JOHN W. SCHLICHER

PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND

SETTLEMENT, LICENSING, ANTITRUST, LAW AND ECONOMICS

 

 

 

John W. Schlicher, Patent Law: Legal and Economic Principles, Thomson West (1992, Second Edition 2003)

 

CITATIONS

 

Grain Processing Corp. v. American Maize-Products Company, 185 F.3d 1341, 1351 (Fed. Cir. 1999)(Rader, J.)(“Moreover, only by comparing the patented invention to its next best available alternative(s) - regardless of whether the alternative(s) were actually produced and sold during the infringement - can the court discern the market value of the patent owner’s exclusive right, and therefore his expected profit or reward, had the infringer’s activities not prevented him from taking full economic advantage of this right.… John W. Schlicher, Patent Law: Legal and Economic Principles § 9.05[2][1] (1997).”), aff’ing, Grain Processing Corp. v., American Maize-Products Co., 893 F.Supp. 1386 (N.D. Ind. 1995)(Easterbrook, J.) 

 

Matter of Mahurkar Double Lumen Litigation, 831 F. Supp. 1354, 1384 (N.D.Ill. 1993)(Easterbrook, J.)(“The correct way to compensate Firm #1 is to award it $3 times the number of units it would have sold had there been no infringement - or to put it differently, the monopoly output times the monopoly profit, a profit made lawful by the patent.  The patent holder does not receive the monopoly price times the competitive output.  See generally John W. Schlicher, Patent Law: Legal and Economic Principles § 9.05 (1992). * * *  A patent conveys the right to exclude others from making, using, or selling the invention, and this right implies the propriety of an injunction enforcing exclusivity.   The injunction creates a property right and leads to negotiations between the parties.   A private outcome of these negotiations--whether they end in a license at a particular royalty or in the exclusion of an infringer from the market--is much preferable to a judicial guesstimate about what a royalty should be.   The actual market beats judicial attempts to mimic the market every time, making injunctions the normal and preferred remedy.   See Schlicher, Patent Law:  Legal and Economic Principles §§ 1.14, 9.03[1].”), aff’d, 71 F.3d 1573 (Fed. Cir. 1995) 

 

Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1533 (Fed. Cir. 1995)(Newman, J. concurring)(“No analysis is generally applicable to all fields of technology and all competitive relationships, as illustrated in the growing literature on the function of patent-type economic incentives.  See generally John W. Schlicher, Patent Law: Legal and Economic Principles (1992).”)

 

Intel Corp. v. ULSI System Technology, Inc., 995 F.2d 1566, 1571 (Fed. Cir. 1993)(Plager, J. dissenting)(“The principle of ‘first sale,’ simply stated, is that when a patent owner (or the owner’s authorized licensee) sells to another a product which incorporates the patented invention, the other may convey the product to third parties free of any claim of patent infringement. See John W. Schlicher, Patent Law:  Legal and Economic Principles § 8.05[1] (1992).  We are not here concerned with the question of whether and to what extent a patent owner may impose conditions on the sale which bind future transferees.  See id.”)