In the Wake of MedImmune: What We Have Learned

The following guest post comes from Lisa A. Dolak, Professor of Law at Syracuse University and Practice Center Contributor.

In its 2007 decision in MedImmune, Inc. v. Genentech, Inc., the Supreme Court held that “Article III’s limitation of federal courts’ jurisdiction to ‘Cases’ and ‘Controversies,’ reflected in the ‘actual controversy’ requirement of the Declaratory Judgment Act, 28 U.S.C. § 2201(a)” does not require “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.”  Although MedImmune was decided in the context of a non‑breaching licensee’s action against its licensor-patentee, it altered the patent enforcement/licensing landscape more generally, specifically, by expanding the circumstances under which the district courts have the power to entertain declaratory judgment claims.

The Supreme Court held that the Federal Circuit had erred in holding that jurisdiction could not lie under the circumstances because the license agreement insulated MedImmune from a “‘reasonable apprehension of suit’”.   In the three and a half years since MedImmune was decided, the Federal Circuit has had the opportunity to apply its teachings in a variety of contexts.  The following summary highlights the key lessons from those Federal Circuit decisions. (more…)

Lawyers Acting Badly, or Not? Misconduct in IP Litigation: Recent Examples and the Questions They Raise

Guest Post by Lisa A. Dolak (Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor)

Misconduct in civil litigation is not a new phenomenon.  Nor is it confined to particular types of cases.  Because of their characteristic intensity, however, intellectual property cases may be more likely to inspire bad behavior than other types of cases.  In patent cases, in particular, often much is at stake for both counsel and client.  The potential outcomes range from a judgment for the patent owner, potentially including trebled lost profits, a permanently enjoined infringer and even an attorneys’ fees award,  to a ruling that the asserted patent is partly or entirely invalid, or even unenforceable, with the patent owner ordered to pay the infringement defendant’s attorneys’ fees.  And the complexity and potential intensity only increase when multiple patents and/or multiple accused products are involved.  The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.

Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse.  The decisions contend with a range of conduct, occurring at various phases of litigation.  In several, the trial courts’ decisions to sanction were reversed or modified on appeal or reconsideration.  Accordingly, these cases shed light on a question which challenges courts, litigants and trial counsel:  when it comes to zealous advocacy, how much zeal is too much zeal? (more…)