medimmune genentech et argued october decided january parties entered patent license agreement covering inter alia respondents patent application application matured cabilly ii patent respondent genentech sent petitioner letter stating synagis drug petitioner manufactured covered cabilly ii patent petitioner owed royalties agreement although petitioner believed royalties due patent invalid unenforceable synagis infringe patent claims petitioner considered letter clear threat enforce patent terminate license agreement bring patent infringement action petitioner pay action resulted petitioner ordered pay treble damages attorney fees enjoined selling synagis accounts percent sales revenue petitioner paid royalties protest filed action declaratory relief district dismissed claims lack jurisdiction federal circuit precedent patent licensee good standing establish article iii case controversy regard patent validity enforceability scope federal circuit affirmed held contrary respondents assertion freestanding claim issue record establishes petitioner raised preserved contract claim patent invalidity unenforceability noninfringement royalties owing pp federal circuit erred affirming dismissal action lack jurisdiction standards determining whether particular action satisfies requirement whether facts alleged circumstances show substantial controversy parties adverse legal interests sufficient immediacy reality warrant relief maryland casualty pacific coal oil satisfied even though petitioner refuse make royalty payments license agreement threatened government action concerned plaintiff required expose liability bringing suit challenge basis threat action inaction failing violate law eliminates imminent threat prosecution nonetheless eliminate article iii jurisdiction behavior effectively coerced similarly plaintiff imminent injury coerced threatened enforcement action private party rather government lower federal state courts long accepted jurisdiction decision point held licensee failure cease royalty payments render nonjusticiable dispute patent validity altvater freeman though altvater involved injunction acknowledged licensees option stopping payments defiance injunction consequence risk actual treble damages infringement suits patentees consequence also threatened case respondents assertion parties effect settled dispute entered license agreement mistaken appeal rule party contract challenge validity continue reap benefits also unpersuasive lastly raised first time decide respondents request affirm dismissal claims discretionary grounds question arguments denial declaratory relief left lower courts remand pp reversed remanded scalia delivered opinion roberts stevens kennedy souter ginsburg breyer alito joined thomas filed dissenting opinion medimmune petitioner genentech et al writ certiorari appeals federal circuit january justice scalia delivered opinion must decide whether article iii limitation federal courts jurisdiction cases controversies reflected actual controversy requirement declaratory judgment act requires patent licensee terminate breach license agreement seek declaratory judgment underlying patent invalid unenforceable infringed claims case disposed stage take following facts allegations petitioner amended complaint unopposed declarations petitioner submitted response motion dismiss petitioner medimmune manufactures synagis drug used prevent respiratory tract disease infants young children petitioner entered patent license agreement respondent genentech acted behalf patent assignee behalf coassignee respondent city hope license covered existing patent relating production chimeric antibodies patent application relating coexpression immunoglobulin chains recombinant host cells petitioner agreed pay royalties sales licensed products respondents granted petitioner right make use sell agreement defined licensed products specified antibody manufacture use sale licensed th agreement infringe one claims either covered patents neither expired held invalid body competent jurisdiction appeal may taken app license agreement gave petitioner right terminate upon six months written notice december coexpression application covered license agreement matured cabilly ii patent soon thereafter respondent genentech delivered petitioner letter expressing belief synagis covered cabilly ii patent expectation petitioner pay royalties beginning march petitioner think royalties owing believing cabilly ii patent invalid claims event infringed synagis nevertheless petitioner considered letter clear threat enforce cabilly ii patent terminate license agreement sue patent infringement petitioner make royalty payments demanded respondents prevail patent infringement action petitioner ordered pay treble damages attorney fees enjoined selling synagis product accounted percent revenue sales since unwilling risk serious consequences petitioner paid demanded royalties protest reservation rights action followed petitioner sought declaratory relief discussed detail part ii petitioner also requested damages injunction respect federal state claims relevant district granted respondents motion dismiss claims lack jurisdiction relying decision appeals federal circuit vysis held patent licensee good standing establish article iii case controversy regard validity enforceability scope patent license agreement obliterate reasonable apprehension licensee sued infringement federal circuit affirmed district also relying granted certiorari ii outset address disagreement concerning nature dispute issue whether involves freestanding claim patent invalidity rather claim patent invalidity noninfringement royalties owing license probably makes difference ultimate issue jurisdiction well clear nature case us respondents contend petitioner seeking interpretation present contractual obligations brief respondent genentech see also brief respondent city hope claim two reasons dispute synagis infringes cabilly ii patent thereby making royalties payable dispute patent validity contract calls royalties infringing product whether underlying patent valid see brief respondent genentech first point simply comport allegations petitioner amended complaint first count requested declaratory judgment contractual rights obligations stated petitioner disputes obligation make payments license agreement petitioner sale product infringe valid claim cabilly ii patent app contentions repeated throughout complaint phrase infringe valid claim emphasis added thought challenge patent validity since elsewhere amended complaint unmistakable clarity patent infringed petitioner synagis product petitioner owes payments license agreements respondents second point petitioner assuredly contend obligation license pay royalties invalid patent contention frivolous true license requires petitioner pay royalties patent claim held invalid competent body cabilly ii patent license issue lear adkins similarly provided royalties paid time held invalid rejected argument repudiating licensee must comply contract pay royalties claim vindicated express opinion whether nonrepudiating licensee similarly relieved contract obligation successful challenge patent validity applicability licensee estoppel circumstances cf studiengesellschaft kohle shell oil ca fed licensee invoke protection lear doctrine actually ceases payment royalties ii provides notice licensor reason ceasing payment royalties deemed relevant claims invalid need determine whether petitioner alleged contractual dispute done respondents argue petitioner waived contract claim failing argue brief respondent genentech tr oral arg record reveals however petitioner raised contract point federal circuit see brief medimmune nos ca fed medimmune seeking define rights obligations contract genentech precisely type action declaratory judgment act contemplates petitioner limited contract argument pages appellate brief suggest waiver merely reflects counsel sound assessment argument futile federal circuit precedent precluded jurisdiction petitioner contract claims panel authority overrule determined petitioner raised preserved contract turn jurisdictional question iii declaratory judgment act provides case actual controversy within jurisdiction may declare rights legal relations interested party seeking declaration whether relief sought time harbored doubts compatibility actions article iii requirement see willing chicago auditorium liberty warehouse grannis see also gordon appx last opinion taney published posthumously award execution essential part every judgment passed exercising judicial power dispelled doubts however nashville wallace holding case involving declaratory judgment rendered state appropriate action declaratory relief case controversy article iii federal declaratory judgment act signed law following year upheld constitutionality aetna life ins haworth opinion explained phrase case actual controversy act refers type cases controversies justiciable article iii aetna cases following draw brightest lines actions satisfy requirement decisions required dispute definite concrete touching legal relations parties adverse legal interests real substantial admi specific relief decree conclusive character distinguished opinion advising law upon hypothetical state facts maryland casualty pacific coal oil summarized follows basically question case whether facts alleged circumstances show substantial controversy parties adverse legal interests sufficient immediacy reality warrant issuance declaratory judgment dispute standards satisfied petitioner taken final step refusing make royalty payments license agreement respondents claim right royalties licensing agreement petitioner asserts royalties owing cabilly ii patent invalid infringed alleges without contradiction threat respondents enjoin sales royalties forthcoming factual legal dimensions dispute well defined petitioner continuing make royalty payments nothing dispute render unfit judicial resolution assuming without deciding respondents claim anticipatory breach repudiate license continuation royalty payments makes otherwise imminent threat least remote nonexistent long payments made risk respondents seek enjoin petitioner sales petitioner acts words eliminate imminent threat question us whether causes dispute longer case controversy within meaning article iii analysis must begin recognition threatened action government concerned require plaintiff expose liability bringing suit challenge basis threat example constitutionality law threatened enforced plaintiff action inaction failing violate law eliminates imminent threat prosecution nonetheless eliminate article iii jurisdiction example terrace thompson state threatened plaintiff forfeiture farm fines penalties entered lease alien violation state land law given genuine threat enforcement require prerequisite testing validity law suit injunction plaintiff bet farm speak taking violative action see also village euclid ambler realty ex parte young likewise steffel thompson require plaintiff proceed distribute handbills risk actual prosecution seek declaratory judgment regarding constitutionality state statute prohibiting distribution rehnquist put concurrence declaratory judgment procedure alternative pursuit arguably illegal activity cases plaintiff eliminated imminent threat harm simply claimed right enter lease distribute handbills shopping center preclude jurisdiction behavior effectively coerced see terrace supra steffel supra dilemma posed coercion putting challenger choice abandoning rights risking prosecution dilemma purpose declaratory judgment act ameliorate abbott laboratories gardner jurisprudence rare regarding application declaratory judgment act situations plaintiff imminent injury coerced threatened enforcement action private party rather government lower federal courts however state courts interpreting declaratory judgment acts requiring actual controversy long accepted jurisdiction cases see keener oil gas consolidated gas utilities american machine metals de bothezat impeller hess country club park cal bank theater moore see also advisory committee note fed rule civ proc decision point fortuitously close facts case us altvater freeman held licensee failure cease payment royalties render nonjusticiable dispute validity patent litigation several patentees sued licensees enforce territorial restrictions license licensees filed counterclaim declaratory judgment underlying patents invalid meantime paying protest royalties required injunction patentees obtained earlier case patentees argued long licensees continue pay royalties academic real controversy parties rejected argument held claim presented justiciable case controversy fact royalties paid make dispute hypothetical abstract character ibid quoting aetna royalties paid protest compulsion injunction decree nless injunction decree modified course action defy risk actual treble damages infringement suits concluded requirements case controversy met payment claim demanded right payment made involuntary coercive nature exaction preserves right recover sums paid challenge legality claim federal circuit decision distinguished altvater ground involved compulsion injunction altvater readily dismissed never mind injunction privately obtained ultimately within control patentees permit modification fundamentally contrary federal circuit conclusion altvater say coercion dispositive case governmental suggested opposite opinion acknowledged licensees option stopping payments defiance injunction explained consequence risk actual treble damages infringement suits patentees significantly mention threat prosecution contempt sort governmental sanction moreover cited approvingly treatise said actual threatened serious injury business employment private party coercive forms coercion supporting restitution actions common law imperil man livelihood business enterprises solvency ordinarily quite coercive example detaining property woodward law quasi contracts cited altvater supra jurisdiction present case contradicted willing chicago auditorium association ground lessee wanted demolish antiquated auditorium replace modern commercial building lessee believed right without lessors consent unwilling drop wrecking ball first test belief later declaratory judgment act time federal applicable state law lessee filed action remove cloud lease held article iii case controversy arisen defendant ha wronged plaintiff ha threatened true one colessors disagreed lessee interpretation lease happened informal friendly private conversation year lawsuit filed lessee never even bothered approach went remark hat plaintiff seeks simply declaratory judgment grant relief beyond power conferred upon federal judiciary willing decided enactment upholding declaratory judgment act legal disagreement parties lively one confident different result obtained rule plaintiff must destroy large building bet farm risk treble damages loss percent business seeking declaration actively contested legal rights finds support article respondents assert parties effect settled dispute entered license agreement licensee enters agreement contend essentially purchases insurance policy immunizing suits infringement long continues pay royalties challenge covered patents permitting challenge validity patent without terminating breaking agreement alters deal allowing licensee continue enjoying immunity bringing suit elimination part patentee quid pro quo course even valid argument force regard petitioner claim agreement call royalties product infringe patent even patent invalidity claim point seems us mistaken begin clear prohibition challenging validity patents found hardly implied mere promise pay royalties patents neither expired held invalid body competent jurisdiction appeal may taken app promising pay royalties patents held invalid amount promise seek holding invalidity respondents appeal rule party contract one time challenge validity continue reap benefits citing commodity credit rosenberg kingman stoddard lear contend suspend rule patent licensing agreements since plaintiff case already repudiated contract even lear repudiation doctrine licensee estoppel limited point said earlier opine hard see rule application petitioner repudiating impugning contract continuing reap benefits rather asserting contract properly interpreted prevent challenging patents require payment royalties patents cover products invalid course even respondents correct licensing agreement rule precludes suit consequence respondents win case merits genuine contract dispute disappears article iii jurisdiction somehow defeated short article iii jurisdiction nothing contention lastly respondents urge us affirm dismissal claims discretionary grounds declaratory judgment act provides may declare rights legal relations interested party emphasis added must text long understood confer federal courts unique substantial discretion deciding whether declare rights litigants wilton seven falls see also cardinal chemical morton brillhart excess ins america found consistent statute however vest district courts discretion first instance facts bearing usefulness declaratory judgment remedy fitness case resolution peculiarly within grasp wilton supra district gave consideration discretionary dismissal since despite serious misgivings federal circuit rule considered bound dismiss app pet cert discretionary dismissal irrelevant federal circuit reason respondents raised issue first time exchanging competing accusations inequitable conduct petitioner see brief respondent genentech reply brief petitioner circumstances imprudent us decide whether district must decline issue requested declaratory relief leave equitable prudential policy arguments favor discretionary dismissal lower courts consideration remand similarly available consideration remand arguments denial declaratory relief hold petitioner required insofar article iii concerned break terminate license agreement seeking declaratory judgment federal underlying patent invalid unenforceable infringed appeals erred affirming dismissal action lack jurisdiction judgment appeals reversed cause remanded proceedings consistent opinion ordered medimmune petitioner genentech et al writ certiorari appeals federal circuit january justice thomas dissenting granted certiorari case determine whether patent licensee good standing must breach license prior challenging validity underlying patent pursuant declaratory judgment act answer question yes consistently held parties standing obtain rulings matters remain hypothetical conjectural also held declaratory judgment procedure used obtain advanced rulings matters addressed future case actual controversy medimmune sought declaratory judgment precisely purpose therefore affirm appeals holding article iii jurisdiction medimmune claim reaches opposite result extending holding steffel thompson private contractual obligations respectfully dissent article iii constitution limits judicial power adjudication cases controversies held declaratory judgment act extends controversies constitutional sense aetna life ins haworth context declaratory judgment actions cases provided uniform framework assessing whether article iii case controversy exists constitutional sense controversy distinguished difference dispute hypothetical abstract character one academic moot ibid citing alaska controversy must definite concrete touching legal relations parties adverse legal interests finally must real substantial controversy distinguished opinion advising law upon hypothetical state facts declaratory judgment act alter constitutional definition case controversy relax article iii command actual case controversy exist federal courts may adjudicate question see maryland casualty pacific coal oil thus held operation declaratory judgment act procedural aetna life words act merely provides different procedure bringing actual case controversy federal applied principle aetna life insurance company brought declaratory judgment action insured claimed become disabled formally presented claims refused make insurance payments course deciding entertain insurer declaratory judgment action specifically noted insured filed traditional cause action first question controversy justiciable nature accordingly act merely provided different procedural tool allowed insurance company bring otherwise justiciable controversy federal also held controversy exists declaratory judgment plaintiff attempts obtain premature ruling potential defenses typically adjudicated later actual controversy coffman breeze patent owner brought declaratory judgment action licensees seeking royalty adjustment act declared unconstitutional enjoin licensees paying accrued royalties government held case controversy existed validity royalty adjustment act properly arise defense suit patentholder licensees recover royalties accordingly complaint issue request advisory opinion validity defense suit recovery royalties noted declaratory judgment procedure may made medium securing advisory opinion controversy arisen ibid see also calderon ashmus holding prisoner may use declaratory judgment action determine validity defense state might raise future habeas proceeding principles apply equal force patent licensing context altvater freeman quite unremarkably held licensee standing bring declaratory judgment counterclaim asserting affirmative defense patent invalidity response patent infringement suit mistaken altvater expressly stated hold patent valid infringed decide hypothetical case cardinal chemical morton affirmative defense patent invalidity raised counterclaim patent infringement suit although held finding noninfringement appeal moot counterclaim alleging invalidity stated holding limited jurisdiction appellate reiterated trial course party seeking declaratory judgment burden establishing existence actual case controversy ii foregoing background case us justiciable case controversy article iii threshold matter disagree characterization case including contractual dispute ante substantiate characterization points count medimmune complaint entitled judgment contactual rights medimmune broad allegations product infringe valid claim cabilly ii patent ante nowhere complaint medimmune state sale product infringe valid claim cabilly ii patent app given lack specificity complaint hardly surprising never explains supposed contract dispute actually fair reading amended complaint review litigation thus far shows medimmune contract count simply posits patent invalid unenforceable alleged counts ii iii medimmune bound contractual obligations admits license requires medimmune pay royalties patent claim held invalid competent body ante emphasis original thus even assuming existence cognizable contract claim validity claim hinges entirely upon determination patent validity independent contractual question medimmune contract claim simply repackages patent invalidity claim probably reason medimmune pursued contract claim level litigation district stated product subject license synagis covered patents issue app medimmune never challenged characterization federal circuit decided case sole ground licensee good standing may bring declaratory judgment action challenge validity underlying patent without threat apprehension patent infringement suit see question medimmune presented petition certiorari accepted without alteration says nothing contract claim neither medimmune opening brief allege contractual dispute even oral argument medimmune amicus alleged contract dispute issue case tr oral arg short medimmune rais preserv contract claim ante reaching contrary conclusion identification contract claim probably makes difference ultimate outcome case ante may well true broad scope holding facts us present case controversy article iii medimmune filed declaratory judgment action challenging validity cabilly ii patent threat sued genentech patent infringement medimmune licensee good standing made necessary royalty payments thus voluntarily entering abiding license agreement genentech medimmune removed threat suit see ante stating threat suit remote nonexistent medimmune actions entering continuing comply license agreement deprived genentech cause action medimmune additionally medimmune cause action genentech patent invalidity affirmative defense patent infringement freestanding cause action see therefore declaratory judgment act must something alternative procedure bringing otherwise actual case controversy federal see aetna life operation declaratory judgment act procedural neither genentech medimmune cause action medimmune prayer declaratory relief reasonably understood seeking advisory opinion affirmative defense might use future litigation medimmune wants know whether decides breach license agreement genentech genentech sues patent infringement successful affirmative defense presumably upon favorable determination medimmune stop making royalty payments knowing advance federal courts stand behind decision yet demonstrated declaratory judgment act allow federal courts give advisory rulings potential success affirmative defense cause action even accrued calderon dismissing suit attempt ed gain litigation advantage obtaining advance ruling affirmative defense see also coffman rejecting use declaratory judgment act medium securing advisory opinion controversy arisen medimmune therefore asked courts render opinion advising law upon hypothetical state facts aetna life supra see also public serv utah wycoff disagreement must nebulous contingent must taken fixed final shape federal consistent article iii provide medimmune opinion finally plainly stated context counterclaim declaratory judgment action challenging validity patent hold patent valid infringed decide hypothetical case altvater course medimmune presents exactly case based clear reading precedent hold case presents actual case controversy iii reach today result misreads precedent expands concept coercion steffel reach voluntarily accepted contractual obligations private parties inappropriately relies altvater inapplicable case three reasons first altvater affirmative defense patent invalidity arose declaratory judgment motion filed counterclaim patent infringement suit see second opinion altvater proceeds understanding license existed district appeals already held underlying license terminated prior filing case royalties demanded royalties paid paid compulsion injunction decree third related though licensee continued pay royalties compulsion injunction entered prior case ibid altvater simply held unique facts case appeals erred considering declaratory judgment counterclaim moot involuntary coercive nature exaction preserve right recover sums paid challenge legality claim ibid cardinal chemical morton similarly inapt case altvater defendant raised affirmative defense patent invalidity counterclaim patent infringement suit specifically held finding noninfringement appeal moot counterclaim alleging invalidity stressed issue us therefore concern jurisdiction intermediate appellate jurisdiction trial trial course party seeking declaratory judgment burden establishing existence actual case controversy went offer hypothetical showed party seek declaratory judgment patent litigation even patentee filed infringement action ibid however hypothetical involved threatened infringement suit competitor licensee continued sell allegedly infringing product faced growing liability hypothesized situation paralleled facts aetna life ins patentee cause action alleged infringer brought suit moment declaratory judgment procedure simply offered alleged infringer different method bringing otherwise justiciable case controversy serious error extension steffel supra apply voluntarily accepted contractual obligations private parties ever taken broad view steffel steffel held certain limited circumstances party anticipatory cause action qualified case controversy article iii based expressly coercive nature governmental power found necessary petitioner first expose actual arrest prosecution entitled challenge statute claims deters exercise constitutional rights emphasis added limited governmental power particularly power arrest prosecution steffel says nothing coercion context private contractual obligations therefore surprising today never applied steffel theory coercion private contractual obligations indeed ever done majority extends steffel cases involve governmental coercion also extends steffel rationale coercion understood used term steffel apply genentech threatened medimmune patent infringement suit absence license agreement point medimmune choice declaratory plaintiff steffel either cease otherwise protected activity selling synagis continue activity face threat lawsuit medimmune faced choice medimmune continue selling product without threat suit eliminated risk suit entering license agreement holding voluntary choice enter agreement avoid coerced choice coerced goes far beyond steffel majority explains coercive nature exaction preserves right challenge legality claim ante internal quotation marks omitted coercive nature exaction answer voluntarily made license payments threat suit holding contractual obligations sufficiently coercive allow party bring declaratory judgment action majority given every patent licensee cause action free pass around article iii requirements challenging validity licensed patents reasoning today opinion applies patent validity suits indeed today opinion contains limiting principle whatsoever casting aside justice stewart understanding steffel use exceedingly rare concurring opinion foregoing reasons respectfully dissent footnotes hereinafter invalidity unenforceability referred simply invalidity similar abbreviation positive validity enforceability adjectival valid invalid enforceable unenforceable forms dissent contends question granted certiorari reach contract claim post opinion thomas think otherwise question specifically refers license agreement contention patent infringed pet cert unmistakable meaning royalties owing contract addition agreeing respondents despite face complaint case involve contract claim post dissent evidently thinks contract claim weak however goes merits claim existence courts jurisdiction alleged lack specificity complaint post jurisdictional matter dissent observes district assumed synagis patents issue post quoting app quoted statement taken district separate opinion granting summary judgment petitioner antitrust claims purposes earlier ruling whether synagis infringed patent irrelevant harm accepting respondents contention point tells us nothing however petitioner contract claim district later jurisdictional holding respect respondents obviously agree said district facts case purposes motion identical facts like medimmune filed action seeking declaratory judgment owes nothing license agreement genentech sales allegedly infringe valid claim cabilly ii patent cabilly ii patent invalid cabilly ii patent unenforceable infringe cabilly ii patent app nos ca fed record citations omitted dissent asserts petitioner allege contract claim opening brief oral argument post demonstrably false see brief petitioner cabilly ii patent infringed royalties due license summary argument purpose declaratory judgment act allow contracting parties resolve disputes without breach without risking economic destruction multiplying damages holding disrupt law licenses contracts throughout economy essentially undoing achievement reformers tr oral arg saying contract dispute purpose declaratory judgment act contracts resolved without breach contract claim clear record page joint appendix think needs said dissent also asserts validity contract claim hinges entirely upon determination patent validity since license requires medimmune pay royalties patent claim held invalid competent body post quoting infra true license required royalties products sun practice patent course dissent asserts post declaratory judgment procedure used obtain advanced rulings matters addressed future case actual controversy preceding discussion shows dissent point simply defense raised means judgment action actual controversy premature phrasing argument dissent done begs question whether actual ripe controversy coffman breeze cited post support dissent view none parties cited patent owner sued enjoin licensee paying accrued royalties government royalty adjustment act sought attack constitutionality act held request declaratory judgment injunction nonjusticiable patent owner asserted right recover royalties indication licensee even raise act defense suit royalties case dissent cites point calderon ashmus simply holds litigant may use action obtain piecemeal adjudication defenses finally conclusively resolve underlying controversy course case justiciability problem arises party seeking declaratory relief preventing injury occurring described terms standing whether plaintiff threatened imminent injury fact trace able challenged action defendant lujan defenders wildlife terms ripeness whether sufficient hardship parties withholding consideration enforcement action abbott laboratories gardner respondents acknowledge standing ripeness boil question case brief respondent genentech brief respondent city hope dissent claims cited cases rely coercion inherent making contractual payments post true relied put matter dissent puts coercion inherent complying claimed contractual obligations dissent fails explain contractual obligation payment magically different obviously view course relevant coercion compliance claimed contractual obligation rather consequences failure dissent incorrectly asserts altvater required actual infringement quoting wildly context twice emphasis altvater statement hold patent valid infringed decide hypothetical case post quoting passage quotation plucked altvater distinguishing earlier decision electrical fittings thomas betts involved affirmative defense patent invalidity become moot light finding infringement full quotation district electrical fittings adjudged claim patent valid although dismissed bill failure prove infringement held finding validity immaterial disposition cause winning party might appeal obtain reformation decree hold patent valid infringed decide hypothetical case situation present case quite different bill answer counterclaim though decision disposes bill answer dispose counterclaim raises question validity altvater supra omitted full quotation makes clear snippet quoted dissent nothing whether infringement must actual merely threatened indeed makes clear appropriate cases hold noninfringed patent valid decide hypothetical case though dissent acknowledges central lesson altvater post payment royalties coercive circumstances eliminate jurisdiction attempts limit rationale particular facts altvater none altvater unique facts post suggests different test applies royalty payments conclusory assertion payments voluntarily made post dissent never explains threat treble damages loss percent petitioner business fall within altvater coercion rationale even altvater distinguished injunction case still contradict federal circuit reasonable apprehension suit test evolved form reasonable apprehension imminent suit test teva pharm usa pfizer licensee pays royalties compulsion injunction apprehension imminent harm licensee pays royalties fear treble damages injunction fatal business test also conflicts decisions maryland casualty pacific coal oil jurisdiction obtained even though defendant sued without first obtaining judgment insured aetna life ins haworth jurisdiction obtained even though reason insurer sought declaratory relief insured given indication file suit also tension cardinal chemical morton held appellate affirmance judgment noninfringement eliminating apprehension suit moot declaratory judgment counterclaim patent invalidity dissent objects supposed extension steffel thompson apply voluntarily accepted contractual obligations private parties post criticism misdirected several respects coercion principle upon rely today originate steffel thompson see supra opportunity extend private litigation altvater freeman already see supra moreover even today decision described extension steffel private litigation dissent identifies principled reason extension appropriate article iii favor litigants challenging threatened government enforcement action litigants challenging threatened private enforcement action indeed latter perhaps easier category cases presents none difficult issues federalism comity wrestled steffel see dissent accuses misapplying steffel rationale post contends steffel apply respondents threatened petitioner patent infringement suit absence license agreement petitioner put choice selling product facing suit post dissent argues license payments voluntarily made ibid one uses word voluntarily loosely applied equal justification lack thereof steffel plaintiff voluntary refusal distribute handbills find threat treble damages loss percent petitioner business every bit coercive modest penalties misdemeanor trespass threatened steffel ignoring consequences threatened action case dissent claim today opinion contains limiting principle whatsoever post footnotes addition fact medimmune identify anywhere record provision contract issue suggests contractual provision construed breach advisory committee notes fed rule civ proc pp additionally lear adkins little case addressed propriety extent doctrine licensee estoppel licensee lear ceased making payments license agreement fact makes case singularly inapposite lear involve declaratory judgment act case brought action failure pay royalties admitting decisions rare ante cites cases predating steffel hold may construe contractual provisions prior breach cases rely coercion inherent making contractual payments see keener oil gas consolidated gas util