The misuse doctrine protects against conduct that impermissibly
extends intellectual property rights beyond their lawful scope. In so doing,
it addresses two potential harms: undue restrictions on competition in
particular markets, and impairment of public benefits of intellectual
property rights such as innovation. As a result, the modern misuse
doctrine straddles the intersection of intellectual property law and
antitrustit borrows from both, but is completely at home in neither. This
makes misuse a challenging landscape to navigate for antitrust and
intellectual property practitioners alike. Yet the consequences of a misuse
finding—unenforceability of intellectual property rights or licenses—are
serious for intellectual property owners, accused infringers, licensees, and
There have been a number of developments in misuse and related law
since the first edition of this handbook was published. The Federal Circuit
issued two important misuse decisions (Philips v. ITC and Princo v. ITC)
addressing tying, patent pools, and agreements not to compete as patent
misuse, and more generally clarified that misuse involves leveraging a
patent to impose restrictions beyond the patent’s scope with
anticompetitive effect. The Supreme Court has decided cases concerning
related issues such as market power in the patent context (Illinois Tool
Works v. Independent Ink), patent exhaust ion (Quanta Computer v. LG
Electronics), and the standard for obtaining injunctions against accused
infringers (eBay v. MercExchange). In Kimble v. Marvel, the Court
revisited whether post-expiration royalties are patent misuse.
This second edition is intended to provide a practical, practitioner-
orientated approach to understanding and applying misuse doctrine, and
is the result of hard work and dedication of numerous lawyers and
economists who devote their precious and limited time to advance the
profession and its understanding of the law. Numerous individuals
drafted updates to sections and provided substantive comments,
including: Carrie G. Amezcua, Eric Barstad, Paul Feinstein, Joshua

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