Comments on: MedImmune v. Genentech, Part 3 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/ Academic commentary about patent law, i.p. law, creativity, and more Mon, 13 Oct 2008 22:33:40 +0000 http://wordpress.org/?v=2.5 By: The Fire of Genius » Broken Arrowhead (or, a MedImmune follow-up) http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-40372 The Fire of Genius » Broken Arrowhead (or, a MedImmune follow-up) Mon, 26 Mar 2007 17:49:25 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-40372 [...] Earlier today, the Federal Circuit took formal note of the fact that the Supreme Court’s January 2007 decision in MedImmune v. Genentech eliminated the Federal Circuit’s “reasonable apprehension of suit” test for declaratory judgment jurisdiction in a patent infringement case. (I blogged this point about MedImmune the day after the decision, here.) [...] […] Earlier today, the Federal Circuit took formal note of the fact that the Supreme Court’s January 2007 decision in MedImmune v. Genentech eliminated the Federal Circuit’s “reasonable apprehension of suit” test for declaratory judgment jurisdiction in a patent infringement case. (I blogged this point about MedImmune the day after the decision, here.) […]

]]> By: Tech LawForum » MedImmune: ‘Substantial Controversy’ is the new ‘Reasonable Apprehension’ http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-33482 Tech LawForum » MedImmune: ‘Substantial Controversy’ is the new ‘Reasonable Apprehension’ Mon, 12 Mar 2007 14:36:23 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-33482 [...] As predicted by The Fire of Genius and others, MedImmune did in fact throw out the Federal Circuit Court of Appeals ‘reasonable-apprehension-of-suit’ test for determining subject matter jurisdiction in actions for declaratory judgment. U.S. District Chief Judge Linda Reade left no doubt, stating: In MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), the Supreme Court abrogated the Federal Circuit Court of Appeals’ reasonable-apprehension test. See, e.g., MedImmune, 127 S.Ct. at 774 n. 11 (explaining how the reasonable-apprehension test runs afoul of numerous Supreme Court precedents).[T]he phrase ‘case of actual controversy’ in the [Declaratory Judgment] Act refers to the type of ‘Cases’ and ‘Controversies’ that are justiciable under Article III” of the Constitution. MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764, 771 (2007) (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240 (1937) [...] […] As predicted by The Fire of Genius and others, MedImmune did in fact throw out the Federal Circuit Court of Appeals ‘reasonable-apprehension-of-suit’ test for determining subject matter jurisdiction in actions for declaratory judgment. U.S. District Chief Judge Linda Reade left no doubt, stating: In MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), the Supreme Court abrogated the Federal Circuit Court of Appeals’ reasonable-apprehension test. See, e.g., MedImmune, 127 S.Ct. at 774 n. 11 (explaining how the reasonable-apprehension test runs afoul of numerous Supreme Court precedents).[T]he phrase ‘case of actual controversy’ in the [Declaratory Judgment] Act refers to the type of ‘Cases’ and ‘Controversies’ that are justiciable under Article III” of the Constitution. MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764, 771 (2007) (citing Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240 (1937) […]

]]> By: The Fire of Genius » Hitting the MedImmune Highway http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-33045 The Fire of Genius » Hitting the MedImmune Highway Sat, 10 Mar 2007 18:00:52 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-33045 [...] It was bound to happen. A federal trial court has held that the Supreme Court’s decision in MedImmune, especially footnote 11 thereof, abrogates the Federal Circuit’s longstanding, two-part “reasonable apprehension” test for declaratory judgment jurisdiction over patent infringement cases. (I stated the same conclusion the day after MedImmune issued.) [...] […] It was bound to happen. A federal trial court has held that the Supreme Court’s decision in MedImmune, especially footnote 11 thereof, abrogates the Federal Circuit’s longstanding, two-part “reasonable apprehension” test for declaratory judgment jurisdiction over patent infringement cases. (I stated the same conclusion the day after MedImmune issued.) […]

]]> By: Joe http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18053 Joe Wed, 10 Jan 2007 17:19:44 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18053 Bob, Another thought: The analogy of the MedImmune facts, including the risk of liability, to the Altvater case, suggests to me (although I admittedly have a pro-Lear outlook) a looser approach to "sufficient coercion" is the right one. Joe Bob,

Another thought: The analogy of the MedImmune facts, including the risk of liability, to the Altvater case, suggests to me (although I admittedly have a pro-Lear outlook) a looser approach to “sufficient coercion” is the right one.

Joe

]]> By: Joe http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18051 Joe Wed, 10 Jan 2007 17:13:55 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18051 Bob, These are great questions about the nature and severity of the "coercion" the Court perceived here, and perceived retrospectively as having been at play in the Altvater case. Like you, I'll be keeping an eye on how the Court, and the lower courts, approach these questions. <i>Lear</i> no doubt looms, like a brooding omnipresence, over all these issues. Joe Bob,

These are great questions about the nature and severity of the “coercion” the Court perceived here, and perceived retrospectively as having been at play in the Altvater case.

Like you, I’ll be keeping an eye on how the Court, and the lower courts, approach these questions. Lear no doubt looms, like a brooding omnipresence, over all these issues.

Joe

]]> By: Bob Matthews http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18032 Bob Matthews Wed, 10 Jan 2007 15:42:09 +0000 http://www.thefireofgenius.com/2007/01/10/medimmune-v-genentech-part-3/#comment-18032 Hi Joe: I'm curious as to your thoughts on how the severity of the injunction faced by the licensee plays in the calculus of whether there is a case or controversy under the SCT's standard announced in Medimmune. It seemed to me that the Court heavily relied on the fact that the not only did the licensee face the potiental for treble damages, but it also faced a "fatal injunction" (an injunction that the court described as taking away 80% of the licensee's overall business and at one point in the opinion described as being "fatal"). Towards the end of fn 12, Scalia expressly relies on both of these factors as setting a boundary on how far the case or controversy scope extends. It seems to me that whether or not the potiental of an injunction will be deemed "fatal" to a licensee's overall business or of sufficient severity to yield a case or controversy will be licensee dependent. Hence, we may now have an amorphous standard, and one that may, perhaps, favor small licensees that only have one product line. I expect that with careful drafting in future license agreements, patentees can avoid the effect of Medimmune. BUt it does seem the the SCT changed the game and has upset long-settled practice in contravention of Justice Ginsburg's caution in Warner-Jenkinson that the Court should tread carefully before doing so. I also thought the coersion argument was intriguing given that when a party is faced with a discovery order from a court, it generally must either comply with the order or not comply and face a contempt sanction, and generally, can't get an interlocutory appeal. I wonder whether the rationale of Medimmune will impact this long standing appeallate practice. best regards, Bob Matthews. Hi Joe:

I’m curious as to your thoughts on how the severity of the injunction faced by the licensee plays in the calculus of whether there is a case or controversy under the SCT’s standard announced in Medimmune. It seemed to me that the Court heavily relied on the fact that the not only did the licensee face the potiental for treble damages, but it also faced a “fatal injunction” (an injunction that the court described as taking away 80% of the licensee’s overall business and at one point in the opinion described as being “fatal”). Towards the end of fn 12, Scalia expressly relies on both of these factors as setting a boundary on how far the case or controversy scope extends. It seems to me that whether or not the potiental of an injunction will be deemed “fatal” to a licensee’s overall business or of sufficient severity to yield a case or controversy will be licensee dependent. Hence, we may now have an amorphous standard, and one that may, perhaps, favor small licensees that only have one product line.

I expect that with careful drafting in future license agreements, patentees can avoid the effect of Medimmune. BUt it does seem the the SCT changed the game and has upset long-settled practice in contravention of Justice Ginsburg’s caution in Warner-Jenkinson that the Court should tread carefully before doing so.

I also thought the coersion argument was intriguing given that when a party is faced with a discovery order from a court, it generally must either comply with the order or not comply and face a contempt sanction, and generally, can’t get an interlocutory appeal. I wonder whether the rationale of Medimmune will impact this long standing appeallate practice.

best regards,

Bob Matthews.

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