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55 Hastings L.J. 399 (2003-2004)
The Insufficiency of Antitrust Analysis for Patent Misuse

handle is hein.journals/hastlj55 and id is 431 raw text is: The Insufficiency of Antitrust Analysis for
Patent Misuse
Patent misuse lies at the intersection of patent and antitrust law. The
history and conceptual overlap of patent law and antitrust law have left
the doctrine of misuse hopelessly entangled with antitrust doctrines. In
response, a number of scholars and legislators have argued for streamlin-
ing the patent misuse inquiry by applying antitrust rules.' Current court
decisions have moved in this direction as well.'
The notion of applying antitrust rules to test for patent misuse has
an appealing logic. Patent misuse can be defined as an improper attempt
to expand a patent. Antitrust principles, among other things, restrict the
improper expansion of monopolies. Shouldn't courts be able to use anti-
trust rules to identify an improper expansion of a patent monopoly?
* Assistant Professor, U.C. Hastings College of the Law. I wish to thank Margreth Barrett,
John Barton, Ash Bhagwat, Dan Burk, June Carbone, David Earp, Susan Freiwald, Paul Goldstein,
Matthew Greene, Herbert Hovenkamp, Jeff Lefstin, Mark Lemley, Maura Rees, Ernest Young, and
participants in the 2003 Intellectual Property Scholars' Conference for their comments on prior drafts.
I am grateful beyond measure to Linda Weir, U.C. Hastings Public Services Librarian, for her research
and insights. I am also indebted to Amy Hsiao for research assistance on antitrust and to Gary Chang
and Daniel Wan for research assistance on Reach-Through Royalties.
. See, e.g., USM Corp. v. SPS Technologies, Inc., 694 F.2d 505, 512 (7th Cir. 1982); Windsurfing
Int'l Inc. v. AMF, Inc., 782 F.2d 995, Ioos (Fed. Cir. 1986); Mark A. Lemley, The Economic Irrational-
ity of the Patent Misuse Doctrine, 78 CAL. L. REV. I599 (i990); Competition Policy and the Patent Mis-
use Doctrine, Remarks by Roger B. Andewelt, Chief Intellectual Property Section, Antitrust Division
Before the Bar Association for the District of Columbia Patent, Trademark, and Copyright Section,
Nov. 3, 1982, reprinted in 25 PAT. TRADEMARK & COPYRIGHT J. (BNA) 41 (1982); infra notes 10-Oi
(concerning the debate surrounding the 1988 Patent Act Amendments); see also Note, Is the Patent
Misuse Doctrine Obsolete?, 110 HARV. L. REV. 1922, I939 (1997) (arguing that although the substantive
test for misuse should be subsumed under an antitrust analysis, the relaxed standing requirements of
misuse should be maintained); but see Louis Kaplow, The Patent-Antitrust Intersection: A Reappraisal,
97 HARv. L. REV. 1813, 1818-20 (1984) (arguing that neither patent nor antitrust law should reign su-
preme and suggesting that courts should determine whether a patentee's practice is acceptable by cal-
culating a ratio that compares (I) the patentee's marginal reward over the optimal patent reward to
(2) society's marginal monopoly loss in the case of that practice).
2. See C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1372 (Fed. Cir. I998); B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1428 (Fed. Cir. 1997); Virginia Panel Corp. v. MAC Panel Co., 133
F.3d 860, 869 (Fed. Cir. 1997); Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 708 (Fed. Cir. 1992).


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