by David Mendez
A Tucson man is no longer receiving royalties on his "web-shooter" toy patent, according to the 9th U.S. Court of Appeals — for now, anyway.
Back in 1990, Tucsonan Stephen Kimble came up with an idea to replicate the webshooters used by Marvel Comic's Spider-Man — but on a silly-string-shooting, kid-friendly level. He patented it, pitched it to Marvel, was told he'd get compensated if they used it, learned they were passing, and thought nothing more of it...until '97:
Kimble said Tuesday that he only found out after a friend called and “congratulated” him on marketing the toy.
Kimble sued Marvel in 1997 for patent infringement and breach of contract. He lost the patent infringement claim, but a jury ruled that Marvel violated a verbal contract between Schwartz and Kimble and that the inventor was due royalties on the toy.
A series of appeals followed, but the two sides settled in 2001, with Marvel buying the rights to the patent for $515,000 and agreeing to pay Kimble 3 percent of “net product sales.” The appeals court ruling said that Marvel ultimately paid Kimble more than $6 million in royalties.
But disputes over royalty calculations flared anew in 2006 when Marvel gave Hasbro the right to “produce certain toys related to Marvel characters.” By that time, new iterations of Web Blaster were being produced and it was also being packaged with other toys.
Kimble sued and Marvel countersued. A magistrate judge found that under a 1964 Supreme Court ruling, Brulotte v. Thys Co., Kimble was not entitled to royalties after the patent’s 2010 expiration date.
The district court ruled that the 2001 settlement between Marvel and Kimble was a “hybrid agreement” made with leverage from patent rights and “transferred inseparable patent and non-patent rights.”
In a “very abbreviated nutshell,” Kimble said, the court said “the patent has expired, so you’re done.”
But apparently, all is not yet lost. According to Cronkite News, "the court reversed the district court’s rejection of Kimble’s separate claim for breach of an alleged verbal agreement and remanded the issue for consideration," and that Kimble might take the issue of his patent expiration to the Supreme Court.