An Argument for Tailoring Patent Misuse Remedies

10 Pages Posted: 5 Oct 2006

See all articles by David McGowan

David McGowan

University of San Diego School of Law

Date Written: September 29, 2006


This essay argues that the reasoning of the Supreme Court's opinion in Illinois Toolworks, 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 Toolworks reasoning to pare back misuse remedies.

In my view, 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.

Keywords: Patent, Antitrust, Intellectual Property

Suggested Citation

McGowan, David, An Argument for Tailoring Patent Misuse Remedies (September 29, 2006). San Diego Legal Studies Paper No. 07-69. Available at SSRN: or

David McGowan (Contact Author)

University of San Diego School of Law ( email )

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San Diego, CA 92110-2492
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