IP Update

Cease and Desist (Please)

October 22, 2007

Julia Anne Matheson, in Finnegan's Trademark and Copyright Practice Group, and Seth Greenstein analyze the cases MedImmune, Inc. v. Genentech, Inc. and SanDisk Corp. v. STMicroelectronics, Inc. and how they might affect how trademark practitioners conduct future enforcement efforts.

The Supreme Court and the Federal Circuit have recently issued two decisions in patent licensing cases that may ultimately impact how trademark practitioners conduct future enforcement efforts. In its recent decision in MedImmune v. Genentech, the Supreme Court redefined the case and controversy requirement for declaratory judgment actions in the context of patent licensing disputes to make it easier for patent licensees to bring suit rather than negotiating a license at a disadvantaged position. Just two months later, the Federal Circuit followed the Supreme Court's guidance and, in SanDisk v. ST, applied the more permissive MedImmune declaratory judgment standard set forth by the Supreme Court and reversed a lower court's dismissal of a declaratory judgment action. While the facts of both the MedImmune and Sandisk cases are specific to patent licensor-licensee interactions, these opinions do represent a potentially important shift in the standard for declaratory judgment about which trademark practitioners should be aware.

Read "Cease and Desist (Please)"

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