A sharply divided en banc U.S. Court of Appeals for the
Federal Circuit significantly narrowed the scope of the patent
misuse defense this week. In Princo Corp. v.
International Trade Commission, a five judge majority drew a
sharp line between general antitrust violations in which patents
might be involved and a few well-delineated practices which can now
constitute patent misuse rendering a patent unenforceable.
Two judges concurred on a limited basis, and two judges strongly
dissented.
The majority decision emphasized the "narrow scope of the
doctrine," stating that a presumptive infringer cannot escape
liability "simply because a patentee engages in some kind of
wrongful commercial conduct, even conduct that may have
anticompetitive effects." Slip Op. at 19. Rather,
patent misuse must consist of improper "leveraging" of
the particular patent asserted against the defendant to broaden the
scope of the patent monopoly, typically by tying or requiring
payment
