Intellectual Property Law

It was not so long ago that the U.S. Supreme Court would take on a patent case every two or three years. Perhaps in recognition of the growing importance of patents and in response to the much greater number of patent cases being filed, the Supreme Court will likely take on a more prominent role in shaping the patent laws. The way 2006 is shaping up, we may have already arrived at that point. We previously reported that by the end of 2005 the Court had granted certiorari on two patent cases, Laboratory Corp. v. Metabolite ? which addresses the patentability of certain compounds ? and eBay v. MercExchange ? which takes on the role of permanent injunctions in patent cases.

The Supreme Court was not done, however, as it recently granted certiorari in a third case, MedImmune v. Genentech. The issue in MedImmune is whether a licensee who has complied with the license terms can bring a declaratory judgment action against the patent owner challenging the validity of the patent. MedImmune is a licensee of a patent owned by Genentech, and MedImmune has paid all royalties owed and otherwise complied with the license. The Constitution provides that a declaratory judgment action can only be maintained when there is an actual ?case or controversy,? which in the case of a patent infringement dispute exists when the accused infringer has a ?reasonable apprehension? of being sued for infringement.

After MedImmune sued Genentech for a declaration that the patent at issue is invalid and unenforceable, the district court dismissed on the ground that MedImmune had no ?reasonable apprehension? of being sued because it was in compliance with the license with Genentech. In contrast, MedImmune relied on the established doctrine that a licensee can always challenge the validity of the patent it licenses. The district court agreed with Genentech and dismissed the case based on lack of a case or controversy. The Federal Circuit affirmed. The issue will now be decided by the Supreme Court.

How do you think the Court will decide this important issue? Can we expect to see the Court take on other patent law issues? The Blawg will be watching with breathless anticipation.

Today's Blogger:  Bob Sloss