The Roberts Court after Two Years: Antitrust, Intellectual Property Rights, and Competition Policy

• Author: Rudolph J.R. Peritz
• DOI: 10.1177/0003603X0805300110
• Published date: 01 March 2008
• Date: 01 March 2008
• Subject Matter: A Continuing Symposium on Antitrust and Roberts Court

THE

ANTITRUST

BULLETIN:

Vol.53, No. 1/Spring 2008 153

be

Roberts

Court after two

years:

antitrust, intellectual property

rights, and competition policy

BY

RUDOLPH

J.R.

PERITZ*

The

Supreme

Court

under

Chief

Justice

John

Roberts

has

rendered

only

one

decision, Illinois

Tool

Works Inc. v. Independent Ink,

lnc.)

that

explicitly addresses the relationship

between

antitrust

and

intellectual

property

rights. But there

have

been

at least five

more

cases

that

bear

on the

broader

topic of

competition

policy

and

intellectual

property

rights.

An

interesting

dynamic

emerges

from

this cluster of opinions:

While

the

antitrust

cases

apply

intellectual

property

rights to justify

restraints

on

competition,

a

range

of

opinions

in three

patent

deci-

sions call for limits on

patent

rights

and,

with

those limits, effectively

open

markets

to increased competition. Altogether,

the

six cases offer

some

insights into

divergent

approaches

to the

competition

policies

that

have

developed

in these

overlapping

regimes.'

*Professor of Law and Director, IProgress Project,

New

York Law School.

AUTHOR'S NOTE:

Thanks

toRick

Brunell

and Bert

Foer

for

comments

on a priordraft.

Ill. Tool Works Inc. v. Indep. Ink, Inc., 547 U'S. 28 (2006), overruling Jef-

ferson Parish

Hasp.

Dist.

No.2

v. Hyde, 466 U.S. 2 (1984).

For an historical treatment of the larger question of free competition

and

its

relationships

to

private

property

rights,

liberty

and

equality,

see

RUDOLPH

J.

R. PERITZ, COMPETITION POLICY IN AMERICA: HISTORY, RHETORIC, LAW

(rev. ed. 2001).

©2008by

Federal

Legal

Publications, Inc.

154

THE

ANTITRUST

BULLETIN:

Vol. 53, No. 1/Spring 2008

Especially for those

who

correlate progress

with

open

access

and

competitive

markets,

the

divergences

summon

closer

attention

to a

neglected competition policy working within the

patent

regime as well

as to the array of competition logics working in the

broader

domain

of

intellectual

property

rights. This article is

intended

to

introduce

the

outlines of such a project. The first section investigates some intersec-

tions of antitrust

and

intellectual

property

policies.

It

begins

with

Inde-

pendent Ink, a

tying

case

that

involves a

patented

product,

and

then

proceeds to expose the

power

of

trademark

rights to

shape

the antitrust

analysis of

two

price-fixing claims,

one

involving resale price mainte-

nance

and

the

other

ajoint venture in oil refining

and

marketing. The

second section briefly examines three

patent

cases, which shed light on

an

internal

competition

policy

too

often

lost in the

shadows

of the

property

logic

that

dominates current

patent

policy analysis. The article

concludes

with

some

observations

about

the crosscurrents of competi-

tion policy in the early

days

of the Roberts Court.

I.

ANTITRUST

AND

INTELLECTUAL PROPERTY RIGHTS

Independent Ink

was

a

unanimous

decision

in

which

a 1988

amendment

to the

Patent

Act influenced the Roberts

Court

to over-

rule

longstanding

antitrust

doctrine

and

to declare

that

"the

mere fact

that

atying

product

is

patented

does

not

support

...

apresumption

...

of

market

power.'?

As a

result,

contracts

conditioning

the

sale

of

patented

inventions

on

the

purchase

of

complementary

staple prod-

ucts

no

longer fall

into

the category of

per

se illegality. In

two

other

cases,

the

Roberts

Court's

antitrust

doctrine

was

channeled

by

the

logic of

trademark

rights. In

Leegin

Creative

Leather

Products,

Inc.

v.

PSKS, Inc.i' a

deeply

divided

Court

overruled

avenerable doctrine of

per

se

illegality

in

holding

that

resale

price

maintenance

is to be

judged

by

the

rule

of reason. In

Texaco

Inc.

v.

Dagher?

a

unanimous

Court

held

that

the decision by Equilon

Enterprises-a

joint

venture

between

Texaco

and

Shell

Oil-to

sell gasoline at

the

same

price to

their

separate

chains of

branded

service station

owners

was

not

per

se

547 us. at 31 (citing 102 Stat. 4674, codified at 35 us.c. §271(d)).

127 S. Ct. 2705 (2007).

547 us. 1 (2006).