1-Hour Program

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Overview

On June 22, 2015, the U.S. Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, No. 13-720, which addressed whether a patent holder can charge royalties for the use of an invention after the underlying patent has expired.  In a 6-3 decision authored by Justice Elena Kagan, the Supreme Court declined to overrule its bright-line rule from Brulotte v. Thys Co., and confirmed that such royalties are prohibited.   

Specific topics covered by Michael G. Strapp and Joel E. Lehrer, both of Goodwin Procter LLP, will include: 

  • A review of the case law leading up to the decision.
  • A summary of the opinion, including:
    • the facts of the dispute and the underlying patent license agreement;
    • the arguments for and against overruling Brulotte, as presented by the parties and amici curiae; and
    • the Supreme Court’s reasoning for upholding Brulotte.
  • Tips for drafting licensing agreements to avoid the bright-line Brulotte rule.

Credit Details