Hastings Science and Technology Law Journal


The recent Supreme Court decision in MedImmune v. Genentech, resolved a jurisdictional question while refusing to address questions regarding application of the common law doctrine of licensee estoppel. This doctrine prevents a licensee enjoying the benefits of a license agreement from challenging the validity of the underlying patent. Although the Supreme Court in Lear v. Adkins rejected application of the doctrine where the licensee had ceased making payments under the agreement, it left open the same question which the MedImmune Court mentioned, but refused to address. Namely: Whether the doctrine still applies to a non-repudiating licensee in good standing. In Licensee Patent Validity Challenges Following MedImmune: Implications for Patent Licensing, Alfred C. Server and Peter Singleton first define the question posed by the MedImmune decision and then confront it with a detailed evaluation of the growth and current trajectory of the doctrine. Ultimately concluding that the doctrine of licensee estoppel has been abrogated by a policy preference for better defining the public domain, Server and Singleton end their paper by discussing the enforceability of contract provisions which seek to work around the Supreme Court's hostility towards apparent hostility toward licensee estoppel.