US Supreme Court weighs sticky Spi­der-Man toy patent fight

The China Post - - INTERNATIONAL - BY SAM HANANEL

The lat­est adventure of Spi­derMan, the Amer­i­can comic book fic­tional su­per­hero, is tak­ing him through the strange and mys­te­ri­ous world of U.S. patent law.

The United States 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 will- ing 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 US$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 “un- con­vinc­ing” 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 As­so­ciate 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.

As­so­ciate 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.

As­so­ciate Jus­tices An­thony Kennedy and So­nia So­tomayor both sug­gested it would be wiser to let the U.S. Congress change patent laws.

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.

Jus­tice Depart­ment lawyer Mal­colm Ste­wart, rep­re­sent­ing the Obama ad­min­is­tra­tion, ar­gued that the case should re­main in­tact be­cause it fa­vors “un­re­stricted public ac­cess to un­patented and pre­vi­ously patented in­ven­tions.”

A rul­ing in the case is ex­pected by June.

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