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Back to the Future—Supreme Court to Review Rule On Post-Expiration Patent Royalties

Kimble v. Marvel Enterprises

The U.S. Court of Appeals for the Ninth Circuit, in affirming a district court decision that toy maker Marvel was not required to make payments after the expiration of a patent, criticized the Brulotte rule that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” (See IP Update, Vol. 16, No. 8.) The U.S. Supreme Court has now granted the patent owner’s (Kimble) petition for writ of certiorari seeking to overturn 50-year-old Supreme Court precedent that a patent owner cannot enforce a license requiring patent royalty payments after the patent expires. Kimble v. Marvel Enterprises, Case No. 13-720; (Supr. Ct., Dec. 12, 2014).

The question presented in Kimble’s petition is simply “Whether this Court should overrule Brulotte v. Thys Co.”

Note: The Solicitor General urged the Supreme Court not to accept the case, arguing that there “is no sound basis for casting aside a 50-year-old interpretation,” i.e., Brulotte v. Thys Co., (Supr. Ct., 1964).

© 2021 McDermott Will & EmeryNational Law Review, Volume IV, Number 364
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About this Author

Paul Devinsky, Intellectual Property Attorney
Partner

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.

202-756-8369
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