## Facts

- Well Surveys, Inc. (WSI) sued Perfo-Log, Inc. for infringement of two patents used in oil-well logging: the Swift patent (radiation measurement and casing-collar location; expiring May 29, 1968) and the Peterson patent (a collar locator; expiring Jan. 10, 1978).
- Perfo-Log denied infringement and asserted patent misuse, claiming WSI’s licensing and “immunity” agreements unlawfully extended the Swift patent’s monopoly and coerced licensees into a package arrangement.
- The challenged agreements generally covered both the Swift and Peterson patents, lacked a pre-expiration termination right, and did not provide for reduced royalties or a changed royalty base after the Swift patent’s expiration.
- Perfo-Log initially relied on eight agreements; additional agreements were later produced and included in the record.
- WSI presented affidavits indicating it offered licenses under any or all of its patents and was willing to license individually or in combinations on reasonable terms.
- The district court treated the licensing structure as per se misuse, granted Perfo-Log summary judgment on the misuse defense, and denied WSI’s cross-motion for partial summary judgment.
- WSI appealed, arguing misuse could not be decided as a matter of law on the summary-judgment record.

## Issues

1. Whether WSI’s package licensing and immunity agreements constituted per se patent misuse by extending the economic effect of the Swift patent beyond its expiration or by tying Swift to Peterson.
2. Whether the summary-judgment record established undisputed “economic coercion” sufficient to bar enforcement of the patents as a matter of law.
3. Whether genuine disputes of material fact regarding licensing options and bargaining practices required a trial rather than summary judgment.

## Decision

- The Tenth Circuit reversed the grant of summary judgment for Perfo-Log and remanded for trial.
- The court held that the record did not establish per se patent misuse as a matter of law.
- The court found genuine issues of material fact on whether WSI engaged in economic coercion or conditioning in its licensing practices.
- The court concluded the district court improperly drew an inference of misuse from the licensing structure at the summary-judgment stage.

## Legal Principles

- Patent misuse in licensing generally requires proof of economic coercion or conditioning, such as refusing to license fewer than all patents when requested or otherwise leaving no meaningful choice.
- Package licensing of multiple patents, including patents with different expiration dates, is not automatically misuse absent coercion.
- A patentee may not obtain the benefit of an expired patent monopoly, but whether particular licensing terms impermissibly extend a patent’s practical effect can depend on the presence of coercion and the licensing context.
- Summary judgment is improper when competing reasonable inferences can be drawn from the record on coercion and licensing practice; disputed fact questions must be tried.

## Conclusion

The Tenth Circuit held that WSI’s combined Swift–Peterson licensing arrangements could not be condemned as per se patent misuse on summary judgment because the record did not conclusively show economic coercion, and material factual disputes required trial.


Well Surveys, Inc. v. Perfo-Log, Inc., 396 F.2d 15 (10th Cir. 1968)