Court rules on right to bring patent case

The Supreme Court ruled on Tuesday that a person or firm that has been licensed to use a patent need not break that agreement before suing to challenge the patent’s valildity or to defend against a claim of infringement. The 8-1 decision came in the case of MedImmune v. Genentech (05-608).

The Court rejected the argument — accepted by Justice Clarence Thomas in dissent — that MedImmune could not sue because it had voluntarily entered into a license deal and was making all necessary royalty payments. Justice Antonin Scalia wrote for the Court.

MedImmune is a biotech company that makes and markets the only drug in the U.S. used to prevent a particular respiratory tract infection caused by virus, a condition that may be fatal. The drug is marketed under the trademarked name Synagis. In 1997, one year before the company first put the drug on the markiet, it agreed to license a group of patents from another biotech company, Genentech, Inc., in return for paying royalties if it sold any product covered by one of the patents.

A dispute arose over payment of royalties. Fearing a possible lawsuit that would ban sales of Synagis, MedImmune began paying royalties, but did so under protest. It then sued to challenge the validity of the specific patent that was the key to the royalty obligation. The lawsuit was dismissed by the District Court, and that was upheld by the Federal Circuit Court.
On Tuesday, the Supreme Court reversed that decision, leaving any ruling on the merits to the lower courts.

In a second decision, the Court declined to rule on the question of whether the sentencing decision in Blakely v. Washington in 2004 is to be applied retroactively in federal habeas cases. The Court found in Burton v. Stewart (05-9222) that the state prisoner in the case had failed to comply with the “gatekeeping” requirements of federal habeas law, so the District Court had no jurisdiction in the case. The Court issued the decision in an unsigned opinion; there were no dissents.

In a third and final ruling of the day, in U.S. v. Resendiz-Ponce (05-998), the Court declined to decide the issue it had agreed to hear — that is, whether failure to include in a criminal charge an element of the offense can ever be excused as “harmless error.” The Court found that the indictment in this case was not defective, so it need not reach the granted question. Justice John Paul Stevens wrote the opinion for an 8-1 Court. Justice Scalia dissented.