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Patent Licensee May Sue for Declaration of Patent Invalidity
Description Supreme Court held that when one party had agreed to license a patent from another party, it had the right, without terminating the license, to sue to have a declaration of the invalidity of the patent.
Topic Intellectual Property
Key Words Patent; Application; Validity; Licensing
C A S E   S U M M A R Y
Facts MedImmune licensed a drug produced by Genentech on which Genentech had a patent application pending. The parties then got into a dispute over whether a patent for the drug could be valid. The lower courts held that the matter could not be litigated because there was no real case or controversy since the parties had agreed to the licensing arrangement. MedImmune appealed.
Decision Reversed and remanded. There is a ripe controversy here concerning the validity of a contract based on a patent that must be valid for there to be royalties due. MedImmune did not need to expose itself to liability under the patent statute by terminating or breaching the license agreement and then suing on the issue of validity. MedImmune had the right to seek a declaratory judgment of the patent validity.
Citation MedImmune v. Genentech, 127 S.Ct. 764 (Sup. Ct., 2007)

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