Copyright (c) 2008 Northwestern University School of Law
Northwestern University Law Review
Colloquy Essay: WHAT TOOL WORKS TELLS US ABOUT TAILORING PATENT MISUSE REMEDIES+
+ This Essay was previously published in the Northwestern University Law Review Colloquy on May 21, 2007, as David McGowan, What Tool Works Tells Us About Tailoring Patent Misuse Remedies, 101 Nw. U. L. Rev. Colloquy 208 (2007), http://www.law.northwestern.edu/lawreview/colloquy/2007/16/.
102 Nw. U.L. Rev. 421
No one was surprised when, in Illinois Tool Works, Inc. v. Independent Ink, Inc., 1 the Supreme Court reversed the rule that a patentee accused of tying in violation of section 1 of the Sherman Act is presumed to have economic power in the product market to which the patent pertains. 2 That presumption was contrary to both logic and experience.
The Court's reasoning is interesting, however, because it points the way to tailoring remedies for patent misuse. The default remedy for misuse is that courts refuse to enforce the patent against any defendant, not just against the victim of misuse. 3 Tool Works drew on section 271(d)(5) of the Patent Act 4 to reform an antitrust liability rule not mentioned in the statute but influenced by the policy choices it reflects. Similarly, though section 271(d)(5) does not mention misuse remedies, the policy choices it reflects undermine the rationale for the default remedy for patent misuse.
Patent misuse is an affirmative defense to an infringement action. A patentee misuses a patent when the patentee takes some action to broaden the scope of patent rights or lengthen their duration. 5 Misuse allegations are typically aimed at license terms. 6 Most misuse cases involve tying claims, in which an infringement defendant argues that a patentee unlawfully tied the purchase of unpatented goods to the purchase or license of patented ones. 7
Tool Works involved a contract term requiring licensees of Tool Works' patented inkjet heads and ink ...
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