2 Horwitz on Patent Litigation § 10.21

Summary

• [1] Generally.

  Patent misuse is an affirmative defense to patent infringement which alleges that the patent owner abused its rights beyond the exclusive rights of the patent grant. It arose as an equitable defense available to the accused infringer, from the desire “to restrain practices that did not in themselves violate any law, but that drew anticompetitive strength from the patent right, and thus were deemed to be contrary to public policy.”1

  The key inquiry in patent misuse is determining whether by imposing conditions that derive their force from the patent, the patentee has impermissibly broadened the scope of the patent grant with anticompetitive effect. Vague characterizations of misuse such as “wrongful” enforcement of a patent will not be sufficient to condemn a practice as patent misuse.2