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AbbVie Inc. v. MedImmune Ltd.

No DJ Jurisdiction Where Resolution of Validity Would Not Fully Resolve Underlying Dispute

AbbVie Inc. v. MedImmune Ltd., 2018 WL 704588 (Fed. Cir. Feb. 5, 2018) (Prost, DYK, Chen) (E.D. Va.: Allen) (2 of 5 stars)

Fed Cir affirms dismissal for lack of jurisdiction under the Declaratory Judgment Act. The district court erred in basing its dismissal in part on a determination that there was no controversy as to whether AbbVie infringed MedImmune’s patent. The purpose of AbbVie’s claim for DJ of invalidity was not to avoid an infringement suit, but to avoid a contractual obligation under which AbbVie was paying royalties. Such a contractual dispute can support declaratory judgment jurisdiction, per MedImmune, 549 U.S. 118 (2007), and other Supreme Court and Federal Circuit precedent. However, the district court did not err in determining that a determination of invalidity as to MedImmune’s patent would not actually terminate AbbVie’s royalty obligations. The royalty agreement pegged the end of royalty payments to the expiration of the patent, and it was unclear whether under controlling (British) law invalidation of the patent would be tantamount to expiration. “Contrary to AbbVie’s argument, the Supreme Court in MedImmune did not hold that a patent-invalidity question could be brought as an action separate from the underlying dispute as to contract interpretation.” Op. at 7. There was also no pending litigation that might separately resolve this issue of contract interpretation. “Without taking at least that step, in either the American or British courts, [AbbVie] cannot establish declaratory-judgment jurisdiction over the question of invalidity.” Id. at 8.

KEYWORDS: DECLARATORY JUDGMENT; SUBJECT MATTER JURISDICTION (NO)