The Supreme Court has agreed to hear Kimble v. Marvel Enterprises, Inc. The case revolves around whether royalty payments can be required under an agreement after a patent has expired. Current Supreme Court precedent in Brulotte v. Thys Co. 379 U.S. 29 (1964), held that patent license agreements with continued royalty obligations after the expiration of the patent are per se unlawful. In the present case, the Ninth Circuit applied Brulotte, but indicated disagreement with the decision.
The Supreme Court precedent is based on the assumption that requiring royalties after the expiration of a patent unfairly extends the monopoly provided by the patent. However, the Ninth Circuit indicated reasons for allowing it, such as reducing the royalty payments by allowing them to be paid over a longer period of time.
The Solicitor General submitted a brief counseling the Supreme Court not to hear the Kimble case. However, the Supreme Court has disregarded the recommendation and granted certiorari.
source: Maier & Maier, PLLC
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