Kimble v. Marvel Enterprises, Inc.

Summarized by:

  • Court: U.S. Supreme Court Certiorari Granted
  • Area(s) of Law: Patents
  • Date Filed: December 12, 2014
  • Case #: 13-720
  • Judge(s)/Court Below: Court Below: 727 F.3d 856 (9th Cir. 2013)
  • Full Text Opinion

Whether a rule of reason analysis should replace current per se ban on post-expiration patent royalty collection.

Petitioners assigned a patent and conveyed intellectual property rights to Respondent. The appellate court held that, pursuant to Brulotte v. Thys Co., 379 U.S. 29 (1964), Respondent’s obligation to continue making royalty payments beyond the expiration date of the assigned patent was excused because it is unlawful per se. Three Courts of Appeals, the Justice Depatment, the Federal Trade Commission, and almost every author who has written in the subject have all urged the Court to reexamine the holding of Brulotte and bring up to date with modern practices.

The Supreme Court granted a writ of certiorari to decide whether or not to overrule Brulotte. Petitioner argues that Brulotte harms the economy and suppresses innovation by forbidding potentially pro-competitive licensing practices and that neither patent policy nor leveraging concerns justify blanket prohibitions on post-expiration patent royalty collection.

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