MedImmune v. Genentech (Supreme Court 2006, 05–608)
Oral arguments were held today in this important case. Transcript of the arguments are available here.
Links:
- Discussion and copies of briefs filed in MedImmune v. Genentech;
- CAFC Decision in MedImmune v. Genentech;
- CAFC Decision in MedImmune v. Centocor;
- MedImmune Petition Granted;
- Lear v. Adkins;
- Professor Miller’s comments;
- Supreme Court on the March;
- Supreme Court docket sheet;
- SCOTUS Blog
Glad to see it’s not only me, Michael. I know these issues quite well, and I had great difficulty following this oral argument. I sense that the advocates and justices were even more confused than I was.
Jim, I’m not sure about the exact license at issue here, but I’m aware of a number of licenses which include language along the lines of:
Unless terminated as provided for hereunder, the Term of this Agreement shall be ten (10) years from the Execution Date.
***
This Agreement shall terminate in the event … that no patent to which this Agreement grants a license remains enforceable.
If the licensee can challenge validity and does so successfully, what really happens? Does he just avoid royalty payments in the future or can he get past royalty payments back? I.e, does he get to say the entire license was a mistake and the patentee was unjustly enriched?
What happens if the licensee is unsuccessful in challenging validity (or the patentee successfully gets a declaration that the patent is not invalid)? Does he still get the benefit of the license? Or does the patentee get to charge higher future royalties? Does the patentee get to say the original royalties were too low and get them increased?
It seems to me there are two ways a licenssee could challenge validity. First, he could breach the licensee agreement and then sue for declaratory relief. Second, though probably a rarer occurrance, he could seek to have the license set aside or modified on the grounds that there was a discovey of new material information relative to validity or enforceability that the parties were unaware of at the time fo the license.
Interesting transcript. Just a few seconds into each counsel’s arguments and the justices launch in with questions. With each question counsel is thrown off stride and oral argument degenerates into a largely unintelligible moot court debate.
It makes me wonder about the widely held wisdom of having counsel who has previously argued before the USSC being the counsel at the podium. In matters dealing with licensing, I will take any day counsel intimately familiar with licensing, related statutes, policy and precedent to press a particular position. Personally, I found each of the presentations confusing, disjointed, and largely uninformative.
I happen to believe that the CAFC decision will be upheld, but most certainly it will not be because of the points made during oral argument.
Best quote from the transcript on p.22:
JUSTICE SCALIA: So there is really not much at issue in this case. And that’s clearly a case of controversy. It is a dispute over the meaning of that provision of the agreement?
MS. MAYNARD: Yes, Your Honor.
JUSTICE SCALIA: Gee, there’s less here than meets the eye.