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The U.S. Supreme Court on Jan. 9 and Jan. 10 issued the following opinions: The justices ruled, 8-1, that patent licensees no longer have to breach a license in order to have standing to challenge a patent’s validity. MedImmune Inc. v. Genentech Inc., No. 05-608. MedImmune, a biotech company, makes and markets a drug used to prevent a respiratory tract disease in young children. The drug is known as Synagis. In 1997, MedImmune entered into a patent-license agreement with Genentech, another biotech company. MedImmune agreed to pay royalties on the sale of patented licensed products. Subsequently, Genentech claimed that, because Synagis was covered by one of the patents, it was owed royalties under the agreement. MedImmune believed no royalties were due because the patent was unenforceable and because Synagis did not infringe the patent’s claims. However, fearing possible treble damages and enjoinment from selling Synagis, MedImmune agreed to pay the royalties but filed for declaratory relief. The district court dismissed for lack of subject-matter jurisdiction because MedImmune was paying the royalties. The U.S. Court of Appeals for the Federal Circuit affirmed. The justices reversed. Writing on behalf of the court, Justice Antonin Scalia said that, even though MedImmune had agreed to pay the royalties, the record shows that the company had raised and preserved its claim that it owed no royalties because of patent unenforceability and noninfringement. “Where threatened government action is concerned, a plaintiff is not required to expose himself to liability before bringing suit to challenge the basis for the threat,” Scalia wrote. “Similarly, where the plaintiff’s self-avoidance of imminent injury is coerced by the threatened enforcement action of a private party . . . lower federal and state courts have long accepted jurisdiction.” Scalia’s opinion was joined by Chief Justice John G. Roberts Jr. and justices John Paul Stevens, Anthony M. Kennedy, David H. Souter, Ruth Bader Ginsburg, Stephen G. Breyer and Samuel A. Alito Jr. Justice Clarence Thomas dissented. The justices ruled unanimously that under the Federal Employers’ Liability Act (FELA), the same legal standard applies to a railroad’s negligence in a worker injury case as to contributory negligence by a worker. Norfolk Southern Railwork Co. v. Sorrell, No. 05-746. In 1999, Timothy Sorrell, a Norfolk employee, was driving a truck loaded with asphalt. Another Norfolk truck approached, and Sorrell’s truck was forced off the road into a ditch. He sustained neck and back injuries, and filed suit in Missouri state court under FELA alleging that his injuries were caused by Norfolk’s negligence. Norfolk claimed they were caused by Sorrell’s negligence. Missouri applies different standards of causation to railroad and employee contributory negligence under FELA. Juries are instructed to find contributory negligence by an employee if his or her negligence “directly contributed to cause” the injury. But they are instructed to find railroad negligence if the railroad’s negligence contributed “in whole or in part” to the injury. The jury awarded Sorrell $1.5 million. Norfolk appealed, claiming that “the causation standard should be the same as to the plaintiff and the defendant.” An intermediate Missouri appellate court affirmed, and the Missouri Supreme Court denied discretionary review. The justices reversed. Writing on behalf of the court, Roberts said that absent express language to the contrary, the elements of a FELA claim are determined by reference to common law. “The prevailing common-law view at the time FELA was enacted was that the causation standards for negligence and contributory negligence were the same, and FELA did not expressly depart from this approach,” he wrote. “This is strong evidence against Missouri’s practice of applying different standards.” The justices ruled, 8-1, that an indictment alleging attempted illegal re-entry into the United States need not specifically allege an overt act. U.S. v. Resendiz-Ponce, No. 05-998. Juan Resendiz-Ponce, a Mexican citizen, was convicted of illegally attempting to re-enter the United States. Because his indictment had failed to allege a specific overt act that he had committed in seeking re-entry, the 9th Circuit set aside his conviction and remanded for dismissal of the indictment. The government petitioned the high court for certiorari to answer the question of whether the omission of an element of a criminal offense from a federal indictment can constitute harmless error. The justices held that the indictment was not defective, and that, therefore, there was no need to address the harmless-error issue. Writing on behalf of the court, Stevens said that the indictment implicitly alleged that Resendiz-Ponce had engaged in the overt act by alleging that he “attempted” to enter the country. “Not only does ‘attempt’ as used in common parlance connote action rather than mere intent, but, more importantly, as used in the law for centuries, it encompasses both the overt act and intent elements,” Stevens wrote. His opinion was joined by Roberts, Kennedy, Souter, Thomas, Ginsburg, Breyer and Alito. Scalia dissented.

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