Revisiting the patent misuse doctrine: Its potential contribution to maintaining incentives for innovation

Like a ‘one–two’ punch, Actavis and Kimble spell the death knell for the Federal Circuit’s formulation of patent misuse. The Supreme Court in Actavis recognized that patentee conduct which constituted misuse would constitute an antitrust violation as well. Since the threshold for liability is lower under patent misuse, it must follow that the immunity from patent misuse conferred under the Federal Circuit’s formulation has now been debunked by Actavis. The second blow comes from Kimble, which rejected the rule of reason formulation that the patentee in that case had attributed to Federal Circuit jurisprudence. It follows that the approach based on patent policy as laid down in Morton Salt has been implicitly reinstated as the correct approach to misuse analysis.