1. Antitrust Counterclaims: The Basics Daniel M. Wall San Francisco dan.wall@lw.com

2. Walker Process Claims  Enforcement of patent procured by fraud may be monopolization. “Remaining elements” of § 2 claim must also be proven.  “Use,” i.e., enforcement, is required. Pre-litigation threats may suffice.  Fraud must be real, not constructive. Inequitable conduct such as failure to cite prior art does not suffice.

3. Other Unlawful Acquisition Claims  IP Acquired Through Collusion Singer: IP plaintiff acquired and enforced patent pursuant to conspiracy. Applicable to collusive litigation settlements?  Section 7 Claims Counterclaimant’s injury must result from more than IP enforcement.  Kobe Acquisition, nonuse and enforcement of “every important patent” § 2 violation.  Grantback Patents Rule of reason analysis, rarely unlawful.

4. Bad Faith Enforcement Claims  Enforcing a patent or copyright known to be invalid may be unlawful, but …  PRE requires Rule 11-type baselessness Intent to injure through the process, rather than the outcome.  Once “the” antitrust counterclaim, this is much less significant after PRE.

5. Unlawful Licensing Claims  Insert IP Guidelines here Tying Package Licensing Exclusive Dealing Resale Price Maintenance  Frequently parallels misuse defenses, but often simple leverage

6. Refusals to License  Longstanding rule that a simple refusal to license IP is not an antitrust violation. Section 271(d) of patent law states that a refusal to license is not misuse or “illegal extension.”  Kodak IP is not a defense in a Section 2 refusal to deal case if IP rights “played no part” in a refusal to license a patented or copyrighted good.  Xerox (In re ISO) “In the absence of any indication of illegal tying, fraud in the PTO, or sham litigation, the patent owner may enforce the statutory right to exclude … free from liability under the antitrust laws.”

7. Antitrust Counterclaims: The Basics Daniel M. Wall San Francisco dan.wall@lw.com