By John L. Rogitz of Rogitz & Associates-1-
License Bundling/Patent Misuse: Princo Corp. v. ITC, no. 2007-
1386 reminds that patent misuse (patentee impermissibly broadening scope of patent grant with
anticompetitive effect by imposing conditions that derive their force from the patent, in the CAFC's
words) can be shown to exist per se by some practices such as a patentee with market
power conditioning a patent license upon the purchase of a non-patented product, and can also be
shown to exist by a "rule of reason"; the latter test is used here.
The issue was a bundle of patents licensed for an optical disk standard, and whether
one of the patents was "essential" to make disks under the standard. If it was
"essential" the bundling was permissible but otherwise might constitute patent
misuse. The issue is even cloudier because licensees paid a single fee for the license regardless
of how many patents in the bundle they actually used, with a dissent observing that even if a patent in
the bundle was non-essential there was no seeming anti-competitiveness in including it in the
license.
At any rate, while the patent at issue taught a different method than the standard,
one of its claims was broad enough on its face to cover the standard, so of course the aggrieved
licensee argued for importing limitations from the specification into the claim so ...
