Does a US Patent Licensee Have Standing to Invalidate its Licensor's Patent?

The US Supreme Court recently began hearing oral arguments in MedImmune Inc v Genentech Inc et al, a case which will determine whether a licensee (MedImmune) has standing to bring an action to invalidate a licensor's (Genentech) patent. A US constitutional requirement for patent litigation demands that there be a "justiciable controversy". The Supreme Court must decide if such a controversy can exist when the parties have entered into a licensing agreement involving the allegedly invalid patent. Genentech argues no controversy can exist because MedImmune continues to abide by the licensing agreement, and thus Genentech cannot sue for infringement or cancel the license. Conversely, MedImmune asserts that there is a controversy because it entered into the licensing agreement and agreed to pay royalties "under protest," and contends that the agreement should not have to be breached in order to prove the existence of a controversy. MedImmune is backed by the Generic Pharmaceutical Association of America which believes that a successful result would bring more challenges of bad patents. Genentech, on the other hand, is supported by the Pharmaceutical Research and Manufacturers of America, which believes a grant of standing to MedImmune would encourage litigation and potentially destabilize thousands of existing licensing agreements. In Canada, under section 60(1) of the Patent Act, an "interested party" may insist that the Federal Court invalidate a patent or claim. The impending decision of the US Supreme Court could be cited in future cases in Canada involving a question whether a licensee qualifies as an "interested party" under the Patent Act. For more information, see: http://www.patentbaristas.com/archives/000498.php; and http://docket.medill.northwestern.edu/archives/003377.php Summary by: Michael Migus