Sephen Kimble, the inventor of Web Shooter(a toy that let kids pretend they could shoot spider webs), has been granted a case review by the Supreme Court. Kimble patented the toy in 1990 and then approached Marvel to license the rights to the toy but Marvel refused.
When a different manufacturer released a similar toy, Stephen sued for patent infringement.
Stephen reached a settlement with Marvel for 3 percent of product sales. The settlement amounted to a considerable 6 million dollars by 2010, which was when the patent expired.
According to THR:
when Marvel licensed the rights to the Web Blaster to Hasbro, a disagreement over royalties erupted. Kimble made claims of how the toys were packaged with other role-play items like Spider-Man masks, and Marvel filed counterclaims.
Eventually, the dispute went up to the 9th Circuit Court of Appeals, which, in July 2013, gave Marvel a victory and relief from ongoing royalty payments thanks to Brulotte v. Thys Co., a 1964 Supreme Court decision, which forbids patent holders from collecting royalties after the expiration date of the patent.
In his petition for cert, Kimble wanted the Supreme Court to directly address this past decision, potentially overruling it as unsound, the “product of a bygone era.”
Now that the Supreme Court has chosen — over the solicitor general’s advice — to take the review, it will be considering whether preventing patent holders from collecting post-patent royalties makes sense. The standard was originally adopted so that patent holders couldn’t extend a monopoly by using their leverage in the early years of a patent’s issuance.
As much as the case entails the Hollywood cash machine known as merchandising, and as exciting as it is (for some lawyers) to consider progress standards in having limited intellectual property terms, the case could become a vehicle for the justices to debate whether shifting times necessitate an overhaul of past decisions. Marvel has argued that Brulotte was a “narrow rule,” that criticisms don’t warrant 50 years of settled patent misuse law and that justifications for reconsideration don’t warrant a departure from previous precedent. The Supreme Court will consider that. Then again, the justices might just be fond of Spider-Man.