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. 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.
The doctrine of assignor estoppel is a doctrine of United States patent law barring a patent's seller (assignor) from attacking the patent's validity in subsequent patent infringement litigation. The doctrine is based on the doctrine of legal estoppel, which prohibits a grantor from challenging the validity of his/her/its grant.
General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175 (1938), was a case that the Supreme Court of the United States decided in 1938. The decision upheld so-called field-of-use limitations in patent licenses: it held that the limitations were enforceable in a patent infringement suit in federal court against the licensee and those acting in concert with it—for example, a customer that knowingly buys a patented product from the licensee that is outside the scope of the license.
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a decision of the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine, and in doing so made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that the exhaustion doctrine is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to practice the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, the part of decision below that held that the exhaustion doctrine was limited to product claims and did not apply to method claims.
Legal estoppel is a principle of law, particularly United States patent law, that an assignor or grantor is not permitted subsequently to deny the validity of title to the subject matter of the assignment or grant. Originally a principle of real property law, applicable to deeds of land and called estoppel by deed, the Supreme Court extended legal estoppel to patents in Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co.
The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp.
The doctrine of non-derogation from grants is a principle of the law of England and Wales. As the House of Lords explained in British Leyland Motor Corp. v. Armstrong Patents Co., it states that a seller of realty or goods is not permitted to take any action that will lessen the value to the buyer of the thing sold.
United States v. General Electric Co., 272 U.S. 476 (1926), is a decision of the United States Supreme Court holding that a patentee who has granted a single license to a competitor to manufacture the patented product may lawfully fix the price at which the licensee may sell the product.
FTC v. Actavis, Inc., 570 U.S. ___, 133 S. Ct. 2223 (2013), was a United States Supreme Court decision in which the Court held that the FTC could make an antitrust challenge under the rule of reason against a so-called pay-for-delay agreement, also referred to as a reverse payment patent settlement. Such an agreement is one in which a drug patentee pays another company, ordinarily a generic drug manufacturer, to stay out of the market, thus avoiding generic competition and a challenge to patent validity. The FTC sought to establish a rule that such agreements were presumptively illegal, but the Court ruled only that the FTC could bring a case under more general antitrust principles permitting a defendant to assert justifications for its actions under the rule of reason.
Zenith Radio Corp. v. Hazeltine Research, Inc. is the caption of several United States Supreme Court patent–related decisions, the most significant of which is a 1969 patent–antitrust and patent–misuse decision concerning the levying of patent royalties on unpatented products.
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942), is a patent misuse decision of the United States Supreme Court. It was the first case in which the Court expressly labeled as "misuse" the Motion Picture Patent/Carbice tie-in defense to a charge of patent infringement and created the present blanket remedy in infringement cases of unenforceability of the misused patent. The decision re-emphasized that misuse can be found without finding an antitrust violation.
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), is United States Supreme Court decision that is notable as an early example of the patent misuse doctrine. It held that, because a patent grant is limited to the invention described in the claims of the patent, the patent law does not empower the patent owner, by notices attached to the patented article, to extend the scope of the patent monopoly by restricting the use of the patented article to materials necessary for their operation but forming no part of the patented invention, or to place downstream restrictions on the articles making them subject to conditions as to use. The decision overruled The Button-Fastener Case, and Henry v. A.B. Dick Co., which had held such restrictive notices effective and enforceable.
United States v. Singer Mfg. Co., 374 U.S. 174 (1963), was a 1963 decision of the Supreme Court, holding that the defendant Singer violated the antitrust laws by conspiring with two European competitors to exclude Japanese sewing machine competition from the US market. Singer effectuated the conspiracy by agreeing with the two European competitors to broaden US patent rights and concentrate them under Sanger's control in order to more effectively exclude the Japanese firms. A further aspect of the conspiracy was to fraudulently procure a US patent and use it as an exclusionary tool. This was the first Supreme Court decision holding that exclusionary use of a fraudulently procured patent could be an element supporting an antitrust claim.
Pennock v. Dialogue, 27 U.S. 1 (1829), was a United States Supreme Court decision in which the Court held invalid a patent on a method of making hose, because the inventor had commercially exploited the invention for years before filing the patent application. The case has been cited many times for the proposition that the U.S. patent system was not established for the purpose of enriching inventors or their financiers but rather for the purpose of furthering the public interest by stimulating technological progress.
United States v. United States Gypsum Co. was a patent–antitrust case in which the United States Supreme Court decided, first, in 1948, that a patent licensing program that fixed prices of many licensees and regimented an entire industry violated the antitrust laws, and then, decided in 1950, after a remand, that appropriate relief in such cases did not extend so far as to permit licensees enjoying a compulsory, reasonable–royalty license to challenge the validity of the licensed patents. The Court also ruled, in obiter dicta, that the United States had standing to challenge the validity of patents when a patentee relied on the patents to justify its fixing prices. It held in this case, however, that the defendants violated the antitrust laws irrespective of whether the patents were valid, which made the validity issue irrelevant.
Pope Mfg. Co. v. Gormully, 144 U.S. 224 (1892), was an early United States Supreme Court decision refusing, on public policy grounds, to enforce an agreement not to contest patent validity. The Supreme Court later relied on Pope in Lear, Inc. v. Adkins as authority in support of overruling the doctrine of licensee estoppel. That doctrine had prohibited patent licensees from challenging the validity of patents under which they had been licensed.
Blonder-Tongue Labs., Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971), is a 1971 decision of the United States Supreme Court holding that a final judgment in an infringement suit against a first defendant that a patent is invalid bars the patentee from relitigating the same patent against other defendants. In so ruling, the Supreme Court overruled its 1936 decision in Triplett v. Lowell, which had required mutuality of estoppel to bar such preclusion, and held that the better view was to prevent relitigating if the plaintiff had had a full and fair opportunity to litigate the issue in question.
