Limitations in Licensing Agreements Did Not Constitute Patent Misuse

Hearing Components, Inc. v. Shure, Inc., 2009 WL 815526(E.D.Tex. Mar 26, 2009) (NO. 9:07-CV-104)
Judge: Ron Clark
Judge Clark recently conducted a bench trial on the defendant's claims of laches and patent misuse in this case.  While he denied the laches claim at the hearing, he issued this order later denying the patent miuse claim and setting forth his reason for concluding that the limitations in the plaintiff's licensing agreements did not constitute patent misuse, either per se or under a "rule of reason" analysis.  The specific provisions complained of in this case included (1) providing for a post-expiration marking requirement; (2) requiring postexpiration supply obligations; (3) providing for an undiminishing royalty rate; and (4) including a potential retroactive royalty increase.