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ARTICLE · 15 JANUARY 2007

Licensees May Challenge A Patent Without Breaching License

Goodwin Procter LLP
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We hold that petitioner was not required, insofar as Article III is concerned, to break or terminate its 1997 license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed

United StatesIntellectual Property
Benjamin Hershkowitz
Benjamin Hershkowitz
J. Anthony Downs
J. Anthony Downs

We hold that petitioner was not required, insofar as Article III is concerned, to break or terminate its 1997 license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed.

With this language, the U.S. Supreme Court concluded its 8-1 landmark decision in MedImmune, Inc. v. Genentech, Inc. reversing the holding of the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit"). This decision has potentially wide-ranging ramifications for patent licensing.

The dispute that served as the genesis for this opinion began shortly after the December 18, 2001 issuance of U.S. Patent No. 6,331,415 ("the ’415 patent"), which concluded more than 13 years of prosecution before the United States Patent and Trademark Office ("USPTO"). The application that resulted in the ’415 patent was a continuation of an application that resulted in U.S. Patent No. 4,816,567, which Genentech had licensed to MedImmune –

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