Dunlap Codding Director Jordan A. Sigale Quoted in Articles Analyzing the U.S. Supreme Court’s Ruling in Kimble v. Marvel
Jordan A. Sigale was quoted in Donna Young’s recent article in Scrip Intelligence, “Patent ‘superpowers’ time limits upheld: Biopharma implications.” Young wrote that Kimble v. Marvel “may help patent holders and those that enter into licensing rights deals, including biopharmaceutical makers, better understand and be more aware of a nearly half-century old case law rule.”
The U.S. Supreme Court, in a split decision, declined to overturn the 1964 standard set in Brulotte v. Thys, which ruled that patent holders cannot demand royalties for the use of their inventions after the patent terms have expired.
Sigale said, “Big biopharmaceutical firms are well-represented in patent law and intellectual property matters, so they already know their way around the Brulotte rule….If anything, the Supreme Court’s ruling in the Marvel case makes it clearer the Brulotte rule is narrow and that there are ways to draft around it….But for those who are unsophisticated about Brulotte, the opinion is unfortunate….It would be much better to knock out this rule. It doesn’t make economic sense…and any standard that gives the advantage to those who can afford the best legal representation is bad for society.”
Ryan Davis, writing for Law360, on June 22, 2015, also quoted Sigale. Davis wrote, “The Kimble case arose because neither party knew about the [Brulotte] rule when Marvel agreed to license Kimble’s patent for use in a Spider-Man Web Blaster toy in perpetuity.” Sigale was quoted as saying, “The decision explains that the Brulotte rule really is as narrow as we thought it was….If you make it clear there are no royalties for the patent after it expires, you can do anything you want.”
“Sigale said it was helpful that the court expressly gave its blessing to later payments of royalties accrued during the life of the patent,” said Davis. Sigale said, “Before today, people were a little nervous that the court would say that’s just putting form over substance.”