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.


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