PRINCO CORP. v. INTERNATIONAL TRADE COM'N

No. 2007-1386.

616 F.3d 1318 (2010)

PRINCO CORPORATION and Princo America Corporation, Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee, and U.S. Philips Corporation, Intervenor.

United States Court of Appeals, Federal Circuit.

August 30, 2010.


Attorney(s) appearing for the Case

Eric L. Wesenberg , Orrick, Herrington & Sutcliffe LLP, of Menlo Park, CA, argued for appellants. With him on the brief were Robert E. Freitas , Cynthia Wickstrom Zuniga , Kenneth J. Halpern , Michael C. Ting , Matthew H. Poppe and Garret G. Rasmussen. Of counsel on the brief was John D. Vandenberg , Klarquist Sparkman, LLP, of Portland, OR.

Clara Kuehn , Attorney, Office of the General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With her on the brief were James M. Lyons , General Counsel, and Wayne W. Herrington , Assistant General Counsel.

Edward C. Dumont , Wilmer Cutler Pickering Hale and Dorr LLP, of Washington, DC, argued for intervenor. With him on the brief were Jonathan G. Cedarbaum , Perry A. Lange , William J. Kolasky, Jr. and Sue-Yun Ahn.

Richard S. Taffet , Bingham McCutchen LLP, of New York, NY, for amicus curiae The American Intellectual Property Law Association on rehearing en banc. With him on the brief were David B. Salmons and Patrick Strawbridge , of Washington, DC. Of counsel on the brief was Alan J. Kasper , Sughrue Mion, PLLC, of Washington, DC.

Charles A. Weiss , New York Intellectual Property Law Association, of New York, NY, for amicus curiae New York Intellectual Property Law Association on rehearing en banc. With him on the brief were Mark J. Abate and David F. Ryan.

Herbert C. Wamsley , Intellectual Property Owners, of Washington, DC, for amicus curiae Intellectual Property Owners Association on en banc rehearing. On the brief were Steven W. Miller and Richard F. Phillips. Of counsel on the brief were Robert P. Taylor , Mintz, Levin, Cohen, Ferris, Glovsky and Pepo, P.C., of Palo Alto, CA; and Henry C. Su , Howrey LLP, of Palo Alto, CA.

Richard M. Brunell , American Antitrust Institute, of Washington, DC, for amicus curiae American Antitrust Institute on rehearing en banc. With him on the brief was Jonathan L. Rubin.

David L. Sieradzki , Attorney, Office of General Counsel, Federal Trade Commission, of Washington, DC, for amicus curiae Federal Trade Commission on rehearing en banc. With him on the brief were Willard K. Tom , General Counsel, and John F. Daly , Deputy General Counsel for Litigation.

Dissenting opinion filed by Circuit Judge DYK, in which Circuit Judge GAJARSA joins.


BRYSON, Circuit Judge.

This case requires us to consider the scope of the doctrine of patent misuse. Patent misuse developed as a nonstatutory defense to claims of patent infringement. In the licensing context, the doctrine limits a patentee's right to impose conditions on a licensee that exceed the scope of the patent right. Because patent misuse is a judge-made doctrine that is in derogation of statutory patent rights against infringement, this court has not applied...

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