page_title: Kimble v. Marvel Entertainment, LLC
section_title: Dissent
hierarchical_section_title: Kimble v. Marvel Entertainment, LLC / Supreme Court ruling / Dissent
caption_attribution_description: Official 2007 portrait of U.S. Supreme Court Associate Justice Samuel Alito
context_page_description: Kimble v. Marvel Entertainment, LLC, 576 U.S. 446, is a significant decision of the United States Supreme Court for several reasons. One is that the Court turned back a considerable amount of academic criticism of both the patent misuse doctrine as developed by the Supreme Court and the particular legal principle at issue in the case. Another is that the Court firmly rejected efforts to assimilate the patent misuse doctrine to antitrust law and explained in some detail the different policies at work in the two bodies of law. Finally, the majority and dissenting opinions informatively articulate two opposing views of the proper role of the doctrine of stare decisis in US law.
  The narrow issue in Kimble v. Marvel was whether the Court should overrule the 50-year-old proposition in Brulotte v. Thys Co., 379 U.S. 29, that a patent license agreement requiring royalties for the period beyond the life of the licensed patent was unenforceable under the Supremacy Clause, state contract law notwithstanding, because it involved a misuse of patent rights. The Supreme Court in the Kimble case refused to overrule Brulotte and its doctrine against post-expiry royalties.
context_section_description: Speaking for himself and Justices Roberts and Thomas, Justice Samuel Alito dissented, asserting that the Court "employs stare decisis, normally a tool of [judicial] restraint, to reaffirm a clear case of judicial overreach." He insisted that Brulotte:
  was not based on anything that can plausibly be regarded as an interpretation of the terms of the Patent Act. It was based instead on an economic theory—and one that has been debunked. The decision interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent, and it disrupts contractual expectations. Stare decisis does not require us to retain this baseless and damaging precedent. . . . Brulotte was thus a bald act of policy making. It was not simply a case of incorrect statutory interpretation. It was not really statutory interpretation at all.
  He denied that the principle that stare decisis applies particularly to decisions based on statutes was relevant here. "When a precedent is based on a judge-made rule and is not grounded in anything that Congress has enacted, we cannot 'properly place on the shoulders of Congress' the entire burden of correcting 'the Court's own error.' "
  Justice Alito also rejected the antitrust-patent misuse distinction that the majority made: "Brulotte was an antitrust decision masquerading as a patent case."
  Finally, he disagreed about its being Congress's responsibility rather than the Court's to undo Brulotte:
  Passing legislation is no easy task. . . .Within that onerous process, there are additional practical hurdles. A law must be taken up for discussion and not passed over in favor of more pressing matters, and Senate rules require 60 votes to end debate on most legislation. And even if the House and Senate agree on a general policy, the details of the measure usually must be hammered out in a conference committee and repassed by both Houses.
caption: Justice Alito
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