• Licensing Strategies After Medimmune: The Potential Impacts Of The Supreme Court Allowing Licensees In Good Standing To File Declaratory Judgments Against Licensors
  • January 12, 2010 | Authors: Gregory L. Clinton; James G. McEwen
  • Law Firm: Stein McEwen, LLP - Washington Office
  • On January 9, 2007, the United States Supreme Court issued its decision in MedImmune, Inc. v. Genentech Inc., 549 U.S. &under;&under;&under; (2007) that reversed a line of decisions by the Federal Circuit most recently set forth in Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004). Under Gen-Probe, unless the licensee breached the license as was done in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), the licensee was not in sufficient imminent threat of suit to satisfy the case or controversy requirement of Article III of the Constitution. Therefore, under Gen-Probe, the licensee could not file a declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. ยง 2201(a), to contest the validity or enforceability of the licensed patent. In reversing this line of decisions, the Court held that a sufficient case or controversy exists to allow a licensee in good standing to file a declaratory judgment to determine whether, under the license, continued royalty payments are required where payments are not required if the licensed patent is invalid, unenforceable, or not infringed.