News & Analysis as of

Stare Decisis Patents

McDonnell Boehnen Hulbert & Berghoff LLP

Alternative Reasoning for Supreme Court's Life Sciences Subject Matter Eligibility Jurisprudence

Last week, IP Law360 published an erudite and provocative article by Joseph Matal and his colleagues regarding the Supreme Court's recent subject matter jurisprudence in the context of earlier decisions in the 19th and early...more

McDonnell Boehnen Hulbert & Berghoff LLP

Oral Argument in Minerva Surgical Inc. v. Hologic, Inc.

The Supreme Court heard oral argument last week in Minerva Surgical Inc. v. Hologic, Inc. over the issue of assignor estoppel. As a reminder, the case arose in an infringement suit over U.S. Patent Nos. 6,782,183 and...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Kisor v. Wilkie, 588 U.S. __, 139 S. Ct. 2400 (2019)

James Kisor, a Korean War Veteran, asked the Supreme Court to overrule a longstanding presumption that courts defer to an executive agency’s reasonable interpretation of its own regulation, a principle known as Auer...more

White & Case LLP

Kisor Deference: The New Judicially-Driven Auer Deference

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A divided Supreme Court changed the landscape of administrative law in a recent decision, Kisor v. Wilkie. In Kisor, a slim majority declined to overrule Bowles v. Seminole Rock & Sand Co., Auer v. Robbins and related cases,...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018) - In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to...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

Foley & Lardner LLP

Nautilus Standard Sinks Dow Patents

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Dow Chemical Company (“Dow”) lost a ruling that competitor NOVA Chemical Corporation and NOVA Chemicals Inc. (collectively “NOVA”) infringed claims of two Dow patents when the Federal Circuit applied the U.S. Supreme Court’s...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

BakerHostetler on

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

McDermott Will & Emery

Intervening Reissue Still Bound by Earlier Claim Construction - ArcelorMittal France v. AK Steel Corp.

In a decision invalidating reissue patent claims, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s application of the law-of-the-case doctrine and mandate rule, finding that the reissue claims...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!

Weintraub Tobin on

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

Seyfarth Shaw LLP on

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

Fenwick & West LLP on

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

Ballard Spahr LLP

Supreme Court Upholds Ban on Royalties after Licensed Patent Expires

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In a 6-3 decision in Kimble v. Marvel, the U.S. Supreme Court refused to overturn the long-standing rule that bars a licensor from being able to collect royalties for sales after the expiration of the licensed patent—even if...more

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