A lawsuit against Marvel is making its way to the Supreme Court, and the decision could change a 50-year-old rule about how inventors can profit off of their patents. The case pits Marvel against Stephen Kimble, an inventor who sold it a patent for a glove that shoots a foam string out of its palm, much like Spider-Man's web shooters. Marvel agreed to pay Kimble a percentage of product sales indefinitely, but it stopped paying him after the patent expired. It can seemingly do that because of a 1964 Supreme Court ruling, from the case Brulotte v. Thys Co., which makes it illegal to collect royalties on an expired patent, and now Kimble is heading back to that court in an attempt to overturn its ruling. The Supreme Court today agreed to hear the lawsuit, which should enter the court sometime next spring.
The Justice Department didn't want this case in the Supreme Court
The Court initially made the ruling because a patent, by itself, was considered to be fairly powerful, and allowing patent owners to make agreements extending beyond a patent's lifetime would only grant them more power. In particular, the court noted concern that a patent holder might require someone licensing a patent to also license expired patents in order to seal the deal — a bargaining power that would have undermined the intent of making patents eventually open up to the public. Effectively, it would give some added leverage where they already have a monopoly.
Kimble thinks it's possible that the court will now overturn that ruling. His lawsuit argues that it's now out of line with modern competition law, which doesn't view the patent as being quite as powerful as it once was. However, the Justice Department argued against this thinking in a filing with the court, recommending that it not take up the case at all. There are also some outstanding issues that could prevent Kimble from overturning the court's earlier ruling: for one, this is an agreement based on a patent sale, not licensing, and on top of that, his agreement with Marvel doesn't differentiate between royalty payments and payments simply because of the sale. That means there are some other potentially tricky issues at play, but the fate of the Brulotte ruling is definitely in question.