As discussed earlier on our blog, the Supreme Court granted certiorari in the case of Kimble v. Marvel Ent. Inc., a patent case deciding if its prior decision in Brulotte v. Thys Co., 379 U.S. 29 (1964) should be overruled.  This week, the Supreme Court upheld Brulotte in Kimble v. Marvel Ent. Inc., 576 U.S. ___ (2015) in a 6-3 decision involving Spider-man references, the classic doctrine of stare decisis, and a spirited dissent.

The case stemmed from a patent infringement and breach of contract suit in 1997.  Kimble had met with Marvel to discuss his glove invention that allows its user to shoot “webs” of pressurized foam from the palm (Patent No. 5,072,856).  After the meeting, Marvel began marketing a similar toy called the “Web Blaster” without an agreement with Kimble.  After Kimble brought suit, the two parties settled; Marvel would purchase Kimble’s patent in exchange for a lump sum and a 3% royalty on Marvel’s future sales.  The parties set no end date for the royalties.  When the patent expired, in a later suit, Marvel filed a declaratory judgment under Brulotte, which maintains that a patent holder cannot charge royalties for the use of an invention after its patent term has expired.  Marvel prevailed under Brulotte in the district court, 9th Circuit, and Supreme Court.

The oft-criticized Brulotte decision survived the Supreme Court’s scrutiny under stare decisis, the idea that today’s decisions should be consistent with yesterday’s decisions.  Justice Kagan for the majority wrote, “What we can decide, we can undecide.  But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: ‘Spider-Man,’ p. 13 (1962) (‘[I]n this world, with great power there must also come—great responsibility’).”  She notes that Congress has the ability to overturn Brulotte, although the dissent strongly disagreed that the Court needed to defer to Congress to change the “baseless and damaging precedent.”

Regardless, Brulotte still stands today.  The majority highlights the statutory provision setting the patent length emphasizes that a patent becomes public property once the patent expires.  Although Brulotte poses an obstacle in collecting royalties for using an invention after an expiration date, the majority notes there are methods of collecting pre-expiration use royalties into the post-expiration date period.  In short, as Justice Kagan wrote, “patents endow their holders with certain superpowers, but only for a limited time.”


For the full opinion –

Other superhero/spiderman references in the opinion –    

Majority: “As against this superpowered form of stare decisis, we would need a superspecial justification to warrant reversing Brulotte.”

Majority: “To the contrary, (Brulotte)’s close relation to a whole web of precedents means that reversing it could threaten others.”

Majority: “The parties set no end date for royalties, apparently contemplating that they would continue for as long as kids want to imitate Spider-Man (by doing whatever a spider can).”

Dissent: “As an initial matter, we do not give super-duper protection to decisions that do not actually interpret a statute. When a precedent is based on a judge-made rule and is not grounded in anything that Congress has enacted, we cannot ‘properly place on the shoulders of Congress’ the entire burden of correcting ‘the Court’s own error.’” (quoting Girouard v. United States, 328 U.S. 61, 69-70 (1946).