Fletcher YoderPatent misuse is a non-statutory defense to claims of patent infringement, and Congress has enacted 35 U.S.C. § 271(d) to limit its application. To be found guilty of patent misuse, the patentee must act to impermissibly broaden the physical or temporal scope of the patent grant with anti-competitive effect. Further, the misuse must be of the patent-in-suit.
The District Court finds that the Harrington failed in qui tam action to demonstrate that CIBA Vision Corp. falsely marked the packaging of products since the product was not found to be an unpatented article but rather a physical embodiment of patented method claims.
A blocking patent is one that at the time of the license, an objective manufacturer would reasonably believe might be necessary to the practice the technology at issue. Horizontal competitors cannot insulate themselves from misuse liability simply by agreeing to suppress competing technologies before they are fully developed.
A technology license may limit production and use of self-replicating inventions (such as plants) despite the sale of the initial copy. A liquidated damages clause that does not differentiate between degrees of damage and contract provisions that can result in different degrees of damage may be unenforceable.