Spider-Man Toy Spat Swings Into Washington

     (CN) – The inventor behind a web-slinging Spider-Man toy told the Supreme Court today to throw out the 50-year-old precedent holding up his Marvel royalty checks.
     Stephen Kimble first sued Marvel Entertainment in 1997 over the Web Blaster, a toy that simulates web-slinging with foam string.
     Marvel, which owns the rights to the comic book hero Spider-Man, agreed to pay Kimble 3 percent of royalties for toys that infringed on his original patent, and paid out $6 million under the terms of a settlement agreement until 2008, when it sold its toy-making arm to Hasbro.
     Kimble then sued again, but Marvel contented that the settlement did not require it to pay Kimble after his patent expired in 2010.
     In “reluctantly” siding with Marvel last year, the 9th Circuit cited the 1964 Supreme Court decision, Brulotte v. Thys Co.
     The Brulotte rule, which the 9th Circuit called the counterintuitive result of “arguably unconvincing” rationale, prohibits licensing agreements that require royalty payments beyond the patent’s life.
     Urging the high court to overturn Brulotte today Kimble’s attorney, Roman Melnik, said, “Brulotte‘s per se ban on patent royalties on post-expiration use should be discarded because it is a rule without a reason.”
     “Brulotte is widely recognized as an outdated and misguided decision that prohibits royalty arrangements that are frequently socially beneficial,” Melnik added.
     But the justices seemed reluctant to overturn the court’s 50-year-old precedent.
     “To the extent that we think something is not really causing a problem in the real world, why overrule something against that basic backdrop principle?” Justice Elena Kagan asked.
     And Justice Stephen Breyer wanted to know how to reconcile Kimble’s bid to extend royalties beyond the life of the patent “with the Constitution’s requirement that patents are for limited terms.”
     Melnik said real-world application of the law harms many universities and research nonprofits, which cannot negotiate a favorable licensing agreement when they first register a patent because the future value of early stage technology is often unclear. Numerous nonprofits filed amici briefs in support of Kimble.
     Thomas Saunders argued for Marvel. “Brulotte remains correctly decided,” he told the court, adding that any significant change to this fundamental rule of patent law should come from Congress, not the courts.
     Saunders summarized Kimble’s position as really saying “my invention is such that 20 years isn’t long enough for me, it’s not going to realize a success until after the 20-year period.”
     “The fact that you may not be able to capture that is a direct consequence of the decision Congress made when it set the patent term,” the attorney added.
     The U.S., represented by Malcolm Stewart, spoke briefly in support of Marvel and the Brulotte rule, and argued that current patent law supports “unrestricted public access to unpatented and previously patented inventions.”
     Chief Justice John Roberts was the only justice who seemed open to overturning the court’s precedent, naming a number of cases from the mid 1960s that the court has overruled.
     “It’s a problem with the ’60s,” he said, “and the same argument you make now should have prevented us from doing that in all those other cases.”

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