Stephen Kimble v. Marvel Enterprises Inc.

This appeal calls on us to again construe the Supreme Court’s frequently-criticized decision in Brulotte v. Thys Co., 379 U.S. 29 , 85 S.Ct. 176 , 13 L.Ed.2d 99 (1964). In Brulotte , the Court held that a patent licensing agreement requiring a licensee to make royalty payments beyond the expiration date of the underlying patent was unenforceable because it represented an improper attempt to extend the patent monopoly. Id. at 30-33 , 85 S.Ct. 176 . We have previously noted that Brulotte has been read to require that any contract requiring royalty payments for an invention either after a patent expires or when it fails to issue cannot be upheld unless the contract provides a discount from the alternative, patent-protected rate. Zila, Inc. v. Tinnell, 502 F.3d 1014, 1021 (9th Cir.2007). We acknowledged that the Brulotte rule is counterintuitive and its rationale is arguably unconvincing. Id. at 1019-20 & n. 4. Nonetheless, recognizing that we are bound by Supreme Court authority and the strong interest in maintaining national uniformity on patent law issues, we have reluctantly applied the rule. Id. at 1020, 1022. We are compelled to do so again. Accordingly, we join our…