Patent misuse

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In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides.[1] If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains economic competition substantially can also violate United States antitrust law.[2]

Definition[edit]

Patent misuse happens when a patent owner improperly expands the scope or term of the patent. This type of patent misuse includes forcing customers to agree to pay royalties on un-patented products or pay royalties on an expired patent. This type of patent misuse can take place without a violation of antitrust laws.[3]

Patent misuse can also happen when the patentee's conduct is a violation of antitrust laws. For example, a company buying all the patents in their field to stall competition would be misusing patents. Other antitrust patent misuse includes attempts to control the resale price of a product using patents, attempting to enforce a patent the patentee knows to be invalid or price fixing.[3][4]

History[edit]

In the early 20th century, patent misuse was not yet a well recognized defense to patent infringement. Courts recognized relatively few limitations to patentee's rights. In 1912, the Supreme Court did not recognize a doctrine of patent misuse in Henry v. A. B. Dick Co.,[5] a case in which a patent license was tied to a purchase of another product.[6] According to the Court, because a patent owner could withhold its patented product from market entirely, they could also selectively withhold it from people who did not purchase other products.[7] This doctrine was expressly rejected a few years later, however, in Motion Picture Patents Co. v. Universal Film Mfg. Co.[8] In that case, Justice Holmes (who had been in the majority in the A.B. Dick case), in dissent, argued that because the owner of a patented teapot "may keep his device wholly out of use . . . I cannot understand why he may not keep it out of use unless the licensee, or, for the matter of that, the buyer" will agree to buy his tea from the patent owner.[9] But the majority rejected this doctrine of patentees' "inherent rights." It explained:

[T]he argument [is] that, since the patentee may withhold his patent altogether from public use, he must logically and necessarily be permitted to impose any conditions which he chooses upon any use which he may allow of it. The defect in this thinking springs from the substituting of inference and argument for the language of the statute, and from failure to distinguish between the rights which are given to the inventor by the patent law and which he may assert against all the world through an infringement proceeding, and rights which he may create for himself by private contract, which, however, are subject to the rules of general, as distinguished from those of the patent, law. While it is true that, under the statutes as they were (and now are), a patentee might withhold his patented machine from public use, yet, if he consented to use it himself or through others, such use immediately fell within the terms of the statute, and, as we have seen, he is thereby restricted to the use of the invention as it is described in the claims of his patent, and not as it may be expanded by limitations as to materials and supplies necessary to the operation of it, imposed by mere notice to the public.[10]

A year after the A.B. Dick case, in Bauer & Cie. v. O'Donnell,[11] the Supreme Court began to shift its perspective by holding that, although patentees could control manufacturing, use, and sale of patented products with license agreements, they could not use license agreements to control the resale price of patented products the patentee sold.[7] After the Motion Picture Patents case, the tide began to run more strongly against restrictive patent practices.

Case law[edit]

Origins[edit]

In 1917, the Supreme Court reversed the four-year-old Henry v. A.B. Dick Co. decision and established patent misuse as an affirmative defense to copyright infringement. In Motion Picture Patents Co. v. Universal Film Mfg. Co.,[12] the Supreme Court held that requiring a patented film projector only be used for screening films authorized by the patent holder was unenforceable and constituted patent misuse. The Court concluded that the patentee's attempt to extend its monopoly power beyond the rights that the patent statute conferred on it was inequitable, and because of the patentee's "unclean hands," the court, as a court of equity, would not grant it relief.[7][13][14] In explaining its ruling, the Court said:

[W]e are convinced that the exclusive right granted in every patent must be limited to the invention described in the claims of the patent, and that it is not competent for the owner of a patent, by notice attached to its machine, to in effect extend the scope of its patent monopoly by restricting the use of it to materials necessary in its operation, but which are no part of the patented invention, or to send its machines forth into the channels of trade of the country subject to conditions as to use or royalty to be paid, to be imposed thereafter at the discretion of such patent owner. The patent law furnishes no warrant for such a practice, and the cost, inconvenience, and annoyance to the public which the opposite conclusion would occasion forbid it.[15]

Carbice Corp. v. American Patents Development Corp.,[16] clarified that requiring patent licensees to buy other products as a condition of a patent license ("product tying") was misuse. American Patents Development Corp. held a patent for a dry ice transport enclosure. It required its customers only use their enclosure to transport dry ice from their exclusive distributor. The Supreme Court held that using patents to control an enclosure purchaser's other product purchases was patent misuse. (In a separate case a few months later, the Supreme Court held that Carbice's patent was invalid.)[7][14][17]

The Supreme Court held that patent misuse made the patent unenforceable regarding monetary relief in Morton Salt Co. v. G.S. Suppiger Co.[18] Suppiger Co. owned a patent on salt-tablet dispensing machines that it manufactured. The sales agreement for the machines required customers to purchase salt tablets exclusively from Suppiger. Morton Salt Co., a competitor that also sold salt tablets, manufactured and leased dispensing machines that infringed Suppiger's patent. The Supreme Court denied Suppiger Co. compensation for Morton Salt's infringement, holding that Suppiger's patent was unenforceable because it was using it to restrain competition in unpatented salt. The Court said its ruling would not be different if Morton Salt were not Suppiger's competitor.[7][14] The Court added that misuse could be found in conduct falling short of an antitrust violation.

Brulotte v Thys Co.,[19] established that attempting to collect royalties after a patent expired was misuse. Mr. Brulotte purchased a hop-harvesting machine from Thys Co. Upon purchase, Brulotte accepted a licensing agreement which required annual royalty payments beyond the duration of the Thys patent. When Brulotte realized that the terms of the contract exceeded the duration of the patent, he stopped paying the royalties. The Supreme Court held that the contract between Brulotte and Thys was not enforceable once the last licensed patent expired, because the license extended the term of patent protection beyond the duration of the patent.[7][20] In June 2015, the Supreme Court reaffirmed the Brulotte case.[21]

In Zenith Radio Corp. v. Hazeltine Research, Inc.[22] the Supreme Court established that demanding a percentage of a licensees patented and non-patened product sales in exchange for a license was misuse. Hazeltine Research required Zenith pay a total percentage of all its sales to license Hazeltine's patents. The court ruled that this license requirement was patent misuse,[7] even though it might not be an antitrust violation because the anticompetive impact may have been too slight.[23] This holding reaffirmed a line of Supreme Court patent misuse decisions holding that the competitive impact of a restrictive practice might fall short of an antitrust violation and nonetheless be misuse.

Recent changes[edit]

Windsurfing v. AMF[24] held that a patent misuse defense must show that the patentee's behavior hurts competition. This case also clarified that if the Supreme Court had already held a particular licensing arrangement was misuse, the infringer did not have to establish that it was anticompetitive. However, if the Supreme Court had not spoken on the licensing agreement, the infringer has to establish the agreement hurts competition.[7][14] A few months later, however, the Federal Circuit retreated from Windsurfing in Senza-Gel Corp. v. Seiffhart.[25] In response to a certified question, the court recognized that "as the Supreme Court has said, the patentee's act may constitute patent misuse without rising to the level of an antitrust violation."[26] Citing the contrary suggestion in Windsurfing, the court explained:

Commentators and courts have questioned the rationale appearing in Supreme Court opinions dealing with misuse in view of recent economic theory and Supreme Court decisions in non-misuse contexts. We are bound, however, to adhere to existing Supreme Court guidance in the area until otherwise directed by Congress or by the Supreme Court.[27]

In Princo Corp. v. International Trade Commission,[28] the Federal Circuit held that violations of antitrust law involving patents are not always patent misuse. Philips, Sony and other manufacturers developed patented technology to create CDs that could be rewritten multiple times (CD-RWs). Philips licensed these patents to CD player and reader manufacturers (so they could develop CD players and readers that worked with CD-RWs). Princo Corp., one of the licensees, stopped paying royalty fees to Philips, but continued to manufacture readable discs using Phillips technology. Phillips filed a complaint with the International Trade Commission and Princo responded claiming that Sony and Phillips were using their patents to suppress competition. On appeal, an en banc the Federal Circuit Court of Appeals held that Sony and Phillips had not expanded the scope of their patent in a way prohibited by previous Supreme Court cases. Namely, the violation allegedly did not "leverage" the patent at hand. According to one commentator, patent scholars have speculated that this opinion will significantly narrow the scope of misuse.[7][14]

In Kimble v. Marvel Entertainment, LLC, 576 U.S. __ (2015), on June 22, 2015, the Supreme Court refused to overrule Brulotte v. Thys Co., because of stare decisis. The Court pointed out that "Congress has spurned multiple opportunities to reverse Brulotte," and "Congress has rebuffed bills that would have replaced Brulotte’s per se rule with the same antitrust-style analysis Kimble now urges."[29] Moreover, the Court maintained, there was not a good reason to overrule Brulotte: "Brulotte’s statutory and doctrinal underpinnings have not eroded over time."[30] The patent statute at issue in Brulotte is essentially unchanged.[31] The precedents on which the Brulotte Court relied, like other decisions enforcing a patent’s cutoff date, remain good law.[32] And Brulotte’s "close relation to a whole web of [other] precedents means that reversing it could threaten others."[33]

In addition, the Court rejected Kimble's arguments that the Brulotte doctrine should be overturned because the practice it outlaws is not anticompetive and it does not violate the antitrust laws. The Court found this argument beside the point: "But Brulotte is a patent rather than an antitrust case," it insisted.[34] Under the Court's legal analysis, "[P]atent (not antitrust) policy gave rise to the Court’s conclusion that post-patent royalty contracts are unenforceable—utterly 'regardless of a demonstrable effect on competition.'"[35] Earlier in its opinion, the Court explained that it was well-settled that it was "patent law’s policy [to] establish[] a 'post-expiration . . . public domain' in which every person can make free use of a formerly patented product."[36] The majority opinion is thus a strong rebuke to those analysts that seek to make the misuse doctrine a kind of petty antitrust law, in which antitrust principles of analysis dominate over policies unique to patent law; Kimble reaffirms many prior Supreme Court decisions that hold that misuse may be found in conduct that does not violate the antitrust laws.[37]

Congressional limits to patent misuse[edit]

Congress limited the patent misuse affirmative defense in both 1952 and 1998, resulting in 35 U.S.C. § 271(d) of the Patent Act.

Overhaul of the Patent Act in 1952[edit]

In 1952, Congress added provisions to the Patent Act explicitly exempting charging royalties, licensing and suing from patent misuse. The act clarified that patentees can make money off their patents from by licensing their patents and enforcing their patent rights against infringers.[14]

Patent Misuse Reform Act of 1988[edit]

In 1988, Congress enacted legislation that narrowed the scope of the patent misuse by creating safe harbors for patent holders in 35 U.S.C. § 271(d). It clarified that patentees did not misuse their patents by suing people creating products which could be used to infringement patents (contributory infringement). Requiring people to buy another license or product to obtain a patented product is also not misuse, unless the patentee holds "market power."[38][1][3][7][14]

Remedy[edit]

Most types of misuse can be erased (or "purged") so the patent is valid again by abandoning the misusing practice and causing its effects to fully dissipate.[3] Fraud or inequitable conduct in acquiring patents, however, is not purgeable.[39]

Criticisms and support[edit]

Critics of the patent misuse defense argue it is anachronistic and that it has been narrowed to oblivion since 1988 by court rulings like Princo Corp v. International Trade Commission.[40][41] Proponents of the patent misuse defense suggest it could be a defense against litigation brought by patent trolls.[42] Use of this doctrine to contest patent infringement suits by non-practicing entities may require the courts to challenge precedent set in Continental Paper Bag Co. v. Eastern Paper Bag Co.[43]

See also[edit]

References[edit]

  1. ^ a b Quinn, Gene. "Patent Misuse, Exploring the Basics". Retrieved 12 November 2013. 
  2. ^ Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 140, (1971).
  3. ^ a b c d Silverman, Arnold (1992). "Patent Misuse: Limitations on a Patentee's Rights". JOM 44 (9). 
  4. ^ Bernhard, Herbert A (1957). "Patents: Misuse Doctrine: Multiple Licenses with Price-Fixing Provisos as Sherman Act Violation". Michigan Law Review 55 (5): 726–728. JSTOR 1285286. 
  5. ^ Henry v. A.B. Dick Co., 224 US 1 (1912)
  6. ^ A mimeograph patent was used to tie ink and stencils used with the machine.
  7. ^ a b c d e f g h i j Brian D. Hill, "Princo Corp. v. Int'l Trade Comm'n: Patent Misuse No Longer a Deterrent to Anticompetitive Behavior in the Group Venture Context", 7 J. Bus. & Tech. L. 361 (2012)
  8. ^ 243 U.S. 502 (1917).
  9. ^ 243 U.S. at 519.
  10. ^ 243 U.S. at 514-15.
  11. ^ 229 U.S. 1 (1913).
  12. ^ Motion Picture Patents Co. v. Universal Film Mfg. Co 243 U.S. 502 (1917) (Supreme Court holding unenforceable a restriction that a user of a patented film projector must use it to screen only such films as the patentee authorized).
  13. ^ White, Katherine "A Rule for When Patent Misuse Should be Applied" 11 Ford Intell. Prop., Media & Ent. L.J. 671
  14. ^ a b c d e f g Barr, Camille (2011). "License to Collude: Patent Pools, the Patent Misuse Doctrine and Princo" (PDF). UC Davis L. Rev. 45 (2). 
  15. ^ 243 U.S. at 516.
  16. ^ Carbice Corp. v. Patents Development Corp. 283 U.S. 27 (1931)
  17. ^ Carbice Corp. v. American Patents Dev. Co. 283 U.S. 420 (1931)
  18. ^ Morton Salt Co. v. G.S. Suppiger Co. 314 U.S. 488 (1942)
  19. ^ Brulotte v. Thys Co.379 U.S. 29 (1964)
  20. ^ Gates, S.; Meier, J. (2009). "Brulotte's continuing shadow over patent licensing" (PDF). Journal of Intellectual Property Law & Practice 4 (3). doi:10.1093/jiplp/jpn247. 
  21. ^ Kimble v. Marvel Entertainment, LLC, 576 U.S. __ (2015).
  22. ^ Zenith Radio Corp. v. Hazeltine Research, Inc. 395 U.S. 100 (1969)
  23. ^ 395 U.S. at 140.
  24. ^ Windsurfing Intern. INC. v. AMF, INC 782 F.2d 995 (1986)
  25. ^ 803 F.2d 661, 665 (Fed. Cir. 1986).
  26. ^ 803 F.2d at 668.
  27. ^ 803 F.2d at 665 n.5.
  28. ^ Princo Corp. v. International Trade Commission and U.S. Philips Corp.,616 F.3d 1318 (Fed. Cir. 2010)
  29. ^ Slip op. at 8-9, 11.
  30. ^ Id. at 10.
  31. ^ Id.
  32. ^ Id. at 3-4, 10-11.
  33. ^ Id. at 11.
  34. ^ Id at 14. It also said, "The patent laws—unlike the Sherman Act—do not aim to maximize competition (to a large extent, the opposite)." Id. at 15.
  35. ^ Id. at 16.
  36. ^ Id. at 5. The Court also said that legal enforcement of agreements for post-patent expiration royalties conflicts with the "free market visualized for the post-expiration period" and so "runs counter to the policy and purpose of the patent laws." Id. at 16.
  37. ^ See e.g., Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 140 (1969) (holding that conditions for patent misuse may not violate Sherman or Clayton Acts); Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 666 (1944) (patent may be misused contrary to purpose of patent laws without violating antitrust laws); Morton Salt Co. v. G.S. Suppiger, 314 U.S. 488, 491-94 (1942) (consideration of Clayton Act is unnecessary to determine whether patent misuse occurred).
  38. ^ The specific language of section 271(d)(5), the relevant statutory provision, is: Tying is not misuse"unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned."
  39. ^ Leaffer, M."Patent Misuse and Innovation" 10 J. HIGH TECH. L. 142 (2010)
  40. ^ Testimony of Robert J. Hoerner "FTC Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy" (2002)
  41. ^ Frankel, Kenneth M. "Patent Misuse After Federal Circuit's Princo Decision En Banc" The AIPLA Antitrust News February 2011
  42. ^ Gene Quinn "Indicia of Extortion – Federal Circuit Slams Patent Troll"
  43. ^ Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908)

Further reading[edit]