Guest Post by Prof. Ghosh – Kimble v. Marvel: Exorcising the Spirit of Justice Douglas

Shubha Ghosh is the Vilas Research Fellow & George Young Bascom Professor in Business Law at the University of Wisconsin Law School.  He is currently serving as the inaugural AAAS Science, Technology, and Policy Fellow at the Federal Judicial Center in Washington, D.C.

I attended the oral arguments on March 31 in the Kimble v Marvel case, in which the Court considers whether to overrule Brulotte v. Thys. A 1964 precedent authored by Justice Douglas, the Brulotte decision employs an amalgam of preemption and patent misuse analysis to hold that post-expiration royalty payments for patent licensing are invalid.

Judging from the oral arguments, the Court is grappling with two issues. The first is that of stare decisis. The second is what standard should replace the per se rule articulated in Brulotte if it is overruled.

Stare Decisis and Living Economists

The divisions on the Court parallel that of Leegin v Creative Products, a 2007 decision in which the Court overruled the 95 year old per se rule against minimum resale price maintenance. The Court was split five to four with Justices Kennedy writing for Justices Roberts, Thomas, Scalia, and Alito. Justice Breyer wrote in dissent with Justices Ginsburg, Souter, and Stevens signing onto his defense of precedent.

During the Kimble oral arguments, Justice Breyer defended Brulotte with an elaborate hypo involving a patent owner that locks in all potential licensees with obligations for royalty payments going beyond the term of the patent. His point: contracts can extend the exclusivity of a patent beyond its limited time. Questioning from Justices Sotomayor and Kagan suggested that they may follow the reasoning of their predecessors Justices Souter and Stevens from the Leegin decision. Justice Sotomayor wondered why changes in the viewpoint of economists should guide precedent. “What if fifty years from now economists agree that Brulotte was correct?,” she asked. Justice Kagan adopted a similar tack by asking petitioners what problems Brulotte caused that would require overruling. Even if a bad rule, she implied, knowledgeable parties can readily contract around it.

My prediction is that the final vote will parallel that in Leegin for an overruling of Brulotte. Whatever one thinks of the result, the opinion itself is not clearly reasoned with a mix of preemption and patent misuse analysis. The problem with Brulotte is that the 1979 Aronson v. Quick Point decision tempers its reasoning by allowing parties flexibility in contracting over patentable subject matter.

While there has been much criticism from economists about the rationality of the Brulotte per se rule, from a transactional perspective the real problem is that the rule provides a trap for the unwary. Justice Scalia pointed out that the beneficiaries of the rule are licensees who knowingly enter into licenses with post-expiration payment obligations hoping that the licensor does not know of Brulotte. Such seemed to be the case in the Kimble case. Such opportunistic licensees can obtain lower royalty payments knowing that any post expiration obligation would be invalid. The Brulotte rule can be transacted around or used opportunistically. In order to avoid the latter possibility, the decision should be overruled.


After Brulotte: A Reasonable Rule or a Rule of Reason?

Harder to predict is how the Justices will overrule Brulotte. The Court had an easier choice in Leegin which was a pure antitrust case. Once the Court rejects a per se rule, it is replaced with the rule of reason in antitrust cases. Petitioners were advocating a rule of reason approach as has been adopted in patent misuse cases. Justice Sotomayor questioned why antitrust principles should be introduced into patent law. If there is an antitrust problem, the licensee can just bring an antitrust claim, she suggested. Justice Breyer raised the specter of administration costs that a rule of reason approach would imply. Other justices were less vocal about what could replace Brulotte.

It is true that Brulotte is not an antitrust case. But patent misuse tracks antitrust law (for example, see the treatment of tying as misuse under 35 USC 271(d)). So the petititoners’ advocating for a rule of reason approach is appropriate and perfectly consistent with any accompanying antitrust claims to a defense of patent infringement.

What is interesting to me is how the Court might address issues of preemption. The Court has not considered an intellectual property preemption cases since 1989 even though the issue has been percolating in the lower courts in the context of licensing and contract. Part of me hopes that the Court resolves the lower court’s treatment of preemption. Realistically, neither the briefs nor the argument address the preemption issue head on. The issue should await more careful consideration of the relationship between patents and contracts.

However, if the Court does address the preemption issue, then the 1979 Aronson issue should be its guide. In that case, the Court addressed the validity of an escalator clause which created two tiers of royalties based on whether a patent was granted on an invention. When the licensee ended up paying royalties for an invention which was found to be unpatentable, it raised preemption of the escalator clause under Brulotte. The reasoning was straightforward: if royalties after patent invalidity are preempted because of conflict with the limited terms of patents, then royalties on an invention for which a patent was denied should also be in conflict. The licensee reasoned that if such contracts were upheld, an inventor would not need to seek a patent since contract could provide equivalent protection.

The Court correctly rejected the reasoning. Patents offer benefits beyond contract. Furthermore, contracting supplements patenting and does not interfere with it. So the escalator clause was upheld. But Justice Blackmun in concurrence wondered about the conflict with Brulotte. As he wrote in 1979:

[As in Brulotte], Mrs. Aronson has used the leverage of her patent application to negotiate a royalty contract which continues to be binding even though the patent application was long ago denied. The Court… asserts that her leverage played “no part” with respect to the contingent  agreement to pay a reduced royalty if no patent issued within five years. Yet it may well be that Quick Point agreed to that contingency in order to obtain its other rights that depended on the  success of the patent application. The parties did not apportion consideration in the neat fashion the Court adopts.

Justice Blackmun reconciles the two cases by saying that Brulotte is solely about leveraging that allows the patent owner to extend the patent term through contract. Perhaps a better reconciliation would have been to temper the leveraging analysis, grounded in patent misuse, through application of a rule of reason analysis. That course should be the one the Court adopts in Kimble after it overrules the pre se rule of Brulotte.

71 thoughts on “Guest Post by Prof. Ghosh – Kimble v. Marvel: Exorcising the Spirit of Justice Douglas

  1. 8

    I am a little concerned with the Court overturning established precedent with 5-4 decisions. What does that say about how our judicial system honors stare decisis.
    It would appear more logically consistent to me that if the Court cannot assemble a Super Majority to support overturning established precedent, the Court should defer to precedent.

    1. 8.1

      Charles, I hear you.

      Now what do you say to Judge Rich who overturned established precedent of nearly 100 years in State Street Bank with just a panel decision?

      That Judge ran amok from the time he took the bench until Heaven made him retire. He overturned dozens of well established precedents. The man, after all, was a patent god, and he acted like one.

    2. 8.2

      Respectfully Charles, I reject your misnomer regarding pure numbers of Justices on any decision, be it changing precedent or establishing precedent.

      You fall to a type of “authority” fallacy, as our system is NOT set up to differentiate “properness” based on vote totals. A decision of 9-0 is NO more “correct” than a decision of 5-4, or vice versa.

      What you impute this to say is likewise equally a fallacy. There is NO “more logically consistent” expressly because our court system was never set up to reflect the fallacy that you are ascribing to.

      Sorry good sir, but it is time to check yourself.

  2. 7

    link to


    Government had a right to raise a new issue on appeal, which decided the case – which was whether a refusal to terminate a inter partes reexamination was a final agency decision; and

    The refusal to terminate was not a final agency decision.

    Comment: since inter partes reexaminations are history, this only brings them into line with recent authority that decisions under 315 in IPRs are not reviewable until after final decision. See, e.g., St. Jude Medical. However, the reasoning of the two panels is entirely different.

  3. 6

    Lesson: To Hades with the “meeting of minds”…. Govt will step in and dictate to the two parties what should be done.

    The arbitrary whim of the Courts to vary a contractual transaction (read interfere with) will force licensors to demand a lump sum rather than enter into the natural agreement they otherwise would have been able to secure, i.e. payment over a term the licensee can afford.

    Now the licensee will likely need to borrow money… banks will make some dough.. in the end unnatural transactional/business arrangements had to be made to compensate for/comply with Govt interference. What a waste of energy and resources.

    Clap…, clap…, clap.

    1. 6.1

      Anon, do you agree in principle with the per seI/i> rule that a patentee should NOT be able to sue for infringements first occurring after the patent has expired?


          Which is rather a red herring, as any suit for non-payment of mutually agreed to payment terms would be a suit for breach of contract as oppose to a suit for infringement.

          Apparently, some believe that just because the Emporer thinks he has clothes on, everyone should pretend that he his not flapping in the breeze…

          (Pretty much anything Douglas touched was surely not turned to gold, and should be looked at again with eyes wide open)


            anon, but you just agree that the patentee has no right to collect royalties for infringement that occur after the patent has expired.

            A fundamental rule of contract law is that there needs to be consideration. What is the licensee getting for his payment of royalties for post-expiration sales or uses?


              Timing of payments is separate Ned.

              This is abundantly clear.

              Try to read what I actually type in my posts.

              (Hint: to the extent that Douglas, known as being anti-patent, infected Brulotte with an over-reach against anything “patent,” that evi1 needs to be exorcised.

              Pay attention.


                And, anon, what do you think Brulotte held?

                The case certainly did not object to deferred payments.

    2. 6.2

      meeting of the minds

      Bah, according to one Mr. Heller, the notion of Freedom to Contract no longer exists, and patents (including Spider-man webblaster patents) are simply too dangerous to let private agreements take hold – they must be controlled because of their public nature…

      Lol – oops.


          Nice strawman.

          How about an example that is not such an obvious trick and that relates to the actual topic?



          If you actually own it, I’ll buy it from you, I propose to pay you $100 for it every year until I die.

          Let’s agree.

          Can you sue me if I refuse to pay you … after the bridge falls down (due to natural causes) in 60 years? I mean if the bridge no longer exists what would I be paying you for?

          (as strawish as the fake man submitted as a non-straw man…)


            Anon2, I counter with this proposal. You pay me $1bn per year for the next 10 years. I promise to deliver good title to the Brooklyn Bridge within that period. If I do not deliver, I will return to you exactly $10 billion. If I do deliver, I return to you the excess of the monies you transferred to me less my expenses for obtaining title to the Bridge.

            Of course, I keep the interest.


              Interesting dilemma as whether or not one had the money, one could not be sure you 1.would act to fulfil the contract (to deliver on your promise to confer title) or 2. would be competent/able to deliver on it.

              But if both parties expect for the promises to be pursued and possibly fulfilled there is consideration for payment, there would be a meeting of the minds, and the parties should be bound to it. It would be imprudent on to allow you to keep the interest but that is beside the point.

              This example does not however address an exchange, for conduct within one short period of time, with payment over a much longer (and possibly undetermined) period of time.

              If B has a patent, with only 5 years left on it, but B promises not to sue A over the next five years, and not compete with A over the subsequent 20, why not reach an agreement which includes payment by A to B for 25 years? What in principle makes it right for the government to interfere?

              If now instead of promising not to compete with A over the next 20 years (after expiry) B simply “gives” A a lower yearly rate (and hence total due) to pay B for not suing A. (As it turns out A can only afford a lower rate). Now, A is paying B over 25 years at a lower rate in exchange for B not suing A over the next five years. Again, A does not want to go to a bank if A can make a deal with B…. A does not want the government to step in on A’s behalf…. A wants to be able to make a deal with B.

              Who are we… or the govt to say such a deal is wrong and should be taken away from its signatories?


                Anon2, I believe that Brulotte does not extend to royalties for consideration other than patents.

                Thus, if the contract were structured properly, and did not mix considerations, there would be no problem with royalties for a non compete after a patent expires so long as the royalties for activities beyond the patent term were not included.

                It simply is a matter of structuring the contract.

                Which requires a competent licensing/patent attorney.

                Which is why, perhaps, the Supreme Court will overrule Brulotte because they do not like patent attorneys, especially having so often read the briefs of the AIPLA, IPO and their ilk that are written by patent attorneys who tend to have an insular view.


                Ned does not agree that private parties should have any rights to come to a private agreement over private property (the only logical conclusion from his quip that Freedom to Contract no longer exists).

                Or perhaps he thinks that the subject of the contract is too dangerous to leave to private parties (and thus, is some type of public right).

                It’s hard to tell why Ned is so strident on this.

                1. anon, at times I think you lack a basic legal education. One simply cannot be saying the things you say otherwise.

                  1. You agree one does not have a right to patent royalties for acts after expiration.

                  2. But you insist regardless that one can contract for the payment of patent royalties for acts post-expiration.

                  3. When I ask, what is the consideration —

                  4. You begin attacking me for denying one’s freedom of contract.

                  I simply do not see the Supreme Court overruling Brulotte unless it is because they do not like Douglas, as the banner seems to indicate might be the motive.

                2. More straw and down right deception from you Ned.

                  Your point 2 is plainly a misharacterization. I have NEVER indicated that payment post is for acts post.

                  Your point 3 is moot, as this is based on your strawman misdirections
                  Your point 4 is a mischaracterization as my comment is NOT an attack, and the Freedom of Contract denial IS from you (and it is you that appears to lack a basic legal education for making such a silly statement).

                  Above all this, you STILL do not address the points that I have actually made and put on the table.

                  Why all the games Mr. Heller? Is it because the private/public dichotomy you have created is embarrassing given your active case to the contrary of what you are trying to promote when it comes to the independent payment term and freedom to contract thereof?

                  Lots of (static) noise from you – no discernible signal…

                3. anon, Your point 2 is plainly a misharacterization. I have NEVER indicated that payment post is for acts post.

                  Which is exactly the problem anon. Brulotte does not have anything to do with royalties pre-expiration, and does not care whether these are spread out over time. So long a royalty does not cover any act occurring after expiration, Brulotte is indifferent.

                  You seem to not understand the case even though I quote you the words from it and tell you again and again what the holding is. Have you read the case yet?

                4. Ned,

                  You are off in some fantasy land – appearantly you cannot be bothered to read what I have actually posted (nor the case and the thrust from Douglas that is rightly implicated by his anti-patent over reaches.

                  The case is NOT as indifferent as you seem to like to think.

    3. 6.3

      I don’t understand why contract law is relevant. You cannot contract around public policy in any area of law. To do otherwise is to rob Congress’s power to set patent policy.

      Henry v. A.B. D___ (1912) and the Button-Fastener Case (6th Cir, 1896) held that a patentee had the right to make tying arrangements because of freedom of contract. This line of reasoning is dead.

      1. 6.3.2

        Did you read the cases? I’m referring to the reasoning why tying was acceptable! Tying was acceptable was because of freedom of contract.


          Respectfully J, you have introduced a strawman and moved the goalposts to talk about tying, which is not the topic here.

          No one (except you) is arguing tying.

          Kindly return to the actual point under discussion.



          It’s not strawman, its reductio ad absurdem.

          If freedom of contract governs this situation, then freedom of contract would govern in other things like tying. Why don’t we incorporate anti-trust principles to tying? Tying would be allowed so long as there is no anti-trust effect.

          If you read Motion Picture, Scott Paper, and Zenith, you would see that the idea of freedom of contract (not just tying) is rejected.


            Your classification is in error.

            You have moved the argument, and moved it incorrectly.

            Please move it back.


              The treatise (thank you for the link) does NOT say the same thing.

              Just because a phrase is used, does not mean that you can move the goal posts from one item within that phrase to another.

              The tying aspect remains a strawman.

              Also, the article in fact weakens the view that this is somehow separate from anti-trust. See page 4. Even though the author attempts to say otherwise (page 9), the historical link cannot be denied.

              I will grant that the entire area of concern is more nuanced (and I would throw in real issues of today like the sales-dressed-as-licenses that most software masquerades under, as well as the “tied” areas of patent exhaustion (including exhaustion for things that self-replicate), but my particular point here is much much more constrained (hence the notion that your attempt to change the focal point is a strawman).

              Also, see page 10 of the article you provide: “obviously, though, this did not encompass the entire range of contractual terms that existed in patent transfers – this reinforces my point to your detriment.


              I have not said that there was no historical basis for freedom of contract on patents. I’m saying that it has been rejected for a 100 years by a long string of cases. That is the brief’s point, as well.

              Do you think Moy mentioned those cases about tying in an amicus brief about extending patent royalties for no reason? Read the next few sentences on page 10 and 11 and you’ll see that the same REASONING to reject tying was used to reject the extension of the patent term by contract. Brulotte is based on a long string of cases regarding patent law, not antitrust law.

              (By the way, I do appreciate the tone of our conversation, thank you!)



                I provided you a quote from the brief which shows that freedom of contract (as a whole) has explicitly NOT been rejected (the page 10 note, pointing out the concept covers many elements). You apply a too-global assumption because of some certain elements – elements I expressly am not talking about.

                Further, you attempt to deny (as did Moy) the origin of the Court’s reversal of “mind,” and that was due to the same historical facts of antitrust.

                I entreat you to not merely accept the brief at a surface level. What Moy wants is not necessarily what can be taken away – even from his own writing.


                Elements you are talking about… my post above asked the question, “why is contract law relevant?” It is irrelevant because you can only contract to restrict of make, use, or sell (during the patent term). There is no freedom of contract beyond that.

                I am starting at the surface of the brief because your interpretation of the brief is inconsistent with my reading of it. Obviously, the brief says, the Supreme Court didn’t cover all these aspects in two cases in 1910s, but subsequent cases made it clear that contracting beyond what is allowed in the statute is unenforceable. Brulotte, Moy states, is an unremarkable extension of this reasoning. What makes you think you can make money on a patent after it expires?

                What do you think that Moy wants? You realize this was a brief in support of Marvel.

  4. 5

    “Exorcising the Spirit of Justice Douglas.”

    I wonder if the conservative side of the Court will knee-jerk their views in reaction to the author of Brulotte?

  5. 4

    It is true that the Federal Circuit has tracked antitrust and patent law together, but it is completely wrong to do so. Supreme Court precedent has been clear–antitrust and patent law are two different areas of law. And if you think that the Supreme Court will be persuaded by what the Federal Circuit has done in the last 20 years, then I have ocean-front property in Arizona to sell you.

    I count Scalia and Roberts wanting to kill Brulotte, but I’m not sure about Thomas (who generally hates patents), Alito (who was silent), or Kennedy (I thought his questions seemed to be be with the liberal justices). If you listen to the oral argument, no one argues with Respondent or the Government when they are discussing patent law and the goals of the patent statute.

    1. 4.1

      Can you square this “we must treat patents differently” with the rest of the High Court’s drive NOT to treat patent law “differently”…?

      Or is this a Red Queen style of “different” when it hurts patentees and not different when that hurts patentees?

    2. 4.2

      Where in my post do I say, “we must treat patents differently”? It isn’t even a fair paraphrase.

      Two areas of law, two different considerations, two different rationales for the relevant rules. I am saying we must treat patents differently in the same manner that we have to treat lawyer ethics different than contracts.

      AIPLA wrote an excellent brief on the two differences. Read page 8 to about 14. link to

      1. 4.2.1

        Read again eBay.

        It is most definitely a fair comparison.

        Leastwise, according to the Supremes.

        That being said – thanks for the link and will read it shortly.

  6. 3

    Unlike Aronson, the settlement/license agreement in Kimble applied a single royalty rate to products covered by the patent, as well as products not covered by the patent, without any rationale. Consequently, post-expiration enforcement should fail under either a per se or rule of reason analysis and Kimble seems to be an inappropriate case for overruling Brulotte.

    Incidentally, tying remains a per se antitrust violation after the unanimous Independent Ink decision, which held that market power cannot be presumed by a patent, but must be alleged and proved. Section 271(d)(5) does not adopt rule of reason in place of the per se standard — it requires market power to deny infringement damages in tying situations.

    1. 3.1

      Let’s say I have a patent that expires in 3 years. Today as consideration for a license i take 4 promissory notes (negotiable instruments). Each note is payable at the end of each year. So I get payment on note one in year one, note two in year two, etc, etc until year 4. So by its terms the note 4 payable in year 4 is beyond the expiration date of the patent. Is note 4 void under Brulotte? or is note 4 good because it was tendered as consideration while the patent was still in force? If I am a subsequent BFP of note 4 does the result change?

      1. 3.1.1

        iwasthere, The cases where I personally was involved the agreement did not have a termination date for royalties, and the contention of the patentee was that he had a right to royalties forever so long as the patented product was being made and sold.

        This kind of agreement is drafted by general attorneys who seem to assume that royalties automatically end when a patent expires.

        Now, if an agreement required a payment of X for a full, paid up license, and the payment terms were spread over time, beyond the expiration period, I doubt that such an agreement would be construed as being in violation of Brulotte. That case reversed a lower court decision that allowed

        “royalties to be collected which accrued after the last of the patents incorporated into the machines had expired.”

        Brulotte v. Thys Co., 379 US 29 at 30.


          Um Ned, you do realize that citing to the very case under discussion as no longer being needed is not at all persuasive, right?

  7. 2

    Trap for the unwary….

    What about,

    Ignorance of the law is no excuse?

    This kind of thinking and reasoning is absolutely incredible — to overturn a case because some lawyers might not be aware of it?

      1. 2.1.2

        As I mentioned before, Dennis, I have often seen the issue in patent licenses that I have reviewed and in every case the license was written by a non-patent attorney.

        I have also litigated at least two cases where Brulotte was at issue.

        I don’t believe any patent attorney who is actively involved in licensing would not know the case.

        At least in California, if an attorney is representing a client in an area of law of which he is not familiar, he is supposed to consult with an experienced attorney in that field. I don’t how often I have reviewed completely laughable agreements drafted by general attorneys where IP is being assigned/licensed or whatever. There simply is no excuse in my mind for these general attorneys not to consult patent attorneys or some other expert in licensing.

    1. 2.2

      Taking it a bit further, wouldn’t overturning the case just create a trap for the wary? Thousands of lawyers and tens of thousands of licenses have taken the rule into account over the last 50 years. It has relatively unimportant consequence in most cases, but nevertheless changed the contours of many many agreements. Why trap the wary out of concern for the unwary? Creating traps is really a job for Congress, not the Courts.

      1. 2.2.1

        Don’t the courts create traps all the time? You wrote a patent application several years ago when “concrete, tangible, and useful” was the 35 USC 101 test. Your application and claims met the “concrete, tangible, and useful” test. Today, your application is invalid because it doesn’t meet the Alice test. The courts told you “concrete, tangible, and useful” was the 35 USC 101 test, so that’s what you followed. But the courts changed the standard. That seems like a trap.

        And that happens all the time.



          You mean Judge Rich as in State Street Bank?

          Let us be clear. The only thing about the State Street Bank era was that the Supreme Court was negligent in not taking certiorari at the time. The case represented a big departure from controlling Supreme Court precedent and was irreconcilable with Benson.

          Let us say that patent attorneys got away with patenting the unpatentable for a very long time, and that is principally the fault of the Federal Circuit.


            I agree (in hindsight) that the Supreme Court should have taken certiorari in State Street.

      2. 2.2.2

        Why trap the wary out of concern for the unwary?

        It’s not really a symmetric situation. When “wary” attorneys take Brulotte into account, while they may not end up with the agreement they would have preferred, both parties get the full benefit of the bargain. When an unwary attorney doesn’t know of Brulotte, and agrees to unenforceable provisions, then one party is not going to get what he expected.

        Changing the rule of Brulotte wouldn’t “trap” anybody – those who already accounted for it would still get the deal they contracted for.


          DanH, that some attorneys do not know about the rule against perpetuities does not provide an excuse for overturning it.

          However, the movie Body Heat with William Hurt, relied on the incompetence of an attorney played by Hurt in drafting a will because he did not know about the rule against perpetuities, guaranteeing that the will he was hired to draft would be overturned in court.


            DanH, that some attorneys do not know about the rule against perpetuities does not provide an excuse for overturning it.

            It would if there were no good public policy reasons to have the rule in the first place. We shouldn’t have arcane provisions in the law just so that you and I can feel smug about our superior knowledge.

    2. 2.3

      This kind of thinking and reasoning is absolutely incredible — to overturn a case because some lawyers might not be aware of it?

      Leaving stare decisis aside for the moment, if the rule has no practical benefit, such that its only real impact is as a “trap for the unwary,” then this seems like a perfectly good reason to get rid of it. There’s no reason to retain unnecessary obstacles to clear and enforceable contracting.

      1. 2.3.1

        DanH, so you think that granting generics the right to seek FDA approval in exchange for post-expiration royalties is in the public interest?


          I said “if the rule has no practical benefit,” Ned. It might very well have public-policy benefits. All I’m saying is that if you come to a place where you can’t find a good reason for the rule, then it’s not crazy to ditch it because it trips up the unwary attorney.

          Regarding the generics issue, I’m no expert, but I suspect that whole area is rife with abuse, and have little doubt that a whole bunch of stuff that goes on there is against the public interest. I don’t think retaining the rule of Brulotte is going to fix that.


            DanH, I give the generic drug/post expiration royalties as one example of what might happen if Brulotte is overturned. All sorts of unforeseen license agreements might emerge to extend royalties beyond the expiration of a patent if the simple rule provided by Brulotte were not there.

            One cannot simply assume without evidence that there are no practical benefits with the rule of Brulotte. For one, the simplicity the rule avoids litigation as to whether a particular license agreement violates the antitrust laws and therefore is patent misuse. That is a benefit to society.


              Ned your silence is deafening.

              Clearly, the example you gave of something affecting PUBLIC safety and involving the FDA would both fall to a rule of reason and fail to explain your very non-private treatment of ALL patents and the private nature of contracts concerning such.

              Your (strident) view here does not square with your active case demanding that patents do not affect the public.

              I have asked you to address this point squarely several times now, and all that I have been given is dust kicking.

              And silence.

    3. 2.4

      So… you think ignorance of the law is no excuse, yet also think there’s no obligation for courts to make the law available to people at a reasonable cost?

      Seems like a trap for the poor.


          Ned, how can we not allow ignorance as an excuse if we don’t allow people to inform themselves on the law?

          To be clear: I’m not advocating for ignorance as an excuse. I’m pointing out how your argument regarding access to law is problematic.

          To be hyperbolic (but to show the problems): Suppose Congress passed a law, and you had to pay $10 million to get access to it. If you broke the law, you would go to jail for 5 years. Under your rule of law, you can go to jail: ignorance of the law is no excuse and reasonable access to the law isn’t required.



            Circa 500 BC, the people of Rome demanded that the laws be published that they know what they were. So the 10 basic laws of the Republic were published in the forum. By this simple act, the rule of law was born in Rome, and that bore a great deal of fruit for Western Civilization.

            Of course, people have to ultimately know what the law is in order that there be a rule of law. But that is why we have due process. One’s right to life, liberty and property cannot be denied without due process, that requires both notice and a full and fair opportunity to defend oneself.

            But that does not mean that everyone has a right to a lawyer, a Westlaw subscription, or a free lunch. Lawyers can charge their fees. Courts can charge their costs. And there is nothing about to process which would say this is illegal or a denial of due process.

            What you seen to be talking about is not law but “justice.” The latter is concept of equity that is concerned about fairness more than one is concerned about law. Thus I might agree with you that asking a pauper to consult a lawyer for tax advice and pay full freight would be slightly unfair; in the usual case, the pauper does not need a tax lawyer.

            But the Supreme Court has heard you to some extent in that we have court-appointed lawyers for criminal defendants, and proceedings in forma pauperis for the poor. I would agree that Pacer should provide low-cost services for indigents on a proven need for access the court documents. Beyond that, I am not convinced.

  8. 1

    Nice article.

    Re this: During the Kimble oral arguments, Justice Breyer defended Brulotte with an elaborate hypo involving a patent owner that locks in all potential licensees with obligations for royalty payments going beyond the term of the patent. His point: contracts can extend the exclusivity of a patent beyond its limited time.

    Is “elaborate” the right word here? Or is Breyer’s hypo more accurately criticized as “unlikely”? Was there any evidence presented to the Court on the frequency with which patentees attempt to leverage their patents with post-expiration royalties? Is it typical practice these days or has the existence of Brulette squelched such efforts?

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