View source for Patent misuse

{{Short description|Improper use of patent rights}}
{{globalize||the US|date=January 2021}}
{{United States patent law}}
{{Competition law}}

In [[United States patent law]], '''patent misuse''' is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained [[patent]] provides.<ref name=ipw>{{cite web|last=Quinn|first=Gene|title=Patent Misuse, Exploring the Basics|date=18 November 2011|url=http://www.ipwatchdog.com/2011/11/18/patent-misuse-exploring-the-basics/|access-date=12 November 2013}}</ref> If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains [[Competition (economics)|economic competition]] substantially can also violate [[United States antitrust law]].<ref name=Zenith>{{ussc|name=Zenith Radio Corp. v. Hazeltine Research, Inc|link=|volume=395|page=100|pin=140|year=1971}}.</ref>

==Definition==

Patent misuse is a patent owner's improper use of patent rights, speaking very generally, to expand the scope or term of the patent. Examples of such patent misuse include forcing customers to agree to pay [[royalties]] on unpatented products or to pay royalties on an expired patent. This particular type of patent misuse can take place without a violation of [[United States antitrust law|antitrust laws]].<ref name="JOM">{{cite journal|last=Silverman|first=Arnold|journal=JOM|title=Patent Misuse: Limitations on a Patentee's Rights|year=1992|volume=44|issue=8|doi=10.1007/bf03222306 |url=http://www.tms.org/pubs/journals/JOM/matters/matters-9208.html|pages=54|bibcode=1992JOM....44h..54S|s2cid=138138279|url-access=subscription}}</ref> But it violates such policies of US patent law as the monopoly of a patent is confined to what its claims cover and once a patent expires the public has an unlimited right to practice the formerly claimed subject matter.<ref>See {{ussc|name=Kimble v. Marvel Entertainment, LLC|volume=576|year=2015|docket=13-720}}.</ref>

Patent misuse may also occur when the patentee's conduct is a violation of antitrust laws. For example, a company buying all the patents in a given field ([[relevant market]]) to stall competition would be misusing patents, and (assuming other statutory requirements are met) also violating section 7 of the Clayton Act (15 U.S.C. §&nbsp;18) and section 2 of the Sherman Act (15 U.S.C. §&nbsp;2). Other antitrust patent misuse includes (again assuming that other statutory requirements are met) a licensor's exercising control over the price that several licensees charge for a product or service; attempting to enforce a patent that the patentee knows to be invalid or not infringed; and selling patented goods on the condition, agreement, or understanding that the buyer will not deal in the goods of a competitor of the seller.<ref name="JOM"/><ref>{{Bluebook journal | first=Herbert A. | last=Bernhard | title=Patents: Misuse Doctrine: Multiple Licenses with Price-Fixing Provisos as Sherman Act Violation | volume=55 | journal=Mich. L. Rev. | page=726 | pin= | url= | year=1957}}; section 3 of the Clayton Act ({{USC|15|14}}).</ref>

==History==

In the early 20th century, patent misuse was not yet a well recognized defense to patent infringement, although it had been recognized in ''[[Adams v. Burke]]'' in 1873. Courts at that time recognized relatively few limitations to patentees' rights. In 1912, the Supreme Court did not recognize a doctrine of patent misuse in ''[[Henry v. A.B. Dick Co.]]'',<ref>{{ussc|name=Henry v. A.B. Dick Co.|link=|volume=224|page=1|pin=|year=1912}}.</ref> a case in which a patent license was tied to a purchase of another product.<ref>A mimeograph machine patent was used to tie ink and stencils used with the machine to the machine.</ref>  According to the Court, because a patent owner had the greater right to withhold its patented product from market entirely, it had the inherent lesser right to selectively withhold it from people who did not purchase other products.<ref name = "Brian D. Hill">Brian D. Hill, [http://digitalcommons.law.umaryland.edu/jbtl/vol7/iss2/5 "Princo Corp. v. Int'l Trade Comm'n: Patent Misuse No Longer a Deterrent to Anticompetitive Behavior in the Group Venture Context"], 7 J. Bus. & Tech. L. 361 (2012)</ref>

This inherent-right doctrine was expressly rejected a few years later, however, in ''[[Motion Picture Patents Co. v. Universal Film Mfg. Co.]]''<ref name="Motion Picture Patents Co. v. Universal Film Mfg. Co">{{ussc|name=Motion Picture Patents Co. v. Universal Film Mfg. Co.|link=|volume=243|page=502|pin=|year=1917}} (holding unenforceable a restriction that a user of a patented film projector must use it to screen only such films as the patentee authorized).</ref> In that case, Justice Holmes (who had been in the majority in the ''A.B. Dick'' case), now in dissent, argued that because the owner of a patented teapot "may keep his device wholly out of use .&nbsp;.&nbsp;. I cannot understand why he may not keep it out of use unless the licensee, or, for the matter of that, the buyer" will agree to buy his tea from the patent owner.<ref>243 U.S. at 519.</ref> But the majority rejected this doctrine of patentees' "inherent rights." It explained:

<blockquote>[T]he argument [is] that, since the patentee may withhold his patent altogether from public use, he must logically and necessarily be permitted to impose any conditions which he chooses upon any use which he may allow of it. The defect in this thinking springs from the substituting of inference and argument for the language of the statute, and from failure to distinguish between the rights which are given to the inventor by the patent law and which he may assert against all the world through an infringement proceeding, and rights which he may create for himself by private contract, which, however, are subject to the rules of general, as distinguished from those of the patent, law. While it is true that, under the statutes as they were (and now are), a patentee might withhold his patented machine from public use, yet, if he consented to use it himself or through others, such use immediately fell within the terms of the statute, and, as we have seen, he is thereby restricted to the use of the invention as it is described in the claims of his patent, and not as it may be expanded by limitations as to materials and supplies necessary to the operation of it, imposed by mere notice to the public.<ref>243 U.S. at 514-15.</ref></blockquote>

A year after the ''A.B. Dick'' case, in ''[[Bauer & Cie. v. O'Donnell]]'',<ref>{{ussc|name=Bauer & Cie. v. O'Donnell|link=|volume=229|page=1|pin=|year=1913}}.</ref> the Supreme Court began to shift its perspective by holding that, although patentees could control manufacturing, use, and sale of patented products with license agreements, they could not use license agreements to control the resale price of patented products the patentee sold.<ref name = "Brian D. Hill"/> After the ''Motion Picture Patents'' case, the tide began to run more strongly against restrictive patent practices.

==Case law==

===Origins and development===

In 1917, the Supreme Court reversed the four-year-old ''Henry v. A.B. Dick Co.'' decision and established patent misuse as an [[affirmative defense]] to copyright infringement. In ''[[Motion Picture Patents Co. v. Universal Film Mfg. Co.]]'',<ref name="Motion Picture Patents Co. v. Universal Film Mfg. Co"/> the Supreme Court held that requiring a patented film projector only be used for screening films authorized by the patent holder was unenforceable and constituted patent misuse. The Court concluded that the patentee's attempt to extend its monopoly power beyond the rights that the patent statute conferred on it was inequitable, and because of the patentee's "[[unclean hands]]", the court, as a [[court of equity]], would not grant it relief.<ref name="Brian D. Hill"/><ref>White, Katherine [http://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1221&context=iplj "A Rule for When Patent Misuse Should be Applied"] 11 {{smallcaps|Ford Intell. Prop., Media & Ent. L.J.}} 671</ref><ref name="Barr">{{Bluebook journal | first=Camille | last=Barr | title=License to Collude: Patent Pools, the Patent Misuse Doctrine and Princo | volume=45 | journal=U.C. Davis L. Rev. | page=629 | pin=  | url=https://lawreview.law.ucdavis.edu/issues/45/2/Note/45-2_Barr.pdf | year=2011}}</ref> In explaining its ruling, the Court said:

<blockquote>[W]e are convinced that the exclusive right granted in every patent must be limited to the invention described in the claims of the patent, and that it is not competent for the owner of a patent, by notice attached to its machine, to in effect extend the scope of its patent monopoly by restricting the use of it to materials necessary in its operation, but which are no part of the patented invention, or to send its machines forth into the channels of trade of the country subject to conditions as to use or royalty to be paid, to be imposed thereafter at the discretion of such patent owner. The patent law furnishes no warrant for such a practice, and the cost, inconvenience, and annoyance to the public which the opposite conclusion would occasion forbid it.<ref>243 U.S. at 516.</ref></blockquote>

''[[Carbice Corp. v. American Patents Development Corp.]]'',<ref name ="Carbice Corp. v. Patents Development Corp.">{{ussc|name=Carbice Corp. v. Patents Development Corp.|link=|volume=283|page=27|pin=|year=1931}}.</ref> clarified that requiring patent licensees to buy other products as a condition of a patent license ("product tying") was misuse. American Patents Development Corp. held a patent for a dry ice transport enclosure. It required its customers only use their enclosure to transport dry ice from their exclusive distributor. The Supreme Court held that using patents to control an enclosure purchaser's other product purchases was patent misuse. (In a separate case a few months later, the Supreme Court held that Carbice's patent was invalid.)<ref name="Brian D. Hill"/><ref name="Barr" /><ref name = "Carbice Corp. v. American Patents Dev. Co. Patent Void">{{ussc|name=Carbice Corp. v. American Patents Dev. Co.|link=|volume=283|page=420|pin=|year=1931}}.</ref>

The Supreme Court held that patent misuse made the patent unenforceable regarding monetary relief in ''[[Morton Salt Co. v. G.S. Suppiger Co.]]''<ref name = "Morton Salt Co. v. G.S. Suppiger Co.">{{ussc|name=Morton Salt Co. v. G.S. Suppiger Co.|link=|volume=314|page=488|pin=|year=1942}}.</ref> Suppiger Co. owned a patent on salt-tablet dispensing machines that it manufactured. The sales agreement for the machines required customers to purchase salt tablets exclusively from Suppiger. Morton Salt Co., a competitor that also sold salt tablets, manufactured and leased dispensing machines that infringed Suppiger's patent. The Supreme Court denied Suppiger Co. compensation for Morton Salt's infringement, holding that Suppiger's patent was unenforceable because it was using it to restrain competition in unpatented salt. The Court said its ruling would not be different if Morton Salt were not Suppiger's competitor.<ref name = "Brian D. Hill"/><ref name="Barr" /> The Court added that misuse could be found in conduct falling short of an antitrust violation.

''[[Brulotte v Thys Co.]]'',<ref name = "Brulotte v. Thys Co.">{{ussc|name=Brulotte v. Thys Co.|link=|volume=379|page=29|pin=|year=1964}}.</ref> established that attempting to collect royalties after a patent expired was misuse. Mr. Brulotte purchased a hop-harvesting machine from Thys Co. Upon purchase, Brulotte accepted a licensing agreement which required annual royalty payments beyond the duration of the Thys patent. When Brulotte realized that the terms of the contract exceeded the duration of the patent, he stopped paying the royalties. The Supreme Court held that the contract between Brulotte and Thys was not enforceable once the last licensed patent expired, because the license extended the term of patent protection beyond the duration of the patent.<ref name = "Brian D. Hill"/><ref>{{cite journal | last1 = Gates | first1 = S. | last2 = Meier | first2 = J. | year = 2009 | title = Brulotte's continuing shadow over patent licensing | journal = Journal of Intellectual Property Law & Practice | volume = 4 | issue = 3| pages = 181–189| doi=10.1093/jiplp/jpn247}}</ref> In June 2015, the Supreme Court reaffirmed the ''Brulotte'' case.<ref>{{ussc|name=Kimble v. Marvel Entertainment, LLC|volume=576|year=2015|docket=13-720}}, emphasizing that the patent misuse doctrine is based on policies of patent law (such as the establishment of a public domain right upon patent expiry) rfather than antitrust policies.</ref>

In ''[[Zenith Radio Corp. v. Hazeltine Research, Inc.]]''<ref name=Zenith/> the Supreme Court established that demanding a percentage of a licensees patented and non-patented product sales in exchange for a license was misuse.  Hazeltine Research required Zenith pay a total percentage of all its sales to license Hazeltine's patents. The court ruled that this license requirement was patent misuse,<ref name = "Brian D. Hill"/> even though it might not be an antitrust violation because the anticompetive impact may have been too slight.<ref>395 U.S. at 140.</ref> This holding reaffirmed a line of Supreme Court patent misuse decisions holding that the competitive impact of a restrictive practice might fall short of an antitrust violation and nonetheless be misuse.

Other forms of patent misuse recognized by courts of appeals decisions but not addressed in detail as yet by the Supreme Court include:
* Tying the purchase of unpatented materials as a condition of a patent license, where the effect is substantially anticompetitive in a relevant market over which the patent has market power.<ref>{{USCSub|35|271|d|5}}.</ref>
* Tying one patent license to another, where the tying patent has market power.<ref>{{USCSub|35|271|d|5}}; see ''Eastman Kodak Co. v. Image Technical Services, Inc.'', 504 U.S. 451, 461 (1992) ("Conditioning the ability of a licensee to license one or more items of intellectual property on the licensee's purchase of another item of intellectual property .&nbsp;.&nbsp;. has been held in some cases to constitute illegal tying.").</ref>
* Requiring a licensee not to make a competitive product as a condition of a patent license.<ref>''[[National Lockwasher Co. v. George K. Garrett Co.]]'', 137 F.2d 255 (3d Cir. 1943).</ref>
* Requiring a licensee to assign back or exclusively license back subsequent related patents, where the effect is substantially anticompetitive.<ref>U.S. Department of Justice and Federal Trade Commission, [https://www.justice.gov/atr/antitrust-guidelines-licensing-intellectual-property#t56 ''Antitrust Guidelines for the Licensing of Intellectual Property''], §&nbsp;5.6 (1995)("Grantbacks may adversely affect competition, however, if they substantially reduce the licensee's incentives to engage in research and development and thereby limit rivalry in innovation markets.")</ref>
* Licensor's giving licensees veto power over additional licenses.<ref>See ''United States v. Krasnov'', 143 F. Supp. 184 (E.D. Pa. 1956), aff'd per curiam, 335 U.S. 5 (1957); ''United States v. Besser Mfg, Co.'', 96 F. Supp. 304 (E.D. Mich. 1951), aff'd, 343 U.S. 444 (1952)' see ''United States v. Union Camp Corp.'', Crim. Action No. 4558 (indictment E.D. Va. Nov. 30, 1967); ''id.'', 1969 Trade Cas. ¶ 72,689 (E.D. Va. 1969) (consent decree).</ref>

===Recent changes===

''Windsurfing v. AMF''<ref name = "Windsurfing Intern. INC. v. AMF, INC">''Windsurfing Intern. INC. v. AMF, INC'' [http://www.leagle.com/decision/19861777782F2d995_11607 782 F.2d 995] (1986)</ref> held that a patent misuse defense must show that the patentee's behavior hurts competition. This case also clarified that if the Supreme Court had already held a particular licensing arrangement was misuse, the infringer did not have to establish that it was anticompetitive. However, if the Supreme Court had not spoken on the licensing agreement, the infringer has to establish the agreement hurts competition.<ref name = "Brian D. Hill"/><ref name="Barr" /> A few months later, however, the Federal Circuit retreated from ''Windsurfing'' in ''Senza-Gel Corp. v. Seiffhart''.<ref>[http://openjurist.org/803/f2d/661/senza-gel-corporation-v-b-seiffhart 803 F.2d 661], 665 (Fed. Cir. 1986).</ref> In response to a certified question, the court recognized that "as the Supreme Court has said, the patentee's act may constitute patent misuse without rising to the level of an antitrust violation."<ref>803 F.2d at 668.</ref> Citing the contrary suggestion in ''Windsurfing'', the court explained:

<blockquote>Commentators and courts have questioned the rationale appearing in Supreme Court opinions dealing with misuse in view of recent economic theory and Supreme Court decisions in non-misuse contexts. We are bound, however, to adhere to existing Supreme Court guidance in the area until otherwise directed by Congress or by the Supreme Court.<ref>803 F.2d at 665 n.5.</ref></blockquote>

In ''[[Princo Corp. v. International Trade Commission]]'',<ref name = "Princo Corp. v. International Trade Commission and U.S. Philips Corp.,">''Princo Corp. v. International Trade Commission and U.S. Philips Corp.'',[https://archive.today/20131028132652/https://www.courtlistener.com/cafc/TPu/princo-corp-v-international-trade-commission/?q=Carbice+Corp.+v.+American+Patents+Development+Corp&stat_Precedential=on&sort=dateFiled+desc 616 F.3d 1318] (Fed. Cir. 2010)</ref>  the Federal Circuit held that violations of antitrust law involving patents are not always patent misuse. Philips, Sony and other manufacturers developed patented technology to create CDs that could be rewritten multiple times ([[CD-RWs]]). Philips licensed these patents to CD player and reader manufacturers (so they could develop CD players and readers that worked with CD-RWs). Princo Corp., one of the licensees, stopped paying royalty fees to Philips, but continued to manufacture readable discs using Phillips technology. Phillips filed a complaint with the International Trade Commission and Princo responded claiming that Sony and Phillips were using their patents to suppress competition. On appeal, an [[en banc]] the Federal Circuit Court of Appeals held that Sony and Phillips had not expanded the scope of their patent in a way prohibited by previous Supreme Court cases. Namely, the violation allegedly did not "leverage" the patent at hand. According to one commentator, patent scholars have speculated that this opinion will significantly narrow the scope of misuse.<ref name = "Brian D. Hill"/><ref name="Barr" />

In ''[[Kimble v. Marvel Entertainment, LLC]]'',<ref>{{ussc|name=Kimble v. Marvel Entertainment, LLC|volume=576|year=2015|docket=13-720}}.</ref> on June 22, 2015, the Supreme Court refused to overrule ''[[Brulotte v. Thys Co.]]'', because of ''[[stare decisis]]''. The Court pointed out that "Congress has spurned multiple opportunities to reverse ''Brulotte''," and "Congress has rebuffed bills that would have replaced ''Brulotte's'' ''per se'' rule with the same antitrust-style analysis Kimble now urges."<ref>''Kimble'', slip op. at 8-9, 11.</ref> Moreover, the Court maintained, there was not a good reason to overrule ''Brulotte'': "''Brulotte's'' statutory and doctrinal underpinnings have not eroded over time."<ref name=Kimble10>''Kimble'', slip op. at 10.</ref> The patent statute at issue in ''Brulotte'' is essentially unchanged.<ref name=Kimble10/> The precedents on which the ''Brulotte'' Court relied, like other decisions enforcing a patent's cutoff date, remain good law.<ref>''Kimble'', slip op. at 3-4, 10-11.</ref> And ''Brulotte'''s "close relation to a whole web of [other] precedents means that reversing it could threaten others."<ref>''Kimble'', slip op. at 11.</ref>

In addition, the Court rejected Kimble's arguments that the ''Brulotte'' doctrine should be overturned because the practice it outlaws is not anticompetive and it does not violate the antitrust laws. The Court found this argument beside the point: "But ''Brulotte'' is a patent rather than an antitrust case," it insisted.<ref>''Kimble'', slip op. at 14. It also said, "The patent laws—unlike the Sherman Act—do not aim to maximize competition (to a large extent, the opposite)." ''Kimble'', slip op. at 15.</ref> Under the Court's legal analysis, "[P]atent (not antitrust) policy gave rise to the Court's conclusion that post-patent royalty contracts are unenforceable—utterly 'regardless of a demonstrable effect on competition.'"<ref>''Kimble'', slip op. at 16.</ref> Earlier in its opinion, the Court explained that it was well-settled that it was "patent law's policy [to] establish[] a 'post-expiration .&nbsp;.&nbsp;. public domain' in which every person can make free use of a formerly patented product."<ref>''Kimble'', slip op. at 5. The Court also said that legal enforcement of agreements for post-patent expiration royalties conflicts with the "free market visualized for the post-expiration period" and so "runs counter to the policy and purpose of the patent laws." ''Kimble'', slip op. at 16.</ref> The majority opinion is thus a strong rebuke to those analysts that seek to make the misuse doctrine a kind of petty antitrust law, in which antitrust principles of analysis dominate over policies unique to patent law; ''Kimble'' reaffirms many prior Supreme Court decisions that hold that misuse may be found in conduct that does not violate the antitrust laws.<ref>See, ''e.g.'', ''Zenith Radio Corp.'', 395 U.S. at 140 (holding that conditions for patent misuse may not violate Sherman or Clayton Acts); {{ussc|name=Mercoid Corp. v. Mid-Continent Inv. Co.|link=|volume=320|page=661|pin=666|year=1944}} (patent may be misused contrary to purpose of patent laws without violating antitrust laws); ''Morton Salt Co.'', 314 U.S. at 491-94 (consideration of Clayton Act is unnecessary to determine whether patent misuse occurred).</ref>

==Congressional limits to patent misuse==
Congress limited the patent misuse affirmative defense in both 1952 and 1998, resulting in {{UnitedStatesCode|35|271}}(d) of the Patent Act.

===Overhaul of the Patent Act in 1952===
In 1952, Congress added provisions to the Patent Act explicitly exempting from patent misuse merely charging royalties, licensing, and suing to enforce patents against contributory infringement. These provisions are in 35 U.S.C. §&nbsp;271(d).<ref name="Barr" />

===Patent Misuse Reform Act of 1988===
In 1988, Congress enacted legislation that narrowed the scope of the patent misuse by creating safe harbors for patent holders in {{UnitedStatesCode|35|271}}(d). It clarified that patentees did not misuse their patents by suing people creating products which could be used to infringement patents (contributory infringement). Requiring people to buy another license or product to obtain a patented product is also not misuse, unless the patentee holds "market power."<ref name="ipw"/><ref name="JOM"/><ref name = "Brian D. Hill"/><ref name="Barr" /><ref>The specific language of section 271(d)(5), the relevant statutory provision, is: Tying is not misuse"unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned."</ref>

==Remedy==
Most types of misuse can be erased (or "purged") so the patent is valid again by abandoning the misusing practice and causing its effects to fully dissipate.<ref name="JOM"/> Fraud or [[inequitable conduct]] in acquiring patents, however, is not purgeable.<ref>Leaffer, M.[http://law2.suffolk.edu/jhtl/docs/pdf/Leaffer_10JHTL142.pdf "Patent Misuse and Innovation"]{{Dead link|date=October 2022 |bot=InternetArchiveBot |fix-attempted=yes }} 10 J. HIGH TECH. L. 142 (2010)</ref>

==Criticisms and support==

Critics of the patent misuse defense argue it is anachronistic, that it should be limited by the antitrust rule of reason, and that it has been narrowed to oblivion since 1988 by court rulings like ''Princo Corp. v. International Trade Commission.''<ref>Testimony of Robert J. Hoerner [http://www.ftc.gov/opp/intellect/020711hoerner.pdf "FTC Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy"] {{webarchive|url=https://web.archive.org/web/20120111093423/http://www.ftc.gov/opp/intellect/020711hoerner.pdf |date=2012-01-11 }} (2002)</ref><ref>Frankel, Kenneth M. [http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=92d27184-e349-490c-a4e3-62d336980109 "Patent Misuse After Federal Circuit's Princo Decision En Banc"] {{Webarchive|url=https://web.archive.org/web/20131029200425/http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=92d27184-e349-490c-a4e3-62d336980109 |date=2013-10-29 }} The AIPLA Antitrust News February 2011</ref> Proponents of the patent misuse defense suggest it could be a defense against litigation brought by [[patent trolls]].<ref>Gene Quinn [http://www.ipwatchdog.com/2011/08/04/indicia-of-extortion-federal-circuit-slams-patent-troll/id=18568/ "Indicia of Extortion – Federal Circuit Slams Patent Troll"]</ref> Use of this doctrine to contest patent infringement suits by non-practicing entities may require the courts to challenge precedent set in ''[[Continental Paper Bag Co. v. Eastern Paper Bag Co.]]''<ref name="The Paper Bag Patent Case">{{ussc|name=Continental Paper Bag Co. v. Eastern Paper Bag Co.|link=|volume=210|page=405|pin=|year=1908}}.</ref> The Supreme Court rejected some of this criticism in ''[[Kimble v. Marvel]]'', which reaffirmed ''[[Brulotte v. Thys Co.]]'' and asserted that misuse is governed by patent policy rather than antitrust policy.

===The "Nine No-No's" Controversy===

In November 1970. Bruce Wilson, then a Deputy Assistant Attorney General in the Justice Department's Antitrust Division, gave a speech in Boston that came to be known as the "Nine No-No's."<ref>Bruce B. Wilson, Deputy Ass't Atty. Gen., Antitrust Div., Dep't of Justice, [http://www.rtlaw.com/licensing/pdf/13.pdf ''Patent and Know-How License Agreements: Field of Use, Territorial, Price and Quantity Restrictions''] {{webarchive|url=https://web.archive.org/web/20140124181601/http://www.rtlaw.com/licensing/pdf/13.pdf |date=2014-01-24 }}, Remarks Before the Fourth New England Antitrust Conference 9 (Nov. 6, 1970). The ''Nine No-Nos'' were:
:(1) tying the purchase of unpatented materials as a condition of the license (tie-ins),
:(2) requiring the licensee to assign back subsequent patents ("assignment grant-backs"),
:(3) restricting the right of the purchaser of the product in the resale of the product (post-sale restraints),
:(4) restricting the licensee's ability to deal in products outside the scope of the patent ("tie-outs"),
:(5) a licensor's agreement not to grant further licenses without the consent of the licensee ("veto-power" clauses),
:(6) mandatory package licenses,
:(7) royalty provisions not reasonably related to the licensee's sales (coerced "total-sales royalties"),
:(8) restrictions on a licensee's use of a product made by a patented process, and
:(9) minimum resale price provisions for the licensed products (price fixing).</ref> Wilson repeated the "No-No's" speech several more times,<ref>See Wilson, "Is The Past Prologue, or Where Do We Go From Here?" (Detroit Sept. 21, 1972), reprinted in 5 Trade Reg. Rep. 50, 146; Wilson, :"Law on Licensing Practices: Myth or Reality? or Straight Talk from 'Alice in Wonderland,'&nbsp;" (Washington DC Jan. 21, 1975).</ref> and an impression was created that it reflected the Antitrust Division's litigation policy. It has been debated whether the No-No's "reflected actual Department of Justice antitrust policy," despite Wilson's assertion that the so-called No-No's are restraints "which in virtually all cases are going to lead to antitrust trouble because of their adverse effect upon competition."<ref>Wilson, ''Straight Talk from 'Alice in Wonderland,'&nbsp;'' (Jan. 21, 1975) at 9.</ref> Two other former Deputy Assistant Attorneys General from the Antitrust Division commented:

<blockquote>In actuality, of the sixteen cases filed by the division's Intellectual Property Section between the late 1960s and the late 1970s, only half specifically addressed any of the nine practices. Moreover, almost all of these cases were litigated under a rule of reason rather than per se illegality.<ref>Richard Gilbert and Carl Shapiro, [http://faculty.haas.berkeley.edu/shapiro/ninenono.pdf ''Antitrust Issues in the Licensing of Intellectual Property: The Nine No-No's Meet the Nineties''], 13 {{smallcaps|Brookings Papers on Economic Activity (Microeconomics)}} 283, 286 (1997).</ref></blockquote>

Although it therefore appears that the No-No's were never more than an informal antitrust prosecutors' check-list, and were not advanced much less pressed in litigation as a proposed rule of antitrust law, they were widely denounced. For example, during the Bush administration, government officials distanced themselves from them.<ref>It has been asserted that as early as 1981 the "Department of Justice repudiated the 'Nine No-No's.'&nbsp;" Am. Bar Ass'n, [https://books.google.com/books?id=oT07hNxzMwQC&dq=nine+no-nos+antitrust&pg=PA1082 {{smallcaps|Antitrust Law Developments}}] 1082 (6th ed. 2007) (citing a speech by a Reagan Administration official).</ref> Thus, in 2003 the official then heading the Antitrust Division spoke out strongly against the No-No's as valid enforcement guidelines.<ref>See R. Hewitt Pate, Acting Assistant Attorney General/ Antitrust Division, U.S. Department of Justice. [https://www.justice.gov/atr/speech/antitrust-and-intellectual-property ''Antitrust and Intellectual Property''], Address Before American Intellectual Property Law Association (Jan. 24, 2004).</ref> He then spoke of how the "No-No" practices actually often benefited competition; for example:
* Tie-ins of unpatented supplies "could minimize the risks associated with the uncertainty that a patent owner may have regarding the value of his/her patented technology."
* "Compulsory payment of royalties in amounts not reasonably related to sales of the patented product .&nbsp;.&nbsp;. might be far more efficient, for example, to [use to] base royalties upon the total units produced by the licensee."
* "Licensee veto power over the licensor's grant of further licenses .&nbsp;.&nbsp;. may have a net procompetitive effect."<ref>Pate.</ref>
 
Another commentator during this period said with approval, "The Agencies have come a long way since the days of the Nine No-Nos."<ref>George G. Gordon, [https://www.dechert.com/files/Publication/e80c9457-6a80-4838-a3cc-f316d873f197/Presentation/PublicationAttachment/41de8186-c3e6-4ece-bf2d-f4a760f20569/Analyzing%20IP%20License%20-%20GGordon%205-02.PDF ''Analyzing IP License Restrictions Under The Antitrust Laws: A General Outline Of Issues''(June 6, 2002).] {{Webarchive|url=https://web.archive.org/web/20160304135837/https://www.dechert.com/files/Publication/e80c9457-6a80-4838-a3cc-f316d873f197/Presentation/PublicationAttachment/41de8186-c3e6-4ece-bf2d-f4a760f20569/Analyzing%20IP%20License%20-%20GGordon%205-02.PDF |date=March 4, 2016 }}</ref>

In retrospect, the Nine No-No's controversy appears to have been overblown, and the aims of its proponents exaggerated. The Antitrust Division's retreat from it and emphasis on whether the restrictive No-No actually had any anticompetitive effects in the marketplace, may properly be considered in light of the ''Zenith'' and ''Kimble'' cases' distinctions between antitrust and patent misuse based on their different respective policies. Considered in that light, the No-No's may properly state patent misuse policy. But in large part they did not state a viable antitrust enforcement policy. That appears to be the conclusion drawn in recent papers by Professor Hovenkamp.<ref>See Herbert Hovenkamp, [http://moritzlaw.osu.edu/students/groups/oslj/files/2015/07/7-Hovenkamp.pdf ''Antitrust and the Patent System: A Reexamination''], 76 {{smallcaps|Ohio St.}} L.J. 467, 468 (2015) (asserting that patent misuse doctrine "migrated into antitrust law"); see also {{smallcaps|Herbert Hovenkamp, The Opening of American Law: Neoclassical Legal Thought, 1870‒1970}}, at 200–03 (2015).</ref> Thus, the Nine No-No's controversy informs us more about patent misuse than it does about antitrust policy, for Wilson's assertions that the No-No's likely spell antitrust trouble have proven not supported by events.

== See also ==

* [[Copyright misuse]]
* [[Evergreening]]
* [[Inequitable conduct]]
* [[Patent ambush]]
* [[Patent troll]]
* [[Submarine patent]]
* [[Qualcomm#Apple]]

== References ==
{{reflist|30em}}

==Further reading==
*{{Bluebook journal | first=Kenneth J. | last=Burchfiel | title=Four Questionable Rationales for the Patent Misuse Doctrine | volume=4 | journal=[[Harvard Journal of Law & Technology|Harv. J. L. & Tech.]] | page=1 | pin= | url=http://jolt.law.harvard.edu/articles/pdf/v04/04HarvJLTech001.pdf | year=1991}}.
*{{Bluebook journal | first=Thomas | last=Cotter | title=Four Questionable Rationales for the Patent Misuse Doctrine | volume=12 | journal=Minn. J.L. Sci. & Tech. | page=457 | pin= | url=https://scholarship.law.umn.edu/mjlst/vol12/iss2/4/ | year=2011}}.
*{{Bluebook journal | first=Marshall | last=Leaffer | title=Patent Misuse and Innovation | volume=10 | journal=J. High Tech. L. | page=142 | pin= | url=https://www.repository.law.indiana.edu/facpub/831  | year=2010}}.
*{{Bluebook journal | first=Mark A. | last=Lemley | title=The Economic Irrationality of the Patent Misuse Doctrine | volume=78 | journal=Cal. L. Rev. | page=1599 | pin= | url=https://scholarship.law.berkeley.edu/californialawreview/vol78/iss6/5/ | year=1990}}.
*{{Bluebook journal | first=Thomas | last=Maffei | title=The Patent Misuse Doctrine: A Balance of Patent Rights and the Public Interest | volume=11 | journal=B.C.L. Rev. | page=46 | pin= | url=https://lawdigitalcommons.bc.edu/bclr/vol11/iss1/4  | year=1969}}.
*{{Bluebook website|first=Audrey |last=Millemann |title=Patent Misuse Becomes Narrower |publisher=The IP Law Blog |url=https://www.theiplawblog.com/2011/01/articles/patent-law/patent-misuse-becomes-narrower/ |pin= |date=January 20, 2011 |access-date=July 10, 2018 }}
*{{Bluebook website|first=Craig  |last=Pinkus |title=Patent Misuse Defense and the Future of Traditional Publishing |publisher=Bose Media Law Blog |url=https://web.archive.org/web/20160826003723/https://medialawblog.boselaw.com/2012/02/03/patent-misuse-defense-and-the-future-of-traditional-publishing/ |pin= |date=February 3, 2012 |access-date=July 10, 2018}}
*{{Bluebook website|first=Gene |last=Quinn |title=Patent Misuse, Exploring the Basics |publisher=IPWatchdog |url=http://www.ipwatchdog.com/2011/11/18/patent-misuse-exploring-the-basics/id=20460/ |pin= |date=November 18, 2011 |access-date=July 10, 2018 }}
* Bruce B. Wilson, Deputy Ass't Atty. Gen., Antitrust Div., Dep't of Justice, [https://web.archive.org/web/20140124181601/http://www.rtlaw.com/licensing/pdf/13.pdf ''Patent and Know-How License Agreements: Field of Use, Territorial, Price and Quantity Restrictions''], Remarks Before the Fourth New England Antitrust Conference 9 (Nov. 6, 1970) (the so-called Nine No-Nos speech).

{{United States antitrust law|state=collapsed}}

[[Category:Anti-competitive practices]]
[[Category:Equitable defenses]]
[[Category:United States antitrust law]]
[[Category:United States patent law]]
[[Category:United States misuse law]]