Monday, February 05, 2018

MedImmune prevails over Abbvie at CAFC in a Humira case

In a case related to Humica, the CAFC affirmed ED Va:

AbbVie, Inc., and AbbVie Biotechnology Ltd.
(“AbbVie”) filed suit in the Eastern District of Virginia
against MedImmune Limited (“MedImmune”), seeking a
declaratory judgment that U.S. Patent No. 6,248,516 (“the
’516 patent”) is invalid. The district court determined
that it lacked jurisdiction under the Declaratory Judgment
Act, 28 U.S.C. §§ 2201–02, and alternatively that it
would not exercise jurisdiction if it existed, and it granted
MedImmune’s motion to dismiss. We affirm.

Appellant Abbvie won on one point:

The district court erred in holding that it lacked declaratory-judgment
jurisdiction on the basis that there is
no controversy as to infringement of the ’516 patent. (...)

If properly presented, such a contractual dispute
could confer declaratory-judgment jurisdiction. The
Supreme Court has held repeatedly that contractual
disputes can be the subject of a declaratory action. E.g.,
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 125
(2007) (“All we need determine is whether petitioner has
alleged a contractual dispute.”); Freeport-McMoRan, Inc.
v. K N Energy, Inc., 498 U.S. 426, 426–29 (1991) (per
curiam) (finding federal diversity jurisdiction in declaratory
action concerning breach of contract); Skelly Oil Co.
v. Phillips Petroleum Co., 339 U.S. 667, 674 (1950) (same);
Aetna Life Ins. of Hartford, Conn. v. Haworth, 300 U.S.
227, 242 (1937) (“The dispute relates to legal rights and
obligations arising from the contracts of insurance.”). And
it has held that declaratory-judgment jurisdiction extends
to contractual disputes that turn on issues of patent
infringement and invalidity. MedImmune, 549 U.S. at


AbbVie’s problem is that it did not seek a declaration
of its contractual obligations. Rather, AbbVie’s complaint
only sought a declaration of invalidity with respect to the
’516 patent. And as MedImmune argues and the district
court held, such a declaration would not actually resolve
the parties’ contractual dispute


We concluded that “simply eliminating
one barrier [to resolving the dispute] is sufficient
for declaratory jurisdiction, so long as litigation is also
pending that could eliminate the other barriers.” Id.;
accord Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc.,
527 F.3d 1278, 1288, 1293 (Fed. Cir. 2008).
Here, AbbVie has no other pending litigation that
would conclusively resolve its contractual dispute with
MedImmune. Without taking at least that step, in either
the American or British courts, it cannot establish declaratory-judgment
jurisdiction over the question of invalidity.
Accordingly, the judgment of the district court
dismissing the action without prejudice is affirmed.


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