By David McGowan[*]
This essay argues that the reasoning of the Supreme Court’s
opinion in Illinois Tool Works, Inc. v. Independent Ink, Inc.
undercuts the reasoning behind the default remedy for patent misuse, which is
that the patent in question may not be enforced against any party, not merely
against the victim of the alleged misuse, until the misuse ceases and its
effects are dissipated. Because the
remedy is not tailored to any probable harm from misuse, courts should take
advantage of the Tool Works reasoning
to pare back misuse remedies.
Circuit courts now have authority to tailor misuse remedies to actual harm in cases where the misuse involves a tying arrangement that meters the use of a patented good. In cases involving other forms of misuse, reform must await further Supreme Court action. Hopefully, that action will come soon.