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Justices Look Ready To Keep Expired-Patent Royalty Ban

April 01, 2015

Fenwick & West patent litigation partner David Tellekson was quoted in Law360 regarding Kimble et al. v. Marvel Enterprises Inc., a patent litigation case before the Supreme Court of the United States.

At issue in Kimble is whether inventor Stephen Kimble, who holds an expired patent on a Spider-Man toy, is still entitled to royalties from Marvel Enterprises, which holds the rights to the web-spinner.

In 1964, the U.S. Supreme Court decision in Brulotte v. Thys Co. established what’s known as the “Brulotte Rule” barring royalty agreements that continue after a patent expires. Kimble’s attorney argued that the rule is deleterious to innovation and could potentially interfere with life-saving medical advances. Several justices, according to Tellekson, who attended the hearing, appeared skeptical of the argument.

"While it seemed that many commentators took the wide spread dissatisfaction with the Brulotte case as a sure sign it would be overturned, the questions from the justices today made that difficult to predict," he said. "Several justices, particularly Justice Kagan, seemed concerned that the requirements to overturn stare decisis had not been established."

The full article is available through the Law360 website (subscription required). ​​​​​​​