Offer For License Or Offer For Litigation?

The Good Old Days (for Patent Holders)

For decades a patent owner has been free to correspond with potential licensees without the fear of a declaratory judgment action. A patent holder could contact a potential licensee and detail an infringement case, and despite these acts – provided the patent holder did not overtly threaten litigation – a potential licensee would not be able to acquire declaratory judgment jurisdiction. Thus, in the event the patent holder wanted to initiate litigation, it could select the timing of such litigation as well as the jurisdiction at its leisure. This is no longer the case.

In MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007), the U.S. Supreme Court considered "whether Article III’s limitation of federal courts jurisdiction to ‘Cases’ and ‘Controversies,’ requires a patent licensee to terminate or breach a license agreement before it can seek a declaratory judgment that the underlying patent is invalid,