Preface

• Pages: 9-10

ix

PREFACE

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

antitrust—it 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

practitioners.

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