By: Mel R. Quintos

At the start of a new year, we believe it is useful to provide an overview that focuses on certain significant court cases in the past year that address significant U.S. patent law issues. In the next few issues of our newsletter, we will direct our attention to such court cases.

In this issue of our newsletter, we direct our attention to the following cases: SanDisk v. STMicroelectronics, Sony Electronics, Inc. v. Guardian Media Techs., Ltd., and Medimmune, Inc. v. Genentech, Inc. (as relied upon in the SanDisk and Sony cases). These cases generally concern how a party can assert its rights when confronted with a patent owner’s assertions of infringement.

More specifically, the above cases raise an issue on whether a party, after merely discussing a license with a patent owner, can assert the existence of a „case of actual controversy“ allowing it to file a court action seeking declaratory judgment that it does not infringe the patents and that the patents are invalid. Despite the fact that there was no threat from the patent owner to sue for infringement, the Federal Circuit in the SanDisk and Sony cases said yes. —click here to read more—