Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Corporate CounselorKickerFeaturesTopicsCommercial LawLitigationSectionsNewsLJN Newsletters

The Medimmune Decision

By Joshua R. Rich

In MedImmune v. Genentech, decided Jan. 9, 2007, the U.S. Supreme Court swept away over a decade of Federal Circuit precedent to find that a licensee need not breach a patent license in order to file a declaratory judgment action for patent invalidity or unenforceability. The decision shifted substantial power from licensors to licensees: previously, a licensee had to choose the lesser of two evils. On one hand, the licensee could comply with the terms of a license agreement and forego any challenge to a patent, even if it felt the patent was not infringed, invalid, or unenforceable. On the other hand, the licensee could breach the license and challenge infringement, validity, and enforceability; in doing so, however, it exposed itself to potentially trebled damages and attorney's fees under 35 U.S.C. ” 284 & 285 and an injunction against future sales under 35 U.S.C. ' 283 if its challenge failed.

In light of the MedImmune decision, any party with a portfolio of licenses (whether as licensor or licensee) should review the licenses to determine if they are subject to and appropriate for declaratory judgment actions. Licenses for 'blockbuster' products will be most appropriate for patent challenges. Prospectively, counsel must be aware of the possibility of declaratory judgment litigation when negotiating license agreements. Licensors will be able to circumvent the MedImmune holding, either contractually or by consent judgment, but licensees may want to avoid giving away declaratory judgment jurisdiction.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers Image

There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Transfer Tax Implications on Real Property Leases Image

The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.