antitrust counterclaims: the basics daniel m. wall san francisco [email protected]
TRANSCRIPT
Walker Process Claims
Enforcement of patent procured by fraud may be monopolization.•“Remaining elements” of § 2 claim must
also be proven. “Use,” i.e., enforcement, is required.
•Pre-litigation threats may suffice. Fraud must be real, not constructive.
•Inequitable conduct such as failure to cite prior art does not suffice.
Other Unlawful Acquisition Claims
IP Acquired Through Collusion• Singer: IP plaintiff acquired and enforced
patent pursuant to conspiracy.• Applicable to collusive litigation
settlements? Section 7 Claims
• Counterclaimant’s injury must result from more than IP enforcement.
Kobe• Acquisition, nonuse and enforcement of
“every important patent” § 2 violation. Grantback Patents
• Rule of reason analysis, rarely unlawful.
Bad Faith Enforcement Claims
Enforcing a patent or copyright known to be invalid may be unlawful, but …
PRE requires•Rule 11-type baselessness•Intent to injure through the process,
rather than the outcome. Once “the” antitrust counterclaim,
this is much less significant after PRE.
Unlawful Licensing Claims
Insert IP Guidelines here•Tying•Package Licensing•Exclusive Dealing•Resale Price Maintenance
Frequently parallels misuse defenses, but often simple leverage
Refusals to License
Longstanding rule that a simple refusal to license IP is not an antitrust violation.• Section 271(d) of patent law states that a refusal
to license is not misuse or “illegal extension.” Kodak
• IP is not a defense in a Section 2 refusal to deal case if IP rights “played no part” in a refusal to license a patented or copyrighted good.
Xerox (In re ISO)• “In the absence of any indication of illegal tying,
fraud in the PTO, or sham litigation, the patent owner may enforce the statutory right to exclude … free from liability under the antitrust laws.”
