Medimmune, Inc. v. Genentech, Inc.: A Patent Licensee Does Not Need to Terminate or Breach a License Agreement in Order to Challenge its Validity or Enforceability

Authors

C. Tyler Ohanian

Document Type

Supreme Court Commentaries

Publication Date

11-12-2007

Keywords

General

Subject Category

Constitutional Law | Law

Abstract

MedImmune, Inc. v. Genentech, Inc. asks whether Article III's restriction on the jurisdiction of the federal courts only to "cases" and "controversies," as required by the "actual controversy" limitation of the Declaratory Judgment Act, necessitates that a patent licensee terminate or breach its license agreement before seeking a declaratory judgment to hold the underlying patent invalid, unenforceable, or not infringed. Breaking with the Court of Appeals for the Federal Circuit, the MedImmune majority clearly establishes a patent licensee's legal right to challenge the validity and enforceability of a patent without actually breaching or terminating the underlying licensing agreement for the challenged patent. Thus, a challenge to the validity of a patent is now a justiciable controversy for which a federal court has subject matter jurisdiction.

Recommended Citation

C. Tyler Ohanian, Medimmune, Inc. v. Genentech, Inc.: A Patent Licensee Does Not Need to Terminate or Breach a License Agreement in Order to Challenge its Validity or Enforceability, 3 Duke Journal of Constitutional Law & Public Policy Sidebar 63-73 (2007)