Patent Licensee In Good Standing Can Challenge Patent Under Declaratory Judgment Act

On January 9, 2007, the Supreme Court reversed the Federal Circuit's dismissal of MedImmune's patent invalidity suit under the Declaratory Judgment Act, and remanded for further proceedings. In an opinion delivered by Justice Scalia, the Supreme Court held the Federal Circuit erred in affirming the dismissal of the case for lack of subject-matter jurisdiction and held a licensee is not required to break or terminate a license agreement before seeking a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.

In 1997, MedImmune entered into a patent license agreement with Genentech covering an existing patent relating to the production of "chimeric antibodies" and a then-pending patent application. In 2001, the pending application matured into U.S. Patent No. 6,331,415 (the "Cabilly II patent"). Soon after, Genentech advised MedImmune of its belief that the MedImmune product Synagis® was