Morton Salt Co. v. G. S. Suppiger Co.
62 S. Ct. 402, 1942 U.S. LEXIS 1242, 314 U.S. 488 (1942)
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Rule of Law:
A court of equity will not provide relief against patent infringement to a patentee who is using the patent to create a limited monopoly in an unpatented material, as this conduct is contrary to the public policy underlying the patent system.
Facts:
- G. S. Suppiger Co. (Suppiger) holds a patent on a machine designed to deposit salt tablets into cans during the canning process.
- Suppiger's wholly-owned subsidiary is primarily in the business of selling salt tablets, which are unpatented.
- Suppiger leases its patented machines to approximately two hundred commercial canners.
- The licensing agreements require the canners to use only the salt tablets sold by Suppiger's subsidiary with the patented machines.
- Morton Salt Co. (Morton) also manufactures and sells salt tablets.
- Morton manufactures and leases its own salt depositing machines, which Suppiger alleges infringe upon its patent.
Procedural Posture:
- G. S. Suppiger Co. sued Morton Salt Co. in federal district court for patent infringement.
- On Morton's motion, the district court (trial court) granted summary judgment, dismissing Suppiger's complaint on the grounds of patent misuse without deciding the issues of validity or infringement.
- Suppiger, as appellant, appealed to the U.S. Court of Appeals for the Seventh Circuit.
- The Court of Appeals reversed the district court's judgment, finding that the conduct was not shown to violate the Clayton Act.
- Morton, as petitioner, successfully petitioned the U.S. Supreme Court for a writ of certiorari.
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Issue:
Does a patent holder's practice of licensing its patented machine on the condition that licensees exclusively purchase unpatented materials from the patent holder constitute patent misuse that bars the patent holder from suing for infringement?
Opinions:
Majority - Mr. Chief Justice Stone
Yes. A patent holder's practice of licensing a patented machine on the condition that licensees purchase unpatented materials from the patent holder is a misuse of the patent that bars them from seeking equitable relief for infringement. The Court reasoned that the public policy behind the patent grant is to promote invention by giving a temporary monopoly over the specific device claimed in the patent. This public policy forbids using the patent to secure a monopoly not granted by the Patent Office, such as one over unpatented staple goods like salt tablets. A court of equity may withhold its aid where a plaintiff is using their asserted right contrary to the public interest. This patent misuse disqualifies the patentee from maintaining an infringement suit, regardless of whether the particular defendant has suffered from the misuse, because the harm is to the public interest. The patentee cannot obtain relief until it is shown that the improper practice has been abandoned and its consequences have dissipated.
Analysis:
This case formally establishes the patent misuse doctrine as an equitable defense to infringement, separate from any potential antitrust violation under the Clayton Act. The ruling clarifies that a patentee's conduct can bar enforcement of their patent even if it does not meet the higher threshold for an antitrust claim. The decision emphasizes the public policy limits of the patent monopoly, treating the patent as a privilege conditioned on conduct that serves the public good. This precedent created a powerful defense for alleged infringers and significantly constrained patentees' licensing strategies, particularly those involving tying arrangements.
