Supreme Court to Determine Licensee's Right to Sue for Declaratory Judgment of Invalidity or NonInfringement

MedImmune v. Genentech* (Supreme Court 2006).

The Supreme Court has granted certiorari to determine when a patent licensee in good standing can challenge the validity of a patent.  In two separate opinions, the CAFC dismissed MedImmune’s cases — holding that a licensee has no standing to sue for declaratory judgment because it is not under threat of being sued for patent infringement.

This issue harks back to the 1969 Lear v. Adkins case that limited the ability of a licensee to sign-away its right to later challenge the validity of a licensed patent.  In Lear, the High Court found that the public’s interest in invalidating bad patents was strong enough to warrant a limit on the licensee’s ability to give up its future right to challenge validity. 

The question presented is:

Does Article III’s grant of jurisdiction of “all Cases . . . arising under . . . the Laws of the United States,” implemented in the “actual controversy” requirement of the Declaratory Judgment Act, 28 U.S.C. 2201(a), require a patent licensee to refuse to pay royalties and commit material breach of the license agreement before suing to declare the patent invalid, unenforceable or not infringed?

* A second petition MedImmune v. Centocor is also pending before the Court with the parallel question of: 

Does the “actual controversy” requirement of the Declaratory Judgment Act, 28 U.S.C. 2201(a) require a material breach of a license agreement by a licensee prior to suit for declaratory relief for patent infringement, invalidity, or unenforceability?

Documents:

• MedImmune’s Genentech Petition (6509 KB)
• MedImmune’s Centocor Petition
• Centocor’s Opposition to Certiori
• MedImmune’s Centocor Reply

Links:

• CAFC Decision in MedImmune v. Genentech;
• CAFC Decision in MedImmune v. Centocor;
• Lear v. Adkins;
• Professor Miller’s comments.