MedImmune, Inc. v. Genentech, Inc.
MedImmune sued Genentech for a judgment declaring that one of Genentech’s patents was invalid or unenforceable. MedImmune had a licensing agreement with Genentech that required it to pay royalties for the use of Genentech's "Cabilly II" patent. MedImmune had made all of the required payments, but after Genentech settled a dispute about the Cabilly II patent with another company, MedImmune sued for relief from the royalty payments on the basis that the patent was no longer valid or enforceable.
A district court granted Genentech’s motion to dismiss. The United States Court of Appeals for the Federal Circuit affirmed because MedImmune failed to meet the “actual controversy” requirement of the Declaratory Judgment Act. There was no actual controversy in the case because MedImmune was paying the royalties required by the licensing agreement, rather than violating its terms, and thus was not in apprehension of a lawsuit from Genentech.
Question Presented:
Does Article III's grant of jurisdiction of "all Cases . . . arising under . . . the Laws of the United States," implemented in the "actual controversy" requirement of the Declaratory Judgment Act, 28 U.S.C. § 2201(a), require a patent licensee to refuse to pay royalties and commit material breach of the license agreement before suing to declare the patent invalid, unenforceable or not infringed?
