1/9. The Supreme Court issued its opinion [30 pages in PDF] in MedImmune v. Genentech, a case regarding when a patent can be challenged by a licensee in a declaratory judgment action.

Introduction. The Supreme Court held that the Article III case or controversy requirement, and the Declaratory Judgment Act, which is codified at 28 U.S.C. § 2201, do not require a patent licensee 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 District Court dismissed the complaint of a licensee for lack of jurisdiction on the grounds that there was no case or controversy. The Court of Appeals affirmed the District Court. The Supreme Court reversed the Court of Appeals.

Under this ruling, a patent licensee who is paying royalties can file declaratory judgment action challenging the validity and/or enforceability of a the patent.

The case does not involve information technology. It involves pharmaceutical patents. However, this ruling will affect licensing and litigation practices, in other sectors, including the tech sector.

This ruling will make it easier for licensees to challenge patents, by eliminating one procedural obstacle, and by reducing the risks associated with such challenges. That is, someone who practices an invention, but does not license it, or fails to pay royalties, is vulnerable to a suit for injunctive relief, and treble damages, while a licensee in good standing is not.

This ruling might lead some patent owners to license at higher royalty rates than they would have absent this ruling. It might also lead some patent owners to license their inventions for lump sum advance payments, rather than periodic royalties.

This ruling may also lead some patent owners to attempt to contract around this ruling. This opinion only addresses the threshold question of jurisdiction. It does not address application of equitable principles to declaratory judgment actions over which the courts have jurisdiction.

Factual Backgound. Genentech is a defendant in the District Court, and respondent in the Supreme Court. It states in its web site that it is a "biotechnology company that discovers, develops, manufactures and commercializes biotherapeutics for significant unmet medical needs". City of Hope, another defendant, states in its web site that it is "biomedical research, treatment and educational institution dedicated to the prevention and cure of cancer and other life-threatening illnesses".

Genentech and City of Hope own U.S. Patent No. 4,816,567 titled "Recombinant immunoglobin preparations", and U.S. Patent No. 6,331,415 titled "Methods of producing immunoglobulins, vectors and transformed host cells for use therein", a continuation of the first patent.

MedImmune is the plaintiff in the District Court, and petitioner in the Supreme Court. It is a licensee of Genentech and City of Hope of these patents. It continues to pay royalties. It is not under threat of suit from Genentech or City of Hope.

Celltech R&D, Ltd., which has since been acquired by UCB, recently settled a long patent interference proceeding with Genetech and City of Hope involving these patents.

MedImmune then determined to challenge the validity and enforceability of the two patents.

The Supreme Court noted that "The factual and legal dimensions of the dispute are well defined and, but for petitioner's continuing to make royalty payments, nothing about the dispute would render it unfit for judicial resolution."

Proceedings Below. MedImmune filed a complaint in U.S. District Court (CDCal) against Genentech, City of Hope, and Celltech seeking a declaratory judgment that the patents are invalid and unenforceable as a result of the settlement of the patent interference. MedImmune also alleged violation of antitrust and unfair competition laws.

The District Court dismissed the complaint on the basis that there is no case or controversy.

The U.S. Court of Appeals (FedCir) issued its opinion [24 pages in PDF] on October 18, 2005, affirming the District Court. Judge Pauline Newman wrote the opinion of the Court of Appeals, in which Judge Haldane Robert Mayer joined.

Judge Raymond Clevenger wrote a partial dissent. He concurred that the complaint must be dismissed for lack of jurisdiction. However, he dissented from the court's refusal to transfer the remainder of the case to the U.S. Court of Appeals (9thCir), pursuant to 28 U.S.C. § 1631, for a determination as to whether the District Court properly granted summary judgment regarding MedImmune's antitrust and unfair competition claims.

Supreme Court Opinion. This was an 8 to 1 case, with Justice Antonin Scalia writing the opinion of the Court. Justice Clarence Thomas wrote a dissenting opinion.

The Court wrote that "Our analysis must begin with the recognition that, where threatened action by government is concerned, we do not require a plaintiff to expose himself to liability before bringing suit to challenge the basis for the threat -- for example, the constitutionality of a law threatened to be enforced. The plaintiff’s own action (or inaction) in failing to violate the law eliminates the imminent threat of prosecution, but nonetheless does not eliminate Article III jurisdiction."

The Court added that while there are fewer Supreme Court cases in "situations in which the plaintiff’s self-avoidance of imminent injury is coerced by threatened enforcement action of a private party rather than the government", the lower courts "have long accepted jurisdiction in such cases".

The Court also rejected Genentech's argument that "the parties in effect settled this dispute when they entered into the 1997 license agreement. When a licensee enters such an agreement, they contend, it essentially purchases an insurance policy, immunizing it from suits for infringement so long as it continues to pay royalties and does not challenge the covered patents." The Court wrote that "Promising to pay royalties on patents that have not been held invalid does not amount to a promise not to seek a holding of their invalidity."

The Court reviewed applicable precedent, and then concluded that in this patent case, the "petitioner was not required, insofar as Article III is concerned, to break or terminate its 1997 license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed."

The Court also wrote that "it would be imprudent for us to decide whether the District Court should, or must, decline to issue the requested declaratory relief. We leave the equitable, prudential, and policy arguments in favor of such a discretionary dismissal for the lower courts’ consideration on remand. Similarly available for consideration on remand are any merits-based arguments for denial of declaratory relief."

Justice Thomas wrote in dissent that "We have consistently held that parties do not have standing to obtain rulings on matters that remain hypothetical or conjectural. We have also held that the declaratory judgment procedure cannot be used to obtain advanced rulings on matters that would be addressed in a future case of actual controversy. MedImmune has sought a declaratory judgment for precisely that purpose, and I would therefore affirm the Court of Appeals’ holding that there is no Article III jurisdiction over MedImmune's claim."

Comments. Ed Black, head of the Computer and Communications Industry Association (CCIA), praised the Supreme Court's opinion in a release. He wrote that "Yet again, the Supreme Court has thrown out a ruling that perpetuates dysfunctions in the patent system. ... This marks yet another occasion where the Court has clamped down on the Federal Circuit's wayward jurisprudence."

The CCIA release adds that this "ruling clears the way for timely challenges to junk patents that impede innovation".

The American Intellectual Property Law Association (AIPLA) submitted an amicus brief [20 pages in PDF] urging affirmance of the Court of Appeals. It wrote that "Allowing patent licensees to bring risk-free challenges to patent validity would increase litigation, encourage questionable licensing tactics, and disrupt the settled expectations of patent licensors."

It also wrote that if MedImmune prevails, as it did, then "licensors may attempt to rebalance their negotiating power by including the questionable licensing terms", and that "A new period of uncertainty in which the enforceability of these different terms is tested would be costly. Moreover, these terms are designed to discourage the very validity challenges that the Court is being asked to endorse. The uncertainty and brinksmanship in licensing practice that would accompany petitioner’s rule are undesirable and should be avoided."

Joshua Rosenkranz of the New York office of the law firm of Heller Ehrman submitted an amicus brief on behalf of Qualcomm and Interdigital Communications Corporation, in support of the respondents (Genentech).

He wrote in his brief that "a licensee who sues, but retains the protection of the license, escapes all the burdens and hard choices. Such a licensee enjoys a fixed royalty and immunity from injunctive relief, while still pursuing its challenge to the very premise of the license -- that the licensor has a valid patent."

He argued that "That is not fair, especially to licensors who negotiated licenses in the past based upon the premise -- which has been clear law in the Federal Circuit for some time -- that the licensee cannot retain the benefits of a license and sue at the same time."

He also argued that to allow suits such as MedImmune's would be against the public interest. He wrote that "If patent owners cannot be assured of patent peace when licensing their inventions, they will be less inclined to license, and at a minimum will insist on higher royalty rates. Moreover, allowing suits of this sort to proceed will only encourage more litigation, for licensees will have every incentive to sue, on any patent theory, so long as the expected benefits exceed the cost of litigation."

TLJ spoke with Rosenkranz after the ruling. He said that while this case arose in the pharmaceutical sector, this opinion "transcends industries", and answers a "crucial question to any one who licenses inventions ... without regard to the particular nature of the invention".

He added the this opinion "will have an enormous effect on licensing behavior".

He also stated that this opinion answers one question -- whether the courts have jurisdiction to hear the declaratory judgment action by the licensee. But, it does not address a second question -- how the courts should apply principles of equity in these actions.

For example, if patent holder were to contract around this ruling in the license agreement, would the licensee be able to maintain an action for a declaratory judgment of invalidity?

Case Information. This case is MedImmune, Inc. v. Genentech, Inc., et al., Sup. Ct. No. 05-608, a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit, App. Ct. Nos. 04-1300 and 04-1384. The Court of Appeals heard an appeal from the U.S. District Court for the Central District of California, Judge Mariana Pfaelzer presiding.

MedImmune is represented by John Kester of the Washington DC office of the law firm of Williams & Connolly and by Harvey Kurzweil of the New York City office of the law firm of Dewey Ballantine. Genentech is represented by Maureen Mahoney and Daniel Wall of the law firm of Latham & Watkins.

See also, Supreme Court docket.

1/8. The Supreme Court denied certiorari in Echostar v. Fox, a case regarding the compulsory statutory license for satellite carriers to broadcast secondary transmissions of certain network programming to unserved households. See, Order List [35 pages in PDF] at page 4.

This case involves the statutory license that was enacted in the Satellite Home Viewer Act of 1988, which is Public Law No. 106-113, and is now codified in 17 U.S.C. § 119.

This license allows "satellite carriers", such as Echostar, to transmit copyrighted distant network programing to "unserved households", but not to served households.

Section 119 provides, in part, that "unserved household" means, "with respect to a particular television network, means a household that -- (A) cannot receive, through the use of a conventional, stationary, outdoor rooftop receiving antenna, an over-the-air signal of a primary network station affiliated with that network of Grade B intensity as defined by the Federal Communications Commission under section 73.683(a) of title 47 of the Code of Federal Regulations, as in effect on January 1, 1999; ..."

Fox Broadcasting, and other broadcasters, long ago sued Echostar alleging that it provided service, under this statutory license, to served households. The broadcasters have prevailed. The present denial of certiorari lets stand the May 23, 2006, opinion [44 pages in PDF] of the U.S. Court of Appeals (11thCir), which affirmed in part the judgment of the District Court, and remanded for entry of a nationwide injunction against Echostar.

Fox is represented by Catherine Stetson of the Washington DC office of the law firm of Hogan & Hartson. Echostar is represented by Thomas Goldstein of the Washington DC office of the law firm of Akin Gump. Goldstein is also the author of the SCOTUSBlog.

This case is Echostar Communications Corp. v. Fox Broadcasting Co., et al., Sup. Ct. No. 06-545, a petition for writ of certiorari to the U.S. Court of Appeals for the 11th Circuit, App. Ct. No. 03-13671-DD. The Court of Appeals heard an appeal from the U.S. District Court for the Southern District of Florida.

See also, Supreme Court docket.

1/8. The U.S. Court of Appeals (8thCir) issued its opinion [10 pages in PDF] in Rural Iowa Independent Telephone Association v. Iowa Utilities Board, affirming the judgment of the District Court. which upheld an order of the Iowa Utilities Board (IUB) regarding rural wireless service.

The Court of Appeals wrote that the "IUB determined the rural carriers could not charge Qwest Corporation long-distance access charges when Qwest bundled inbound intraMTA wireless traffic with long-distance traffic before delivering it to the rural carriers. The IUB further determined the rural carriers could not force their customers to use Qwest as an interexchange carrier (IXC) (commonly understood as a long-distance carrier) for outbound intraMTA wireless calls." (Parentheses in original.)

This case is Rural Iowa Independent Telephone Association v. Iowa Utilitites Board, et al., U.S. Court of Appeals for the 8th Circuit, App. Ct. No. 05-3579, an appeal from the U.S. District Court for the Southern District of Iowa.

The House will meet at 10:30 AM for morning hour, and at 12:00 NOON for legislative business. It will consider HR 1, a bill related to recommendations of the 9/11 Commission, and HRes  35, a resolution related to the Select Intelligence Oversight Panel. See, House Majority Leader's weekly calendar [PDF].

9:00 AM. The President's Council of Advisors on Science and Technology (PCAST) will meet. See, notice in the Federal Register, December 22, 2006, Vol. 71, No. 246, at Page 77019-77020. The PCAST web site states that this meeting will take place on January 9-10. Location: Congressional Ballroom, Renaissance Hotel, 999 9th St., NW.

9:30 AM. The Senate Homeland Security and Governmental Affairs Committee will hold a hearing titled "Ensuring Full Implementation of the 9/11 Commission’s Recommendations". See, notice. Location: Room 342, Dirksen Building.

10:00 AM. The Supreme Court will hear oral argument in Sinochem International v. Malaysia International Shipping, a petition for writ of certiorari to the U.S. Court of Appeals (3rdCir) in a case involving personal jurisdiction and the doctrine of forum non conveniens. See, SCUS calendar.

12:15 PM. The Federal Communications Bar Association's (FCBA) Mass Media Practice Committee will host a brown bag lunch titled "New rules for AM and FM allotments and channel assignments". The speakers will include Tom Nessinger and Jim Bradshaw of the FCC's Audio Division. For more information, contact David OConnor at david.oconnor at hklaw dot com or 202-828-1889. Location: Holland & Knight, Lower Level, 2099 Pennsylvania Ave., NW.

12:30 PM. Sen. Ted Kennedy (D-MA) will give a speech. Location: National Press Club, 529 14th St. NW, 13th Floor.

2:00 - 4:00 PM. The American Enterprise Institute (AEI) will host a book forum for John Taylor, author of Global Financial Warriors: The Untold Story of International Finance in the Post 9-11 World [Amazon]. The speakers will be Taylor (former Treasury Under Secretary for International Affairs), John Lipsky (International Monetary Fund), Faryar Shirzad (Goldman Sachs), and Steven Davis (AEI). See, notice. Location: AEI, 12th floor, 1150 17th St., NW.

The House will meet at 10:00 AM for legislative business. It will consider a bill HR 2, related to increase the mandatory minimum hourly wage. See, House Majority Leader's weekly calendar [PDF].

9:30 AM. The Senate Judiciary Committee (SJC) will hold a hearing titled "Balancing Privacy and Security: The Privacy Implications of Government Data Mining Programs". The witnesses will be former Rep. Robert Barr (R-GA), James Carafano (Heritage Foundation), Jim Harper (Cato Institute, author of Identity Crisis: How Identification Is Overused and Misunderstood, Leslie Harris (Center for Democracy and Technology), and Kim Taipale (Center for Advanced Studies in Science and Technology Policy). See, notice. Location: Room 226, Dirksen Building.

10:00 AM. The Senate Finance Committee will hold a hearing titled "Tax Incentives for Businesses in Response to a Minimum Wage Increase". See, notice. Location: Room 215, Dirksen Building.

11:00 AM - 12:30 PM. The National Science Foundation's (NSF) National Science Board Commission on 21st Century Education in Science, Technology, Engineering, and Mathematics will meet on site and by teleconference. See, notice in the Federal Register, December 29, 2006, Vol. 71, No. 250, at Page 78468. Location: NSF, Room 545, Stafford II Building, 4121 Wilson Blvd., Arlington, VA.

12:00 NOON - 1:00 PM. The Federal Communications Bar Association's (FCBA) Annual Seminar Committee Committee will host a brown bag lunch. For more information, contact Yaron Dori at ydori at hhlaw dot com or 202-637-5458. Location: Harris Wiltshire & Grannis, 1200 18th Street, NW.

2:00 PM. The House Ways and Means Committee (HWMC) will meet to organize for the 110th Congress. See, notice. Location: Room 1100, Longworth Building.

2:00 PM. The House Armed Services Committee (HASC) will meet to organize for the 110th Congress. Location: Room 2118 Rayburn Building.

6:00 - 9:15 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "Patent Law for Non-Patent Lawyers". The speakers will include Anthony Son (Foley & Lardner) and Elizabeth Brenner (Rothwell Figg Ernst & Manbeck). The price to attend ranges from $80 to $135. For more information, call 202-626-3488. See, notice. Location: DC Bar Conference Center, 1250 H St NW B-1 Level.

The Federal Communications Commission (FCC) is scheduled to commence Auction No. 68 (FM broadcast auction). See, October 6, 2006, FCC Public Notice [60 pages in PDF] (DA 06-1949).

The House will meet at 10:00 AM for legislative business. It will consider HR 3, a bill related to stem cell research. See, House Majority Leader's weekly calendar [PDF].

TIME? The Department of Homeland Security's (DHS) Homeland Security Advisory Council will hold a partially closed meeting. See, notice in the Federal Register, December 22, 2006, Vol. 71, No. 246, at Page 77039. Locations: the open portions of the meeting will be held in the Congressional Room, Lobby Floor, Hyatt Regency Washington, 400 New Jersey Ave., NW. The closed portions will be held in the Thornton Room of the Hyatt Regency Washington, and at an undisclosed location.

? 9:30 AM - 5:00 PM. The Antitrust Modernization Commission (AMC) will meet to "deliberate on its report and/or recommendations to Congress and the President regarding the antitrust laws." See, notice in the Federal Register, December 15, 2006, Vol. 71, No. 241, at Pages 75495-75496. Location: Morgan Lewis, Main Conference Room, 1111 Pennsylvania Ave., NW.

10:00 AM. The Senate Finance Committee (SFC) will hold a hearing titled "Prescription Drug Pricing and Negotiation: An Overview and Economic Perspectives for the Medicare Prescription Drug Benefit". See, notice. Location: Room 215, Dirksen Building.

12:00 NOON - 1:30 PM. The DC Bar Association will host a program titled "Current Topics in Patent Law: Vanquishing the Patent Troll". The speakers will include Robert Resis (Banner & Witcoff). The price to attend ranges from $20 to $30. For more information, call 202-626-3463. See, notice. Location: DC Bar Conference Center, 1250 H St NW B-1 Level.

12:15 - 1:40 PM. The Federal Communications Bar Association's (FCBA) Transactional Practice Committee will host a brown bag lunch and fee based continuing legal education (CLE) seminar titled "Outsourcing Transactions". The FCBA stated that this lunch will address "Why do telecom companies do outsourcing transactions, what are they trying to accomplish, what issues arise in negotiating and drafting the agreements, and what are the best practices for addressing those issues?" The speakers will be Jonathan Spencer (VP and General Counsel of Shenandoah Telecommunications) and Glynna Christian (LeBoeuf Lamb). The price to attend ranges from $25 to $60. See, registration form [PDF]. Registrations and cancellations are due by 5:00 PM on January 9. For more information, contact Teresa Lloyd at tlloyd at llgm dot com or 202-986-8184 Location: Paul Hastings, 875 15th Street, NW.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "Trade Secrets in the District of Columbia, Maryland and Virginia". The speakers will include Milton Babirak (Babirak Vangellow & Carr). The price to attend ranges from $80 to $135. For more information, call 202-626-3488. See, notice. Location: DC Bar Conference Center, 1250 H St NW B-1 Level.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its 7th Further Notice of Proposed Rulemaking in its proceeding titled "Advanced Television Systems and Their Impact Upon the Existing Television Broadcast Service". This item proposes a new DTV Table of Allotments providing all eligible stations with channels for DTV operations after the DTV transition. The FCC adopted this item on October 10, 2006, and released it on October 20, 2006. See, story titled "FCC Adopts NPRM Proposing New DTV Table of Allotments" in TLJ Daily E-Mail Alert No. 1,473, October 23, 2006. This item is FCC 06-150 in MB Docket No. 87-268. See, notice in the Federal Register, November 15, 2006, Vol. 71, No. 220, at Pages 66591-66631.

Extended deadline to submit reply comments to the Federal Communications Commission (FCC) regarding the intercarrier compensation reform plan known at the Missoula Plan. This proceeding is titled "Developing a Unified Intercarrier Compensation Regime" and numbered CC Docket No. 01-92. See, notice in the Federal Register: September 13, 2006, Vol. 71, No. 177, at Pages 54008-54009, and extension notice in the Federal Register, December 6, 2006, Vol. 71, No. 234, at Pages 70709-70710.

The House will meet at 10:00 AM for legislative business. It will consider HR 4, a bill related to prescription drugs. See, House Majority Leader's weekly calendar [PDF].

12:15 - 1:45 PM. The Federal Communications Bar Association's (FCBA) Legislative and Mass Media Practice Committees will host a brown bag titled "Media Ownership Issues in the 110th Congress". For more information, contact Amy Levine at amy dot levine at mail dot house dot gov or 225-3861. Location: undisclosed.

2:30 PM. The National Science Foundation's (NSF) National Science Board's (NSB) Vannevar Bush Award Committee will hold a closed meeting. The NSB's web site states that this is awarded for "public service activities in science and technology". See, notice in the Federal Register, December 22, 2006, Vol. 71, No. 246, at Page 77071. Location: teleconference and NSF, 4201 Wilson Blvd., Arlington, VA.

5:00 PM. Deadline to submit requests to the Copyright Office (CO) to participate in the January 31, 2007, meeting of the Section 108 Study Group in Chicago, Illinois. See, 17 U.S.C. § 108 and notice in the Federal Register, December 4, 2006, Vol. 71, No. 232, at Pages 70434-70440.

EXTENDED FROM DECEMBER 15. Extended deadline to submit initial comments to the Federal Communications Commission (FCC) to assist the Wireless Telecommunications Bureau (WTB) in drafting a report on the ability of persons with hearing disabilities to access digital wireless telecommunications. This proceeding is WT Docket No. 06-203. See, original FCC Public Notice [4 pages in PDF] (DA 06-2285) and Public Notice (DA 06-2498) extending deadlines.

Martin Luther King's Birthday.

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays and 5 U.S.C. § 6103.

The National Press Club will be closed.

11:00 AM - 12:00 NOON. The President's National Security Telecommunications Advisory Committee (NSTAC) will meet by teleconference. The "NSTAC members will receive comments from their DHS stakeholders related to National Security/Emergency Preparedness communications issues. The committee will also discuss and vote on the NSTAC's Emergency Communications and Interoperability Task Force Report, and discuss the work of the International Task Force". See, notice in the Federal Register, December 29, 2006, Vol. 71, No. 250, at Page 78451.

12:00 NOON. The Federal Communications Bar Association's (FCBA) International Telecommunications Committee will host a brown bag lunch titled "Results of the ITU Plenipotentiary Conference". The speakers will be John Kneuer (head of the NTIA) and David Gross (Department of State). For more information, contact Fiona Alexander at falexander at ntia dot doc dot gov. Location: Verizon, 1300 I Street, NW, Suite 400 West.

Second extended deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Further Notice of Proposed Rulemaking (FNPRM) regarding its media ownership rules. The FCC adopted this FNPRM on July 21, 2006, and released the text [36 pages in PDF] on July 24, 2006. See also, story titled "FCC Adopts FNPRM on Rules Regulating Ownership of Media" in TLJ Daily E-Mail Alert No. 1,397, June 22, 2006. This FNPRM is FCC 06-93 in MB Docket No. 02-277, MM Docket No. 01-235, MM Docket No. 01-317, MM Docket No. 00-244, and MB Docket Nos. 06-121. See also, original notice in the Federal Register, August 9, 2006, Vol. 71, No. 153, at Pages 45511-45515, order [PDF] extending deadlines, and order [PDF] further extending reply comment deadline.

Deadline to submit reply comments to the Office of the US Trade Representative regarding the operation, implementation and effectiveness of all trade agreements regarding telecommunications products and services to assist it in preparing its annual Section 1377 report. See, notice in the Federal Register, November 15, 2006, Vol. 71, No. 220, at Pages 66563-66564.

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