Because Altvater Said So, Scalia Says Licensee’s Remorse is Justiciable

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Flash back to those bitter-sweet hours you spent in Civ. Proc., wondering ‘what is this man talking about; Art. III controversies?’  Then, fast forward to J. Scalia’s opinion in Medimmune v. Genentech (2007), and you may begin wondering what was discussed on those days you slept through that class.  The fun part of his opinion comes in the derisive footnotes aimed at J. Thomas’ dissent, particularly the fn. 10 perjorative about Clarence “quoting wildly out of context” with “a snippet [that] has nothing to do with” what Scalia knows to be the case.

Note to the publish-or-perish crowd, get working on that Article III article about the decisive permutations in the Altvater, Lear, Cardinal Chemical, Holmes Group, and Medimmune opinions.  Add in the ‘what-we-do-not-decide-today’ aspects, and after it’s edited in final, toss the whole of it in the recycle bin.

The bar had supposed that Medimmune would decide something new.  The simplistic view now is that Scalia tossed a stare decisis, no-hitter then went back to his hobbitat.  After scrounging every useful snippet his clerks found in cases “where threatened action by the government is concerned,” His Honor arrives “fortuitously” at civil precedent, Altvater v. Freeman, (1943). 

Altvater may, or not, be one of the cases Scalia earlier had mentioned, which “do not draw the brightest of lines between those [DJ] actions that satisfy the case-or-controversy requirement and those that do not.”  The key point (used “wildly” by some) for distinguishing Altvater from Medimmune was that the former case involved an infringement suit that provoked an invalidity counterclaim.  J. Scalia puts Altvater on the bright side of the law, and bolstered by his viewpoints of policy and logic, he relies on it to decide what patent lawyers and the Federal Circuit had never before known to be so. 
When that licensing deal just doesn’t ‘feel right’ anymore, become apprehensive about validity.

On the policy arguments and patent logic espoused by Justice Scalia, I am reminded of his prior works.  Jurisdiction over patent clashes “is much less tied to general principles of law with which I am familiar, and much more related to the peculiarities of patent litigation, with which I deal only sporadically.”  J. Scalia, concurring in Cardinal Chem v. Morton, 508 U.S. 83, 103.  Indeed, invoking federal court jurisdiction over patent claims in a compulsory counterclaim would require a “neologism” grafted upon “an unprecedented feat of interpretive necromancy,” J. Scalia, in Holmes Group v. Vornado, 535 U.S. 826, penultimate ¶. 
Fashioning that wisdom into settled law, the majority opinion holds that, against a licensor who “engages in a danse macabre, brandishing a Damoclean threat with a sheathed sword” (Cardinal Chem., at 96 quoting, J. Markey), a paying licensee like Medimmune may dispute validity, because to declare a patent’s “valid[ity] if it is not infringed is to [NOT] decide a hypothetical case,” Altvater v. Freeman, 319 U.S. at 363.

What further was ‘not decided today’ involved the discretionary nature of declaratory judgment jurisdiction, by which the court “may declare” rights.  §2201.  Those “equitable, prudential, and policy arguments in favor of a discretionary dismissal” are to be considered “on remand.”