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IP Updates

SanDisk Corp. v STMicroelectronics, Inc.

January 20, 2009

IP Updates

SanDisk Corp. v STMicroelectronics, Inc.

January 20, 2009

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Case Summary

SanDisk Corp. v STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007)

      Relying on the Supreme Court’s decision in

MedImmune v. Genentech

      , 127 S.Ct. 764 (2007), the Federal Circuit vacates dismissal of SanDisk’s declaratory judgment action. The Court noted that footnote 11 of

MedImmune

      disapproved of the Federal Circuit’s two-part test for declaratory judgment jurisdiction and concluded that the Supreme Court’s opinion represented a rejection of the Federal Circuit’s reasonable apprehension of suit test. The Federal Circuit held that “where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license, an Article III case or controversy will arise and the party need not risk a suit for infringement by engaging in the identified activity before seeking a declaration of its legal rights.” 480 F.3d at 1381.

 

In his concurrence, Judge Bryson agreed that MedImmune undermined the “reasonable apprehension of suit test,” but disagreed with the majority’s broad decision and its examination of the facts surrounding the parties’ negotiations. Judge Bryson concluded that “the rule adopted by the court in this case will effect a sweeping change in our law regarding declaratory judgment jurisdiction.” 480 F.3d at 1385. Noting that the facts in the case did not involve any unusual circumstances from normal licensing discussions, Judge Bryson warned that “it would appear that under the court’s standard virtually any invitation to take a paid license relating to the prospective licensee’s activities would give rise to an Article III case or controversy if the prospective licensee elects to assert that its conduct does not fall within the scope of the patent.” Id.

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