MedImmune, Inc. v. Genentech, Inc. (2006)
- Docket
- 05-608
- Decided
- 2006-01-01
Summary
Question: Does the "actual controversy" requirement of the Declaratory Judgment Act require that a patent licensee break its licensing agreement by refusing to pay royalties before suing to declare a patent invalid and unenforceable? Conclusion: No. In an 8-1 decision authored by Justice Antonin Scalia, the Court reversed the Federal Circuit and ruled for MedImmune. The Court held that MedImmune was not required to break its contract before suing, because "The rule that a plaintiff must [...] risk treble damages and the loss of 80 percent of its business[] before seeking a declaration of its actively contested legal rights finds no support in Article III." The Declaratory Judgment Act only requires that disputes be non-hypothetical and non-abstract. The mere fact that royalties were still being paid, the Court ruled, was not sufficient to remove the courts' jurisdiction under Article III. In a lone dissent, Justice Thomas argued that the Court's expansive approach toward Article III jurisdiction would improperly allow parties to bring premature, theoretical suits.