Licensee Standing to Bring Declaratory Judgment Action

The U.S. Court of Appeals for the Federal Circuit affirmed there is no "case or actual controversy" as required by the Declaratory Judgment Act to challenge the validity and enforceability of a patent where, at the time the licensee brought the declaratory judgment action and thereafter, the licensee honored and continued to honor its obligations under the license agreement. MedImmune, Inc. v. Genetech, Inc, Case Nos. 04-1300,-1384 (Fed. Cir. Oct. 19, 2005) (Newman, J.; dissenting in part by Clevenger, J.)

Genetech is owner of the Cabilly patents. Celltech owns the Boss patent. During prosecution of the Cabilly application, the U.S. Board of Patent Appeals and Interferences (the Board) declared an interference between the Boss patent and the Cabilly patent application. Priority was awarded to the Boss patent. Genetech filed a civil action in the district court where the parties were urged to settle the suit. Ultimately, the parties arrived at a cross-licensing settlement with Boss