Kimble v. Marvel Entertainment, LLC
Kimble v. Marvel Entertainment, LLC
Opinion
In
Brulotte v. Thys Co.,
I
In 1990, petitioner Stephen Kimble obtained a patent on a toy that allows children (and young-at-heart adults) to role-play as "a spider person" by shooting webs-really, pressurized foam string-"from the palm of [the] hand."
Kimble sued Marvel in 1997 alleging, among other things, patent infringement. The parties ultimately settled that litigation. Their agreement provided that Marvel would purchase Kimble's patent in exchange for a lump sum (of about a half-million dollars) and a 3% royalty on Marvel's future sales of the Web Blaster and similar products. The parties set no end date for royalties, apparently contemplating that they would continue for as long as kids want to imitate Spider-Man (by doing whatever a spider can).
And then Marvel stumbled across
Brulotte,
the case at the heart of this dispute. In negotiating the settlement, neither side was aware of
Brulotte
. But Marvel must have been pleased to learn of it.
Brulotte
had read the patent laws to prevent a patentee from receiving royalties for sales made after his patent's expiration. See
We granted certiorari, 574 U.S. ----,
II
Patents endow their holders with certain superpowers, but only for a limited time. In crafting the patent laws, Congress struck a balance between fostering innovation and ensuring public access to
*2407
discoveries. While a patent lasts, the patentee possesses exclusive rights to the patented article-rights he may sell or license for royalty payments if he so chooses. See
This Court has carefully guarded that cut-off date, just as it has the patent laws' subject-matter limits: In case after case, the Court has construed those laws to preclude measures that restrict free access to formerly patented, as well as unpatentable, inventions. In one line of cases, we have struck down state statutes with that consequence. See,
e.g.,
Brulotte
was brewed in the same barrel. There, an inventor licensed his patented hop-picking machine to farmers in exchange for royalties from hop crops harvested both before and after his patents' expiration dates. The Court (by an 8-1 vote) held the agreement unenforceable-"unlawful
per se
"-to the extent it provided for the payment of royalties "accru[ing] after the last of the patents incorporated into the machines had expired."
The Brulotte rule, like others making contract provisions unenforceable, prevents some parties from entering into deals they desire. As compared to lump-sum fees, royalty plans both draw out payments over time and tie those payments, in each month or year covered, to a product's commercial success. And sometimes, for some parties, the longer the arrangement lasts, the better-not just up to but beyond a patent term's end. A more extended payment period, coupled (as it presumably would be) with a lower rate, may bring the price the patent holder seeks within the range of a cash-strapped licensee. (Anyone who has bought a product on installment can relate.) See Brief for Memorial Sloan Kettering Cancer Center et al. as Amici Curiae 17. Or such an extended term may better allocate the risks and rewards associated with commercializing inventions-most notably, when years of development work stand between licensing a patent and bringing a product to market. See, e.g., 3 R. Milgrim & E. Bensen, Milgrim on Licensing § 18.05, p. 18-9 (2013). As to either goal, Brulotte may pose an obstacle.
Yet parties can often find ways around
Brulotte,
enabling them to achieve those same ends. To start,
Brulotte
allows a licensee to defer payments for pre-expiration use of a patent into the post-expiration period; all the decision bars are royalties for using an invention after it has moved into the public domain. See
Contending that such alternatives are not enough, Kimble asks us to abandon
Brulotte
in favor of "flexible, case-by-case analysis" of post-expiration royalty clauses "under the rule of reason." Brief for Petitioners 45. Used in antitrust law, the rule of reason requires courts to evaluate a practice's effect on competition by "taking into account a variety of factors, including specific information about the relevant business, its condition before and after the [practice] was imposed, and the [practice's] history, nature, and effect."
State Oil Co. v. Khan,
III
Overruling precedent is never a small matter.
Stare decisis
-in English, the idea that today's Court should stand by yesterday's decisions-is "a foundation stone of the rule of law."
Michigan v. Bay Mills Indian Community,
572 U.S. ----, ----,
Respecting
stare decisis
means sticking to some wrong decisions. The doctrine rests on the idea, as Justice Brandeis famously wrote, that it is usually "more important that the applicable rule of law be settled than that it be settled right."
Burnet v. Coronado Oil & Gas Co.,
What is more,
stare decisis
carries enhanced force when a decision, like
Brulotte,
interprets a statute. Then, unlike in a constitutional case, critics of our ruling can take their objections across the street, and Congress can correct any mistake it sees. See,
e.g.,
Patterson v. McLean Credit Union,
And Congress has spurned multiple opportunities to reverse
Brulotte
-openings as frequent and clear as this Court ever
*2410
sees.
Brulotte
has governed licensing agreements for more than half a century. See
Watson v. United States,
Nor yet are we done, for the subject matter of
Brulotte
adds to the case for adhering to precedent.
Brulotte
lies at the intersection of two areas of law: property (patents) and contracts (licensing agreements). And we have often recognized that in just those contexts-"cases involving property and contract rights"-considerations favoring
stare decisis
are "at their acme."
E.g.,
Payne,
As against this superpowered form of stare decisis, we would need a superspecial justification to warrant reversing Brulotte . But the kinds of reasons we have most often held sufficient in the past do not help Kimble here. If anything, they reinforce our unwillingness to do what he asks.
First,
Brulotte
's statutory and doctrinal underpinnings have not eroded over time. When we reverse our statutory interpretations, we most often point to subsequent legal developments-"either the growth of judicial doctrine or further action taken by Congress"-that have removed the basis for a decision.
Patterson,
And second, nothing about
Brulotte
has proved unworkable. See,
e.g.,
Patterson,
IV
Lacking recourse to those traditional justifications for overruling a prior decision, *2412 Kimble offers two different ones. He claims first that Brulotte rests on a mistaken view of the competitive effects of post-expiration royalties. He contends next that Brulotte suppresses technological innovation and so harms the nation's economy. (The dissent offers versions of those same arguments. See post, at 2415 - 2417.) We consider the two claims in turn, but our answers to both are much the same: Kimble's reasoning may give Congress cause to upset Brulotte, but does not warrant this Court's doing so.
A
According to Kimble, we should overrule Brulotte because it hinged on an error about economics: It assumed that post-patent royalty "arrangements are invariably anticompetitive." Brief for Petitioners 37. That is not true, Kimble notes; indeed, such agreements more often increase than inhibit competition, both before and after the patent expires. See id., at 36-40. As noted earlier, a longer payment period will typically go hand-in-hand with a lower royalty rate. See supra, at 2407. During the patent term, those reduced rates may lead to lower consumer prices, making the patented technology more competitive with alternatives; too, the lesser rates may enable more companies to afford a license, fostering competition among the patent's own users. See Brief for Petitioners 38. And after the patent's expiration, Kimble continues, further benefits follow: Absent high barriers to entry (a material caveat, as even he would agree, see Tr. of Oral Arg. 12-13, 23), the licensee's continuing obligation to pay royalties encourages new companies to begin making the product, figuring that they can quickly attract customers by undercutting the licensee on price. See Brief for Petitioners 38-39. In light of those realities, Kimble concludes, "the Brulotte per se rule makes little sense." Id., at 11.
We do not join issue with Kimble's economics-only with what follows from it. A broad scholarly consensus supports Kimble's view of the competitive effects of post-expiration royalties, and we see no error in that shared analysis. See
id.,
at 13-18 (citing numerous treatises and articles critiquing
Brulotte
). Still, we must decide what that means for
Brulotte
. Kimble, of course, says it means the decision must go. Positing that
Brulotte
turned on the belief that post-expiration royalties are always anticompetitive, he invokes decisions in which this Court abandoned antitrust precedents premised on similarly shaky economic reasoning. See Brief for Petitioners 55-56 (citing,
e.g.,
Leegin Creative Leather Products, Inc. v. PSKS, Inc.,
If
Brulotte
were an antitrust rather than a patent case, we might answer both questions as Kimble would like. This Court has viewed
stare decisis
as having less-than-usual force in cases involving the Sherman Act. See,
e.g.,
Khan,
But Brulotte is a patent rather than an antitrust case, and our answers to both questions instead go against Kimble. To begin, even assuming that Brulotte relied on an economic misjudgment, Congress is the right entity to fix it. By contrast with the Sherman Act, the patent laws do not turn over exceptional law-shaping authority to the courts. Accordingly, statutory stare decisis -in which this Court interprets and Congress decides whether to amend-retains its usual strong force. See supra, at 2409. And as we have shown, that doctrine does not ordinarily bend to "wrong on the merits"-type arguments; it instead assumes Congress will correct whatever mistakes we commit. See supra, at 2408 - 2409. Nor does Kimble offer any reason to think his own "the Court erred" claim is special. Indeed, he does not even point to anything that has changed since Brulotte -no new empirical studies or advances in economic theory. Compare, e.g., Halliburton, 573 U.S., at ----, 134 S.Ct., at 2409-2411 (considering, though finding insufficient, recent economic research). On his argument, the Brulotte Court knew all it needed to know to determine that post-patent royalties are not usually anticompetitive; it just made the wrong call. See Brief for Petitioners 36-40. That claim, even if itself dead-right, fails to clear stare decisis 's high bar.
And in any event,
Brulotte
did not hinge on the mistake Kimble identifies. Although some of its language invoked economic concepts, see n. 4,
supra,
the Court did not rely on the notion that post-patent royalties harm competition. Nor is that surprising. The patent laws-unlike the Sherman Act-do not aim to maximize competition (to a large extent, the opposite). And the patent term-unlike the "restraint of trade" standard-provides an all-encompassing bright-line rule, rather than calling for practice-specific analysis. So in deciding whether post-expiration royalties comport with patent law,
Brulotte
did not undertake to assess that practice's likely competitive effects. Instead, it applied a categorical principle that all patents, and all benefits from them, must end when their terms expire. See
Brulotte,
*2414 Kimble's real complaint may go to the merits of such a patent policy-what he terms its "formalis[m]," its "rigid[ity]", and its detachment from "economic reality." Brief for Petitioners 27-28. But that is just a different version of the argument that Brulotte is wrong. And it is, if anything, a version less capable than the last of trumping statutory stare decisis . For the choice of what patent policy should be lies first and foremost with Congress. So if Kimble thinks patent law's insistence on unrestricted access to formerly patented inventions leaves too little room for pro-competitive post-expiration royalties, then Congress, not this Court, is his proper audience.
B
Kimble also seeks support from the wellspring of all patent policy: the goal of promoting innovation. Brulotte, he contends, "discourages technological innovation and does significant damage to the American economy." Brief for Petitioners 29. Recall that would-be licensors and licensees may benefit from post-patent royalty arrangements because they allow for a longer payment period and a more precise allocation of risk. See supra, at 2407. If the parties' ideal licensing agreement is barred, Kimble reasons, they may reach no agreement at all. See Brief for Petitioners 32. And that possibility may discourage invention in the first instance. The bottom line, Kimble concludes, is that some "breakthrough technologies will never see the light of day." Id., at 33.
Maybe. Or, then again, maybe not. While we recognize that post-patent royalties are sometimes not anticompetitive, we just cannot say whether barring them imposes any meaningful drag on innovation. As we have explained, Brulotte leaves open various ways-involving both licensing and other business arrangements-to accomplish payment deferral and risk-spreading alike. See supra, at 2408. Those alternatives may not offer the parties the precise set of benefits and obligations they would prefer. But they might still suffice to bring patent holders and product developers together and ensure that inventions get to the public. Neither Kimble nor his amici have offered any empirical evidence connecting Brulotte to decreased innovation; they essentially ask us to take their word for the problem. And the United States, which acts as both a licensor and a licensee of patented inventions while also implementing patent policy, vigorously disputes that Brulotte has caused any "significant real-world economic harm." Brief for United States as Amicus Curiae 30. Truth be told, if forced to decide that issue, we would not know where or how to start.
Which is one good reason why that is not our job. Claims that a statutory precedent has "serious and harmful consequences" for innovation are (to repeat this opinion's refrain) "more appropriately addressed to Congress." Halliburton, 573 U.S., at ----, 134 S.Ct., at 2413. That branch, far more than this one, has the capacity to assess Kimble's charge that Brulotte suppresses technological progress. And if it concludes that Brulotte works such harm, Congress has the prerogative to determine the exact right response-choosing the policy fix, among many conceivable ones, that will optimally serve the public interest. As we have noted, Congress legislates actively with respect to patents, considering concerns of just the kind Kimble raises. See supra, at 2410. In adhering to our precedent as against such complaints, we promote the rule-of-law values to which courts must attend while leaving matters of public policy to Congress.
*2415 V
What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: "Spider-Man," p. 13 (1962) ("[I]n this world, with great power there must also come-great responsibility"). Finding many reasons for staying the stare decisis course and no "special justification" for departing from it, we decline Kimble's invitation to overrule Brulotte .
For the reasons stated, the judgment of the Court of Appeals is affirmed.
It is so ordered.
Justice ALITO, with whom THE CHIEF JUSTICE and Justice THOMAS join, dissenting.
The Court employs
stare decisis,
normally a tool of restraint, to reaffirm a clear case of judicial overreach. Our decision in
Brulotte v. Thys Co.,
I
A
The Patent Act provides that a patent grants certain exclusive rights to the patentee and "his heirs or assigns" for a term of 20 years.
Whatever the merits of this economic argument, it does not represent a serious attempt to interpret the Patent Act. A licensing agreement that provides for the payment of royalties after a patent's term expires does not enlarge the patentee's monopoly or extend the term of the patent. It simply gives the licensor a contractual right. Thus, nothing in the text of the Act even arguably forbids licensing agreements that provide for post-expiration royalties.
Brulotte was thus a bald act of policymaking. It was not simply a case of incorrect statutory interpretation. It was not really statutory interpretation at all.
B
Not only was
Brulotte
based on policymaking, it was based on a policy that is difficult to defend. Indeed, in the intervening 50 years, its reasoning has been soundly refuted. See,
e.g.,
10 P. Areeda & H. Hovenkamp, Antitrust Law: An Analysis of Antitrust Principles and Their Application ¶ 1782c.3, pp. 554-556 (3d ed. 2011); See & Caprio,
*2416
The Trouble with
Brulotte
: The Patent Royalty Term and Patent Monopoly Extension,
Brulotte
misperceived the purpose and effect of post-expiration royalties. The decision rested on the view that post-expiration royalties extend the patent term by means of an anti-competitive tying arrangement. As the Court understood such an arrangement, the patent holder leverages its monopoly power during the patent term to require payments after the term ends, when the invention would otherwise be available for free public use. But agreements to pay licensing fees after a patent expires do not "enlarge the monopoly of the patent."
The economics are simple: Extending a royalty term allows the parties to spread the licensing fees over a longer period of time, which naturally has the effect of reducing the fees during the patent term. See ante, at 2407. Restricting royalty payments to the patent term, as Brulotte requires, compresses payment into a shorter period of higher fees. The Patent Act does not prefer one approach over the other.
There are, however, good reasons why parties sometimes prefer post-expiration royalties over upfront fees, and why such arrangements have pro-competitive effects. Patent holders and licensees are often unsure whether a patented idea will yield significant economic value, and it often takes years to monetize an innovation. In those circumstances, deferred royalty agreements are economically efficient. They encourage innovators, like universities, hospitals, and other institutions, to invest in research that might not yield marketable products until decades down the line. See Brief for Memorial Sloan Kettering Cancer Center et al. as
Amici Curiae
8-12. And they allow producers to hedge their bets and develop more products by spreading licensing fees over longer periods. See
ibid
. By prohibiting these arrangements,
Brulotte
erects an obstacle to efficient patent use. In patent law and other areas, we have abandoned
per se
rules with similarly disruptive effects. See,
e.g.,
Illinois Tool Works Inc. v. Independent Ink, Inc.,
The majority downplays this harm by insisting that "parties can often find ways around Brulotte ." Ante, at 2408. But the need to avoid Brulotte is an economic inefficiency in itself. Parties are not always aware of the prohibition-as this case amply demonstrates. And the suggested alternatives do not provide the same benefits as post-expiration royalty agreements. For instance, although an agreement to amortize payments for sales during the patent term would "bring down early outlays," the Court admits that such an agreement might not reflect the parties' risk preferences. Ante, at 2408. Moreover, such an arrangement would not necessarily yield the same amount of total royalties, particularly for an invention or a medical breakthrough that takes decades to develop into a marketable product. The sort of agreements that Brulotte prohibits would allow licensees to spread their costs, while also allowing patent holders to capitalize on slow-developing inventions.
*2417 C
On top of that, Brulotte most often functions to upset the parties' expectations.
This case illustrates the point. No one disputes that, when "negotiating the settlement, neither side was aware of Brulotte ." Ante, at 2406. Without knowledge of our per se rule, the parties agreed that Marvel would pay 3% in royalties on all of its future sales involving the Web Blaster and similar products. If the parties had been aware of Brulotte, they might have agreed to higher payments during the patent term. Instead, both sides expected the royalty payments to continue until Marvel stopped selling toys that fit the terms of the agreement. But that is not what happened. When Marvel discovered Brulotte, it used that decision to nullify a key part of the agreement. The parties' contractual expectations were shattered, and petitioners' rights were extinguished.
The Court's suggestion that some parties have come to rely on Brulotte is fanciful. The Court believes that there is a "reasonable possibility that parties have structured their business transactions in light of Brulotte ." Ante, at 2410. Its only support for this conclusion is Marvel's self-serving and unsupported assertion that some contracts might not specify an end date for royalties because the parties expect Brulotte to supply the default rule. To its credit, the Court stops short of endorsing this unlikely prediction, saying only that "uncertainty on this score cuts in Marvel's direction." Ante, at 2410.
But there is no real uncertainty. "[W]e do not know" if Marvel's assertion is correct because Marvel has provided no evidence to support it.
II
In the end,
Brulotte
's only virtue is that we decided it. But that does not render it invincible.
Stare decisis
is important to the rule of law, but so are correct judicial decisions. Adherence to prior decisions " 'promotes the evenhanded, predictable, and consistent development of legal principles, fosters reliance on judicial decisions, and contributes to the actual and perceived integrity of the judicial process.' "
Pearson v. Callahan,
Our traditional approach to stare decisis does not require us to retain Brulotte 's per se rule. Brulotte 's holding had no basis in the law. Its reasoning has been thoroughly disproved. It poses economic barriers that stifle innovation. And it unsettles contractual expectations.
*2418
It is not decisive that Congress could have altered
Brulotte
' s rule. In general, we are especially reluctant to overturn decisions interpreting statutes because those decisions can be undone by Congress. See,
e.g.,
John R. Sand & Gravel Co. v. United States,
As an initial matter, we do not give super-duper protection to decisions that do not actually interpret a statute. When a precedent is based on a judge-made rule and is not grounded in anything that Congress has enacted, we cannot "properly place on the shoulders of Congress" the entire burden of correcting "the Court's own error."
Girouard v. United States,
The Court says that it might agree if Brulotte were an antitrust precedent because stare decisis has "less-than-usual force in cases involving the Sherman Act." Ante, at 2412. But this distinction is unwarranted. We have been more willing to reexamine antitrust precedents because they have attributes of common-law decisions. I see no reason why the same approach should not apply where the precedent at issue, while purporting to apply a statute, is actually based on policy concerns. Indeed, we should be even more willing to reconsider such a precedent because the role implicitly assigned to the federal courts under the Sherman Act has no parallel in Patent Act cases.
Even taking the Court on its own terms,
Brulotte
was an antitrust decision masquerading as a patent case. The Court was principally concerned with patentees improperly leveraging their monopoly power. See
The Court also places too much weight on Congress' failure to overturn
Brulotte
. We have long cautioned that "[i]t is at best treacherous to find in congressional silence alone the adoption of a controlling rule of law."
Girouard,
Passing legislation is no easy task. A federal statute must withstand the "finely wrought" procedure of bicameralism and presentment.
INS v. Chadha,
* * *
A proper understanding of our doctrine of stare decisis does not prevent us from reexamining Brulotte. Even the Court does not defend the decision on the merits. I would reconsider and overrule our obvious mistake . For these reasons, I respectfully dissent.
Petitioner Robert Grabb later acquired an interest in the patent. For simplicity, we refer only to Kimble.
In
Brulotte,
the patent holder retained ownership of the patent while licensing customers to use the patented article in exchange for royalty payments. See
See,
e.g.,
Scheiber v. Dolby Labs., Inc.,
The only legal erosion to which Kimble gestures is a change in the treatment of patent tying agreements-
i.e.,
contracts conditioning a licensee's right to use a patent on the purchase of an unpatented product. See Brief for Petitioners 43. When
Brulotte
was decided, those agreements counted as
per se
antitrust violations and patent misuse; now, they are unlawful only if the patent holder wields power in the relevant market. See Act of Nov. 19, 1988, § 201,
Reference
- Full Case Name
- Stephen KIMBLE Et Al., Petitioners v. MARVEL ENTERTAINMENT, LLC, Successor to Marvel Enterprises, Inc.
- Cited By
- 286 cases
- Status
- Published