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Journal of Intellectual Property Law & Practice Advance Access originally published online on April 4, 2008
Journal of Intellectual Property Law & Practice 2008 3(6):369-375; doi:10.1093/jiplp/jpn057
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© The Author (2008). Published by Oxford University Press. All rights reserved

Supreme Court opens courthouse door to more patent challenges, but limitations on declaratory judgment jurisdiction remain

David C. Berry*

Key Words: The Supreme Court's recent MedImmune decision adopts a more relaxed standard for establishing jurisdiction in cases challenging the validity or infringement of a patent in the USA. • Parties may commence suit under circumstances deemed ‘hypothetical’ or ‘advisory’ under prior decisions, so long as they can demonstrate a ‘definite and concrete’ dispute of sufficient ‘immediacy and reality’ to warrant a declaration of rights under the patent. • This article reviews the expanded availability of declaratory relief, including its application to licensing negotiations, and the remaining jurisdictional limitations.

The first 150 words of the full text of this article appear below.


   MedImmune
 
The Declaratory Judgment (DJ) Act plays an important strategic role in patent litigation in the USA.1 This Act permits a competitor, fearing the possibility that it may be sued for patent infringement, to draw first blood by filing a suit to challenge the patent in a more favourable forum and at a more convenient time than the patentee might have selected. In MedImmune, Inc. v Genentech, Inc., the Supreme Court recently expanded jurisdiction under the Act in patent cases to include circumstances that would have been viewed as impermissibly ‘hypothetical’ or ‘advisory’ under prior Federal Circuit authority.2 Despite this expansion of jurisdiction, however, a plaintiff commencing a DJ action must still establish that a dispute having ‘immediacy and reality’ exists, that it has suffered an ‘injury-in-fact’, and that the circumstances as a whole justify the district court's exercise of discretion to accept jurisdiction under the Act. Thus, although MedImmune . . . [Full Text of this Article]


   Background and purpose of the Act
 

   MedImmune discards ‘reasonable apprehension’ test
 

   The new standard in the Federal Circuit
 

   New limits on DJ jurisdiction
 

   Effect of expanded jurisdiction on licence negotiations
 

   Future scope for DJs
 
Correspondence: * David C. Berry, Professor of Law, Director, Graduate Program in Intellectual Property Law Thomas M. Cooley Law School, Auburn Hills Campus 2630 Featherstone Road Auburn Hills, MI 48326. Email: berryd@cooley.edu


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