Justice Story and Judge Gee bemoan the difficulty of decision-making in patent law because of the nature of the subject matter. When the difficulty is compounded because of the mutual incompatibility of the doctrines which control the outcome of the decision, the decision-maker may find it necessary to go beyond logic, analogies and philosophies to reach the decision. As eloquently stated by Mr. Justice Cardozo: We go forward with our logic, with our analogies, with our philosophies, till we reach a certain point. At first, we have no trouble with the paths; they follow the same lines. Then they begin to diverge, and we must make a choice between them. History of custom or social utility or some compelling sentiment of justice or sometimes perhaps a semi-intuitive apprehension of the pervading spirit of our law must come to the rescue of the anxious judge, and tell him where to go.
When compelled to make such a choice the decision-maker, it may be hoped, will clearly articulate not only the logic, analogies and philosophies involved in the decision but also any rationales beyond these that have been resorted to in the decision-making process. Otherwise obfuscation, uncertainty and confusion are the probable consequences, especially in dealing with admittedly abstruse subject matter. In areas such as intellectual property law, where the Supreme Court so infrequently directs its attention, there is yet hope for clarification. The Mercoid cases were decided in 1944; section 271 of the Patent Act was enacted in 1952; the section 271(c)/(d) interrelationship was construed twenty-eight years later in Dawson Chemical Co. v. Rohm & Haas Co.
The doctrines of contributory infringement and patent misuse are said to ‘rest on antithetical underpinnings.’ As one doctrine expands the other correlatively must contract. If ‘philosophical’ labels had to be attached to these competing doctrines, contributory infringement could be labeled a ‘pro-patent’ doctrine-that is, expanding the scope of protection afforded under a patent. On the other hand, patent misuse would be labeled as ‘pro-competition’ or ‘anti-patent’ doctrine narrowing the scope of protection afforded under the patent. The turbulent history of the clash of these doctrines vividly illustrates their incompatibility.
- contributory infringement