Licensee in Good Standing Barred From Bringing Declaratory Judgment Action

In a case involving a declaratory judgment suit, the U.S. Court of Appeals for the Federal Circuit vacated a district court’s ruling that the claims at issue were not infringed and invalid on the grounds that the lower court lacked subject matter jurisdiction. The Federal Circuit held that a patent licensee in good standing who continues to pay royalties may not file suit for declaratory judgment to challenge the licensed patents because there is no case in controversy. Gen-Probe Incorporated v. Vysis, Inc., Case Nos. 02-1617,-1618 (Fed. Cir. Mar. 5, 2004) (Rader, J.)

Gen-Probe was a licensee of U.S. Pat. No. 5,750,338 (the `338 patent) owned by Vysis. The patent relates to methods of capturing and amplifying viral DNA in blood samples. At the time the `338 patent issued, Gen-Probe and Vysis were litigating unrelated patents. An employee of Vysis informed an employee of Gen-Probe, orally and in writing, that its products may infringe the `338 patent. In order to resolve all of its