MedImmune, Inc. v. Genentech, Inc.

(Slip Opinion) OCTOBER TERM, 2006 1

Syllabus

NOTE: Where it is feasible, a syllabus (headnote) will be released, as is

being done in connection with this case, at the time the opinion is issued.

The syllabus constitutes no part of the opinion of the Court but has been

prepared by the Reporter of Decisions for the convenience of the reader.

See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.

SUPREME COURT OF THE UNITED STATES

Syllabus

MEDIMMUNE, INC. v. GENENTECH, INC., ET AL.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

No. 05–608. Argued October 4, 2006—Decided January 9, 2007

After the parties entered into a patent license agreement covering, inter

alia, respondents’ then-pending patent application, the application

matured into the “Cabilly II” patent. Respondent Genentech, Inc.,

sent petitioner a letter stating that Synagis, a drug petitioner manu

factured, was covered by the Cabilly II patent and that petitioner

owed royalties under the agreement. Although petitioner believed no

royalties were due because the patent was invalid and unenforceable

and because Synagis did not infringe the patent’s claims, petitioner

considered the letter a clear threat to enforce the patent, terminate

the license agreement, and bring a patent infringement action if peti

tioner did not pay. Because such an action could have resulted in pe

titioner’s being ordered to pay treble damages and attorney’s fees and

enjoined from selling Synagis, which accounts for more than 80 per

cent of its sales revenue, petitioner paid the royalties under protest

and filed this action for declaratory and other relief. The District

Court dismissed the declaratory-judgment claims for lack of subject-

matter jurisdiction because, under Federal Circuit precedent, a pat

ent licensee in good standing cannot establish an Article III case or

controversy with regard to the patent’s validity, enforceability, or

scope. The Federal Circuit affirmed.

Held:

1. Contrary to respondents’ assertion that only a freestanding pat

ent-invalidity claim is at issue, the record establishes that petitioner

has raised and preserved the contract claim that, because of patent

invalidity, unenforceability, and noninfringement, no royalties are

owing. Pp. 3–6.

2. The Federal Circuit erred in affirming the dismissal of this ac

tion for lack of subject-matter jurisdiction. The standards for deter

2 MEDIMMUNE, INC. v. GENENTECH, INC.

Syllabus

mining whether a particular declaratory-judgment action satisfies

the case-or-controversy requirement—i.e., “whether the facts alleged,

under all the circumstances, show that there is a substantial contro

versy, between parties having adverse legal interests, of sufficient

immediacy and reality to warrant” relief, Maryland Casualty Co. v.

Pacific Coal & Oil Co., 312 U. S. 270, 273—are satisfied here even

though petitioner did not refuse to make royalty payments under the

license agreement. Where threatened government action is con

cerned, a plaintiff is not required to expose himself to liability before

bringing suit to challenge the basis for the threat. His own action (or

inaction) in failing to violate the law eliminates the imminent threat

of prosecution, but nonetheless does not eliminate Article III jurisdic

tion because the threat-eliminating behavior was effectively coerced.

Similarly, where the plaintiff’s self-avoidance of imminent injury is

coerced by the threatened enforcement action of a private party

rather than the government, lower federal and state courts have long

accepted jurisdiction. In its only decision in point, this Court held

that a licensee’s failure to cease its royalty payments did not render

nonjusticiable a dispute over the patent’s validity. Altvater v. Free

man, 319 U. S. 359, 364. Though Altvater involved an injunction, it

acknowledged that the licensees had the option of stopping payments

in defiance of the injunction, but that the consequence of doing so

would be to risk “actual [and] treble damages in infringement suits”

by the patentees, a consequence also threatened in this case. Id., at

365. Respondents’ assertion that the parties in effect settled this

dispute when they entered into their license agreement is mistaken.

Their appeal to the common-law rule that a party to a contract can

not both challenge its validity and continue to reap its benefits is also

unpersuasive. Lastly, because it was raised for the first time here,

this Court does not decide respondents’ request to affirm the dis

missal of the declaratory-judgment claims on discretionary grounds.

That question and any merits-based arguments for denial of declara

tory relief are left for the lower courts on remand. Pp. 7–18.

427 F. 3d 958, reversed and remanded.

SCALIA, J., delivered the opinion of the Court, in which ROBERTS,

C. J., and STEVENS, KENNEDY, SOUTER, GINSBURG, BREYER, and ALITO,

JJ., joined. THOMAS, J., filed a dissenting opinion.

Cite as: 549 U. S. ____ (2007) 1

Opinion of the Court

NOTICE: This opinion is subject to formal revision before publication in the

preliminary print of the United States Reports. Readers are requested to

notify the Reporter of Decisions, Supreme Court of the United States, Wash

ington, D. C. 20543, of any typographical or other formal errors, in order

that corrections may be made before the preliminary print goes to press.

SUPREME COURT OF THE UNITED STATES

_________________

No. 05–608

_________________

MEDIMMUNE, INC., PETITIONER v. GENENTECH,

INC., ET AL.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

[January 9, 2007]

JUSTICE SCALIA delivered the opinion of the Court.

We must decide whether Article III’s limitation of fed

eral courts’ jurisdiction to “Cases” and “Controversies,”

reflected in the “actual controversy” requirement of the

Declaratory Judgment Act, 28 U. S. C. §2201(a), requires a

patent licensee to terminate or be in breach of its license

agreement before it can seek a declaratory judgment that

the underlying patent is invalid, unenforceable, or not

infringed.

I

Because the declaratory-judgment claims in this case

were disposed of at the motion-to-dismiss stage, we take

the following facts from the allegations in petitioner’s

amended complaint and the unopposed declarations that

petitioner submitted in response to the motion to dismiss.

Petitioner MedImmune, Inc., manufactures Synagis, a

drug used to prevent respiratory tract disease in infants

and young children. In 1997, petitioner entered into a

patent license agreement with respondent Genentech, Inc.

(which acted on behalf of itself as patent assignee and on

behalf of the coassignee, respondent City of Hope). The

2 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

license covered an existing patent relating to the produc

tion of “chimeric antibodies” and a then-pending patent

application relating to “the coexpression of immunoglobu

lin chains in recombinant host cells.” Petitioner agreed to

pay royalties on sales of “Licensed Products,” and respon

dents granted petitioner the right to make, use, and sell

them. The agreement defined “Licensed Products” as a

specified antibody, “the manufacture, use or sale of which

. . . would, if not licensed under th[e] Agreement, infringe

one or more claims of either or both of [the covered pat

ents,] which have neither expired nor been held invalid by

a court or other body of competent jurisdiction from which

no appeal has been or may be taken.” App. 399. The

license agreement gave petitioner the right to terminate

upon six months’ written notice.

In December 2001, the “coexpression” application cov

ered by the 1997 license agreement matured into the

“Cabilly II” patent. Soon thereafter, respondent Genen

tech delivered petitioner a letter expressing its belief that

Synagis was covered by the Cabilly II patent and its ex

pectation that petitioner would pay royalties beginning

March 1, 2002. Petitioner did not think royalties were

owing, believing that the Cabilly II patent was invalid and

unenforceable,1 and that its claims were in any event not

infringed by Synagis. Nevertheless, petitioner considered

the letter to be a clear threat to enforce the Cabilly II

patent, terminate the 1997 license agreement, and sue for

patent infringement if petitioner did not make royalty

payments as demanded. If respondents were to prevail in

a patent infringement action, petitioner could be ordered

to pay treble damages and attorney’s fees, and could be

enjoined from selling Synagis, a product that has ac

——————

1 Hereinafter,

invalidity and unenforceability will be referred to sim

ply as invalidity, with similar abbreviation of positive (validity and

enforceability) and adjectival (valid and invalid, enforceable and

unenforceable) forms.

Cite as: 549 U. S. ____ (2007) 3

Opinion of the Court

counted for more than 80 percent of its revenue from sales

since 1999. Unwilling to risk such serious consequences,

petitioner paid the demanded royalties “under protest and

with reservation of all of [its] rights.” Id., at 426. This

declaratory-judgment action followed.

Petitioner sought the declaratory relief discussed in

detail in Part II below. Petitioner also requested damages

and an injunction with respect to other federal and state

claims not relevant here. The District Court granted

respondents’ motion to dismiss the declaratory-judgment

claims for lack of subject-matter jurisdiction, relying on

the decision of the United States Court of Appeals for the

Federal Circuit in Gen-Probe Inc. v. Vysis, Inc., 359 F. 3d

1376 (2004). Gen-Probe had held that a patent licensee in

good standing cannot establish an Article III case or con

troversy with regard to validity, enforceability, or scope of

the patent because the license agreement “obliterate[s]

any reasonable apprehension” that the licensee will be

sued for infringement. Id., at 1381. The Federal Circuit

affirmed the District Court, also relying on Gen-Probe.

427 F. 3d 958 (2005). We granted certiorari. 546 U. S.

1169 (2006).

II

At the outset, we address a disagreement concerning the

nature of the dispute at issue here—whether it involves

only a freestanding claim of patent invalidity or rather a

claim that, both because of patent invalidity and because

of noninfringement, no royalties are owing under the

license agreement.2 That probably makes no difference to

the ultimate issue of subject-matter jurisdiction, but it is

——————

2 The dissent contends that the question on which we granted certio

rari does not reach the contract claim. Post, at 5 (opinion of THOMAS,

J.). We think otherwise. The question specifically refers to the “license

agreement” and to the contention that the patent is “not infringed.”

Pet. for Cert. (i). The unmistakable meaning is that royalties are not

owing under the contract.

4 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

well to be clear about the nature of the case before us.

Respondents contend that petitioner “is not seeking an

interpretation of its present contractual obligations.”

Brief for Respondent Genentech 37; see also Brief for

Respondent City of Hope 48–49. They claim this for two

reasons: (1) because there is no dispute that Synagis in

fringes the Cabilly II patent, thereby making royalties

payable; and (2) because while there is a dispute over patent

validity, the contract calls for royalties on an infringing

product whether or not the underlying patent is valid. See

Brief for Respondent Genentech 7, 37. The first point

simply does not comport with the allegations of petitioner’s

amended complaint. The very first count requested a

“DECLARATORY JUDGMENT ON CONTRACTUAL

RIGHTS AND OBLIGATIONS,” and stated that peti

tioner “disputes its obligation to make payments under the

1997 License Agreement because [petitioner’s] sale of its

Synagis® product does not infringe any valid claim of the

[Cabilly II] Patent.” App. 136. These contentions were

repeated throughout the complaint. Id., at 104, 105, 108,

147.3 And the phrase “does not infringe any valid claim”

(emphasis added) cannot be thought to be no more than a

challenge to the patent’s validity, since elsewhere the

amended complaint states with unmistakable clarity that

“the patent is . . . not infringed by [petitioner’s] Synagis

product and that [petitioner] owes no payments under

license agreements with [respondents].” Id., at 104.4

——————

3 In addition to agreeing with respondents that (despite the face of the

complaint) this case does not involve a contract claim, post, at 4–5, the

dissent evidently thinks the contract claim is weak. That, however,

goes to the merits of the claim, not to its existence or the courts’ juris

diction over it. Nor is the alleged “lack of specificity in the complaint,”

post, at 4, a jurisdictional matter.

4 The dissent observes that the District Court assumed that Synagis

was “ ‘covered by the patents at issue.’ ” Post, at 5 (quoting App. 349–

350). But the quoted statement is taken from the District Court’s

separate opinion granting summary judgment on petitioner’s antitrust

Cite as: 549 U. S. ____ (2007) 5

Opinion of the Court

As to the second point, petitioner assuredly did contend

that it had no obligation under the license to pay royalties

on an invalid patent. Id., at 104, 136, 147. Nor is that

contention frivolous. True, the license requires petitioner

to pay royalties until a patent claim has been held invalid

by a competent body, and the Cabilly II patent has not.

But the license at issue in Lear, Inc. v. Adkins, 395 U. S.

653, 673 (1969), similarly provided that “royalties are to

be paid until such time as the ‘patent . . . is held invalid,’ ”

and we rejected the argument that a repudiating licensee

must comply with its contract and pay royalties until its

claim is vindicated in court. We express no opinion on

whether a nonrepudiating licensee is similarly relieved of

its contract obligation during a successful challenge to a

patent’s validity—that is, on the applicability of licensee

estoppel under these circumstances. Cf. Studiengesell

schaft Kohle, M. B. H. v. Shell Oil Co., 112 F. 3d 1561,

1568 (CA Fed. 1997) (“[A] licensee . . . cannot invoke the

protection of the Lear doctrine until it (i) actually ceases

payment of royalties, and (ii) provides notice to the licen

sor that the reason for ceasing payment of royalties is

because it has deemed the relevant claims to be invalid”).

All we need determine is whether petitioner has alleged a

contractual dispute. It has done so.

Respondents further argue that petitioner waived its

contract claim by failing to argue it below. Brief for Re

spondent Genentech 10–11; Tr. of Oral Arg. 30–31. The

record reveals, however, that petitioner raised the contract

point before the Federal Circuit. See Brief for Plantiff-

Appellant MedImmune, Inc. in Nos. 04–1300, 04–1384

——————

claims. For purposes of that earlier ruling, whether Synagis infringed

the patent was irrelevant, and there was no harm in accepting respon

dents’ contention on the point. This tells us nothing, however, about

petitioner’s contract claim or the District Court’s later jurisdictional

holding with respect to it.

6 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

(CA Fed.), p. 38 (“Here, MedImmune is seeking to define

its rights and obligations under its contract with Genen

tech—precisely the type of action the Declaratory Judg

ment Act contemplates”). That petitioner limited its

contract argument to a few pages of its appellate brief

does not suggest a waiver; it merely reflects counsel’s

sound assessment that the argument would be futile. The

Federal Circuit’s Gen-Probe precedent precluded jurisdic

tion over petitioner’s contract claims, and the panel below

had no authority to overrule Gen-Probe.5 Having deter

mined that petitioner has raised and preserved a contract

claim,6 we turn to the jurisdictional question.

——————

5 Respondents obviously agree. They said in the District Court: “The

facts of this case are, for purposes of this motion, identical to the facts

in Gen-Probe. . . . Like Gen-Probe, MedImmune filed an action seeking

a declaratory judgment that: (a) it owes nothing under its license

agreement with Genentech because its sales of Synagis® allegedly do

not infringe any valid claim of the [Cabilly II] patent; (b) the [Cabilly II]

patent is invalid; (c) the [Cabilly II] patent is unenforceable; and (d)

Synagis® does not infringe the [Cabilly II] patent.” App. in Nos. 04–

1300, 04–1384 (CA Fed.), p. A2829 (record citations omitted).

6 The dissent asserts that petitioner did not allege a contract claim in

its opening brief or at oral argument. Post, at 5. This is demonstrably

false. See, e.g., Brief for Petitioner 8 (the Cabilly II patent was “not

infringed by Synagis®, so that royalties were not due under the li

cense”); id., at 12 (Summary of Argument: “[The purpose] of the De

claratory Judgment Act . . . was to allow contracting parties to resolve

their disputes in court without breach and without risking economic

destruction and multiplying damages. . . . The holding [below] . . .

would . . . disrupt the law of licenses and contracts throughout the

economy, essentially undoing the achievement of the reformers of

1934”); Tr. of Oral Arg. 15 (“We’re saying this is a contract dispute”);

id., at 16 (“[T]he purpose of this [the Declaratory Judgment Act] is so

that contracts can be resolved without breach”); id., at 57 (“The con

tract claim is clear in the record. It’s at page 136 of the joint appendix.

I don’t think more needs to be said about it”).

The dissent also asserts that the validity of the contract claim

“hinges entirely upon a determination of the patent’s validity,” since

“ ‘the license requires [MedImmune] to pay royalties until a patent

claim has been held invalid by a competent body,’ ” post, at 5, quoting

Cite as: 549 U. S. ____ (2007)

7

Opinion of the Court

III

The Declaratory Judgment Act provides that, “[i]n a case

of actual controversy within its jurisdiction . . . any court of

the United States . . . may declare the rights and other

legal relations of any interested party seeking such decla

ration, whether or not further relief is or could be sought.”

28 U. S. C. §2201(a). There was a time when this Court

harbored doubts about the compatibility of declaratory-

judgment actions with Article III’s case-or-controversy

requirement. See Willing v. Chicago Auditorium Assn.,

277 U. S. 274, 289 (1928); Liberty Warehouse Co. v. Gran

nis, 273 U. S. 70 (1927); see also Gordon v. United States,

117 U. S. Appx. 697, 702 (1864) (the last opinion of Taney,

C. J., published posthumously) (“The award of execution is

. . . an essential part of every judgment passed by a court

exercising judicial power”). We dispelled those doubts,

however, in Nashville, C. & St. L. R. Co. v. Wallace, 288

U. S. 249 (1933), holding (in a case involving a declaratory

judgment rendered in state court) that an appropriate

action for declaratory relief can be a case or controversy

under Article III. The federal Declaratory Judgment Act

was signed into law the following year, and we upheld its

constitutionality in Aetna Life Ins. Co. v. Haworth, 300

U. S. 227 (1937). Our opinion explained that the phrase

“case of actual controversy” in the Act refers to the type of

“Cases” and “Controversies” that are justiciable under

Article III. Id., at 240.

Aetna and the cases following it do not draw the bright

est of lines between those declaratory-judgment actions

that satisfy the case-or-controversy requirement and those

that do not. Our decisions have required that the dispute

be “definite and concrete, touching the legal relations of

——————

infra, at 5. This would be true only if the license required royalties on

all products under the sun, and not just those that practice the patent.

Of course it does not.

8 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

parties having adverse legal interests”; and that it be “real

and substantial” and “admi[t] of specific relief through a

decree of a conclusive character, as distinguished from an

opinion advising what the law would be upon a hypotheti

cal state of facts.” Id., at 240–241. In Maryland Casualty

Co. v. Pacific Coal & Oil Co., 312 U. S. 270, 273 (1941), we

summarized as follows: “Basically, the question in each

case is whether the facts alleged, under all the circum

stances, show that there is a substantial controversy,

between parties having adverse legal interests, of suffi

cient immediacy and reality to warrant the issuance of a

declaratory judgment.”7

There is no dispute that these standards would have

been satisfied if petitioner had taken the final step of

refusing to make royalty payments under the 1997 license

agreement. Respondents claim a right to royalties under

the licensing agreement. Petitioner asserts that no royal

——————

7 The dissent asserts, post, at 1, that “the declaratory judgment pro

cedure cannot be used to obtain advanced rulings on matters that

would be addressed in a future case of actual controversy.” As our

preceding discussion shows, that is not so. If the dissent’s point is

simply that a defense cannot be raised by means of a declaratory-

judgment action where there is no “actual controversy” or where it

would be “premature,” phrasing that argument as the dissent has done

begs the question: whether this is an actual, ripe controversy.

Coffman v. Breeze Corps., 323 U. S. 316, 323–324 (1945), cited post,

at 3, does not support the dissent’s view (which is why none of the

parties cited it). There, a patent owner sued to enjoin his licensee from

paying accrued royalties to the Government under the Royalty Adjust

ment Act of 1942, and sought to attack the constitutionality of the Act.

The Court held the request for declaratory judgment and injunction

nonjusticiable because the patent owner asserted no right to recover

the royalties and there was no indication that the licensee would even

raise the Act as a defense to suit for the royalties. The other case the

dissent cites for the point, Calderon v. Ashmus, 523 U. S. 740, 749

(1998), simply holds that a litigant may not use a declaratory-judgment

action to obtain piecemeal adjudication of defenses that would not

finally and conclusively resolve the underlying controversy. That is, of

course, not the case here.

Cite as: 549 U. S. ____ (2007) 9

Opinion of the Court

ties are owing because the Cabilly II patent is invalid and

not infringed; and alleges (without contradiction) a threat

by respondents to enjoin sales if royalties are not forth

coming. The factual and legal dimensions of the dispute

are well defined and, but for petitioner’s continuing to

make royalty payments, nothing about the dispute would

render it unfit for judicial resolution. Assuming (without

deciding) that respondents here could not claim an antici

patory breach and repudiate the license, the continuation

of royalty payments makes what would otherwise be an

imminent threat at least remote, if not nonexistent. As

long as those payments are made, there is no risk that

respondents will seek to enjoin petitioner’s sales. Peti

tioner’s own acts, in other words, eliminate the imminent

threat of harm.8 The question before us is whether this

causes the dispute no longer to be a case or controversy

within the meaning of Article III.

Our analysis must begin with the recognition that,

where threatened action by government is concerned, we

do not require a plaintiff to expose himself to liability

before bringing suit to challenge the basis for the threat—

for example, the constitutionality of a law threatened to be

enforced. The plaintiff’s own action (or inaction) in failing

to violate the law eliminates the imminent threat of prose

cution, but nonetheless does not eliminate Article III

jurisdiction. For example, in Terrace v. Thompson, 263

——————

8 The justiciability problem that arises, when the party seeking de

claratory relief is himself preventing the complained-of injury from

occurring, can be described in terms of standing (whether plaintiff is

threatened with “imminent” injury in fact “ ‘fairly . . . trace[able] to the

challenged action of the defendant,’ ” Lujan v. Defenders of Wildlife, 504

U. S. 555, 560 (1992)), or in terms of ripeness (whether there is suffi

cient “hardship to the parties [in] withholding court consideration”

until there is enforcement action, Abbott Laboratories v. Gardner, 387

U. S. 136, 149 (1967)). As respondents acknowledge, standing and

ripeness boil down to the same question in this case. Brief for Respon

dent Genentech 24; Brief for Respondent City of Hope 30–31.

10 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

U. S. 197 (1923), the State threatened the plaintiff with

forfeiture of his farm, fines, and penalties if he entered

into a lease with an alien in violation of the State’s anti

alien land law. Given this genuine threat of enforcement,

we did not require, as a prerequisite to testing the validity

of the law in a suit for injunction, that the plaintiff bet the

farm, so to speak, by taking the violative action. Id., at

216. See also, e.g., Village of Euclid v. Ambler Realty Co.,

272 U. S. 365 (1926); Ex parte Young, 209 U. S. 123 (1908).

Likewise, in Steffel v. Thompson, 415 U. S. 452 (1974), we

did not require the plaintiff to proceed to distribute hand

bills and risk actual prosecution before he could seek a

declaratory judgment regarding the constitutionality of a

state statute prohibiting such distribution. Id., at 458–

460. As then-Justice Rehnquist put it in his concurrence,

“the declaratory judgment procedure is an alternative to

pursuit of the arguably illegal activity.” Id., at 480. In

each of these cases, the plaintiff had eliminated the immi

nent threat of harm by simply not doing what he claimed

the right to do (enter into a lease, or distribute handbills

at the shopping center). That did not preclude subject-

matter jurisdiction because the threat-eliminating behav

ior was effectively coerced. See Terrace, supra, at 215–

216; Steffel, supra, at 459. The dilemma posed by that

coercion—putting the challenger to the choice between

abandoning his rights or risking prosecution—is “a di

lemma that it was the very purpose of the Declaratory

Judgment Act to ameliorate.” Abbott Laboratories v.

Gardner, 387 U. S. 136, 152 (1967).

Supreme Court jurisprudence is more rare regarding

application of the Declaratory Judgment Act to situations

in which the plaintiff’s self-avoidance of imminent injury

is coerced by threatened enforcement action of a private

party rather than the government. Lower federal courts,

however (and state courts interpreting declaratory judg

ment Acts requiring “actual controversy”), have long ac

Cite as: 549 U. S. ____ (2007) 11

Opinion of the Court

cepted jurisdiction in such cases. See, e.g., Keener Oil &

Gas Co. v. Consolidated Gas Utilities Corp., 190 F. 2d 985,

989 (CA10 1951); American Machine & Metals, Inc. v. De

Bothezat Impeller Co., 166 F. 2d 535 (CA2 1948); Hess v.

Country Club Park, 213 Cal. 613, 614, 2 P. 2d 782, 783

(1931) (in bank); Washington-Detroit Theater Co. v. Moore,

249 Mich. 673, 675, 229 N. W. 618, 618–619 (1930); see

also Advisory Committee’s Note on Fed. Rule Civ. Proc.

57.9

The only Supreme Court decision in point is, fortui

tously, close on its facts to the case before us. Altvater v.

Freeman, 319 U. S. 359 (1943), held that a licensee’s fail

ure to cease its payment of royalties did not render non-

justiciable a dispute over the validity of the patent. In

that litigation, several patentees had sued their licensees

to enforce territorial restrictions in the license. The licen

sees filed a counterclaim for declaratory judgment that the

underlying patents were invalid, in the meantime paying

“under protest” royalties required by an injunction the

patentees had obtained in an earlier case. The patentees

argued that “so long as [licensees] continue to pay royal

ties, there is only an academic, not a real controversy,

between the parties.” Id., at 364. We rejected that argu

ment and held that the declaratory-judgment claim pre

sented a justiciable case or controversy: “The fact that

royalties were being paid did not make this a ‘difference or

dispute of a hypothetical or abstract character.’ ” Ibid.

——————

9 The dissent claims the cited cases do not “rely on the coercion inher

ent in making contractual payments.” Post, at 9, n. 3. That is true;

they relied on (to put the matter as the dissent puts it) the coercion

inherent in complying with other claimed contractual obligations. The

dissent fails to explain why a contractual obligation of payment is

magically different. It obviously is not. In our view, of course, the

relevant coercion is not compliance with the claimed contractual

obligation, but rather the consequences of failure to do so.

12 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

(quoting Aetna, 300 U. S., at 240). The royalties “were

being paid under protest and under the compulsion of an

injunction decree,” and “[u]nless the injunction decree were

modified, the only other course [of action] was to defy it,

and to risk not only actual but treble damages in in

fringement suits.” 319 U. S., at 365. We concluded that

“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 the

sums paid or to challenge the legality of the claim.” Ibid.10

——————

10 The dissent incorrectly asserts that Altvater required actual in

fringement, quoting wildly out of context (and twice, for emphasis)

Altvater’s statement that “ ‘[t]o hold a patent valid if it is not infringed

is to decide a hypothetical case.’ ” Post, at 3, 7 (quoting 319 U. S., at

363). In the passage from which the quotation was plucked, the Alt

vater Court was distinguishing the Court’s earlier decision in Electrical

Fittings Corp. v. Thomas & Betts Co., 307 U. S. 241 (1939), which

involved an affirmative defense of patent invalidity that had become

moot in light of a finding of no infringement. Here is the full quotation:

“The District Court [in Electrical Fittings] adjudged a claim of a pat

ent valid although it dismissed the bill for failure to prove infringe

ment. We held that the finding of validity was immaterial to the

disposition of the cause and that the winning party might appeal to

obtain a reformation of the decree. To hold a patent valid if it is not

infringed is to decide a hypothetical case. But the situation in the

present case is quite different. We have here not only bill and answer

but a counterclaim. Though the decision of non-infringement disposes

of the bill and answer, it does not dispose of the counterclaim which

raises the question of validity.” Altvater, supra, at 363 (footnote

omitted).

As the full quotation makes clear, the snippet quoted by the dissent has

nothing to do with whether infringement must be actual or merely

threatened. Indeed, it makes clear that in appropriate cases to hold a

noninfringed patent valid is not to decide a hypothetical case.

Though the dissent acknowledges the central lesson of Altvater, post,

at 8—that payment of royalties under “coercive” circumstances does not

eliminate jurisdiction—it attempts to limit that rationale to the par

ticular facts of Altvater. But none of Altvater’s “unique facts,” post, at 8,

Cite as: 549 U. S. ____ (2007) 13

Opinion of the Court

The Federal Circuit’s Gen-Probe decision distinguished

Altvater on the ground that it involved the compulsion of

an injunction. But Altvater cannot be so readily dis

missed. Never mind that the injunction had been pri

vately obtained and was ultimately within the control of

the patentees, who could permit its modification. More

fundamentally, and contrary to the Federal Circuit’s

conclusion, Altvater did not say that the coercion disposi

tive of the case was governmental, but suggested just the

opposite. The opinion acknowledged that the licensees

had the option of stopping payments in defiance of the

injunction, but explained that the consequence of doing so

would be to risk “actual [and] treble damages in infringe

ment suits” by the patentees. 319 U. S., at 365. It signifi

cantly did not mention the threat of prosecution for con

tempt, or any other sort of governmental sanction.

Moreover, it cited approvingly a treatise which said that

an “actual or threatened serious injury to business or

employment” by a private party can be as coercive as other

forms of coercion supporting restitution actions at common

law; and that “[t]o imperil a man’s livelihood, his business

enterprises, or his solvency, [was] ordinarily quite as coer

cive” as, for example, “detaining his property.” F. Wood

ward, The Law of Quasi Contracts §218 (1913), cited in

Altvater, supra, at 365.11

——————

suggests that a different test applies to the royalty payments here.

Other than a conclusory assertion that the payments here were “volun

tarily made,” post, at 10, the dissent never explains why the threat of

treble damages and the loss of 80 percent of petitioner’s business does

not fall within Altvater’s coercion rationale.

11 Even if Altvater could be distinguished as an “injunction” case, it

would still contradict the Federal Circuit’s “reasonable apprehension of

suit” test (or, in its evolved form, the “reasonable apprehension of

imminent suit” test, Teva Pharm. USA, Inc. v. Pfizer, Inc., 395 F. 3d

1324, 1333 (2005)). A licensee who pays royalties under compulsion of

an injunction has no more apprehension of imminent harm than a

licensee who pays royalties for fear of treble damages and an injunction

14 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

Jurisdiction over the present case is not contradicted by

Willing v. Chicago Auditorium Association, 277 U. S. 274.

There a ground lessee wanted to demolish an antiquated

auditorium and replace it with a modern commercial

building. The lessee believed it had the right to do this

without the lessors’ consent, but was unwilling to drop the

wrecking ball first and test its belief later. Because there

was no declaratory judgment act at the time under federal

or applicable state law, the lessee filed an action to remove

a “cloud” on its lease. This Court held that an Article III

case or controversy had not arisen because “[n]o defendant

ha[d] wronged the plaintiff or ha[d] threatened to do so.”

Id., at 288, 290. It was true that one of the colessors had

disagreed with the lessee’s interpretation of the lease, but

that happened in an “informal, friendly, private conversa

tion,” id., at 286, a year before the lawsuit was filed; and

the lessee never even bothered to approach the other co

lessors. The Court went on to remark that “[w]hat the

plaintiff seeks is simply a declaratory judgment,” and “[t]o

grant that relief is beyond the power conferred upon the

federal judiciary.” Id., at 289. Had Willing been decided

after the enactment (and our upholding) of the Declara

tory Judgment Act, and had the legal disagreement be

tween the parties been as lively as this one, we are confi

——————

fatal to his business. The reasonable-apprehension-of-suit test also

conflicts with our decisions in Maryland Casualty Co. v. Pacific Coal &

Oil Co., 312 U. S. 270, 273 (1941), where jurisdiction obtained even

though the collision-victim defendant could not have sued the declara

tory-judgment plaintiff-insurer without first obtaining a judgment

against the insured; and Aetna Life Ins. Co. v. Haworth, 300 U. S. 227,

239 (1937), where jurisdiction obtained even though the very reason the

insurer sought declaratory relief was that the insured had given no

indication that he would file suit. It is also in tension with Cardinal

Chemical Co. v. Morton Int’l, Inc., 508 U. S. 83, 98 (1993), which held

that appellate affirmance of a judgment of noninfringement, eliminat

ing any apprehension of suit, does not moot a declaratory judgment

counterclaim of patent invalidity.

Cite as: 549 U. S. ____ (2007) 15

Opinion of the Court

dent a different result would have obtained. 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.12

Respondents assert that the parties in effect settled this

dispute when they entered into the 1997 license agree

ment. When a licensee enters such an agreement, they

contend, 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

——————

12 The dissent objects to our supposed “extension of Steffel [v. Thomp

son] . . . to apply to voluntarily accepted contractual obligations be

tween private parties.” Post, at 9. The criticism is misdirected in

several respects. The coercion principle upon which we rely today did

not originate with Steffel v. Thompson, 415 U. S. 452 (1974), see supra,

at 9–10, and we have no opportunity to extend it to private litigation,

because Altvater v. Freeman, 319 U. S. 359 (1943) already did so, see

supra, at 12. Moreover, even if today’s decision could be described as

an “extension of Steffel” to private litigation, the dissent identifies no

principled reason why that extension is not appropriate. Article III

does not favor litigants challenging threatened government enforcement

action over litigants challenging threatened private enforcement action.

Indeed, the latter is perhaps the easier category of cases, for it presents

none of the difficult issues of federalism and comity with which we

wrestled in Steffel. See 415 U. S., at 460–475.

The dissent accuses the Court of misapplying Steffel’s rationale.

Post, at 10. It contends that Steffel would apply here only if respon

dents had threatened petitioner with a patent infringement suit in the

absence of a license agreement, because only then would petitioner be

put to the choice of selling its product or facing suit. Post, at 10. Here,

the dissent argues, the license payments are “voluntarily made.” Ibid.

If one uses the word “voluntarily” so loosely, it could be applied with

equal justification (or lack thereof) to the Steffel plaintiff’s “voluntary”

refusal to distribute handbills. We find the threat of treble damages

and loss of 80 percent of petitioner’s business every bit as coercive as

the modest penalties for misdemeanor trespass threatened in Steffel.

Only by ignoring the consequences of the threatened action in this case

can the dissent claim that today’s opinion “contains no limiting princi

ple whatsoever,” post, at 10.

16 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

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 the patentee’s quid pro quo. Of course

even if it were valid, this argument would have no force

with regard to petitioner’s claim that the agreement does

not call for royalties because their product does not in

fringe the patent. But even as to the patent invalidity

claim, the point seems to us mistaken. To begin with, it is

not clear where the prohibition against challenging the

validity of the patents is to be found. It can hardly be

implied from the mere promise to pay royalties on patents

“which have neither expired nor been held invalid by a

court or other body of competent jurisdiction from which

no appeal has been or may be taken,” App. 399. Promising

to pay royalties on patents that have not been held invalid

does not amount to a promise not to seek a holding of their

invalidity.

Respondents appeal to the common-law rule that a

party to a contract cannot at one and the same time chal

lenge its validity and continue to reap its benefits, citing

Commodity Credit Corp. v. Rosenberg Bros. & Co., 243

F. 2d 504, 512 (CA9 1957), and Kingman & Co. v.

Stoddard, 85 F. 740, 745 (CA7 1898). Lear, they contend,

did not suspend that rule for patent licensing agreements,

since the plaintiff in that case had already repudiated the

contract. Even if Lear’s repudiation of the doctrine of

licensee estoppel was so limited (a point on which, as we

have said earlier, we do not opine), it is hard to see how

the common-law rule has any application here. Petitioner

is not repudiating or impugning the contract while con

tinuing to reap its benefits. Rather, it is asserting that the

contract, properly interpreted, does not prevent it from

challenging the patents, and does not require the payment

of royalties because the patents do not cover its products

Cite as: 549 U. S. ____ (2007) 17

Opinion of the Court

and are invalid. Of course even if respondents were cor

rect that the licensing agreement or the common-law rule

precludes this suit, the consequence would be that respon

dents win this case on the merits—not that the very genu

ine contract dispute disappears, so that Article III juris

diction is somehow defeated. In short, Article III

jurisdiction has nothing to do with this “insurance-policy”

contention.

Lastly, respondents urge us to affirm the dismissal of

the declaratory-judgment claims on discretionary grounds.

The Declaratory Judgment Act provides that a court “may

declare the rights and other legal relations of any inter

ested party,” 28 U. S. C. §2201(a) (emphasis added), not

that it must do so. This text has long been understood “to

confer on federal courts unique and substantial discretion

in deciding whether to declare the rights of litigants.”

Wilton v. Seven Falls Co., 515 U. S. 277, 286 (1995); see

also Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U. S.

83, 95, n. 17 (1993); Brillhart v. Excess Ins. Co. of America,

316 U. S. 491, 494–496 (1942). We have found it “more

consistent with the statute,” however, “to vest district

courts with discretion in the first instance, because facts

bearing on the usefulness of the declaratory judgment

remedy, and the fitness of the case for resolution, are

peculiarly within their grasp.” Wilton, supra, at 289. The

District Court here gave no consideration to discretionary

dismissal, since, despite its “serious misgivings” about the

Federal Circuit’s rule, it considered itself bound to dismiss

by Gen-Probe. App. to Pet. for Cert. 31a. Discretionary

dismissal was irrelevant to the Federal Circuit for the

same reason. Respondents have raised the issue for the

first time before this Court, exchanging competing accusa

tions of inequitable conduct with petitioner. See, e.g.,

Brief for Respondent Genentech 42–44; Reply Brief for

Petitioner 17, and n. 15. Under these circumstances, it

would be imprudent for us to decide whether the District

18 MEDIMMUNE, INC. v. GENENTECH, INC.

Opinion of the Court

Court should, or must, decline to issue the requested

declaratory relief. We leave the equitable, prudential, and

policy arguments in favor of such a discretionary dismissal

for the lower courts’ consideration on remand. Similarly

available for consideration on remand are any merits-

based arguments for denial of declaratory relief.

* * *

We hold that petitioner was not required, insofar as

Article III is concerned, to break or terminate its 1997

license agreement before seeking a declaratory judgment

in federal court that the underlying patent is invalid,

unenforceable, or not infringed. The Court of Appeals

erred in affirming the dismissal of this action for lack of

subject-matter jurisdiction.

The judgment of the Court of Appeals is reversed, and

the cause is remanded for proceedings consistent with this

opinion.

It is so ordered.

Cite as: 549 U. S. ____ (2007) 1

THOMAS, J., dissenting

SUPREME COURT OF THE UNITED STATES

_________________

No. 05–608

_________________

MEDIMMUNE, INC., PETITIONER v. GENENTECH,

INC., ET AL.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

[January 9, 2007]

JUSTICE THOMAS, dissenting.

We granted certiorari in this case to determine whether

a patent licensee in good standing must breach its license

prior to challenging the validity of the underlying patent

pursuant to the Declaratory Judgment Act, 28 U. S. C.

§2201. 546 U. S. 1169 (2006). The answer to that ques

tion is yes. We have consistently held that parties do not

have standing to obtain rulings on matters that remain

hypothetical or conjectural. We have also held that the

declaratory judgment procedure cannot be used to obtain

advanced rulings on matters that would be addressed in a

future case of actual controversy. MedImmune has sought

a declaratory judgment for precisely that purpose, and I

would therefore affirm the Court of Appeals’ holding that

there is no Article III jurisdiction over MedImmune’s

claim. The Court reaches the opposite result by extending

the holding of Steffel v. Thompson, 415 U. S. 452 (1974), to

private contractual obligations. I respectfully dissent.

I

Article III of the Constitution limits the judicial power

to the adjudication of “Cases” or “Controversies.” §2. We

have held that the Declaratory Judgment Act extends “to

controversies which are such in the constitutional sense.”

Aetna Life Ins. Co. v. Haworth, 300 U. S. 227, 240 (1937).

2 MEDIMMUNE, INC. v. GENENTECH, INC.

THOMAS, J., dissenting

In the context of declaratory judgment actions, this

Court’s cases have provided a uniform framework for

assessing whether an Article III case or controversy exists.

In the constitutional sense, a “Controversy” is “distin

guished from a difference or dispute of a hypothetical or

abstract character; from one that is academic or moot.”

Ibid. (citing United States v. Alaska S. S. Co., 253 U. S.

113, 116 (1920)). “The controversy must be definite and

concrete, touching the legal relations of parties having

adverse legal interests.” 300 U. S., at 240–241. Finally,

“[i]t must be a real and substantial controversy . . . , as

distinguished from an opinion advising what the law

would be upon a hypothetical state of facts.” Id., at 241.

The Declaratory Judgment Act did not (and could not)

alter the constitutional definition of “case or controversy”

or relax Article III’s command that an actual case or con

troversy exist before federal courts may adjudicate a

question. See Maryland Casualty Co. v. Pacific Coal & Oil

Co., 312 U. S. 270, 272–273 (1941). Thus, this Court has

held that “the operation of the Declaratory Judgment Act

is procedural only.” Aetna Life Ins., 300 U. S., at 240. In

other words, the Act merely provides a different procedure

for bringing an actual case or controversy before a federal

court. The Court applied that principle in Aetna Life Ins.,

where an insurance company brought a declaratory judg

ment action against an insured who claimed he had be

come disabled, had formally presented his claims, and had

refused to make any more insurance payments. Id., at

242. In the course of deciding that it could entertain the

insurer’s declaratory judgment action, the Court specifi

cally noted that, had the insured filed his traditional cause

of action first, “there would have been no question that the

controversy was of a justiciable nature . . . .” Id., at 243.

Accordingly, the Act merely provided a different proce

dural tool that allowed the insurance company to bring an

otherwise justiciable controversy before a federal court.

Cite as: 549 U. S. ____ (2007) 3

THOMAS, J., dissenting

We have also held that no controversy exists when a

declaratory judgment plaintiff attempts to obtain a pre

mature ruling on potential defenses that would typically

be adjudicated in a later actual controversy. In Coffman v.

Breeze Corps., 323 U. S. 316 (1945), a patent owner

brought a declaratory judgment action against his licen

sees seeking to have the Royalty Adjustment Act of 1942

declared unconstitutional and to enjoin his licensees from

paying accrued royalties to the Government. This Court

held that no case or controversy existed because the valid

ity of the Royalty Adjustment Act would properly arise

only as a defense in a suit by the patentholder against the

licensees to recover royalties. Id., at 323–324. Accord

ingly, the complaint at issue was “but a request for an

advisory opinion as to the validity of a defense to a suit for

recovery of the royalties.” Id., at 324. And the Court

noted that “[t]he declaratory judgment procedure . . . may

not be made the medium for securing an advisory opinion

in a controversy which has not arisen.” Ibid.; see also

Calderon v. Ashmus, 523 U. S. 740, 747 (1998) (holding

that a prisoner may not use a declaratory judgment action

to determine the validity of a defense that a State might

raise in a future habeas proceeding).

These principles apply with equal force in the patent

licensing context. In Altvater v. Freeman, 319 U. S. 359,

365–366 (1943), the Court, quite unremarkably, held that

a “licensee” had standing to bring a declaratory judgment

counterclaim asserting the affirmative defense of patent

invalidity in response to a patent infringement suit. But

not to be mistaken, the Altvater Court expressly stated

that “[t]o hold a patent valid if it is not infringed is to

decide a hypothetical case.” Id., at 363. So too, in Cardi

nal Chemical Co. v. Morton Int’l, Inc., 508 U. S. 83, 86

(1993), the affirmative defense of patent invalidity was

raised as a counterclaim to a patent infringement suit.

Although we held that a finding of noninfringement on

4 MEDIMMUNE, INC. v. GENENTECH, INC.

THOMAS, J., dissenting

appeal did not moot a counterclaim alleging invalidity, id.,

at 102–103, we stated that our holding was limited to the

jurisdiction of an appellate court and reiterated that “[i]n

the trial court, of course, a party seeking a declaratory

judgment has the burden of establishing the existence of

an actual case or controversy,” id., at 95.

II

Against the foregoing background, the case before us is

not a justiciable case or controversy under Article III.

A

As a threshold matter, I disagree with the Court’s char

acterization of this case as including a “contractual dis

pute.” Ante, at 5. To substantiate this characterization,

the Court points to a three-paragraph count in MedIm

mune’s complaint entitled “ ‘DECLARATORY JUDGMENT

ON CONTACTUAL RIGHTS AND OBLIGATIONS’ ” and

to MedImmune’s broad allegations that “ ‘its Synagis®

product does not infringe any valid claim of the [Cabilly II]

Patent.’ ” Ante, at 4. Nowhere in its complaint did

MedImmune state why “sale[s] of its Synagis® product

d[o] not infringe any valid claim of the [Cabilly II] Patent.”

App. 136.1 Given the lack of specificity in the complaint, it

is hardly surprising that the Court never explains what

the supposed contract dispute is actually about. A fair

reading of the amended complaint (and a review of the

litigation thus far) shows that MedImmune’s “contract

count” simply posits that because the patent is invalid and

unenforceable (as alleged in counts II and III), MedIm

mune is not bound by its contractual obligations. As the

——————

1 In addition, the fact that MedImmune did not identify anywhere in

the record which provision of the contract was at issue suggests that

there is no contractual provision to “be construed before or after

breach.” Advisory Committee’s Notes on Fed. Rule Civ. Proc. 57, 28

U. S. C. App., pp. 790–791.

Cite as: 549 U. S. ____ (2007) 5

THOMAS, J., dissenting

Court admits, “the license requires [MedImmune] to pay

royalties until a patent claim has been held invalid by a

competent body . . . .” Ante, at 5 (emphasis in original).

Thus, even assuming the existence of a cognizable contract

claim, the validity of that claim hinges entirely upon a

determination of the patent’s validity, independent of any

contractual question. As such, MedImmune’s “contract

claim” simply repackages its patent invalidity claim.

Probably for this reason, MedImmune has not pursued a

contract claim at any level of the litigation. The District

Court stated that the product that was the subject of the

license, Synagis, was “covered by the patents at issue,”

App. 349–350, and MedImmune has never challenged that

characterization. The Federal Circuit decided this case on

the sole ground that a licensee in good standing may not

bring a declaratory judgment action to challenge the

validity of the underlying patent without some threat or

apprehension of a patent infringement suit. See 427 F. 3d

958, 965 (2005). The question MedImmune presented in

its petition for certiorari, which we accepted without al

teration, says nothing about a contract claim. Neither

does MedImmune’s opening brief allege a contractual

dispute. Even at oral argument, it was not MedImmune,

but an amicus, that alleged there was a contract dispute

at issue in this case. Tr. of Oral Arg. 21–22.

In short, MedImmune did not “rais[e] and preserv[e] a

contract claim.” Ante, at 6. In reaching a contrary conclu

sion, the Court states that its identification of a contract

claim “probably makes no difference to the ultimate”

outcome of this case. Ante, at 3. This may very well be

true, if only because of the broad scope of the Court’s

holding.

B

The facts before us present no case or controversy under

Article III. When MedImmune filed this declaratory

6 MEDIMMUNE, INC. v. GENENTECH, INC.

THOMAS, J., dissenting

judgment action challenging the validity of the Cabilly II

patent, it was under no threat of being sued by Genentech

for patent infringement. This was so because MedImmune

was a licensee in good standing that had made all neces

sary royalty payments. Thus, by voluntarily entering into

and abiding by a license agreement with Genentech,

MedImmune removed any threat of suit. See ante, at 9

(stating the threat of suit was “remote, if not nonexis

tent”). MedImmune’s actions in entering into and continu

ing to comply with the license agreement deprived Genen

tech of any cause of action against MedImmune.

Additionally, MedImmune had no cause of action against

Genentech. Patent invalidity is an affirmative defense to

patent infringement, not a freestanding cause of action.

See 35 U. S. C. §§282(2)–(3). Therefore, here, the Declara

tory Judgment Act must be something more than an al

ternative procedure for bringing on otherwise actual case

or controversy before a federal court. But see Aetna Life

Ins., 300 U. S., at 240 (“[T]he operation of the Declaratory

Judgment Act is procedural only”).

Because neither Genentech nor MedImmune had a

cause of action, MedImmune’s prayer for declaratory relief

can be reasonably understood only as seeking an advisory

opinion about an affirmative defense it might use in some

future litigation. MedImmune wants to know whether, if

it decides to breach its license agreement with Genentech,

and if Genentech sues it for patent infringement, it will

have a successful affirmative defense. Presumably, upon a

favorable determination, MedImmune would then stop

making royalty payments, knowing in advance that the

federal courts stand behind its decision. Yet as demon

strated above, the Declaratory Judgment Act does not

allow federal courts to give advisory rulings on the poten

tial success of an affirmative defense before a cause of

action has even accrued. Calderon, 523 U. S., at 747

(dismissing a suit that “attempt[ed] to gain a litigation

Cite as: 549 U. S. ____ (2007) 7

THOMAS, J., dissenting

advantage by obtaining an advance ruling on an affirma

tive defense”); see also Coffman, 323 U. S., at 324 (reject

ing use of the Declaratory Judgment Act as a “medium for

securing an advisory opinion in a controversy which has

not arisen”). MedImmune has therefore asked the courts

to render “an opinion advising what the law would be

upon a hypothetical state of facts.” Aetna Life Ins., supra,

at 241; see also Public Serv. Comm’n of Utah v. Wycoff Co.,

344 U. S. 237, 244 (1952) (“The disagreement must not be

nebulous or contingent but must have taken on fixed and

final shape . . .”). A federal court cannot, consistent with

Article III, provide MedImmune with such an opinion.

Finally, as this Court has plainly stated in the context of

a counterclaim declaratory judgment action challenging

the validity of a patent, “[t]o hold a patent valid if it is not

infringed is to decide a hypothetical case.” Altvater, 319

U. S., at 363. Of course, MedImmune presents exactly that

case. Based on a clear reading of our precedent, I would

hold that this case presents no actual case or controversy.

III

To reach today’s result, the Court misreads our prece

dent and expands the concept of coercion from Steffel, 415

U. S. 452, to reach voluntarily accepted contractual obliga

tions between private parties.

A

The Court inappropriately relies on Altvater, which is

inapplicable to this case for three reasons. First, in Alt

vater, the affirmative defense of patent invalidity arose in

a declaratory judgment motion filed as a counterclaim to a

patent infringement suit. See 319 U. S., at 360. Second,

the opinion in Altvater proceeds on the understanding that

no license existed. Both the District Court and the Court

of Appeals had already held that the underlying license

had been terminated prior to the filing of the case. Id., at

8 MEDIMMUNE, INC. v. GENENTECH, INC.

THOMAS, J., dissenting

365 (“Royalties were being demanded and royalties were

being paid. But they were being paid . . . under the com

pulsion of an injunction decree”). Third, and related,

though the one-time licensee continued to pay royalties, it

did so under the compulsion of an injunction that had been

entered in a prior case. Ibid. Altvater simply held that

under the unique facts of that case, the Court of Appeals

erred in considering the declaratory judgment counter

claim moot because the “involuntary or coercive nature of

the exaction preserve[d] the right to recover the sums paid

or to challenge the legality of the claim.” Ibid.

Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U. S. 83

(1993), is similarly inapt here. In that case, as in Altvater,

the defendant raised the affirmative defense of patent

invalidity in a counterclaim to a patent infringement suit.

508 U. S., at 86. We specifically held that a finding of

noninfringement on appeal did not moot a counterclaim

alleging invalidity. Id., at 102–103. But we stressed:

“[T]he issue before us, therefore[,] concern[s] the ju

risdiction of an intermediate appellate court—not the

jurisdiction of a trial . . . court . . . . In the trial court,

of course, a party seeking a declaratory judgment has

the burden of establishing the existence of an actual

case or controversy.” Id., at 95.

We went on to offer a hypothetical that showed a party

could seek a declaratory judgment “[i]n patent litigation

. . . even if the patentee has not filed an infringement

action.” Ibid. However, that hypothetical involved a

patent-holder that threatened an infringement suit

against a competitor (not a licensee) that continued to sell

the allegedly infringing product and faced growing liabil

ity. In doing so, we hypothesized a situation that paral

leled the facts in Aetna Life Ins.: The patentee had a cause

of action against an alleged infringer and could have

brought suit at any moment, and the declaratory judg

Cite as: 549 U. S. ____ (2007) 9

THOMAS, J., dissenting

ment procedure simply offered the alleged infringer a

different method of bringing an otherwise justiciable case

or controversy into court.2

B

The Court’s more serious error is its extension of Steffel,

supra, to apply to voluntarily accepted contractual obliga

tions between private parties. No court has ever taken

such a broad view of Steffel.

In Steffel, the Court held that in certain limited circum

stances, a party’s anticipatory cause of action qualified as

a case or controversy under Article III. Based expressly

on the coercive nature of governmental power, the Court

found that “it is not necessary that petitioner first expose

himself to actual arrest or prosecution to be entitled to

challenge a statute that he claims deters the exercise of his

constitutional rights.” Id., at 459 (emphasis added).

Limited, as it is, to governmental power, particularly the

power of arrest and prosecution, Steffel says nothing about

coercion in the context of private contractual obligations.

It is therefore not surprising that, until today, this Court

has never applied Steffel and its theory of coercion to

private contractual obligations; indeed, no court has ever

done so.3

The majority not only extends Steffel to cases that do

——————

2 Additionally, Lear, Inc. v. Adkins, 395 U. S. 653 (1969), has little to do

with this case. It addressed the propriety and extent of the common-law

doctrine of licensee estoppel, and the licensee in Lear had ceased making

payments under the license agreement—a fact that makes the case

singularly inapposite here. Id., at 659–660. Lear did not involve the

Declaratory Judgment Act because the case was brought as a breach-of

contract action for failure to pay royalties.

3 Admitting that such decisions are “rare,” ante, at 9, the Court cites

cases predating Steffel that hold that a court may construe contractual

provisions prior to breach. Those cases do not rely on the coercion

inherent in making contractual payments. See, e.g., Keener Oil & Gas

Co. v. Consolidated Gas Util. Corp., 190 F. 2d 985, 989 (CA10 1951).

10 MEDIMMUNE, INC. v. GENENTECH, INC.

THOMAS, J., dissenting

not involve governmental coercion, but also extends Stef

fel’s rationale. If “coercion” were understood as the Court

used that term in Steffel, it would apply only if Genentech

had threatened MedImmune with a patent infringement

suit in the absence of a license agreement. At that point,

MedImmune would have had a choice, as did the declara

tory plaintiff in Steffel, either to cease the otherwise pro

tected activity (here, selling Synagis) or to continue in that

activity and face the threat of a lawsuit. But MedImmune

faced no such choice. Here, MedImmune could continue

selling its product without threat of suit because it had

eliminated any risk of suit by entering into a license

agreement. By holding that the voluntary choice to enter

an agreement to avoid some other coerced choice is itself

coerced, the Court goes far beyond Steffel.

The majority explains that the “coercive nature of the

exaction preserves the right . . . to challenge the legality of

the claim.” Ante, at 12 (internal quotation marks omit

ted). The coercive nature of what “exaction”? The answer

has to be the voluntarily made license payments because

there was no threat of suit here. By holding that contrac

tual obligations are sufficiently coercive to allow a party to

bring a declaratory judgment action, the majority has

given every patent licensee a cause of action and a free

pass around Article III’s requirements for challenging the

validity of licensed patents. But the reasoning of today’s

opinion applies not just to patent validity suits. Indeed,

today’s opinion contains no limiting principle whatsoever,

casting aside Justice Stewart’s understanding that Stef

fel’s use would “be exceedingly rare.” 415 U. S., at 476

(concurring opinion).

For the foregoing reasons, I respectfully dissent.