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 stare
decisis grounds–its decision in Brulotte v. Thys
Co., 379 U.S. 29 (1964), in which the Court had held that a
patent holder cannot charge royalties for the use of his invention
after its patent term has expired. The continuing vitality of
Brulotte highlights the need for licensors and licensees
to attune themselves to the contours of Brulotte during
license negotiations and to evaluate their rights under preexisting
license agreements.
Prior to the decision in Kimble, Brulotte had
long been criticized by appellate courts, commentators, and
economists as an anachronistic, misguided doctrine that promoted
economically inefficient licensing. Kimble, who claimed that Marvel
owed him a royalty for its Spiderman web blaster, brought those
criticisms to
