from the United States District Court for the Eastern
District of Virginia in No. 2:16-cv-00322-AWA-DEM, Judge
Arenda L. Wright Allen.
Jeffrey I. Weinberger, Munger, Tolles & Olson LLP, Los
Angeles, CA, argued for plaintiffs-appellants. Also
represented by Heather E. Takahashi; Ginger Anders,
Washington, DC; David Penn Frazier, Michael A. Morin, Latham
& Watkins LLP, Washington, DC.
I. Berl, Williams & Connolly LLP, Washington, DC, argued
for defendant-appellee. Also represented by Thomas S.
Fletcher, Shaun Patrick Mahaffy.
Prost, Chief Judge, Dyk, and Chen, Circuit Judges.
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
declaratory-judgment action concerns a development and
licensing agreement entered into by predecessors to AbbVie
and MedImmune in 1995. The agreement stemmed from a research
collaboration between those predecessors that resulted in the
antibody adalimumab, the active ingredient in the well-known
pharmaceutical drug Humira. The contract is governed by
British law. The 1995 agreement licensed AbbVie to
practice the '516 patent among others, although the
parties agree that AbbVie does not presently practice it. The
agreement also required AbbVie to pay royalties on the sales
of certain antibodies "until the last to expire of
[certain] Patents or the expiry of fifteen years from the
date of First Commercial Sale of a Product by [AbbVie's
predecessor] . . . (whichever is later)." J.A. 62. The
last of those patents to expire is the '516 patent, with
an expiration date of June 19, 2018. The first commercial
sale occurred in January 2003. Accordingly, AbbVie's
obligation to pay royalties to MedImmune either ceased in
January 2018 (if the period is measured from the first
commercial sale) or will cease in June 2018 (if measured from
the expiration date of the '516 patent).
to hasten the end of its royalty obligations, AbbVie brought
this declaratory-judgment action in June 2016 seeking a
declaration that the '516 patent is invalid. AbbVie
argued that a declaration of the '516 patent's
invalidity would constitute its expiration for purposes of
the 1995 agreement (making the royalty obligations expire in
January 2018). However, AbbVie did not seek a declaration as
to the contract's interpretation.
argued that the district court lacked declaratory-judgment
jurisdiction or, if it had jurisdiction, should decline to
exercise it. On the merits, MedImmune rejected AbbVie's
interpretation of the contract, contending that the royalty
obligations are pegged to the patent's expiration date
without regard to the patent's validity.
district court dismissed the complaint on two alternate
grounds. First, the court observed that AbbVie does not
practice the '516 patent and therefore is not at risk of
an infringement suit. The district court held that AbbVie
"could not be subject to a patent [infringement] action,
and therefore lack[s] standing to bring this action."
assuming AbbVie had standing, the district court noted that
the interpretation of the 1995 agreement was governed by
British contract law and would implicate the rights of the
British government, which jointly owns the patent through one
of its research councils. Deciding the invalidity question,
the district court observed, would not resolve the
parties' ultimate dispute and would raise these
additional concerns about foreign law and sovereign immunity.
The district court concluded, therefore, that it would not
exercise its declaratory-judgment jurisdiction as a matter of
discretion. The district court dismissed the case.
timely appealed, and we have jurisdiction under 28 ...