Assertion of Frivolous Infringement Claims No Basis for Misuse Defense

The court granted plaintiff's motion for summary judgment that its electronics testing patents were not unenforceable for patent misuse. "[Defendant argues] that a counterclaim of patent misuse is . . . cognizable when the patent holder is engaged in 'sham litigation,' lacking any reasonable basis to believe that its patent claims are colorable and simply attempting to interfere with a competitor’s operations. . . . This Court has reviewed the various authorities cited by [defendant] in support of its contention that a patent misuse counterclaim can be premised solely on the assertion that the patent holder is asserting frivolous infringement claims, and finds that none of those authorities persuasive on this point. Indeed, the very notion is paradoxical: there is no need for a defense of patent misuse – which precludes the patent holder from enforcing the patent against the successful defendant until such misuse ceases – in situations where the infringement claims themselves are frivolous. Put differently, where there is no colorable assertion of infringement, no defense to the nonexistent infringement is necessary."

L-3 Communications Corporation, et al v. Jaxon Engineering & Maintenance, Inc., et al, 1-10-cv-02868 (COD September 22, 2014, Order) (Krieger, J.)