Gen-Probe Inc., v. Vysis, Inc. (Federal Circuit)

March 5, 2004 on 9:22 am | In Caselaw |

Gen-Probe Inc., v. Vysis, Inc.
Federal Circuit
March 5, 2004

After a jury trial, the United States District Court for the Southern District California entered judgment in favor of the declaratory judgment plaintiff, Gen-Probe. Among other rulings, the district court found that substantial evidence supported the jury’s verdicts of noninfringement and invalidity for both obviousness and nonenablement. Gen-Probe, Inc. v. Vysis, Inc., No. 99-CV-2668 H (AJB) (S.D. Cal. Aug. 2, 2002). Vysis has appealed issues relating to subject matter jurisdiction, claim construction, noninfringement, obviousness, and nonenablement. Gen-Probe cross-appeals an issue relating to the priority date of the patent in suit. Because the district court and this court lack jurisdiction to hear the merits of the case, this court vacates the district court’s judgment and remands the case to the district court with instructions to dismiss.

Copy of case here.

UPDATE…additional summary:

Gen-Probe licensed the patent from Vysis and then later sought a declaratory judgment of non-infringement of the patent. At all times Gen-Probe paid license fees and made efforts to continue the license. No material breach occurred. The Federal Circuit distinguished C.R. Bard, Inc. v. Schwartz, 716 F.2d 874 (Fed. Cir. 1983), a case where the licensee stopped paying the license fees and initiated a declaratory judgment action. The court found that:

…permitting Gen-Probe to pursue a lawsuit without materially breaching its license agreement yields undesirable results. Vysis voluntarily relinquished its statutory right to exclude by granting Gen-Probe a nonexclusive license. In so doing, Vysis chose to avoid litigation as an avenue of enforcing its rights. Allowing this action to proceed would effectively defeat those contractual covenants and discourage patentees from granting licenses. In other words, in this situation, the licensor would bear all the risk, while licensee would benefit from the license’s effective cap on damages or royalties in the event its challenge to the patent’s scope or validity fails. Under these circumstances, there is not a reasonable apprehension of suit….

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