In Kimble v. Marvel Entertainment, LLC (2015), the U.S. Supreme Court declined to overrule the rule in Brulotte v. Thys that a patentee cannot continue to receive royalties for sales made after the expiration of the patent. The Court instead said that relief must be sought from Congress.
SUPREME COURT OF THE UNITED STATES
KIMBLE ET AL. v. MARVEL ENTERTAINMENT, LLC,
SUCCESSOR TO MARVEL ENTERPRISES, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE NINTH CIRCUIT
No. 13–720. Argued March 31, 2015—Decided June 22, 2015
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, in which this Court held that a patentee cannot continue to receive royalties for sales made after his patent expires. Marvel 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…
The full decision may be found here.