Thursday, 29 January 2015 15:13

Supreme Court of United States showing Spider-Sense by avoiding “Stare Decisis”?

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Stephen Kimble is an inventor of a web-shooting gadget that allows kids to imagine they have super powers like Spiderman. More particularly, Kimble was granted a patent in 1991 by the United States Patent and Trademark Office for an apparatus that shoots foam from the palm of the hand, to give the user an impression that a spider web is formed. As such, the Supreme Court of the United States (“SCOTUS”) has agreed to review an appeal by Kimble in regards to considering overruling a 50-year old precedent that bars the collection of royalties on patents after they expire.

Under the principle of Stare Decisis, which in Latin means “to stand by things decided”, the Courts in the United States, including SCOTUS generally adhere to the previous ruling they have already issued (precedents).  Accordingly, one such precedent that Courts have consistently ruled on is that no royalties can be paid on expired patents.

However, despite the popular notion that collecting royalties on expired patents is economically flawed, attorneys for Kimble have been able to successfully argue that the precedent in Brulotte has been fundamentally illogical, when it believed that allowing continued royalties on expired patents extended the patent holder’s monopoly. (See Brulotte v. Thys Co. holding that patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. As such, if that device were available to patentees, the free market visualized for the post-expiration period).

Furthermore, the US Solicitor General has urged SCOTUS not to review the case, citing that Kimble had failed to provide strenuous reasons for taking extraordinary steps of abandoning the precedent.  Despite this vehement counter-argument, however, SCOTUS is expected to hear oral arguments from Kimble's attorneys in spring of 2015, with a probable decision on the case  sometime in June 2015.

Read 2723 times Last modified on Thursday, 29 January 2015 15:22
Kaustubh Nadkarni

Mr. Nadkarni earned his bachelor’s degree in Engineering Arts from Michigan State University, his Master’s degree in Finance and Six Sigma Management Science from University of Miami, his law degree from Nova Southeastern University and his Master of Laws degree in Intellectual Property from University of New Hampshire, formerly Franklin Pierce Law Center.

Mr. Nadkarni is a member of the Florida Bar, the Southern District of Florida Federal Court and the United States Court of Appeals for the Federal Circuit. He has also successfully passed the United States Patent and Trademark Office Registration Examination. As a Patent Attorney, he concentrates his practice in Patent Prosecution, Patent Litigation, Trademark Prosecution and other Intellectual Property litigation matters. Mr. Nadkarni is fluent in Hindi, Marathi, Urdu and functional in French. He is a member of American Intellectual Property Association, Miami Beach Bar Association and a Board Member of the Fairchild Palms.