MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007)
Primary Holding
A patent licensee does not need to terminate or breach its license agreement in order to seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed, as long as an actual controversy exists.
In the case of MedImmune, Inc. v. Genentech, Inc., MedImmune wanted to challenge a patent held by Genentech without having to stop using the patented technology or break their agreement. The Supreme Court decided that a company can seek a court's opinion on whether a patent is valid or not, even if they are still using the product covered by that patent. This ruling helps consumers by allowing companies to contest potentially unfair patents without risking their business, which can lead to more competition and lower prices for consumers. This case is relevant if you are involved with a product or service that might be affected by a patent dispute, as it shows that companies can legally challenge patents without drastic actions.
AI-generated plain-language summary to help you understand this case
In MedImmune, Inc. v. Genentech, Inc., the underlying dispute arose from a patent license agreement established in 1997 between MedImmune, Inc. and Genentech, Inc., which included the City of Hope as a co-assignee. MedImmune manufactured Synagis, a drug used to prevent respiratory tract disease in infants, and the license agreement allowed it to produce and sell products covered by certain patents related to chimeric antibodies. In December 2001, the patent application linked to the agreement matured into the Cabilly II patent. Genentech subsequently informed MedImmune that it believed Synagis was covered by this patent and expected royalty payments to commence. MedImmune contested this claim, asserting that the Cabilly II patent was invalid and that Synagis did not infringe on it. Despite this, MedImmune felt compelled to pay the royalties to avoid potential legal repercussions, including treble damages and an injunction against selling Synagis, which constituted a significant portion of its revenue. The procedural history of the case began when MedImmune filed a declaratory judgment action seeking to establish that the Cabilly II patent was invalid and unenforceable, as well as to obtain damages and an injunction related to other claims. The District Court, however, dismissed the declaratory-judgment claims on the grounds of lack of subject matter jurisdiction, leading MedImmune to appeal the decision. The case eventually reached the Supreme Court of the United States on a writ of certiorari, where the central question was whether a patent licensee must terminate or breach its license agreement before seeking a declaratory judgment regarding the patent's validity or enforceability. The relevant background context includes the implications of the Declaratory Judgment Act, which requires an "actual controversy" for federal courts to exercise jurisdiction. The case highlighted the tension between patent rights and the rights of licensees, particularly in situations where a licensee believes a patent is invalid but fears legal action from the patent holder. MedImmune's situation was exacerbated by the significant financial stakes involved, as the potential for treble damages and loss of revenue from Synagis created a pressing need for judicial clarity on the validity of the Cabilly II patent.
Whether Article III’s limitation of federal courts’ jurisdiction to “Cases” and “Controversies” requires a patent licensee to terminate or be in breach of its license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.
The judgment is reversed.
- Court
- Supreme Court
- Decision Date
- October 4, 2006
- Jurisdiction
- federal
- Case Type
- landmark
- Majority Author
- Scalia
- Damages Awarded
- N/A
- Data Quality
- high
Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005)
Consumer LostThe Supreme Court held that the exemption from patent infringement under 35 U.S.C. §271(e)(1) applies to uses of patented inventions in preclinical research, even if the results are not ultimately included in a submission to the FDA, as long as those uses are reasonably related to the development and submission of information required by federal law regulating drugs.
Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124 (2006)
Consumer LostA patent cannot claim a monopoly over a basic scientific relationship, such as the correlation between homocysteine levels and vitamin deficiencies, as this falls under the exclusion of laws of nature and natural phenomena from patent protection.
eBay Inc. v. MercExchange, L. L. C., 547 U.S. 388 (2006)
Consumer LostA federal court considering whether to award permanent injunctive relief in patent infringement cases must apply the traditional four-factor test used in equity, which requires the plaintiff to demonstrate irreparable injury, inadequacy of legal remedies, a balance of hardships favoring the plaintiff, and that the public interest would not be disserved by the injunction.
Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006)
Consumer LostA party in a civil jury trial must file a motion for judgment as a matter of law under Federal Rule of Civil Procedure 50(b) after a jury verdict to preserve the right to challenge the sufficiency of the evidence on appeal; failure to do so precludes appellate review of the evidence's sufficiency.