On Jan. 9, 2007, the Supreme Court decided MedImmune, Inc. v. Genentech, Inc., U.S. Supreme Court No. 05-608, holding that a patent licensee need not breach its license agreement in order to file a declaratory judgment action regarding non-infringement, invalidity or unenforceability. This decision overturned a rule established by the Federal Circuit decision in Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004), that the existence of a license agreement categorically eliminated any apprehension of suit by the licensee, thus precluding the possibility of a case or controversy sufficient to satisfy the requirements of Article III or the Declaratory Judgment Act. The MedImmune decision will have an impact not only on the law regarding declaratory judgment actions by licensees, but also on the Federal Circuit’s declaratory judgment jurisprudence generally. Moreover, the case will have ramifications for both licensors and licensees in all fields of technology.
THE SUPREME COURT’S DECISION
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.
For questions call 1-877-256-2472 or contact us at [email protected]