WASHINGTON – Spider-Man’s latest adventure is taking him through the strange and mysterious world of patent law.
The Supreme Court was snarled in a web of legal arguments Tuesday over whether an inventor could keep collecting royalties on a Spider-Man toy even after his patent expired.
The dispute involves a popular Web Blaster toy that lets children shoot foam string from a glove, much like the web-shooting super hero.
Inventor Stephen Kimble’s claim turns on whether the court is willing to overrule a half-century-old case that says a licensing agreement cannot pay royalties once a patent ends.
After an hour of argument, it seemed most of the justices were not inclined to ditch long-standing precedent.
The case began when Kimble sold his patent on the toy to comic book giant Marvel Entertainment — a division of Walt Disney Co. — in 2001 in a deal that has paid him more than $6 million in royalties. But Marvel stopped making payments after the patent expired in 2010.
A federal appeals court “reluctantly” sided with Marvel, saying it was bound by the high court’s “unconvincing” 1964 case, Brulotte v. Thys Co., that forbids royalty payments after a patent expires.
Kimble’s lawyer, Roman Melnik, urged the justices to overrule the case, saying it is based on “outdated and misguided” assumptions, stifles competition and discourages innovation in the form of flexible licensing agreements.
But Justice Ruth Bader Ginsburg said it is well-known that licensing agreements can get around the restriction by making clear that any payments are for the period before a patent was granted.
“I don’t understand why this should be so troublesome,” she said.
Justice Elena Kagan suggested the parties could form a joint venture to get around the problem. She said Kimble had not shown any “special justification” for overturning an established case, such as that it’s “unworkable” or “utterly out of kilter.”
Melnik said many universities and other nonprofits are not always able to negotiate such agreements, especially when it is unclear how valuable early-stage technology will be in later years.
Justices Anthony Kennedy and Sonia Sotomayor both suggested it would be wiser to let Congress change patent laws.
“Congress is certainly aware of this ruling and has left it alone,” Kennedy said.
Marvel’s attorney, Thomas Saunders, took that as his cue to argue that “Congress would be the appropriate institution” to change the law and balance competing interests.
Chief Justice John Roberts seemed to be most open to overruling the 1964 case. While the court is usually reluctant to overturn its own decisions, Roberts ticked off several cases from the 1960s that the high court has since reversed.
“It’s a problem with the 60s,” Roberts said to laughter. He noted that economists “are almost unanimous in saying this is a very bad rule.”
Justice Department lawyer Malcolm Stewart, representing the Obama administration, argued that the case should remain intact because it favours “unrestricted public access to unpatented and previously patented inventions.”
A ruling in the case, Kimble v. Marvel Enterprises, 13-720, is expected by June.