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Spiderman Can't Save You From Settled Patent Law, Stare Decisis

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By Casey C. Sullivan, Esq. on June 24, 2015 11:21 AM

When Marvel Comics brought a super hero with them to the Supreme Court recently, they were hoping a pulp hero could help them defeat "outdated" patent rules. Spiderman's powers, however, were no match for stare decisis. As the Supreme Court ruled on Monday, stare decisis required them to uphold patent precedent, even if they thought, hypothetically, that it was wrongly decided.

In particular, Marvel was asking the Court to overrule Brulotte v. Thys Co., a 1964 case that applied a bright line prohibition on the payment of royalties after a patent had expired. Marvel wanted to continue an agreement where it paid royalties on certain toys -- particularly, one Spiderman figurine which shot foam string from its palm -- and urged the Court to reject what it thought was outdated economic reasoning behind the Brulotte rule. The High Court declined.

Brulotte's Bright Line Rule

Under Brulotte, a patent holder cannot collect royalties for the use of an invention once the patent has expired. It's a simple, straightforward rule, based on the idea that private contracts cannot extend "the patent monopoly beyond the patent period," even if only a single licensee is affected.

Marvel argued that the case simply didn't make economic sense anymore -- extending royalty agreements allows for greater predictability and income over time, allows initial payments to be lower, increasing use of new technology, and better allocates risks and rewards of commercializing inventions.

Stick With What You Know

Even if one accepts those arguments, the Supreme Court found, Brullotte stands. The opinion, written by Justice Kagan and joined by Scalia, Kennedy, Ginsburg, Breyer, and Sotomayor, was heavy on puns and stare decisis

The doctrine holds that the court must adhere to precedent in order to promote predictability and consistency and must be respected here, Kagan wrote. The ruling in the case highlights this court's recent emphasis on precedent, particularly in commercial laws. Over the last 13 months, the Court has thrice declined to overrule statutory cases, SCOTUSblog notes.

To overcome the "superpowered" doctrine of stare decisis, a case must be more than just wrongly decided; there must be a "superspecial" reason to overrule it. After all, Marvel may have discovered Brullotte late into its licensing agreements. Many others had planned their businesses around the rule, which recognizes that patents give inventors legal "superpowers," but only for a limited time.

Finally, in a bonus for comic book nerds and law review editors, Kagan demonstrated the proper way to Blue Book a comic strip:

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").

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