January 28, 2021

Volume XI, Number 28

Advertisement

January 27, 2021

Subscribe to Latest Legal News and Analysis

January 26, 2021

Subscribe to Latest Legal News and Analysis

January 25, 2021

Subscribe to Latest Legal News and Analysis

Supreme Court to Hear Argument on March 31 Whether to Overrule Brulotte v. Thys, Co.

Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.  On March 31, in Kimble v. Marvel Enterprises, Inc., No. 13-720, the Supreme Court will consider whether economics, the parallel antitrust law, and marketplace realities are such thatBrulotte should be overturned.

Kimble arose out a licensing dispute over a patent settlement involving a glove that allows its wearer to mimic the comic-book hero Spider-Man by shooting pressurized foam string from the palm.  While expressing some reservation regarding whether the Brulotte rule continued to make sense, the Ninth Circuit held that the settlement royalty provision was unenforceable after the patent’s expiration.

The thrust of Kimble’s argument is that Brulotte was based on antitrust principles regarding the inherent market power of a patent and antitrust per se rules—principles that have been widely rejected.  Kimble advocates instead that Brulotte-type agreements be analyzed on a case-by-case basis under the antitrust rule of reason and only be invalidated if the patentee is actually shown to have market power.

The case has attracted over a dozen amicus briefs on all sides of the issues, including from the American Intellectual Property Law Association, the Licensing Executives Society, and Intellectual Property Owners Association.

Most notably, the Solicitor General has submitted a brief defending the Brulotte rule and has been granted the right also to present oral argument. The SG argues that the rule is based on sound patent law principles of free public access to unpatented and formerly-patented inventions and that antitrust considerations do not justify overruling Brulotte’s rule of patent policy.  The SG further contends that principles of stare decisis apply with particular force to statutory-interpretations decisions such as this one.

We will be monitoring the Supreme Court oral argument next week and will report further.

Advertisement
©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume V, Number 85
Advertisement

TRENDING LEGAL ANALYSIS

Advertisement
Advertisement

About this Author

Bruce Sokler, Mintz Levin Law Firm, Washington DC, Health Care, Antitrust and Litigation Attorney
Member

Bruce is Chair of the Antitrust Section and in his over 30 years in private practice, he has developed extensive experience in both antitrust and communications regulation, including associated First Amendment and copyright law matters

In the antitrust area, Bruce’s practice includes antitrust counseling and representation in connection with federal and state governmental matters, as well as private antitrust litigation. He counsels and has represented Fortune 100 companies, not-for-profits, start-up entities, and domestic and international joint ventures. Bruce has been involved in...

202-434-7303
Richard G. Gervase Jr., Patent Attorney, Mintz Levin, Trade Secrets Lawyer, IP
Member

Richard Gervase heads Mintz’s Royalty Monetization practice and is a leader in the field.  Richard began his career in the late 1980s as a mergers and acquisitions and securities lawyer at Brown & Wood in New York City, where he focused on the biotechnology sector. He has extensive experience structuring and negotiating a wide variety of transactions in the life sciences industry, including royalty monetization transactions, pharmaceutical license and collaboration agreements, stock and asset acquisitions, strategic alliances, joint ventures, sponsored research agreements, research...

212-692-6755
Associate

Sandra Badin focuses her patent practice on appeals before the Federal Circuit and high-priority motions in the federal district courts and the U.S. International Trade Commission.  She has represented clients in many different technology fields with patents covering radio frequency transceivers, graphics processing units, LCD displays, medical records processing systems, electronic point-of-sale systems, high-density plasma cutting torches, dental materials and processes, specialty fabrics, and financial and business methods.  Sandra crafts winning appellate briefs and...

617.348.1604
Advertisement
Advertisement