Patent Misuse May Not Be Asserted As Stand-Alone Cause Of Action

The court granted defendant's motion to dismiss plaintiff's patent misuse claim for failure to state a claim. "[C]ourts disagree on whether patent misuse can constitute a claim, not just a defense. . . . Some courts view [B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419 (Fed. Cir. 1997)] as allowing an affirmative claim of patent misuse so long as the plaintiff does not seek damages. . . . Others read B. Braun as rejecting patent misuse as an affirmative claim regardless of whether it seeks a declaratory, injunctive, or compensatory relief. . . . [T]here is no disagreement among the courts that patent misuse doctrine cannot be asserted for monetary relief . . . as [plaintiff] seeks to do here. . . . Moreover . . . this Court concludes that patent misuse cannot be brought as a stand-alone cause of action. . . . [T]he Federal Circuit has repeatedly defined patent misuse as a defense, rather than a cause of action in its own right."

Continental Automotive GmbH et al v. iBiquity Digital Corporation, 1-14-cv-01799 (ILND February 26, 2015, Order) (Lee, J.)