Patent Misuse and Antitrust: Rebirth or False Dawn?

93 Pages Posted: 23 Apr 2014 Last revised: 11 Jun 2014

See all articles by Daryl Lim

Daryl Lim

University of Illinois at Chicago John Marshall Law School; Fordham University - Fordham Intellectual Property Institute

Date Written: April 23, 2014


This Article examines how two recent cases, F.T.C. v. Actavis and Kimble v. Marvel Enterprises Inc. could affect both the equitable defense of patent misuse and the patent-antitrust interface more generally. It begins by tracing the history of patent misuse and its reformulation into an “antitrust-lite” doctrine by the Federal Circuit. This Article presents new empirical data confirming this reformulation, and unveils the surprising influence of the Seventh Circuit and the Chicago School on that reformulation. The Article then explores Actavis and Kimble. It explains why Actavis will catalyze more antitrust challenges when patent rights are exercised, and why it also challenges the Federal Circuit’s formulation of patent misuse. The Article proceeds to observe Kimble’s misunderstanding of the patent policy underpinning the Supreme Court’s prohibition against post-expiration royalties. This Article confronts three key objections to a revival of misuse — its vagueness, lax standing requirements and punitive effects on patentees — and explains why these objections are misplaced. The Article concludes by recommending that judges and attorneys use the opportunity provided by Actavis to develop a more thoughtful framework for patent misuse that draws upon the strengths of its roots in patent policy and its interface with antitrust policy.

Keywords: Actavis, Kimble, Brulotte, patent, antitrust, patent misuse, competition, drugs, Hatch-Waxman, Supreme Court, Posner, Chicago School

Suggested Citation

Lim, Daryl, Patent Misuse and Antitrust: Rebirth or False Dawn? (April 23, 2014). Michigan Telecommunications and Technology Law Review, Vol. 20, No. 2, 2014. Available at SSRN:

Daryl Lim (Contact Author)

University of Illinois at Chicago John Marshall Law School ( email )

1200 W Harrison St
Chicago, IL 60607
United States

Fordham University - Fordham Intellectual Property Institute ( email )

150 West 62nd Street, Rm 7-145
New York, NY 10023
United States

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