__ U.S. __ (2015), 13-720, Kimble v. Marvel Entertainment, LLC

Docket Nº:13-720
Citation:__ U.S. __, 135 S.Ct. 2401, 192 L.Ed.2d 463, 83 U.S.L.W. 4531
Opinion Judge:KAGAN, JUSTICE.
Party Name:Stephen Kimble, et al., Petitioners v. Marvel Entertainment, LLC, Successor To Marvel Enterprises, Inc
Attorney:Roman Melnik argued the cause for petitioner. Malcolm L. Stewart argued the cause for petitioner as amicus curiae, by special leave of court. Thomas G. Saunders argued the cause for respondents.
Judge Panel:KAGAN, J., delivered the opinion of the Court, in which SCALIA, KENNEDY, GINSBURG, BREYER, and SOTOMAYOR, JJ., joined. ALITO, J., filed a dissenting opinion, in which ROBERTS, C. J., and THOMAS, J., joined. JUSTICE ALITO, with whom THE CHIEF JUSTICE and JUSTICE THOMAS join, dissenting.
Case Date:June 22, 2015
Court:United States Supreme Court
SUMMARY

Marvel Entertainment’s corporate predecessor agreed to purchase Kimble’s patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared the end of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., in which the Supreme Court held that a patentee cannot continue to receive royalties for... (see full summary)

 
FREE EXCERPT

Page __

__ U.S. __ (2015)

135 S.Ct. 2401, 192 L.Ed.2d 463, 83 U.S.L.W. 4531, 25 Fla.L.Weekly Fed. S 405

Stephen Kimble, et al., Petitioners

v.

Marvel Entertainment, LLC, Successor To Marvel Enterprises, Inc

No. 13-720

United States Supreme Court

June 22, 2015

[135 S.Ct. 2402] Argued March 31, 2015.

Editorial Note:

This opinion is uncorrected and subject to revision before publication in the printed official reporter.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

727 F.3d 856, affirmed.

SYLLABUS

[135 S.Ct. 2403] [192 L.Ed.2d 465] Respondent Marvel Entertainment's corporate predecessor agreed to purchase petitioner Stephen Kimble's patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared the end of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., 379 U.S. 29, 85 S.Ct. 176, 13 L.Ed.2d 99, in which this Court held that a patentee cannot continue to receive royalties for sales made after his patent expires. Marvel [192 L.Ed.2d 466] then sought a declaratory judgment in federal district court confirming that it could stop paying Kimble royalties. The district court granted relief, and the Ninth Circuit affirmed. Kimble now asks this Court to overrule Brulotte.

Held : Stare decisis requires this Court to adhere to Brulotte. Pp. 3-18.

(a) A patent typically expires 20 years from its application date. 35 U.S.C. § 154(a)(2). At that point, the unrestricted right to make or use the article passes to the public. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 84 S.Ct. 784, 11 L.Ed.2d 661, 1964 Dec. Comm'r Pat. 425. This Court has carefully guarded the significance of that expiration date, declining to enforce laws and contracts that restrict free public access to formerly patented, as well as unpatentable, inventions. See, e.g., id., at 230-233, 84 S.Ct. 784, 11 L.Ed.2d 661; Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 255-256, 66 S.Ct. 101, 90 L.Ed. 47, 1946 Dec. Comm'r Pat. 616.

[135 S.Ct. 2404] Brulotte applied that principle to a patent licensing agreement that provided for the payment of royalties accruing after the patent's expiration. 379 U.S., at 30, 85 S.Ct. 176, 13 L.Ed.2d 99. The Court held that the post-patent royalty provision was " unlawful per se," id., at 30, 32, 85 S.Ct. 176, 13 L.Ed.2d 99, because it continued " the patent monopoly beyond the [patent] period," id., at 33, 85 S.Ct. 176, 13 L.Ed.2d 99, and, in so doing, conflicted with patent law's policy of establishing a " post-expiration . . . public domain," ibid.

The Brulotte rule may prevent some parties from entering into deals they desire, but parties can often find ways to achieve similar outcomes. For example, Brulotte leaves parties free to defer payments for pre-expiration use of a patent, tie royalties to non-patent rights, or make non-royalty-based business arrangements. Contending that such alternatives are not enough, Kimble asks this Court to abandon Brulotte 's bright-line rule in favor of a case-by-case approach based on antitrust law's " rule of reason." Pp. 3-7.

(b) The doctrine of stare decisis provides that today's Court should stand by yesterday's decisions. Application of that doctrine, though " not an inexorable command," is the " preferred course." Payne v. Tennessee, 501 U.S. 808, 828, 827, 111 S.Ct. 2597, 115 L.Ed.2d 720. Overruling a case always requires " special justification" --over and above the belief " that the precedent was wrongly decided." Halliburton Co. v. Erica P. John Fund, Inc., 573 U.S. __, __, 134 S.Ct. 2398, 189 L.Ed.2d 339 at 349. Where, as here, the precedent interprets a statute, stare decisis carries enhanced force, since critics are free to take their objections to Congress. See e.g., Patterson v. McLean Credit Union, 491 U.S. 164, 172-173, 109 S.Ct. 2363, 105 L.Ed.2d 132. Congress, moreover, has spurned multiple opportunities to reverse Brulotte, see Watson v. United States, 552 U.S. 74, 82-83, 128 S.Ct. 579, 169 L.Ed.2d 472, and has even rebuffed bills that would have replaced Brulotte 's per se rule with the standard Kimble urges. In addition, Brulotte implicates property and contract law, two contexts in which considerations favoring stare decisis are " at their acme," Payne, 501 U.S., at 828, 111 S.Ct. 2597, 115 L.Ed.2d 720, because parties are especially likely to rely on such precedents when ordering their affairs.

[192 L.Ed.2d 467] Given those good reasons for adhering to stare decisis in this case, this Court would need a very strong justification for overruling Brulotte. But traditional justifications for abandoning stare decisis do not help Kimble here. First, Brulotte's doctrinal underpinnings have not eroded over time. The patent statute at issue in Brulotte is essentially unchanged. And the precedent on which the Brulotte Court primarily relied, like other decisions enforcing a patent's cut-off date, remains good law. Indeed, Brulotte 's close relation to a whole web of precedents means that overruling it could threaten others. Second, nothing about Brulotte has proved unworkable. See Patterson, 491 U.S., at 173, 109 S.Ct. 2363, 105 L.Ed.2d 132. To the contrary, the decision itself is simple to apply-- particularly as compared to Kimble's proposed alternative, which can produce high litigation costs and unpredictable results. Pp. 7-12.

(c) Neither of the justifications Kimble offers gives cause to overrule Brulotte. Pp. 12-18.

(1) Kimble first argues the Brulotte hinged on an economic error-- i.e., an assumption that post-expiration royalties are always anticompetitive. This Court sees no error in Kimble's economic analysis. But even assuming Kimble is right that Brulotte relied on an economic misjudgment, Congress is the right entity to fix it. The patent laws are not like the Sherman [135 S.Ct. 2405] Act, which gives courts exceptional authority to shape the law and reconsider precedent based on better economic analysis. Moreover, Kimble's argument is based not on evolving economic theory but rather on a claim that the Brulotte Court simply made the wrong call. That claim fails to clear stare decisis 's high bar. In any event, Brulotte did not even turn on the notion that post-patent royalties harm competition. Instead, the Brulotte Court simply applied the categorical principle that all patent-related benefits must end when the patent term expires. Kimble's real complaint may go to the merits of that principle as a policy matter. But Congress, not this Court, gets to make patent policy. Pp. 12-16.

(2) Kimble also argues that Brulotte suppresses technological innovation and harms the national economy by preventing parties from reaching agreements to commercialize patents. This Court cannot tell whether that is true. Brulotte leaves parties free to enter alternative arrangements that may suffice to accomplish parties' payment deferral and risk-spreading goals. And neither Kimble nor his amici offer any empirical evidence connecting Brulotte to decreased innovation. In any event, claims about a statutory precedent's consequences for innovation are " more appropriately addressed to Congress." Halliburton, 573 U.S., at __, 134 S.Ct. 2398, 189 L.Ed.2d at 356. Pp. 16-18.

727 F.3d 856, affirmed.

Roman Melnik argued the cause for petitioner.

Malcolm L. Stewart argued the cause for petitioner as amicus curiae, by special leave of court.

Thomas G. Saunders argued the cause for respondents.

KAGAN, J., delivered the opinion of the Court, in which SCALIA, KENNEDY, GINSBURG, BREYER, and SOTOMAYOR, JJ., joined. ALITO, J., filed a dissenting opinion, in which ROBERTS, C. J., and THOMAS, J., joined.

OPINION

[192 L.Ed.2d 468] KAGAN, JUSTICE.

In Brulotte v. Thys Co., 379 U.S. 29, 85 S.Ct. 176, 13 L.Ed.2d 99 (1964), this Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired. The sole question presented here is whether we should overrule Brulotte. Adhering to principles of stare decisis, we decline to do so. Critics of the Brulotte rule must seek relief not from this Court but from Congress.

I

In 1990, petitioner Stephen Kimble obtained a patent on a toy that allows children (and young-at-heart adults) to role-play as " a spider person" by shooting webs--really, pressurized foam string--" from the palm of [the] hand." U.S. Patent No. 5,072,856, Abstract (filed May 25, [135 S.Ct. 2406] 1990). 1 Respondent Marvel Entertainment, LLC (Marvel) makes and markets products featuring Spider-Man, among other comic-book characters. Seeking to sell or license his patent, Kimble met with the president of Marvel's corporate predecessor to discuss his idea for web-slinging fun. Soon afterward, but without remunerating Kimble, that company began marketing the " Web Blaster" --a toy that, like Kimble's patented invention, enables would-be action heroes to mimic Spider-Man through the use of a polyester glove and a canister of foam.

Kimble sued Marvel in 1997 alleging, among other things, patent infringement. The parties ultimately settled that litigation. Their agreement provided that Marvel would purchase Kimble's patent in exchange for a lump sum (of about a half-million dollars) and a 3% royalty on Marvel's future sales of the Web Blaster and similar products. The parties set no end date for royalties, apparently contemplating that they would continue for as long as kids want to imitate Spider-Man (by doing whatever a spider can).

And then Marvel stumbled across Brulotte, the case at the heart of this dispute. In negotiating the settlement, neither side was aware of Brulotte. But Marvel must have been pleased to learn of it. Brulotte had read the patent laws to prevent a patentee from receiving royalties for sales made after his patent's expiration. See 379 U.S., at 32, 85 S.Ct. 176, 13 L.Ed.2d...

To continue reading

FREE SIGN UP