## Facts

- Stephen Kimble obtained a patent for a toy that shoots pressurized foam string from the palm, allowing users to imitate Spider-Man’s web-shooting.
- After discussions with Marvel’s predecessor about licensing or selling the idea, Marvel marketed a similar “Web Blaster” product without paying Kimble.
- Kimble sued Marvel for patent infringement; the parties settled in 2001.
- Under the settlement, Marvel paid a lump sum (about $500,000) and agreed to pay a 3% royalty on future sales of the Web Blaster and similar products.
- The agreement set no end date for royalties, even though the patent was set to expire in 2010.
- As expiration approached, Marvel sought a declaration that it could stop paying royalties after expiration under Brulotte v. Thys Co., which bars post-expiration patent royalties.
- The district court and Ninth Circuit held the post-expiration royalty obligation unenforceable, and the Supreme Court granted review to consider overruling Brulotte.

## Issues

1. Whether the Court should overrule Brulotte v. Thys Co. and permit enforcement of royalty provisions requiring payment for use of a patented invention after the patent expires.
2. Whether stare decisis, particularly in statutory interpretation, requires retaining Brulotte’s bright-line rule despite criticism of its economic effects.

## Decision

- The Supreme Court affirmed in a 6–3 decision (Justice Kagan).
- The Court declined to overrule Brulotte and held that a patentee may not receive royalties for sales made after the patent expires when the royalties are tied to use of the patented invention.
- The Court relied heavily on stare decisis, emphasizing that Brulotte construed the patent laws and that Congress remains free to change the rule.
- The Court rejected reframing the doctrine as antitrust-based “rule of reason” analysis, treating the prohibition as grounded in patent policy.
- The dissent (Justice Alito, joined by the Chief Justice and Justice Thomas) would have overruled Brulotte as legally unsupported and economically harmful.

## Legal Principles

- When a patent expires, the invention enters the public domain and the public gains an unrestricted right to make and use it.
- A contract requiring royalties for post-expiration use of a patented invention is unenforceable because it extends the patent’s economic effect beyond the term Congress set.
- Statutory stare decisis carries special weight because Congress can revise judicial interpretations of statutes; longstanding precedent is not displaced solely due to policy or economic critiques.
- Parties may structure agreements to avoid the bar, including (i) deferred payment of royalties accrued during the patent term and (ii) post-expiration payments that reflect compensation for non-patent rights or other valid rights not coextensive with an expired patent.

## Conclusion

The Court reaffirmed Brulotte’s per se rule that patent-based royalties tied to post-expiration use are unenforceable, holding that any revision of that rule should come from Congress rather than judicial overruling of precedent.


Kimble v. Marvel Ent. (Marvel Entm't, LLC), 576 U.S. 446 (2015)