Federal Circuit Affirms In Part and Vacates In Part International Trade Commission Determination On Patent Misuse

    27 April 2009

    In Princo v. ITC, No. 2007-1386, 2009 U.S. App. Lexis 8230 (Fed. Cir. Apr. 20, 2009), respondent Princo admitted that its products were within the scope of Philips’s patents. It asserted patent misuse by Philips as a defense. Princo contended that the International Trade Commission (ITC) erred by failing to find misuse with respect to two aspects of Philips’s licensing practices: first, that Philips conditioned the license of its patents essential to the production of recordable compact discs upon the purchase of a license to an allegedly-nonessential Sony patent (the Lagadec patent), and second, that Philips allegedly agreed with Sony not to license the Lagadec patent as competing technology. The Federal Circuit affirmed the ITC’s rejection of Princo’s misuse argument based on the first practice but vacated and remanded for further proceedings with regard to the second.

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