Licensee in Good Standing Could Not Challenge Patent Despite Claims of Collusive Settlement in Violation of Antitrust Laws

Case: Medimmune, Inc. v. Genentech, Inc. , No. 04-1300, 04-1384 (Fed Cir. 10/18/05)


The One Sentence Summary: The district court (1) properly dismissed a declaratory judgment action because licensee, Medimmune, lacked standing to challenge Genentech's patent when Medimmune was in good standing under the license and lacked reasonable apprehension of a suit; and (2) properly granted summary judgment against antitrust and unfair competition claims.


What They Were Fighting About: Genentech obtained a patent after settling interference proceedings in district court with another company that had claimed priority, and after further proceedings in the PTO. Medimmune, a licensee under the patent, brought this declaratory judgment action seeking a declaration that Genentech's patent was invalid because the district court settlement had been fraudulent and collusive in violation of antitrust laws. The district court dismissed Medimmune's patent claims for lack of standing, and granted summary judgment against the antitrust claims. The Federal Circuit affirmed.

Federal Circuit Holdings:

• Medimmune, a licensee in good standing under patents owned by Genentech, lacked standing to pursue a declaratory judgment action seeking a declaration of invalidity of Genentech's patents.
• The allegedly collusive settlement of interference proceedings in the district court under 35 U.S.C. § 146 between Genentech and Celltech did not provide an independent basis of standing.
• The district court properly considered new evidence as to priority in the district court that had not been presented in earlier PTO interference proceedings.
• The settlement of a dispute as to patent priority in an interference proceeding is not a per se violation of the antitrust laws.
• The panel held that a patent does not of itself confer market power or a presumption of market power, noting that a Federal Circuit panel's recent decision to the contrary in Independent Ink is pending review in the Supreme Court.
• There was no collusion by joint submission of a settlement agreement to the district court because the parties were obligated to do so due to the pending litigation under 35 U.S.C. § 146. Thus, there was no need to invoke Noerr-Pennington antitrust immunity, and the district court erred in invoking that doctrine. The settlement of disputed issues as to priority could not be recast as a misrepresentation to the court.
• The district court properly granted summary judgment against Medimmune on its claim of an antitrust violation by enforcement of a fraudulently obtained patent (a Walker Process claim). Medimmune had not pled fraud, and the complaint's allegations of inequitable conduct were not sufficient.
• The district court did not abuse its discretion in denying Medimmune's leave to amend the complaint to allege fraud.
• Medimmune's claim that the Genentech patent was invalid due to inequitable conduct did not create standing for a declaratory judgment action.
• Over a dissent by Judge Clevenger, the panel held that the antitrust and unfair competition issues should not be referred to the Ninth Circuit. The Federal Circuit had jurisdiction over the entire appeal because the case involved patent claims.