Patent Licensing and Discretion: Reevaluating the Discretionary Prong of Declaratory Judgment Jurisdiction After MedImmune

by

Paul J. LaVanway, Jr.

 

The recent Supreme Court decision in MedImmune, Inc. v. Genentech, Inc. significantly expanded the availability of declaratory judgment jurisdiction in patent law. Although declaratory judgment is a powerful procedural vehicle for clearing disputes, the decision places the patent licensing community in an uncertain position. A patent holder seeking to license his invention is unable to avoid the risks and liabilities associated with easy declaratory judgment jurisdiction. The change in law is inhibiting certain licensing activities.

 

This Note suggests that district courts capture the pragmatic realities involved in the patent licensing and negotiation process by using discretion to forego hearing certain types of declaratory judgment actions. This Note first develops the legal history and policy that define the intersection between the Declaratory Judgment Act and patent licensing. The Note continues by exploring the recent Supreme Court decision expanding declaratory judgment jurisdiction and argues countervailing considerations for maintaining restricted declaratory jurisdiction. Finally, this Note presents specific criteria upon which courts can rely on in determining whether to  forego hearing a declaratory judgment challenge.