Intellecual Property: Licensing - Recent Developments

MedImmune, Inc. v. Genentech, Inc. (United States Supreme Court, January 9, 2007)

In a major reversal of settled case law from 2004, the U.S. Supreme Court in an 8-1 decision written by Justice Antonin Scalia held that a licensee does not need to terminate or breach its license agreement before seeking a declaratory judgment that the licensed patent is unenforceable, not infringed, or invalid. To require the licensee to breach its contract before it could move forward with an action would leave it open to liability and treble damages. The licensor’s demand for royalty payments was a sufficiently immediate controversy that the licensee had standing. It is worth noting that Justice Clarence Thomas dissented from Justice Scalia’s opinion. Click here for full version.