Medimmune Challenge To Genentech Patent Permitted To Continue

On January 9, 2007, Justice Scalia delivered the opinion of the U.S. Supreme Court in MedImmune, Inc. v. Genentech, Inc., et al; reversing the U.S. Court of Appeals for the Federal Circuit in an 8-1 decision. Justice Thomas was the sole dissenter. The Supreme Court originally granted cert to consider the issue of whether, under the Declaratory Judgment (DJ) Act (the Act), a licensee in good standing must breach its license prior to challenging the underlying patent.

In 1997, Genentech granted a patent license to MedImmune in a patent covering the production of chimeric antibodies and a then-pending patent application (now the Cabilly II patent) covering the coexpression of immunoglobulin chains in recombinant host cells. Several years later MedImmune began to manufacture Synagis, a drug administered to infants and young children to protect against respiratory tract diseases. Soon after the Cabilly II patent issued, whereupon Genentech informed MedImmune of its belief that Synagis was