Zimmer Biomet Holdings, Inc. v. Mary N. Insall, as Executrix of the Estate of John N. Insall

A patent holder cannot “charge royalties for the use of his invention after its patent term has expired.” Kimble v. Marvel Enterprise, LLC, 576 U.S. 446, 449 (2015); see also Brulotte v. Thys Co., 379 U.S. 29 (1964). Contract provisions requiring these payments are unenforceable. Kimble, 576 U.S. at 449. This petition asks this Court to resolve a circuit split regarding when royalties are “for the use” of a patented invention. The decision below joins the Third Circuit in holding that whether royalties are prohibited turns on how the royalties are calculated. Petitioner instead urges a straightforward interpretation of Kimble and Brulotte, consistent with the rule applied in the Ninth Circuit: a royalty—no matter how calculated—exchanged for patent rights may not be enforced after the patent term expires. Courts must consider whether patent rights were within the consideration exchanged for the royalty, not the details of how the royalty is calculated. The rule adopted in the decision below provides a roadmap for parties to evade the public policy recognized by this Court. The question presented is: Whether an agreement for a royalty exchanged for patent rights that extends to sales of products as marketed or branded is enforceable under Brulotte and Kimble.