The following is not meant to be legal advice, and is provided for information only.
In MedImmune v. Genentech, the Supreme Court allows licensees to challenge a licensed patent. A patent licensee does not need to breach its license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed. This 8-1 Supreme Court decision reversed the Federal Circuit and established a new rule.
The issue for the Supreme Court was whether there was an "actual controversy" in light of the fact that MedImmune was a licensee in good standing with Genentech. In prior cases with similar facts, the Federal Circuit found no controversy existed because a licensee in good standing cannot have any reasonable apprehension of being sued for infringement by the patentee. See, e.g., Gen-Probe, Inc. v. Vysis, Inc., 359 F. 3d 1376, 1381 (2004).
This new rule reduces patentees' leverage over existing licensees who have not admitted the validity, enforceability or infringement of the licensed patents, or otherwise waived their right to bring such challenges. The rule emphasizes the importance of such terms in licensing agreements.
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