Continuing the Conversation of "The Economic Irrationality of the Patent Misuse Doctrine"

This Article uses economic tools to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. It attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic Irrationality of the Patent Misuse Doctrine. It argues that a partial economic equilibrium in patent misuse doctrine can be achieved by attempting to match Congress’s intended patent scope with the actual patent scope. It then holds that the ideal patent misuse doctrine should (1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation by permitting patentees to fully benefit up to Congress’s intended scope. It discusses a variety of solutions proposed by prior scholarship, determines which solutions satisfy this balancing point, and recommends several novel modifications to the patent misuse doctrine. Specifically, the misuse doctrine, if it is not abolished, should apply only where antitrust law applies. Then, an antitrust injury requirement should be added to the misuse doctrine, much like the doctrine of unclean hands requires the party asserting it to have been harmed. Further, the remedy for patent misuse should be balanced in a way that is fair to all parties and does not under- or over-deter misuse or infringement, which necessarily requires the abolishment of the unenforceability remedy. The Article ends briefly discussing how recent Federal Circuit decisions like Princo v. ITC might reignite the conversation on the value of the doctrine of patent misuse.