A Nonrepudiating Patent Licensee's Right To Seek Declaratory Judgment of Invalidity or Noninfringement of the Licensed Patent: MedImmune v. Genentech
A Nonrepudiating Patent Licensee’s Right To
Seek Declaratory Judgment of Invalidity or
Noninfringement of the Licensed Patent:
MedImmune v. Genentech
August 30, 2007
Brian T. Yeh
American Law Division
A Nonrepudiating Patent Licensee’s Right To Seek
Declaratory Judgment of Invalidity or Noninfringement
of the Licensed Patent: MedImmune v. Genentech
According to earlier precedent of the U.S. Court of Appeals for the Federal
Circuit, a suit filed by a patent licensee in good standing, seeking to declare the
underlying patent invalid, unenforceable, or not infringed, is non-justiciable under
the Declaratory Judgment Act because there is no actual controversy between the
licensee and licensor. The Federal Circuit had asserted that a license agreement
eliminates any “reasonable apprehension” that the nonrepudiating licensee will be
sued for infringement and thus federal courts must dismiss such declaratory judgment
actions for lack of subject matter jurisdiction under Article III of the U.S.
In MedImmune v. Genentech (549 U.S. __, No. 05-608, decided January 9,
2007), the U.S. Supreme Court rejected the jurisdictional rule adopted by the Federal
Circuit, holding to the contrary that a patent licensee need not materially breach its
license agreement (for example, by ceasing royalty payments to the patent holder)
before it may bring suit to obtain a judgment that the underlying patent is invalid,
unenforceable, or not infringed, in situations where the licensor-patentee has
implicitly or explicitly threatened to sue for patent infringement if the licensee did
not pay the demanded royalties. Payment of royalties under such “coercive”
circumstances does not eliminate the jurisdiction of the federal courts to entertain
declaratory judgment actions from patent licensees in good standing, the Court
explained. Notably, this decision is limited to the procedural issue of whether federal
courts have subject matter jurisdiction over these types of claims; the Supreme Court
declined to express an opinion on the merits of the arguments made by the licensor-
patentee in the case for denying declaratory relief to the licensee.
This report provides a summary and analysis of the Supreme Court’s opinion
in MedImmune and discusses its potential ramifications on patent law.
In troduction ..................................................1
Patent Licensing Agreements.................................1
Subject Matter Jurisdiction and the Declaratory Judgment Act......2
MedImmune v. Genentech.......................................4
The District Court’s Opinion.................................5
The Federal Circuit’s Opinion................................5
The Supreme Court’s Opinion................................6
A Nonrepudiating Patent Licensee’s Right
To Seek Declaratory Judgment of Invalidity
or Noninfringement of the Licensed Patent:
MedImmune v. Genentech
In MedImmune v. Genentech, the U.S. Supreme Court held that, at least in
instances where the licensor-patentee has implicitly or explicitly threatened to sue for
patent infringement if the licensee did not pay the demanded royalties, a patent
licensee need not terminate or breach its license agreement before it may bring suit
to obtain a declaratory judgment that the underlying patent is invalid, unenforceable,
or not infringed. The U.S. Court of Appeals for the Federal Circuit had previously
adopted a procedural rule that a licensee must stop paying royalties (and thereby
materially breach the agreement) before bringing suit to challenge the validity or
scope of the licensed patent. The MedImmune decision thus repudiates the Federal
Circuit’s rule that had resulted in federal courts dismissing such declaratory judgment
actions for lack of subject matter jurisdiction.
Patent Licensing Agreements. Because the Patent Act expressly provides
that “patents shall have the attributes of personal property,”1 patent holders may sell2
their patent rights in a legal transfer called an “assignment.” Alternatively, patent
holders may grant others a “license” to exercise one of the five statutory patent3
rights. A license is not a transfer of ownership of the patent, but rather is the patent
holder’s permission to another entity to use the invention in a limited way, typically4
in exchange for periodic royalty payments during the term of the patent. A patent
holder may grant to a licensee the right to practice the invention through a contract
(typically known as a patent licensing agreement). The terms of the licensing
agreement, however, may include conditions upon the grant of rights — for example,
1 35 U.S.C. § 261.
2 ROGER SCHECHTER & JOHN THOMAS, PRINCIPLES OF PATENT LAW § 11-1 (2d ed. 2004).
3 A patent holder has the right to exclude others from making, using, offering for sale, or
selling the invention throughout the United States, or importing the protected invention into
the United States. 35 U.S.C. § 154(a)(1).
4 SCHECHTER & THOMAS, supra note 2, § 11-1.
restricting the licensee from making the invention but allowing that party to sell it.5
A licensee that performs an act that exceeds the scope of the license (through a
violation of the limitations and conditions of the grant of rights) or refuses to comply
with the terms of the license agreement (such as by refusing to pay the required
royalties) is potentially liable to the patent holder for breach of contract as well as for
Licensee Estoppel. Over the term of a patent license agreement, a licensee
may wish to challenge the validity of the underlying patent because he or she
discovers information suggesting that the patent had been improvidently granted by
the U.S. Patent and Trademark Office (for example, if the new information
demonstrates that a patent had been issued for an invention that actually fails to meet
all of the statutory standards for patentability — novelty, utility, and
nonobviousness). By challenging the validity of the underlying patent, the licensee
could avoid paying royalties or freely pursue other activities that had previously
appeared to come within the scope of the patent. However, prior to 1969, an
equitable doctrine known as “licensee estoppel” prevented a patent licensee from
denying the validity of the licensed patent; this doctrine was developed by courts that
were interested in supporting general principles of contract law, which normally do
not permit buyers to repudiate their promises to purchase goods when they become
unhappy with the contract made with the sellers, at least without some form of
compensation to the other party.7
In 1969, the Supreme Court overruled the licensee estoppel doctrine by8
announcing in Lear, Inc. v. Adkins that a license agreement does not bar the licensee
from challenging the validity of a patent. The Court explained that “the important
public interest in permitting full and free competition in the use of ideas which are
in reality a part of the public domain” trumps “the technical requirements of contract9
doctrine.” Furthermore, other policy considerations weigh in favor of abrogating
licensee estoppel: “Licensees may often be the only individuals with enough
economic incentive to challenge the patentability of an inventor’s discovery. If they
are muzzled, the public may continually be required to pay tribute to would-be10
monopolists without need or justification.”
Subject Matter Jurisdiction and the Declaratory Judgment Act.
Under Article III of the U.S. Constitution, the jurisdiction of federal courts is limited
to actual, ongoing cases and controversies.11 The Declaratory Judgment Act, codified
5 United States v. General Electric Co., 272 U.S. 476, 490 (1926).
6 JOHN R. THOMAS, PHARMACEUTICAL PATENT LAW 427 (BNA Books 2005).
7 SCHECHTER & THOMAS, supra note 2, § 11-4.
8 395 U.S. 653 (1969).
9 Id. at 670.
11 U.S. CONST. art. III, § 2, cl. 1 (“The Judicial Power shall extend to all Cases, in Law and
Equity, arising under this Constitution, the Laws of the United States, and Treaties made,
at 28 U.S.C. § 2201, authorizes a federal court to issue a judgment declaring the legal
rights of any interested party seeking such declaration, “whether or not further relief
is or could be sought,” in a “case of actual controversy within its jurisdiction.” The
U.S. Supreme Court has held that an action for declaratory relief qualifies as a “case
or controversy” under Article III;12 furthermore, it has explained: “[T]he question in
each case is whether the facts alleged, under all the circumstances, show that there
is a substantial controversy, between parties having adverse legal interests, of
sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”13
The Court has also stressed that Article III requires that the dispute at issue “must be
definite and concrete, touching the legal relations of parties having adverse legal
interests”; and that “[i]t must be a real and substantial controversy admitting of
specific relief through a decree of a conclusive character, as distinguished from an
opinion advising what the law would be upon a hypothetical state of facts.”14
However, the Supreme Court has previously opined that “the difference between an
abstract question and a ‘controversy’ contemplated by the Declaratory Judgment Act
is necessarily one of degree, and it would be difficult, if it would be possible, to
fashion a precise test for determining in every case whether there is such a
The U.S. Court of Appeals for the Federal Circuit (Federal Circuit)16 had
attempted to articulate such a test. The Federal Circuit developed a two-part test to
determine whether there was an “actual controversy” in a declaratory judgment action
for patent non-infringement or invalidity:
There must be both (1) an explicit threat or other action by the patentee, which
creates a reasonable apprehension on the part of the declaratory judgment
plaintiff that it will face an infringement suit, and (2) present activity which
or which shall be made, under their Authority; — to all Cases affecting Ambassadors, other
public Ministers and Consuls; — to all Cases of admiralty and maritime Jurisdiction; to
Controversies to which the United States shall be a Party; — to Controversies between two
or more States; between a State and Citizens of another State; between Citizens of different
States, — between Citizens of the same State claiming Land under Grants of different
States, and between a State, or the Citizens thereof, and foreign States, Citizens or
12 Nashville, Chattanooga & St. Louis Railway Co. v. Wallace, 288 U.S. 249 (1933); Aetna
Life Ins. Co. v. Haworth, 300 U.S. 227 (1937).
13 Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941).
14 Aetna Life Ins. Co., 300 U.S. at 240-41 (citations omitted).
15 Maryland Casualty Co., 312 U.S. at 273.
16 The Federal Circuit is a specialized tribunal that has exclusive jurisdiction to hear appeals
from all district court judgments in civil actions arising under federal patent law. 28 U.S.C.
§1295. The purpose for Congress creating the court in 1982 was to promote predictability
and uniformity in the patent law. For more information on the Federal Circuit, see CRS
Report RL31703, Patent Law and Innovation: The Creation, Operation and a Twenty-Year
Assessment of the U.S. Court of Appeals for the Federal Circuit, by John R. Thomas.
could constitute infringement or concrete steps taken with the intent to conduct17
In the Lear case discussed above, the licensee had refused to continue paying
royalties and thus was sued by the licensor-patentee for breach of contract. The
lower courts in that case had applied the licensee estoppel doctrine to prevent the
licensee from raising patent invalidity as a defense to the lawsuit; as previously
discussed, the Supreme Court overruled those courts and expressly repudiated the
licensee estoppel doctrine. In 2004, the Federal Circuit, in Gen-Probe Inc. v. Vysis,
Inc., opined that the Lear doctrine “does not grant every licensee in every
circumstance the right to challenge the validity of the licensed patent.”18 The
appellate court in Gen-Probe explained:
[A] licensee ... cannot invoke the protection of the Lear doctrine until it (i)
actually ceases payment of royalties, and (ii) provides notice to the licensor that
the reason for ceasing payment of royalties is because it has deemed the relevant
claims to be invalid. This language posits that a licensee must, at a minimum,
stop paying royalties (and thereby materially breach the agreement) before19
bringing suit to challenge the validity or scope of the licensed patent.
The question that the U.S. Supreme Court faced in MedImmune v. Genentech
was whether a patent licensee in good standing (meaning that the licensee is
complying fully with the license terms, meeting royalty payment obligations, and
cannot be sued by the licensor-patentee) must terminate or breach its license
agreement before it can bring a declaratory judgment action to challenge a demand
to pay royalties, on the grounds that the underlying patent is invalid, unenforceable,
or not infringed.20
MedImmune v. Genentech
MedImmune, Inc. is a pharmaceutical company that manufactures a drug,
Synagis, used to prevent respiratory tract disease in infants and young children. A
year before the U.S. Food and Drug Administration approved Synagis for marketing
to consumers, MedImmune had entered into a patent license agreement with the
biotechnology company Genentech in 1997, concerning an existing Genentech patent
relating to the production of “chimeric antibodies” (the Cabilly I patent) and also a
then-pending patent application for “the coexpression of immunoglobulin chains in21
recombinant host cells.” MedImmune agreed to pay royalties on sales of any
“licensed products” that it may make or sell which would infringe the claims of either22
of the patents, if not for the license agreement.
17 BP Chems. Ltd. v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993).
18 359 F.3d 1376, 1381 (Fed. Cir. 2004).
19 Id. (internal citations and quotations omitted).
20 MedImmune, Inc. v. Genentech, Inc., 549 U.S. __, 127 S.Ct. 764, 767 (U.S. Jan. 9, 2007).
In December 2001, Genentech was awarded a patent on the “coexpression”
application that was the subject of the licensing agreement (Cabilly II patent).
Genentech sent MedImmune a letter, asserting that the Synagis drug came within the
scope of the new Cabilly II patent, and that therefore it was a “licensed product” for
which royalties are owed under the 1997 license agreement. MedImmune, however,
believed the Cabilly II patent invalid and unenforceable or, alternatively, that Synagis
did not infringe the patent’s claims. Despite this assessment, MedImmune paid the
royalties “under protest,” because it considered Genentech’s letter a threat to sue for
patent infringement if it failed to comply with the demands therein.23 As this drug
accounted for more than 80% of the company’s revenue from sales since 1999,
MedImmune was unwilling to risk the consequences of losing a patent infringement
suit, which included being enjoined from selling Synagis.24
MedImmune initiated a declaratory judgment action against Genentech, seeking
a declaration that the patent was invalid and unenforceable. Genentech filed a
defense motion pursuant to Federal Rules of Civil Procedure 12(b)(1), asserting that
the federal courts lacked Article III jurisdiction over the claim because no “actual
controversy” existed between the parties.
The District Court’s Opinion. The U.S. District Court for the Central
District of California granted Genentech’s motion, dismissing the case for lack of
subject matter jurisdiction.25 The district court explained that it was obliged to26
dismiss the case due to the controlling precedent of the Federal Circuit’s Gen-Probe
Inc. v. Vysis, Inc. decision in 2004, which had held that “a patent licensee in good
standing cannot establish an Article III case or controversy with regard to validity,
enforceability, or scope of the patent because the license agreement ‘obliterates any27
reasonable apprehension’ that the licensee will be sued for infringement.” Because
MedImmune continued to pay royalties under the license agreement and did not
otherwise breach it, it was a licensee in good standing and was not under threat or in
reasonable apprehension of suit, the court reasoned.28
The Federal Circuit’s Opinion. On appeal, MedImmune conceded that it
was free of apprehension of suit, and that it continued to pay royalties only to avoid
the consequences of a successful patent infringement suit by Genentech. However,
24 Injunctive relief in patent infringement cases is authorized by 35 U.S.C. § 283. In addition
to injunctions, the following remedies are also potentially available to the patent holder in
an infringement lawsuit: (1) damages adequate to compensate the patent holder for the
infringement, including lost profits and costs, 35 U.S.C. § 284; (2) treble damages, 35
U.S.C. § 284; and (3) reasonable attorney fees, 35 U.S.C. § 285.
25 MedImmune, Inc. v. Genentech, Inc., 2004 U.S. Dist. LEXIS 28680, at *13 (C.D. Cal.
26 Dismissal of an action is required if a court lacks subject matter jurisdiction. Ex parte
McCardle, 74 U.S. 506 (1869).
27 MedImmune, 127 S.Ct. at 768 (quoting Gen-Probe, Inc. v. Vysis, Inc., 359 F.3d 1376,
28 MedImmune, 2004 U.S. Dist. LEXIS 28680, at *13-14.
MedImmune asserted that the Lear case provided it with “the absolute right to
challenge the validity or enforceability of the patent, whether or not it breaches the
license and whether or not it can be sued by the patentee,” and appealed for Gen-
Probe to be overruled.29 In response, Genentech argued that the facts of the case did
not support invocation of Lear (which had dealt with licensee estoppel), but rather
that the threshold question for the dispute concerned Article III jurisdiction under the
Declaratory Judgment Act.30 The Federal Circuit agreed with Genentech and
affirmed the district court’s judgment, relying on its earlier Gen-Probe decision in
determining that there was a lack of a justiciable controversy.31 The appellate court
rejected the applicability of Lear because in that case, the licensee had ceased royalty
payments, thus breaching the license, and was then sued by the patentee. In contrast,
the Federal Circuit explained, here such “breach was assiduously avoided. Thus this
case does not raise the question of whether patent invalidity is available as a defense
to suit against a defaulting licensee — the licensee estoppel that was laid to rest in
Lear — for there is no defaulting licensee and no possibility of suit.”32
The Supreme Court granted certiorari on February 21, 2006, to review the
MedImmune case, in order to answer the following question:
Does Article III’s grant of jurisdiction of “all Cases ... arising under ... the Laws
of the United States,” implemented in the “actual controversy” requirement of
the Declaratory Judgment Act, 28 U.S.C. § 2201(a), require a patent licensee to
refuse to pay royalties and commit material breach of the license agreement33
before suing to declare the patent invalid, unenforceable or not infringed?
The Supreme Court’s Opinion. On January 9, 2007, the Supreme Court
reversed the Federal Circuit’s judgment in an 8-1 decision, and remanded the case
to the district court. The Court held that a patent licensee is not required to repudiate
its license agreement before seeking a declaratory judgment in federal court that the
underlying patent is invalid, unenforceable, or not infringed.34
Writing for the majority, Justice Antonin Scalia first explained that the Article
III “case or controversy” requirement would have been satisfied if MedImmune had
refused to make royalty payments.35 At issue here, however, was whether a case or
controversy still existed when MedImmune’s compliance with the license terms
eliminated the immediate threat of injury from a patent infringement lawsuit. Justice
Scalia offered a comparison to a situation where the government threatens legal
action, in which there is no requirement that “a plaintiff  expose himself to liability
before bringing suit to challenge the basis for the threat — for example, the
29 MedImmune, Inc. v. Genentech, Inc., 427 F.3d 958, 963 (Fed. Cir. 2005).
33 MedImmune, Inc. v. Genentech, Inc., 546 U.S. 1169 (2006).
34 MedImmune, 127 S.Ct. at 777.
35 Id. at 771-72.
constitutionality of a law threatened to be enforced.”36 In such a case, he noted,
courts have not found Article III jurisdiction to be lacking despite the fact that the
plaintiff’s own action (or inaction) in failing to violate the law eliminates the
imminent threat of prosecution.37
Although a private party, rather than the government, threatened the
enforcement action in MedImmune, this distinction does not make a significant legal
difference that would eliminate jurisdiction, Justice Scalia argued.38 He identified
an earlier Supreme Court decision, Altvater v. Freeman,39 that had a substantially
similar fact pattern as MedImmune. In Altvater, the patentees had filed suit against
their licensees to enforce territorial restrictions in the license. The licensees then
filed a counterclaim for declaratory judgment that the underlying patents were
invalid. However, the licensees continued to pay royalties “under protest,” although
it was being required to do so under an injunction decree that the patentees had
obtained in an earlier case. Yet Justice Scalia explained that the absence of an
injunction in MedImmune does not distinguish the case from Altvater because if the
Altvater licensee had stopped paying the royalties in defiance of the injunction, the
licensee would have risked being liable for actual and treble damages in a patent
infringement lawsuit.40 The Altvater Court had held
[C]ertainly the requirements of [a] case or controversy are met where payment
of a claim is demanded as of right and where payment is made, but where the
involuntary or coercive nature of the exaction preserves the right to recover the41
sums paid or to challenge the legality of the claim.
Here, Genentech had demanded that MedImmune make royalty payments under the
licensing agreement and apparently threatened to bring a patent infringement lawsuit
to enjoin sales of MedImmune’s Synagis drug if royalties were not paid.
MedImmune’s payment of royalties under such “coercive” circumstances does not
eliminate jurisdiction of a court to entertain a declaratory judgment action, Justice42
Scalia stated. He opined, “The rule that a plaintiff must destroy a large building,
bet the farm, or (as here) risk treble damages and the loss of 80 percent of its
business, before seeking a declaration of its actively contested legal rights finds no
support in Article III.”43
Justice Scalia cautioned that the Supreme Court’s decision in this case is limited
to the procedural issue of whether federal courts have subject matter jurisdiction over
these types of declaratory judgment actions brought by nonrepudiating licensees; the
36 Id. at 772.
38 Id. at 773.
39 319 U.S. 359 (1943).
40 MedImmune, 127 S.Ct. at 774.
41 Altvater, 319 U.S. at 365.
42 MedImmune, 127 S.Ct. at 773.
43 Id. at 775.
Court declined, however, to express an opinion on the merits of the arguments made
by the licensor-patentee for denying declaratory relief to the licensee. In its briefs
filed with the Court, Genentech had appealed to a common-law doctrine that a party
to a contract cannot challenge its validity while simultaneously continuing to reap its
benefits.44 Furthermore, Genentech had argued that the license agreement itself
precluded the suit, because
[w]hen a licensee enters such an agreement ... 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. Permitting
it to challenge the validity of the patent without terminating or breaking the
agreement alters the deal, allowing the licensee to continue enjoying its
immunity while bringing a suit, the elimination of which was part of the45
patentee’s quid pro quo.
Justice Scalia observed, however, that these two points raised by Genentech
went to the merits of the case, and not to the question of whether Article III46
jurisdiction is available over MedImmune’s declaratory judgment action. Finally,
noting that the Declaratory Judgment Act provides that a court “may declare the47
rights and other legal relations of any interested party,” Justice Scalia decided to
“leave the equitable, prudential, and policy arguments in favor of such a discretionary48
dismissal for the lower courts’ consideration on remand.” Similarly left for
consideration on remand are any merits-based arguments for denial of declaratory
relief in the case.
In lone dissent, Justice Clarence Thomas maintained that a patent licensee in
good standing must breach its license prior to challenging the validity of the49
underlying patent. He stated, “[T]he declaratory judgment procedure cannot be
used to obtain advanced rulings on matters that would be addressed in a future case50
of actual controversy.” In his view, MedImmune’s suit was an attempt to seek a
ruling on hypothetical or conjectural matters, and thus federal courts lacked Article
III jurisdiction over its claims.
Concluding Observations. Since MedImmune was decided, the Federal
Circuit has acknowledged that the first prong of its “two-part test” for declaratory
judgment jurisdiction, the “reasonable apprehension of suit” prong, is no longer valid
because it contradicts Supreme Court precedent as explained by the MedImmune
44 Id. at 776 (citing Commodity Credit Corp. v. Rosenberg Bros. & Co., 243 F.2d 504, 512
(9th Cir. 1957), and Kingman & Co. v. Stoddard, 85 F. 740, 745 (7th Cir. 1898)).
45 MedImmune, 127 S.Ct. at 775-76.
46 Id. at 776.
47 28 U.S.C. § 2201(a) (emphasis added).
48 MedImmune, 127 S.Ct. at 777.
49 MedImmune, 127 S.Ct. at 777 (Thomas, J., dissenting).
Court.51 MedImmune, however, left open several unresolved questions whose impact
on the patent law remain to be seen; lower courts’ interpretations of the decision will
be instructive, and the Supreme Court may well revisit the issues it declined to
address in MedImmune during a future case. For example, the Lear Court had ruled
that a repudiating licensee need not comply with its contract and continue paying
royalties until the patent is held invalid by a court.52 However, the MedImmune Court
“express[ed] no opinion” on whether a nonrepudiating licensee is relieved of its
contract obligations during the suit challenging the patent’s validity.53 Therefore, the
applicability of the licensee estoppel doctrine to this situation is an open question
after MedImmune. Also, the MedImmune Court had emphasized that district courts
still have statutory discretionary authority to decline to hear declaratory judgment
actions; it will be up to licensors-patentees to craft “equitable, prudential, and policy
arguments” to successfully persuade the district court to exercise that discretion.
Finally, the MedImmune Court did not consider the enforceability of drafting a
provision in a license agreement that obliged a licensee not to challenge the validity
of the underlying patent unless he or she breached the license.
Other ramifications of MedImmune on the patent law are significant. First, the
ruling may spark an increase in patent litigation activity, as more patent licensees
may find it easier to bring declaratory judgment actions to challenge the patent’s
validity — without having to terminate or breach their license agreements before
doing so. Second, the decision promises to play a role in drafting and negotiating
the terms of patent licensing agreements, as licensors-patentees may be interested in
having licensees agree to the inclusion of “no challenge” clauses.54 It is also likely
that the decision may have an impact beyond patent law, as it may be applicable to
licensing and contract law matters that do not involve intellectual property.
51 SanDisk Corp. v. STMicroelectronics, Inc., 480 F. 3d 1372, 1380 (Fed. Cir. 2007). The
Federal Circuit expressly chose to “leave to another day the effect of MedImmune, if any,
on the second prong” of its test. Id.
52 Lear, 395 U.S. at 673 (“[O]verriding federal policies would be significantly frustrated if
licensees could be required to continue to pay royalties during the time they are challenging
patent validity in the courts.”).
53 MedImmune, 127 S.Ct. at 769-70. Thus, it is uncertain whether nonrepudiating patent
licensees who pay royalties “under protest” may be able to obtain a refund of those royalties
when the patent is finally held invalid.
54 The enforceability of such a provision, as noted above, is unclear. However, it is possible
that a licensor-patentee could draft a clause providing that the patent may be challenged by
the nonrepudiating licensee, on the condition that such action would “trigger a steep
increase in royalty payments or a large lump sum payment (to cover the licensor’s litigation
expenses),” among other things. Catherine Nyarady, “MedImmune v. Genentech”:
Unanswered Questions, 237 NEW YORK LAW JOURNAL 22 (Feb. 1, 2007).