Medimmune, Inc. v. Genentech, Inc., et al. (549 U.S. 118)

U.S. Supreme Court · decided January 9, 2007 · Supreme Court Database (Spaeth)

Citation
549 U.S. 118 · 127 S. Ct. 764
Decided
January 9, 2007
Term
October Term 2006
Vote
8–1
Majority author
Justice Scalia
Issue area
Judicial Power
Disposition
Reversed and remanded
Outcome
Petitioning party won
Ideological direction
Liberal

Opinion excerpt

Justice & alia delivered the opinion of the Court. We must decide whether Article Ill’s limitation of federal courts’ jurisdiction to “Cases” and “Controversies,” reflected in the “actual controversy” requirement of the Declaratory Judgment Act, 28 U. S. C. § 2201(a), requires a patent licensee to terminate or be in breach of its license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed. I Because the declaratory-judgment claims in this case were disposed of at the motion-to-dismiss stage, we take the following facts from the allegations in petitioner’s amended complaint and the unopposed declarations that petitioner submitted in response to the motion to dismiss. Petitioner Medlmmune, Inc., manufactures Synagis, a drug used to prevent respiratory tract disease in infants and young children. In 1997, petitioner entered into a patent license agreement with respondent Genentech, Inc. (which acted on behalf of itself as patent assignee and on behalf of the coassignee, respondent City of Hope). The license covered an existing patent relating to the production of “chimeric antibodies” and a then-pending patent application relating to “the co-expression of immunoglobulin chains in recombinant host cells.” Petitioner agreed to pay royalties on sales of “Licensed Products,” and respondents granted petitioner the…

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