application." That "affirmative defense" is insufficient as a matter of law.
Black and Decker has cited no authority for the proposition that "suppressing and concealing" an invention from the public supports an equitable defense of unclean hands, as opposed to a priority defense under 102(g). We have found no such authority and reject the proposition. "[Mere] concealment of an invention at least until an application for patent . . . is filed is the normal behavior of the cautious inventor, and in itself . . . is not reprehensible." Dewey v. Lawton, 52 C.C.P.A. 1573, 347 F.2d 629, 632, 146 U.S.P.Q. (BNA) 187 (1965).
As to "threatening retailers and competitors," Presto's letter terrorizing the trade has already been the subject of an order from this court. It is not grounds, however, for an affirmative defense of unclean hands in an action where the issues are infringement and priority of invention. The defense of unclean hands does not close the courthouse door to plaintiffs simply because they have behaved improperly, even unlawfully. For the maxim that equity helps only those with clean hands to apply a plaintiff's misconduct must be "unconscionable" and have some "immediate and necessary relation to the equity he seeks." Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 78 L. Ed. 293, 54 S. Ct. 146 (1933). In a patent case, the misconduct should "bear upon the validity of the patent or defendant's infringement of the patent for the unclean hands defense to be available." Southwire Co. v. Essex Group, Inc., 220 U.S.P.Q. (BNA) 1053 (N.D. Ill. 1983).
Nothing in Presto's letter, or in the sending of it, has given Presto any advantage in prosecuting this lawsuit or bears, directly or indirectly, on the issues at the heart of this case -- priority and infringement. Advertising that your product is covered by a patent or pending application when in fact it is not, or not yet, may be tortious, and might be grounds for a counterclaim in a suit for infringement, but it is not a legally sufficient affirmative defense. See Republic Molding Corp. v. B.W. Photo Utilities, 319 F.2d 347 (9th Cir. 1963).
Black & Decker's fourth affirmative defense is legally insufficient on its face. Neither Presto's menacing letter nor anything Presto may have done to conceal its invention from the public are grounds for an affirmative defense of unclean hands, though they might, possibly, be grounds for a counterclaim.
Black & Decker urges, nonetheless, that if it has not stated a defense of unclean hands its fourth affirmative defense at least makes out a case for patent misuse and is legally sufficient on that ground. The argument is unpersuasive.
Black & Decker has not pleaded "misuse"; it has pleaded "unclean hands," and the two are not interchangeable. The contours of the doctrine of misuse are vague -- the Federal Circuit has said that it requires a showing "that the patentee has impermissibly broadened the 'physical or temporal scope' of the patent grant with anticompetitive effect," Windsurfing Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 999, 228 U.S.P.Q. (BNA) 562 (Fed. Cir. 1986) -- but, generally speaking, claims of patent misuse have been tested by conventional antitrust principles, and application of the doctrine has been confined to a small number of specific anticompetitive practices. See the discussion in USM Corp. v. SPS Technologies Inc., 694 F.2d 505, 510-512 (7th Cir. 1982) ("We have found no cases where standards different from those of antitrust law were actually applied to yield different results.") Misuse, thus, has not traditionally been treated as a broad equitable defense akin to dirty hands.
Traditionally, misuse has been applied and limited to practices such as tying arrangements coupled with market power (requiring the purchase of unpatented goods for use with a patented apparatus or process), covenants not to deal (requiring a licensee not to deal in products that compete with the licensor's patent), and mandatory package licensing (insisting that a licensee pay license fees on two patents to get a license on either one). As should be apparent, the traditional examples of patent misuse bear very little if any resemblance to what has been alleged here -- "suppressing or concealing" an invention before filing and sending threatening letters to competitors and retailers.
Black & Decker has not cited a patent misuse case involving conduct similar to Presto's mail campaign or suppression and concealment, and we are not persuaded that the doctrine of misuse reaches the misconduct Black & Decker has alleged. Terrorizing the trade with threatening mail, the way Presto did, looks more like a run of the mill tort (interference with contractual relations or prospective advantage) than an anticompetitive practice serious enough to give rise to a complete affirmative defense to infringement.
Accordingly, Black & Decker's fourth affirmative defense will be struck. It is legally insufficient on its face. "Our law is not rich in . . . concepts of monopolistic abuse; and it is rather late in the day to try develop [new] ones [for patent misuse] without in the process subjecting the rights of patent holders to debilitating uncertainty." USM Corp, 694 F.2d at 512.
We move, next, to Presto's motion to strike Black & Decker's third affirmative defense. That defense alleges that:
National Presto abandoned and suppressed the invention having a scope broad enough to encompass the Black & Decker design and obtained, instead, a patent of narrower scope covering an invention different from the Black & Decker design.
The basis for this defense is mysterious. Black & Decker has offered no legal support for a contention that "abandonment and suppression" of a broader invention in favor of a narrower one, if that happened, constitutes unlawful behavior in itself, and it is thus unclear what this defense means.
In its memorandum opposing the motion to strike its defense, Black & Decker describes the substance of the third defense as follows:
Put very simply, Presto's '755 patent requires a retaining ring that provides both axial and bearing support for the cutting blade. The Black & Decker Handy Slice 'n Shred does not have a retaining collar that provides bearing support. That is the essence of Black & Decker's Affirmative Defense III.