## Facts

- Senza-Gel owned U.S. Patent No. 3,644,125, claiming a process for producing boneless hams.
- Senza-Gel commercialized the process through license/lease arrangements.
- Evidence showed Senza-Gel conditioned access to the patented process on the user also leasing Senza-Gel’s unpatented “macerator” machine, and the process and machine were always leased together.
- Senza-Gel sued Goehring and related defendants in federal district court, including a patent infringement claim.
- The district court bifurcated the proceedings; a jury found the patent valid and infringed, and the court denied defendants’ JNOV motion.
- After the verdict, defendants were permitted to amend their pleadings to add (1) a patent misuse defense/claim and (2) a Sherman Act § 1 antitrust tying counterclaim based on the process-plus-macerator arrangement.
- The district court granted defendants summary judgment on patent misuse, but denied summary judgment on the antitrust claim due to remaining factual disputes.
- The district court certified a question to the Federal Circuit concerning the criteria used to grant summary judgment of patent misuse.

## Issues

1. Whether the district court abused its discretion by allowing a post-verdict amendment adding patent misuse and an antitrust counterclaim.
2. Whether tying the right to use a patented process to leasing an unpatented machine constitutes patent misuse as a matter of law.
3. Whether the standards for “tying” are the same for patent misuse as for Sherman Act § 1 liability, such that misuse requires full antitrust proof.
4. Whether defendants were entitled to summary judgment on their Sherman Act § 1 tying claim.

## Decision

- The Federal Circuit answered the certified question in the affirmative, approving the criteria the district court used to find patent misuse on summary judgment.
- The court affirmed the grant of summary judgment finding patent misuse based on conditioning the process license on leasing the macerator.
- The court affirmed denial of summary judgment on the Sherman Act § 1 claim because material factual issues remained on antitrust elements.
- The court affirmed the order allowing amendment of the pleadings, finding no reversible abuse of discretion.
- The court emphasized that patent misuse doctrine and antitrust liability are distinct, and a misuse finding does not require the same showing demanded by a Sherman Act claim.

## Legal Principles

- Patent misuse is an equitable doctrine that can render a patent temporarily unenforceable when the patentee impermissibly extends the patent’s scope through licensing practices.
- Conditioning a license to use a patented process on acceptance of an additional, unpatented product or lease (a tie) can constitute misuse when it seeks to enlarge the patent grant beyond the claims.
- The criteria for establishing patent misuse based on tying are not identical to the elements for Sherman Act § 1 tying liability; antitrust claims generally require additional proof (e.g., market power and anticompetitive effect) not necessary to establish misuse.
- Where the material facts showing conditioning and refusal to license separately are undisputed, patent misuse may be resolved as a matter of law on summary judgment.
- District courts have broad discretion to permit amended pleadings when justice requires and undue prejudice is not shown, including after resolution of an initial trial phase.

## Conclusion

The Federal Circuit upheld a finding that Senza-Gel misused its process patent by tying access to the patented process to leasing an unpatented macerator, making the patent unenforceable until the misuse is purged, while also holding that the same tying conduct did not warrant summary judgment on Sherman Act § 1 liability because antitrust elements required further factual development.


Senza-Gel Corp. v. Seiffhart, 803 F.2d 661 (Fed. Cir. 1986)