## Facts

- Multiple pharmaceutical and biotechnology companies licensed a family of patents derived from a 1980 patent application owned by The Trustees of Columbia University in the City of New York.
- The licensees believed the last licensed patents they practiced expired in 2000 and that their royalty obligations ended in 2002.
- In September 2002, Columbia obtained U.S. Patent No. 6,455,275 (the “’275 patent”), also derived from the 1980 application, and asserted the licensees owed royalties for an additional seventeen years.
- The licensees filed declaratory-judgment actions contending the ’275 patent was invalid (including for nonstatutory double patenting) and/or unenforceable (including for prosecution laches).
- The related actions were consolidated in multidistrict litigation in the District of Massachusetts.
- While the litigation was pending and PTO proceedings were underway concerning the ’275 patent, Columbia issued a broad covenant not to sue the licensees for infringement of the ’275 patent (as issued and as it might be reissued) for any products the licensees might sell at any time.
- Columbia moved to dismiss for lack of subject-matter jurisdiction, arguing the covenant eliminated any Article III case or controversy.

## Issues

1. Whether Columbia’s covenant not to sue eliminated any actual case or controversy necessary for Article III jurisdiction over the licensees’ patent declaratory-judgment claims.
2. Whether, even if an actual controversy existed, the court should decline to exercise declaratory-judgment jurisdiction because adjudication would amount to an advisory opinion on speculative contingencies.

## Decision

- The court granted Columbia’s motion and dismissed the declaratory-judgment claims.
- The covenant not to sue removed the legally required reasonable apprehension of an infringement suit, leaving no Article III controversy regarding declarations of invalidity or unenforceability.
- Alternatively, even assuming jurisdiction existed, the court exercised its discretion to dismiss because resolving validity and enforceability would consume substantial resources to address hypothetical future scenarios.

## Legal Principles

- A patent declaratory-judgment action requires an Article III case or controversy; at the time, this commonly turned on whether the patentee’s conduct created a reasonable apprehension of an infringement suit and whether the plaintiff was engaged in potentially infringing activity.
- A sufficiently broad covenant not to sue can eliminate any reasonable apprehension of suit and therefore moot declaratory-judgment claims concerning infringement-related relief.
- Federal courts retain discretion under the Declaratory Judgment Act to decline declaratory relief when the requested judgment would be essentially advisory, particularly where the dispute depends on uncertain future events.
- Dismissal on jurisdictional and/or discretionary grounds does not decide the merits of patent validity or enforceability defenses (e.g., double patenting or prosecution laches).

## Conclusion

The court dismissed the licensees’ requests for declarations that the ’275 patent was invalid or unenforceable because Columbia’s expansive covenant not to sue extinguished any live Article III controversy, and, in any event, deciding the patent issues would have required an advisory determination based on unlikely contingencies.


In re Columbia Univ. Patent Litig., 343 F. Supp. 2d 35 (D. Mass. 2004)