DJ issues in MedImmune v. Centocor

The case MEDIMMUNE, INC. v. CENTOCOR, INC., THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK and THE BOARD OF TRUSTEES OF THE
LELAND STANFORD JUNIOR UNIVERSITY, 2005 U.S. App. LEXIS 9965, has some interesting issues.

#1. The patent in question U.S. Patent No. 5,807,715 is a Bayh-Dole patent being utilized against a private company, Medimmune.

#2. In a DJ action brought by Medimmune, the facts were basically on all fours with the case Gen-Probe, Inc. v. Vysis, Inc., 359
F.3d 1376 (Fed. Cir. 2004), suggesting that Medimmune should lose, as it did at district court. Medimmune argued that as a
panel, the CAFC judges were not obligated to follow it. See Atl. Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 839 2 n. (Fed. Cir. 1992) (positing that "[a] decision that fails
to consider Supreme Court precedent does not control if the court
determines that the prior panel would have reached a different conclusion if it had considered controlling precedent"); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) ("Where there is direct conflict" between two Federal Circuit panel decisions, "the precedential decision is the first."). We
do not agree with MedImmune that Gen-Probe is inconsistent with controlling Supreme Court and Federal Circuit authority.

[One notes that the Supreme Court authority argument is not dissimilar from argument in the brief of the 24 law professors in KSR v. Teleflex.]

In MedImmune, the CAFC said: In other words, the
fact that a party is not estopped from making an argument does
not mean that federal courts have jurisdiction to entertain that argument in all circumstances.

The CAFC also said: Beyond that, we reject MedImmune's argument that Gen-Probe should be overruled because it creates a "Hobson's choice. " Specifically, MedImmune argues that it must "choose between paying tribute to a suspect patent [a Bayh-Dole patent issued to universities] and tying its fate to the uncertainty of patent litigation," with all of the
attendant risks of such litigation. (Reply Br. of Appellant, at 2.)
MedImmune's argument proves too much. Every potential infringer who is threatened with suit, or who is sued, for patent infringement must decide whether to settle or fight.
In short, the "Hobson's choice" about which MedImmune complains arises not from Gen-Probe, but from Article III's requirement that, before a district court exercises jurisdiction in a declaratory judgment suit, there must be an actual controversy between the parties. For the reasons set forth above, such a
controversy does not exist here.

[Recall also the DJ issue in Teva v. Pfizer, 395 F.3d 1324 (CAFC 2005).]