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6 July 2015Patents

WIPR survey: US Supreme Court correct in Spider-Man decision

The US Supreme Court was right to reaffirm that royalties cannot be demanded for a patent after it has expired, WIPR readers have said.

In response to our latest survey, which asked whether the US Supreme Court made the correct decision in Kimble v Marvel, 78% of respondents said they backed the ruling.

In its  June 22 decision the court ruled against Stephen Kimble, who received a US patent protecting his Spider-Man themed toy in 1990.

The aim of the web blaster was that children could behave like the comic book hero by shooting web strings from a canister of foam inside a glove.

After a dispute between Kimble and Marvel in 1997, the company agreed to pay royalties worth 3% of sales of its own web blaster toy, which used Kimble’s patented technology, as well as a $500,000 fee.

But in 2010 Marvel invoked the Supreme Court’s ruling in Brulotte v Thys by asking the US District Court for the District of Arizona to rule that it no longer owed Kimble royalties because the patent had expired that year.

The Brulotte v Thys ruling, in 1964, said that a right owner cannot demand royalties for an expired patent.

The district court granted Marvel’s motion for summary judgment and ruled against Kimble.

Kimble appealed against the decision, but the US Court of Appeals for the Ninth Circuit affirmed the decision in 2013.

The US Supreme Court then had to decide whether to standby its ruling in Brulotte, which it did in a 6-3 decision.

And the Supreme Court’s view was also backed by WIPR readers.

One respondent said that the right to “exclude others” is at the “foundation of patent protection”.

But the respondent added: “Once the patent has expired, then that right also dissipates, meaning that there is no longer a basis for claiming rights to royalties or even to demand that a party license the patented technology.”

Not everyone was in agreement, however.

Another respondent said: “As the Brulotte v Thys decision has been widely criticised over the years, many patentees have expected it to be disavowed and ignored it when drafting license agreements. Now that it’s been given a ‘booster shot,’ there will ensue more chaos than the majority, relying on stare decisis, seem to expect.”

This week, WIPR asks: “A Nokia counsel said at a conference last week that patent litigation is not as simple as ‘walking into a court and asserting a patent’, and is becoming more difficult. Do you agree that patent litigation is becoming tougher?”

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