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Supreme Court Rules That a Licensee Need Not Breach Their License in Order to Challenge the Underlying Patent

The advisory summarizes the recent Supreme Court decision of Medimmune, Inc. v. Genentech, Inc. The decision addressed the definition of a "case or controversy" under the declaratory judgment standard for patent infringement, and has broad implications for patent owners and the field of patent licensing. The Court ruled that a patent licensee does not need 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. The case has potentially wide implications for patent owners, since patent licensees may now be more willing to challenge the validity or enforceability of the patents they license and it will likely prompt licensors to choose their licensees and license terms more carefully.

Client Advisory (PDF)