IP Topics
By
Michael J. Lennon
- July 2007
This article first appeared in the IAM magazine supplement ‘Licensing in the Boardroom 2007’ July 2007.
Walker Process, sham litigation and other patent-antitrust issues are frequently raised during licensing, even after accepting a licence, and during litigation in various ways. Some typical examples are before or during licensing negotiations, as a defensive tactic in response to assertions of infringement and offers to license by a patent holder or as bargaining leverage during licensing negotiations; during enforcement litigation, as affirmative defences and counterclaims by a potential licensee in patent infringement litigation, as bargaining leverage for settlement of the litigation and a licence; and as affirmative antitrust claims by a potential licensee, sometimes after, sometimes before, licensing negotiations, as an offensive competitive business or litigation tactic.
The US antitrust laws provide for the recovery of treble damages, attorneys’ fees and costs by a successful litigant. These provisions are applicable to patent-antitrust claims and, despite formidable evidentiary burdens that must be met to succeed on such a claim, offer a strong incentive to accused infringers and potential licensees to assert patent-antitrust violations as a deterrent to licensing efforts or litigation by a patent holder. In sum, patent antitrust liability presents a real and significant business risk.