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Addamax Corp. v. Open Software Foundation, 888 F. Supp. 274 (D. Mass. 1995), later proceeding, 964 F. Supp. 549 (D. Mass. 1997), aff'd, 152 F.3d 48 (1st Cir. 1998)

Software company whose bid for technology sales was denied challenged actions of group of computer sellers who set standards for operating system technology. On summary judgment the court (1) found antitrust injury because of the computer sellers’ power in the downstream market for PC’s, and (2) rejected the concept that standard setting body as a joint venture acted unilaterally or was insulated from section 1 liability simply because it was a valid joint venture. The court rejected per se treatment, and applied the rule of reason. The court found triable issues as to market power and anticompetitive effect because of the group’s ability to affect industry standards and factual issues with respect to anticompetitive intent based on certain documents. Ultimately, defendants prevailed at trial.

Allied Tube & Conduit Corp. v. Indian Head, Inc., 486 U.S. 492 (1988)

Efforts to affect product standard setting process of private association were not protected by Noerr-Pennington even though the code for the design and installation of electrical wiring systems was widely proffered for adoption and adopted into local laws. No damages were imposed for the incorporation of that Code by any government. Where an economically interested party exercises decisionmaking authority in formulating a product standard for a private association that comprises market participants, that party enjoys no Noerr immunity from any antitrust liability flowing from the effect the standard has of its own force in the marketplace.

American Society of Mechanical Engineers, Inc. v. Hydrolevel Corp., 456 U.S. 556 (1982)

Standard setting organization responsible for acts of agents acting with apparent authority that violate antitrust law despite substantial agency law defenses which, the court holds, are inconsistent with the policy of vigorous enforcement. Antitrust laws apply to nonprofit professional standard setting organizations.

American Society of Sanitary Engineering, 106 F.T.C. 324, 1985 FTC Lexis 20 (1985) (Brought by T.J. Muris as Bureau Director).

FTC Complaint alleged that American Society of Sanitary Engineering ("ASSE") violated section 5 of the FTC Act by refusing to consider certification that alternative, patented, toilet tank flush valves which offered improvements to existing devices specified by its standard, were also compliant with ASSE standards, which were adopted into many local codes and compliance with which was alleged to be "essential for manufacturers of plumbing products to do business in many markets." ASSE entered into a consent order prohibiting ASSE from excluding from standards a product which is patented or produced only by one manufacturer or a limited number of manufacturers, where ASSE has issued standards for competing products, the applicant has reasonably established that the product adequately meets the implicit or explicit performance goals required by the existing standard covering competing products, and ASSE does not rely upon a justification meeting reasonable standard setting criteria, i.e., "criteria which are consistently applied in the development or modification of a standard and which promote the legitimate self-regulatory goals of ASSE, such as assuring a reasonable and adequate level of safe and effective performance for a product."

Bond Crown & Cork Co. v. FTC, 176 F.2d 974 (4th Cir. 1949)

Brant v. United States Polo Association, 631 F. Supp. 71 (S.D. Fla. 1986)

Polo player in the process of starting rival league is suspended from long-standing league for arguing with umpires. Applying NCAA v. Board of Regents of the University of Oklahoma, 468 U.S. 85, 1984, court rejects plaintiff’s per se group boycott analysis. Under rule of reason, court denies preliminary injunction because conduct based suspension is not anticompetitive.

Brookins v. International Motor Contest Association, 219 F.3d 849 (2000)

Race sanctioning body set standard for transmissions that excluded plaintiff. Summary judgement granted because no market power and no concerted action.

Clamp-All Corp. v. Cast Iron Soil Pipe Institute, 851 F.2d 478 (1st Cir. 1988), cert. denied, 488 U.S. 1007 (1989)

Consolidated Metal Products, Inc. v. American Petroleum Institute, 846 F.2d 284 (5th Cir. 1988)

On summary judgment, court refuses to treat as a per se unlawful group boycott a trade association decision which has no compulsory effect on others. Applying rule of reason, court finds no unlawful conduct because evidence shows that decision was a good faith attempt to apply appropriate standards with no anticompetitive intent.

Dell Computer Corp., 121 F.T.C. 616, 1996 FTC Lexis 291, 1996 WL 350997 (1996).

Dell had certified that it did not have intellectual property rights interfering with a "VL-bus" standard, for the bus between a computer’s CPU and peripheral devices, and the Video Electronics Standards Association (VESA) adopted the standard. After the standard was adopted and implemented, Dell sought to assert a patent interfering with the standard. Where VESA arguably would not have adopted the standard if it had been aware of the Dell patent, the FTC asserted that Dell’s conduct violated section 5 of the FTC Act, and Dell entered into a Consent Judgment precluding its assertion of the patent against use in compliance with the standard.

DM Research, Inc. v. College of American Pathologists, 170 F.3d 53 (1st Cir.1999)

Affirms dismissal of Complaint alleging that effect of trade association guidelines harmed plaintiff’s business and caused owners to sell at a loss. Court rejects "implausible conclusory allegation" of conspiracy to "adopt faulty standard where main effect would be to raise costs" for certain competitors in the industry.

ECOS Electronics Corp. v. Underwriters Laboratories, Inc., 743 F.2d 498 (7^th Cir. 1994), cert. denied, 469 U.S. 1210 (1985)

Eliason Corp. v. National Sanitation Foundation, 614 F.2d 126 (6th Cir.), cert. denied, 449 U.S. 826 (1980)

ESS Technology, Inc. v. PC-Tel, Inc., No. C-99-20292 (N.D. Cal. 1999)

ESS Tech., Inc. v. PC-Tel, Inc., No. C-99-20292 (N.D. Cal. Nov. 2, 1999) (order granting in part and denying in part defendant’s motion to dismiss)

Plaintiff alleged it cannot produce modems that comply with ITU standards without infringing defendant’s patents and that defendant refuses to license its patents on fair and reasonable terms. The court dismissed the plaintiff’s Sherman Act §2 claim and related state unfair competition claim for failure to allege antitrust injury.

Plaintiff also asserted a claim for specific performance, arguing that it was a third-party beneficiary to defendant’s agreement with ITU to license on fair and reasonable terms. The court rejected defendant’s argument that its agreement with the standard-setting organization was too vague to support a claim for specific performance.

ESS Tech., Inc. v. PC-Tel, Inc., No. C-99-20292 (N.D. Cal. July 3, 2000) (order denying defendant’s motion to dismiss).

Plaintiff alleged that defendant refused to license its patents on fair and reasonable terms after representing to a standard-setting organization that it would do so. Defendant argued that a patent holder may unilaterally refuse to license its patents without being subject to antitrust liability. The court denied defendant’s motion to dismiss plaintiff’s antitrust, patent misuse, and state unfair competition claims, stating that defendant’s "alleged acts amount to more than just legitimately exercising a right to refuse to license patented technology."

Fashion Originators’ Guild of America, Inc. v. FTC, 312 U.S. 457 (1941)

Foundation for Interior Design Education Research v. Savannah College of Art & Design, 2001-1 Trade Cas. ¶ 73,212

Hyundai Electronics Indus. Co. v. Rambus, Inc., No. C-00-20905RMW (N.D. Cal. 2001)

Hyundai Elecs. Indus. Co. v. Rambus Inc., No. C 00-20905 (N.D. Cal. Jan. 19, 2001) (order granting in part and denying in part defendant’s motion to dismiss).

The court dismissed plaintiff’s claim under section 1 of the Sherman Act, holding that it is insufficient to allege unilateral conduct in a collaborative standard-setting process. The court concluded that the plaintiff stated a claim under section 2 of the Sherman Act and section 17200 of the California Business and Professions Code.

In Re Independent Service Organization Antitrust Litigation: CSU, L.L.C. v. Xerox Corp., 203 F.3d 1322 (Fed. Cir. 2000), cert. denied, 121 S.Ct. 1077 (2001)

Intel Corp. v. Via Technologies, Inc., 2001 WL 777085, *6 (N.D. Cal. 2001)

Denies motion to dismiss antitrust counterclaim in patent infringement action. Holds that allegation of sham patent litigation is properly pleaded where a license was allegedly given to practice some of patents in suit and fraud on PTO alleged for another. Declines to decide whether Noerr-Pennington applies where good faith claims are mixed with sham claims in a single suit.

Massachusetts School of Law at Andover v. American Bar Ass’n, 937 F. Supp. 435 (E.D. Pa. 1996), aff’d, 107 F.3d 1026 (3d Cir. 1997), cert. denied, 522 U.S. 907 (1997)

Granting defendant motion for summary judgment on Noerr-Pennington/state action defense on grounds that alleged damages were caused by state laws rather than directly by allegedly anticompetitive standard setting activity in the accreditation of law schools.

Milk and Ice Cream Can Institute v. F.T.C., 152 F.2d 478 (7th Cir. 1946)

Affirms FTC cease and desist order which had found that standard setting organization engaged in price fixing.

Moore v. Boating Industry Ass’ns, 754 F.2d 698 (7th Cir. 1985), vacated, 474 U.S. 895 (1985), later proceeding, 819 F.2d 693 (7th Cir. 1987), cert. denied, 484 U.S. 854 (1987)

Motorola, Inc. v. Rockwell Int’l Corp., No. 95-575 (D.Del. 1995)

After Intel made statements that plaintiff’s personal computer peripheral device did not comply with standards it had promoted, plaintiff sued for monopolization and attempted monopolization. Court granted summary judgment for Intel because, regardless of market power in CPU’s, Intel did not compete with the plaintiff in the market for the products at issue. Holds that claim of "monopoly leveraging requires a threshold showing a threat of higher price or reduced output in the secondary market."

Multivideo Labs, Inc. v. Intel Corp., 99 Civ. 3908 (DLC), 2000-1 Trade Cas. (CCH) ¶ 72,777, 2000 U.S. Dist. LEXIS 110 (S.D. N.Y. Jan. 7, 2000)

National Association of Review Appraisers & Mortgage Underwriters v. Appraisal Foundation, 64 F.3d 1130 (8^th Cir. 1995), cert. denied, 517 U.S. 1189 (1996)

National Macaroni Manufacturers Ass'n v. FTC, 345 F.2d 421 (7th Cir. 1965)

Affirms FTC order finding that standards set by Macaroni/Spaghetti Trade Association calling for blended, rather than pure, form of durum wheat had effect of depressing price of that input to below market levels.

Nat'l Camp Ass'n Inc. v. American Camping Ass'n Inc., SDNY No. 99 Civ. 11853 (DLC) (12/15/00)

Applying rule of reason to refusal to accredit claim, no market power, no evidence of concerted action.

Potter Instrument Co. v. Storage Technology Corp., 1980 U.S. Dist. LEXIS 1438, 207 U.S.P.Q. (BNA) 763 (E.D. Va. 1980), aff’d, 641 F.2d 190 (4th Cir. 1981), cert. denied, 454 U.S. 832 (1981)

Radiant Burners, Inc. v. Peoples Gas Light & Coke Co., 364 U.S. 656 (1961)

Complaint states a claim where it alleges arbitrary and capricious standards for approval of gas burners together with conspiracy between utilities and standard setting organization not to provide gas for use in unapproved burners.

Rambus, Inc. v. Infineon Technologies AG, (No. 3:00CV524), 2001 U.S. Dist. LEXIS 11871 (E.D. Va. Aug. 9, 2001) (SDRAM), see also 155 F. Supp. 2d 668 (E.D. Va. 2001) (attorney fee award)

In patent infringement action, defendant counterclaimed alleging that plaintiff had defrauded it by failing to disclose patent applications in meeting of standard setting body of which both were members and where standards using the patented technology were developed. Jury verdict finding fraud affirmed by court.

SanDisk Corp. v. Lexar Media, Inc., No. C-98-01115 (N.D. Cal. 2000)

Sandisk Corp. v. Lexar Media, Inc., No. C 98-01115 (N.D. Cal. Oct. 17, 2000) (order granting in part and denying in part plaintiff’s motion to dismiss and for summary judgment).

Sessions Tank Liners, Inc. v. Joor Manufacturing, Inc., 1992 Trade Cas. ¶ 69,688 (C.D.Ca.1991), aff'd in part, 827 F.2d 458 (9th Cir), cert. granted and vacated, 487 U.S. 1213; judgment entered in favor of the plaintiff on remand, 786 F. Supp. 1518 (C.D. Ca. 1991), rev'd, 17 F.3d 295 (9th Cir. 1994), cert. denied, 513 U.S. 813 (1994). In first appeal, 9^th Circuit held that Noerr-Pennington immunity applies to lobbying of private model code association, but there is an exception for "sham" conduct. Sham claims pleaded where standards were passed due to false representation made to standard setting body. On remand, deliberate misrepresentation is proved, but in subsequent appeal 9^th Circuit holds that Noerr-Pennington applies because harm results entirely from government conduct in enforcing model code and no harm is alleged in jurisdictions where the model code was not enforced by the government body.

Schachar v. American Academy of Ophthalmology, 870 F.2d 397 (7^th Cir. 1989)

In an appeal from jury instructions at trial, where verdict was for defendant, Judge Posner rejects out of hand plaintiff’s contention that labeling of certain opthalmological treatment as experimental was an antitrust violation. Remarks that antitrust is about competition and not a code of medical ethics.

Silver v. New York Stock Exchange, 373 U.S. 341 (1963)

New York Stock Exchange requires disconnection of wire lines between member firms and nonmember firms. The court holds that this conduct presented a clear case of a per se unlawful group boycott and held that this conclusion was not altered by the duty of self-regulation imposed on such firms by the Securities Exchange Act.

Sony Electronics, Inc. v. Soundview Technologies, Inc., 157 F. Supp. 2d 172 (D. Conn. 2001)

Trade Association seeks to develop standard licenses for V-chip technology. In antitrust suit by holder of patent for such technology, the court holds that defendants have presented strong arguments that prices will be reduced and output increased through the practice, so that there is no antitrust injury, but that this question cannot be resolved on motion to dismiss.

Stambler v. Diebold, Inc., No. 85 CV 3014, 11 U.S.P.Q.2d (BNA) 1709, 1988 U.S. Dist. LEXIS 10132 (E.D.N.Y. 1988)

Patent case involving defense of laches and estoppel; eleven year delay in bringing suit held unreasonable and summary judgment granted for defendant.

Standard Sanitary Mfg. Co. v. United States, 226 U.S. 20 (1912)

Court affirms an injunction baring agreement between a group of defendants comprising 85% of the manufacturers of enameled iron ware from entering into agreements purportedly designed to permit widespread use of patented technology but which also included fixing of prices through a pricing committee.

Sun Microsystems, Inc. v. Kingston Technology Co., No. C-99-03610, (N.D. Cal.)

Sun Microsystems, Inc. v. Kingston Tech. Co., No. C99-03610 (N.D. Cal. Feb. 7, 2000) (Kingston’s Answer, Affirmative Defenses, and Counterclaims to First Amended Complaint for Patent Infringement).

The defendant argued that the patent holder’s infringement claims were barred by the doctrines of misuse and estoppel based on the patent holder’s conduct in JEDEC standard-setting proceedings.

Townshend v. Rockwell International Corp., 2000-1 Trade Cas. (CCH) ¶ 72,890, 55 U.S.P.Q.2d 1011 (N.D.Cal. 2000)

In patent infringement suit, defendant argues that plaintiff patent holder and company to whom he licensed technology unlawfully caused a trade association to adopt an industry standard which embodied the technology without disclosing trade secret litigation and prospective patent litigation. The court dismisses Section 1 claim for failure to plead sufficient injury to competition because conduct is a lawful incident of the patent monopoly and because patent holder offered licenses on reasonable terms. Regarding Section 2 claim, finds that patent holder’s conduct before Trade Association was not anticompetitive.

Wang Laboratories, Inc., v. Mitsubishi Electronics America, Inc., 103 F.3d 1571 (Fed. Cir.), cert. denied, 522 U.S. 818 (1997)

Rejects patent claim based on estoppel and implied license; others permitted to go forward.

Windbond Electronics Corp. v. International Trade Commission, 262 F.3d 1363 (Fed Cir. 2001)

General discussion of inequitable conduct and implied license issues relating to inventorship issues

Zaveletta v. American Bar Ass’n, 721 F. Supp. 96 (E.D. Va. 1989)

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James J. Anton and Dennis A. Yao, "Standard-Setting Consortia, Antitrust, and High Technology Industries," 64 Antitrust L.J. 247 (1995)

Mary L. Azcuenaga, The Intersection of Antitrust and Intellectual Property: Adaptations, Aphorisms and Advancing the Debate, before the American Law Institute-American Bar Association, Antitrust/Intellectual Property Claims in High Technology Markets, San Francisco, California (January 25,1996)

David A. Balto and Robert Pitofsky, "Antitrust and High-Tech Industries: The New Challenge," 43 Antitrust Bulletin 503 (Fall-Winter 1998)

Jack E. Brown, "Technology Joint Ventures to Set Standards or Define Interfaces," 61 Antitrust L.J. 921 (1993)

Dennis W. Carlton and J. Mark Klamer, "The Need for Coordination Among Firms, with Special References to Network Industries," 50 U. Chi. L. Rev. 446 (1983)

Michael G. Cowie and Joseph P. Lavelle, "Patents Covering Industry Standards: The Risks to Enforceability Due to Conduct Before Standard-Setting Organizations," AIPLA L.Q. (forthcoming)

John Croll & Brain Martin, "The Role of Antitrust Enforcement in Standardization in High-Technology Industries," ALI-ABA 111 (1998)

Paul David and Shane Greenstein, "The Economics of Compatibility Standards: An Introduction to the Recent Research," Economics of Innovation and New Tech. 3 (1990)

Joseph Farrell, "Standardization and Intellectual Property," 30 Jurimetrics J. 35 (1989)

Harry S. Gerla, "Federal Antitrust Law and Trade and Professional Association Standards and Certification," 19 U. Dayton L. Rev. 471 (1994)

Richard Gilbert, "Symposium on Compatibility: Incentives and Market Structure," 40 J. Ind. Econ. 1 (1992)

Jennifer L. Gray, "Antitrust Guidelines for Participating in Standard Setting Activities," Corporate Counseling Report (Newsletter of the Corporate Counseling Committee of the Antitrust Section of the ABA) (Spring 2001)

Carole E. Handler and Julian Brew, "The Application of Antitrust Rules to Standards in the Information Industries - Anomaly or Necessity" 14 The Computer Lawyer 1 (1997)

Herb Hovenkamp, et al., Intellectual Property and Antitrust Law (1^st ed. 2001) Chapter on Standard Setting

Michael Katz & Carl Shapiro, "Systems Competition and Network Effects," 8 J. Econ. Perspectives. 93 (1994)

James B. Koback, Jr. "The Mutable Interface: Standard Setting, Antitrust and Intellectual Property," The Media Law Report, Vol. 2, No, 10 (August 1996)

Daniel E. Lazaroff, "Sports Equipment Standardization: An Antitrust Analysis," 34 Ga. L. Rev. 137 (1999)

Douglas D. Leeds, "Raising the Standard: Antitrust Scrutiny of Standard-Setting Consortia in High Technology Industries, 7 Fordham Intellectual Property Media & Entertainment L.J. 641 (1997)

Mark A. Lemley, "Antitrust, Intellectual Property, and Standard-Setting Organizations," (forthcoming)

Mark A. Lemley, Standardizing Government Standard-Setting Policy for Electronic Commerce, 14 Berkeley Tech. L.J. 745 (1999)

Mark A. Lemley, "Antitrust and the Internet Standardization Problem," 28 Conn. L. Rev. 1041 (1996)

Mark A. Lemley and David McGowan, "Legal Implications of Network Economic Effects," 86 Calif. L. Rev. 479 (1998)

Mark A. Lemley & David McGowan, "Could Java Change Everything? The Competitive Propriety of a Proprietary Standard," 43 Antitrust Bull. 715 (1998)

Samuel R. Miller, "Standard-Setting in the Computer Industry - the Antitrust Risks," 13 The Computer Lawyer 1 (1996)

Daniel I. Prywes, "Patent Ambushes and Licensing in Computer Standard-Setting Groups," Antitrust Report (March 2001).

Michael J. Schallop, "Leveraging Intellectual Property Rights to Encourage Interoperability in the Network Computing Age, 28 AIPLA Q.J. 195 (2000)

D. Schneck, "Setting The Standard: Problems Presented to Patent Holders Participating in the Creation of Industry Uniformity Standards," 20 Hastings Comm/Ent. L.J. 641 (1998)

Carl W. Shapiro & Hal R. Varian, "Information Rules: A Strategic Guide to the Network Economy" (1999)

Robert A. Skitol, Antitrust Issues Confronting Collective Standard Setting in High-Technology Industries, before the ABA Antitrust Section (February 25, 1999)

David R. Steinman and Daniellle S. Fitzpatrick, "Antitrust Counterclaims in Patent Infringement Cases: A guide to Walker Process and Sham Litigation," Corporate Counseling Report (Newsletter of the Corporate Counseling Committee of the Antitrust Section of the ABA) (Fall 2001)

Richard H. Stern, "Another Update on Standardization Skullduggery," IEEE Micro, Sept.-Oct., 2001

Richard S. Taffet, "Standards and Certifications: Risks and Benefits," Paper presented at the ABA Antitrust Section Program on Trade Associations and Antitrust: A Practical Guide (1996)

Alan J. Weinschel, The Antitrust–Intellectual Property Handbook, Chapter 4 "Antitrust and Standard Setting, Formal and De Facto" (2000)