News & Analysis as of

Brulotte Patents

McAfee & Taft

Regular audits of technology license agreements may reduce your patent royalty payments

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Patent license royalty payments can be habit-forming. Some patent licenses have terms extending for potentially two decades or longer. As a result, patent licenses are frequently filed away never to be seen again....more

Fenwick & West LLP

U.S. Supreme Court Upholds Ban on Post-Patent Expiration Royalties

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Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” 379 U.S. 29, 32 (1964). On June...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Maintains Licensing Status Quo in Kimble v. Marvel Entertainment, LLC

A bedrock principle of U.S. patent law is that the patent grant comprises a quid pro quo. In exchange for a limited term of exclusivity (presently, twenty years from the earliest filing date), the patented invention is placed...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - August 2015 #4

SUPREME COURT CASES - The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration - In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its 1964...more

Foley & Lardner LLP

A Royalty By Any Other Name: Post-Expiration Payments After Kimble v. Marvel

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Patent holders and accused infringers will need to continue being creative in drafting license agreements after the Supreme Court’s recent decision in Kimble v. Marvel, No. 13-720, 2015 U.S. Dist. LEXIS 4067, at *6 (June 22,...more

BakerHostetler

Kimble v. Marvel Changes How Patent Licenses Should Be Drafted and Also Diligenced in Transactions

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In 1990, Stephen Kimble obtained a patent for a toy that allowed children and adults to shoot “webs” from the palms of their hands. Kimble met with the president of Marvel Enterprises, Marvel Entertainment’s predecessor, to...more

BakerHostetler

Patent Defeats Antitrust in Latest Test at Supreme Court

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In Kimble v. Marvel Entertainment, 576 U.S. ____ (2015), the U.S. Supreme Court considered whether to overturn Brulotte v. Thys, 379 U.S. 29 (1964), its 1964 decision holding that it was per se unlawful for a patent owner to...more

Womble Bond Dickinson

Check Your Technology License: Payments May Be Unenforceable

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Expiration of a patent also terminates the rights to collect royalties on that patent – even if a license contract says otherwise. All businesses are reminded to check the termination date of any patent licensed to the...more

BakerHostetler

The Supreme Court Again Rejects Post-Expiration Patent Royalties

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In Kimble v. Marvel Entertainment, LLC, No. 13-720 (U.S. June 22, 2015), the Supreme Court, in a 6-3 decision with Justice Kagan writing for the majority, upheld its 1964 decision in Brulotte v. Thys, 379 U.S. 29, reaffirming...more

Blake, Cassels & Graydon LLP

Law on Post-Patent Royalties Differs Between Canada and the U.S.

The recent decision of the United States Supreme Court (USSC) in Kimble v. Marvel Entertainment LLC (Kimble) highlights how a lack of knowledge of the law governing the intellectual property that is the subject of a...more

Saul Ewing Arnstein & Lehr LLP

Supreme Court: No Patent Royalties May Accrue After Patent Expiration

With Kimble v. Marvel Entertainment, LLC, the U.S. Supreme Court upheld the controversial Brulotte v.Thys Co. decision, which prohibited collection of patent-based royalties that accrue after patent expiration. The Court...more

Foley Hoag LLP

How Not to Get Snared in Brulotte’s Web

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The Supreme Court’s Kimble Decision Reminds Licensors and Licensees to Evaluate Post-Expiration Royalties with Care - On June 22, 2015, the Supreme Court, in Kimble v. Marvel Entertainment, LLC, declined to overrule–on...more

Weintraub Tobin

Everything Old is New Again: Post-Expiration Patent Royalties are a Bad Idea!

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On Monday, the United States Supreme Court upheld the longstanding case law that prohibits a patent owner from receiving royalties after a patent has expired. In Kimble v. Marvel Entertainment, LLC (June 22, 2015) 2015 U.S....more

Seyfarth Shaw LLP

How a Trade Secret Could Have Saved a Running Royalty From a Nearly Invincible Law

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In Kimble v. Marvel Entertainment, LLC, just handed down June 22, 2015, the Supreme Court reaffirmed the 50 year old holding of Brulotte v. Thys Co., 379 U. S. 29 (1964), that patent royalties cannot extend beyond the...more

Seyfarth Shaw LLP

High Court Upholds Ban On Post-Expiration Patent Royalties While Recommending Loopholes

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Background - On Monday, the U.S. Supreme Court left intact a 50-year-old rule prohibiting royalties for post-expiration use of a patent. In Kimble v. Marvel Entertainment, LLC, No. 13-720 litigation arose from Marvel’s...more

Fenwick & West LLP

Litigation Alert: Even Spider-Man Can't Defeat Ban on Post-Patent Expiration Royalties

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Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” 379 U.S. 29, 32 (1964). On June...more

Orrick, Herrington & Sutcliffe LLP

U.S. Supreme Court Reaffirms Prohibition on Post-Expiration Patent Royalties, and the Vitality of Stare Decisis, in the Kimble...

On June 22, 2015, in a 6-3 decision in Kimble et al. v. Marvel Enterprises, LLC, 576 U.S. __ (2015), the United States Supreme Court reaffirmed its holding in Brulotte v. Thys, 379 U.S. 29 (1964), that it is per se patent...more

Neal, Gerber & Eisenberg LLP

Supreme Court Affirms that a Patent Holder Cannot Charge Royalties for Post-Expiration Use of the Invention

More than fifty years ago, the United States Supreme Court held that a patent holder cannot receive royalties for sales made after the patent expires because this arrangement would effectively extend the life of the patent....more

Eversheds Sutherland (US) LLP

The Finite Life of a Patent Upheld: No Royalties After Expiration

The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more

Wilson Sonsini Goodrich & Rosati

Supreme Court Upholds Precedent Prohibiting Post-Expiration Patent Royalties, but Leaves Open Parties' Options for Creative...

On June 22, 2015, the United States Supreme Court upheld the 50-year-old "Brulotte rule," which prohibits a patent owner from negotiating a license agreement that requires royalties to be paid after the expiration of the...more

Morrison & Foerster LLP

Rebuffing Critics, Supreme Court Re-Affirms Ban on Post-Expiration Patent Royalties

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Brulotte has been widely criticized as economically...more

Mintz

Supreme Court Upholds Brulotte Rule Prohibiting Post-Expiration Patent Royalties

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On June 22, 2015, the Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, upholding the rule, first announced in Brulotte v. Thys Co., 379 U. S. 29 (1964), that an agreement allowing a patent owner to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Practice Considerations Post Kimble v. Marvel

The U.S. Supreme Court’s recent decision in Kimble et al. v. Marvel Entertainment, LLC, rejuvenates a 50-year old rule addressing patent royalties, bringing it to the forefront of patent and licensing practice. On June 22,...more

McDermott Will & Emery

The 'Super Powered' Rule of Stare Decisis Defeats Spider Man

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The Supreme Court of the United States, in a 6-3 decision, left undisturbed the rule from its 51-year-old decision in Brulotte v. Thys Co. (1964), invoking stare decisis and rejecting arguments seeking to overturn the rule...more

Knobbe Martens

U.S. Supreme Court Confirms That Post Patent Expiration Royalties Are Prohibited

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Background of the Case - The dispute in Stephen Kimble v. Marvel Enterprises, Inc., Case No. 13-720, ___ U.S. ___ (2015), arose out of a 2001 settlement of a prior lawsuit between the parties. The prior suit had...more

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