow Supreme Court precedent)
-
Scheiber v. Dolby Labs., Inc., 2g3 F.3CI 1014 (7th Cir. 2002) (Posner, J.) (severely criticizing Brulotte but stating that the court was obliged to follow Supreme Court precedent);
-
-
-
-
291
-
-
79951598577
-
-
Bayer AG v. Housey Pharm., Inc., 228 F. Supp. 2d 467 (D. Del. 2002) (holding that Brulotte did not bar an arrangement under which the patent was on a "research tool" and royalties were based on the sale of drugs developed with diat tool (reach-through royalties) for a period of ten years, which went beyond the life of the patent)
-
Bayer AG v. Housey Pharm., Inc., 228 F. Supp. 2d 467 (D. Del. 2002) (holding that Brulotte did not bar an arrangement under which the patent was on a "research tool" and royalties were based on the sale of drugs developed with diat tool (reach-through royalties) for a period of ten years, which went beyond the life of the patent).
-
-
-
-
292
-
-
79951667991
-
-
A "reagent" is a chemical that can be added to other chemicals in order to produce a particular reaction or that can be used to assess the changes brought about in a chemical reaction
-
A "reagent" is a chemical that can be added to other chemicals in order to produce a particular reaction or that can be used to assess the changes brought about in a chemical reaction.
-
-
-
-
293
-
-
79951654779
-
-
he doctrine long antedates both misuse law and antitrust law and was applied to reach-through royalty situations already in the middle of die nineteenth century
-
The doctrine long antedates both misuse law and antitrust law and was applied to reach-through royalty situations already in the middle of die nineteenth century.
-
-
-
-
294
-
-
79951667992
-
-
he doctrine long antedates both misuse law and antitrust law and was applied to reach-through royalty situations already in the middle of die nineteenth century
-
See, for example, Bloomerv. Millinger, 68 U.S. (1 Wall.) 340, 350 (1863), which holds diat die first-sale doctrine in patents was justified because patentees "are entided to but one royalty for a patented machine," and once die patentee sells diat machine "he has then to diat extent parted widi his monopoly, and ceased to have any interest whatever in the machine so sold or so audiorized to be constructed and operated."
-
-
-
-
295
-
-
79951619509
-
-
See Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625-27 (2008) (stating diat a reach-dirough royalty is not enforceable where patentee sold die first product subject to a requirement that the royalty be paid on certain subsequent uses, because the doctrine of patent exhaustion ("first sale" doctrine) holds that once a patented good is sold, the patentee gives up all control and cannot impose further downstream restrictions)
-
See Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625-27 (2008) (stating diat a reach-dirough royalty is not enforceable where patentee sold die first product subject to a requirement that the royalty be paid on certain subsequent uses, because the doctrine of patent exhaustion ("first sale" doctrine) holds that once a patented good is sold, the patentee gives up all control and cannot impose further downstream restrictions).
-
-
-
-
296
-
-
79951619983
-
-
See Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625-27 (2008) (stating diat a reach-dirough royalty is not enforceable where patentee sold die first product subject to a requirement that the royalty be paid on certain subsequent uses, because the doctrine of patent exhaustion ("first sale" doctrine) holds that once a patented good is sold, the patentee gives up all control and cannot impose further downstream restrictions)
-
228 F. Supp. 2d at 468.
-
-
-
-
297
-
-
79951590517
-
-
See supra notes 152-60 and accompanying text
-
See supra notes 152-60 and accompanying text.
-
-
-
-
298
-
-
79951624926
-
-
Feldman, supra note 2, at 447 (arguing against reach-through royalties as violating reasonable-scope and -time limitations on the patent grant)
-
Feldman, supra note 2, at 447 (arguing against reach-through royalties as violating reasonable-scope and -time limitations on the patent grant).
-
-
-
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299
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0032076909
-
-
See Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation! The Anticommons in Biomedical Research, 280 SaENCE 698 (1998)
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See Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation! The Anticommons in Biomedical Research, 280 SaENCE 698 (1998).
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300
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79951605099
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ee Feldman, supra note 2, at 445-46 (arguing that reach-through royalties shift the reward for an invention toward "those who contribute to the early stages⋯, leaving less for those who contribute later," and concluding that this "discourages later invention and disrupts the balances implicit in the current patent system")
-
See Feldman, supra note 2, at 445-46 (arguing that reach-through royalties shift the reward for an invention toward "those who contribute to the early stages⋯, leaving less for those who contribute later," and concluding that this "discourages later invention and disrupts the balances implicit in the current patent system").
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-
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301
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79951627498
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See Heller & Eisenberg, supra note 167
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See Heller & Eisenberg, supra note 167.
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-
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302
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79951592296
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Reach-through royalties should also be distinguished from "royalty stacking," which refers to situations in which the production of a good or use of a process may require a license from many different IP rights holders
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Reach-through royalties should also be distinguished from "royalty stacking," which refers to situations in which the production of a good or use of a process may require a license from many different IP rights holders.
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303
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79951602021
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note
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See, e.g., Woods v. Universal City Studios, Inc., 920 F. Supp. 62 (S.D.N.Y. 1996) (involving royalty stacking in copyright licensing). Although royalty stacking also creates an anticommons problem, it is a different problem than the one imposed by reach-through royalties. Most importantly for present purposes, to insist on a royalty for use of one's own patent does not become misuse simply because other patentees also insist on royalties when the patents are used in the same device. While many of those who write on royalty stacking find that it can lead to patent thickets and excessive royalties, they generally do not suggest that it is a problem that can be repaired by misuse doctrine.
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304
-
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34547733961
-
-
See generally Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 TEX. L. REV. 1991, 1993 (2007) ("The term 'royalty stacking' reflects the fact that, from die perspective of die firm making the product in question, all of the different claims for royalties must be added or 'stacked' together to determine the total royalty burden borne by the product if the firm is to sell that product free of patent litigation. As a matter of simple arithmetic, royalty stacking magnifies the problems associated with injunction threats and holdup ⋯.")
-
See generally Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 TEX. L. REV. 1991, 1993 (2007) ("The term 'royalty stacking' reflects the fact that, from die perspective of die firm making the product in question, all of the different claims for royalties must be added or 'stacked' together to determine the total royalty burden borne by the product if the firm is to sell that product free of patent litigation. As a matter of simple arithmetic, royalty stacking magnifies the problems associated with injunction threats and holdup ⋯.");
-
-
-
-
305
-
-
54049104401
-
-
Einer Elhauge, Do Patent Holdup and Royalty Stacking Lead to Systematically Excessive Royalties?, 4 J. COMP. L. & ECON. 535 (2008) (arguing against the Lemley-Shapiro model)
-
Einer Elhauge, Do Patent Holdup and Royalty Stacking Lead to Systematically Excessive Royalties?, 4 J. COMP. L. & ECON. 535 (2008) (arguing against the Lemley-Shapiro model);
-
-
-
-
306
-
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79951613871
-
-
Damien Gerardin, Anne Layne-Farrar & A. Jorge Padilla, The Complements Problem Within Standard Setting: Assessing the Evidence on Royalty Stacking, 14 B.U.J. SCI. & TECH. L. 144 (2008) (noting the problem, particularly in the context of standard setting, and providing examples)
-
Damien Gerardin, Anne Layne-Farrar & A. Jorge Padilla, The Complements Problem Within Standard Setting: Assessing the Evidence on Royalty Stacking, 14 B.U.J. SCI. & TECH. L. 144 (2008) (noting the problem, particularly in the context of standard setting, and providing examples);
-
-
-
-
307
-
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41349113847
-
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J. Gregory Sidak, Holdup, Royalty Stacking and the Presumption of Injunctive Relief for Patent Infringement: A Reply to Lemley and Shapiro, 92 MINN. L. REV. 714 (2008) (finding little empirical evidence that royalty stacking is much of a problem in practice)
-
J. Gregory Sidak, Holdup, Royalty Stacking and the Presumption of Injunctive Relief for Patent Infringement: A Reply to Lemley and Shapiro, 92 MINN. L. REV. 714 (2008) (finding little empirical evidence that royalty stacking is much of a problem in practice).
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-
-
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308
-
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79951591843
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See, e.g., Certain Set Top Boxes and Components Thereof, Inv. No. 337-TA-454, USITC Pub. 3564, at 154 (June 21, 2002) (Final), available at http://www.usitc.gov/>publications/337/pub3564.pdf (holding that a grantback provision that required patent licensees of a package of numerous patents to grant back to patentee a license of all of their independently developed intellectual property operated as a restraint on innovation)
-
See, e.g., Certain Set Top Boxes and Components Thereof, Inv. No. 337-TA-454, USITC Pub. 3564, at 154 (June 21, 2002) (Final), available at http://www.usitc.gov/>publications/337/pub3564.pdf (holding that a grantback provision that required patent licensees of a package of numerous patents to grant back to patentee a license of all of their independently developed intellectual property operated as a restraint on innovation);
-
-
-
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309
-
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79951638949
-
-
see also Lightwave Techs., Inc. v. Corning Glass Works, No. 86 Civ. 759 (KC), 1991 WL 4737 (S.D.N.Y. Jan. 18, 1991) (upholding jury verdict that grantbacks were not per se patent misuse)
-
see also Lightwave Techs., Inc. v. Corning Glass Works, No. 86 Civ. 759 (KC), 1991 WL 4737 (S.D.N.Y. Jan. 18, 1991) (upholding jury verdict that grantbacks were not per se patent misuse);
-
-
-
-
310
-
-
79951618669
-
-
Duplan Corp. v. Deering Milliken, Inc., 444 F. Supp. 648, 671-73 (D.S.C. 1977) (finding that a license agreement requiring licensee to license all improvements back to licensor constituted misuse), affd in part, rev'd inpart, 594 F.2d 979 (4th Cir. 1979)
-
Duplan Corp. v. Deering Milliken, Inc., 444 F. Supp. 648, 671-73 (D.S.C. 1977) (finding that a license agreement requiring licensee to license all improvements back to licensor constituted misuse), affd in part, rev'd inpart, 594 F.2d 979 (4th Cir. 1979).
-
-
-
-
311
-
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79951639306
-
-
Int'l Norcent Tech. v. Koninklijke Philips Elecs. N.V., No. CV 07-00043 MMM (SSx), 2007 WL 4976364 (CD. Cal. Oct. 29, 2007) (dismissing a complaint challenging nonexclusive grantbacks and similar practices), affd, 323 F. App'x 571 (gth Cir. 2009); Van Dyk Research Corp. v. Xerox Corp., 478 F. Supp. 1268 (D.N.J. 1979) (similar), affd, 631 F.2d 251 (3d Cir. 1980)
-
Int'l Norcent Tech. v. Koninklijke Philips Elecs. N.V., No. CV 07-00043 MMM (SSx), 2007 WL 4976364 (CD. Cal. Oct. 29, 2007) (dismissing a complaint challenging nonexclusive grantbacks and similar practices), affd, 323 F. App'x 571 (gth Cir. 2009); Van Dyk Research Corp. v. Xerox Corp., 478 F. Supp. 1268 (D.N.J. 1979) (similar), affd, 631 F.2d 251 (3d Cir. 1980).
-
-
-
-
312
-
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79951652454
-
-
note
-
See Fabrizio Marrella & Christopher S. Yoo, Is Open Source Software the New Lex Mercatoria?, 47 VA. J. INT'L L. 807, 810 (2007). Misuse may be apt, however, to the extent that open-source licensing requires the mandatory licensing of preexisting or unrelated IP rights. See Robin Feldman, The Open Source Biotechnology Movement: Is It Patent Misuse?, 6 MINN. J. L. SCI. & TECH. 117, 167 (2004) (finding a possible, but generally unlikely, case for misuse where open-source restrictions compel licensing in a way that affects inventions "beyond the teachings of the original patent"); Christian H. Nadan, Open Source Licensing: Virus or Virtue?, 10 TEX. INTELL. PROP. LJ. 349 (2002) (finding a weak case for misuse in open-source licensing).
-
-
-
-
313
-
-
79951594921
-
-
976 F.2d 700,706-08 (Fed. Cir. 1992)
-
976 F.2d 700,706-08 (Fed. Cir. 1992).
-
-
-
-
314
-
-
79951617801
-
-
553 U.S. 617 (2008)
-
553 U.S. 617 (2008);
-
-
-
-
315
-
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79951596763
-
-
see supra text accompanying note 163
-
see supra text accompanying note 163.
-
-
-
-
316
-
-
79951649100
-
-
Static Control Components, Inc. v. Lexmark Int'l, Inc., 487 F. Supp. 2d 830, 842-43 (E.D. Ky. 2007) (explaining how a single-use restriction could be misuse, particularly if it involved misbranding of unrestricted cartridges as "single-use only"), modified, 615 F. Supp. 2d 575 (E.D. Ky. 2009) (holding, after consideration in light of the Supreme Court's Quanta decision, that the single-use restriction was unenforceable under the first-sale doctrine)
-
Static Control Components, Inc. v. Lexmark Int'l, Inc., 487 F. Supp. 2d 830, 842-43 (E.D. Ky. 2007) (explaining how a single-use restriction could be misuse, particularly if it involved misbranding of unrestricted cartridges as "single-use only"), modified, 615 F. Supp. 2d 575 (E.D. Ky. 2009) (holding, after consideration in light of the Supreme Court's Quanta decision, that the single-use restriction was unenforceable under the first-sale doctrine);
-
-
-
-
317
-
-
79951610822
-
-
see also Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006) (finding that it was not patent misuse for Monsanto to prevent farmers from replanting the second generation of its genetically engineered seed); cf. Ariz. Cartridge Remanufacturers Ass'n v. Lexmark Int'l Inc., 421 F.3d 981 (gth Cir. 2005) (upholding under state law a restriction on reuse of printer cartridges)
-
see also Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006) (finding that it was not patent misuse for Monsanto to prevent farmers from replanting the second generation of its genetically engineered seed); cf. Ariz. Cartridge Remanufacturers Ass'n v. Lexmark Int'l Inc., 421 F.3d 981 (gth Cir. 2005) (upholding under state law a restriction on reuse of printer cartridges).
-
-
-
-
318
-
-
79951621902
-
-
For instance, in Mallinckrodt, 976 F.2d at 706-08, the patentee claimed that its medical device was unsafe if reconditioned and reused
-
For instance, in Mallinckrodt, 976 F.2d at 706-08, the patentee claimed that its medical device was unsafe if reconditioned and reused.
-
-
-
-
319
-
-
79951631036
-
-
See, e.g., United States v. United Shoe Mach. Corp., no F. Supp. 295, 346 (D. Mass. 1953), affd mem., 347 U.S. 521, 521 (1954) (finding that the defendant leased rather than sold shoe-making machinery in order to prevent rise of a second-hand market)
-
See, e.g., United States v. United Shoe Mach. Corp., no F. Supp. 295, 346 (D. Mass. 1953), affd mem., 347 U.S. 521, 521 (1954) (finding that the defendant leased rather than sold shoe-making machinery in order to prevent rise of a second-hand market).
-
-
-
-
320
-
-
79951635985
-
-
See generally Barak Y. Orbach, The Durapolist Puzzle: Monopoly Power in Durable-Goods Markets, 21 YALE J. ON REG. 67, 108-09 (2004) (noting that such restrictions are used to solve a durable-goods problem that monopolists face when they have to compete with a robust second-hand, or used-goods, market)
-
See generally Barak Y. Orbach, The Durapolist Puzzle: Monopoly Power in Durable-Goods Markets, 21 YALE J. ON REG. 67, 108-09 (2004) (noting that such restrictions are used to solve a durable-goods problem that monopolists face when they have to compete with a robust second-hand, or used-goods, market).
-
-
-
-
321
-
-
79951656118
-
-
While the leverage theory precludes an IP holder from obtaining greater royalties from any particular licensee simply by tying, one can still obtain greater royalties by enlarging the class of users from whom royalties can be obtained
-
While the leverage theory precludes an IP holder from obtaining greater royalties from any particular licensee simply by tying, one can still obtain greater royalties by enlarging the class of users from whom royalties can be obtained.
-
-
-
-
322
-
-
79951641020
-
-
See supra text accompanying notes 138-42
-
See supra text accompanying notes 138-42.
-
-
-
-
323
-
-
79951627904
-
-
Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 643 (7di Cir. 2003) (doubting that the copyright holder had a legitimate infringement claim at all because it was not clear that the database needed to be copied to gain access to the public-domain information contained within, but noting that even assuming such copying was necessary, the copying would probably constitute fair use)
-
Assessment Techs., LLC v. WIREdata, Inc., 350 F.3d 640, 643 (7di Cir. 2003) (doubting that the copyright holder had a legitimate infringement claim at all because it was not clear that the database needed to be copied to gain access to the public-domain information contained within, but noting that even assuming such copying was necessary, the copying would probably constitute fair use).
-
-
-
-
324
-
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79951623185
-
-
See id. at 647
-
See id. at 647.
-
-
-
-
325
-
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79951649528
-
-
See id. at 647-48 (stopping short of finding actual misuse but stating that the infringement action was akin to misuse and awarding attorney's fees to discourage such litigation). But cf. Profl Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 64-65 (1993) (stating that it is not improper under antitrust laws for a firm to bring an infringement action on an arguably valid copyright claim even if the claim ultimately fails)
-
See id. at 647-48 (stopping short of finding actual misuse but stating that the infringement action was akin to misuse and awarding attorney's fees to discourage such litigation). But cf. Profl Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 64-65 (1993) (stating that it is not improper under antitrust laws for a firm to bring an infringement action on an arguably valid copyright claim even if the claim ultimately fails).
-
-
-
-
326
-
-
79951662664
-
-
See Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 178 (1965) (stating that bringing an infringement action on a patent obtained by fraud could constitute an antitrust offense, given that the lawsuit was an effort to commandeer unpatented technology)
-
See Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 178 (1965) (stating that bringing an infringement action on a patent obtained by fraud could constitute an antitrust offense, given that the lawsuit was an effort to commandeer unpatented technology).
-
-
-
-
327
-
-
79951617802
-
-
See, e.g., Netflix, Inc. v. Blockbuster, Inc., No. C06-02361, 2006 WL 2458717, at *g (N.D. Cal. Aug. 22, 2006) (finding that a claim of sham patent litigation that was sufficient to constitute an antitrust violation necessarily met the "lower standard for pleading patent misuse")
-
See, e.g., Netflix, Inc. v. Blockbuster, Inc., No. C06-02361, 2006 WL 2458717, at *g (N.D. Cal. Aug. 22, 2006) (finding that a claim of sham patent litigation that was sufficient to constitute an antitrust violation necessarily met the "lower standard for pleading patent misuse").
-
-
-
-
328
-
-
0242428353
-
-
Dan L. Burk, Anticircumvention Misuse, 50 UCLA L. REV. 1095, 1108, nog (2003) (arguing that the DMCA's "anticircumvention provisions are neither constitutionally nor statutorily related to copyright")
-
Dan L. Burk, Anticircumvention Misuse, 50 UCLA L. REV. 1095, 1108, nog (2003) (arguing that the DMCA's "anticircumvention provisions are neither constitutionally nor statutorily related to copyright").
-
-
-
-
329
-
-
79951611184
-
-
See id. at 1139 ("[Protection of copyrighted content, not maintenance of market dominance, was the stated legislative intent behind granting the anticircumvention right.")
-
See id. at 1139 ("[Protection of copyrighted content, not maintenance of market dominance, was the stated legislative intent behind granting the anticircumvention right.");
-
-
-
-
330
-
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79951599302
-
-
see also Aaron K. Perzanowski, Rethinking Anticircumvention's Interoperability Policy, 42 U.C. DAVIS L. REV. 1549, 1620 (2009) (proposing re-interpretation of the DMCA itself so as to prevent overreaching with respect to complementary uses that are otherwise in the public domain)
-
see also Aaron K. Perzanowski, Rethinking Anticircumvention's Interoperability Policy, 42 U.C. DAVIS L. REV. 1549, 1620 (2009) (proposing re-interpretation of the DMCA itself so as to prevent overreaching with respect to complementary uses that are otherwise in the public domain).
-
-
-
-
331
-
-
79951638948
-
-
381 F.3d 1178, 1204 (Fed. Cir. 2004). Chamberlain considered a misuse concern regarding a copyright holder's attempt to deny access to garage-door-opener technology in order to prevent others from developing a competing remote control and noted that "[the copyright holder's] construction of the DMCA would allow virtually any company to attempt to leverage its sales into aftermarket monopolies-a practice that both the antitrust laws, and the doctrine of copyright misuse normally prohibit." Id. at 1201
-
381 F.3d 1178, 1204 (Fed. Cir. 2004). Chamberlain considered a misuse concern regarding a copyright holder's attempt to deny access to garage-door-opener technology in order to prevent others from developing a competing remote control and noted that "[the copyright holder's] construction of the DMCA would allow virtually any company to attempt to leverage its sales into aftermarket monopolies-a practice that both the antitrust laws, and the doctrine of copyright misuse normally prohibit." Id. at 1201.
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-
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332
-
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79951643749
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Id
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Id.
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-
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333
-
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79951597625
-
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One important issue is whether infringement defendants not injured by the alleged misuse should be able to assert it as a defense
-
One important issue is whether infringement defendants not injured by the alleged misuse should be able to assert it as a defense.
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334
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79951594920
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See, e.g., McGowan, supra note ioa, at 428 (arguing that "public policy favors the tailoring of remedies to the economic effects of acts of misuse," and that courts finding misuse should therefore "limit remedies to actual victims of the misuse and to die extent of the victims' harm caused by die misuse"). It is possible, however, diat this article could shed some light on that issue by identifying the nature and severity of the harm caused by misuse of IP rights
-
See, e.g., McGowan, supra note ioa, at 428 (arguing that "public policy favors the tailoring of remedies to the economic effects of acts of misuse," and that courts finding misuse should therefore "limit remedies to actual victims of the misuse and to die extent of the victims' harm caused by die misuse"). It is possible, however, diat this article could shed some light on that issue by identifying the nature and severity of the harm caused by misuse of IP rights.
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