MedImmune, Inc. v. Genentech, Inc.
United States Supreme Court
549 U.S. 118 (2007)
MedImmune, Inc. (plaintiff) licensed a Genentech, Inc. (defendant) patent, later approved as Cabilly II, covering MedImmune's drug Synagis, and when Genentech demanded royalties under the new patent, MedImmune, believing the patent invalid but unwilling to risk treble damages for infringement, paid the royalties under protest while simultaneously filing a declaratory judgment suit challenging the patent's validity. The district court dismissed on the ground that a license agreement eliminates any reasonable apprehension of being sued, so there was no live case or controversy, and the Federal Circuit affirmed before the Supreme Court granted certiorari.
Whether Article III's cases-and-controversies limitation reflected in the Declaratory Judgment Act requires a patent licensee to terminate, or be in breach of, a license agreement before it may seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.