SCALIA, J., dissenting dictment requirement. Conspiracy is also, in most cases, a parasitic crime, and no one contends that its elements need not be charged. Despite the clear answer provided by straightforward application of the oft-recited principles of our jurisprudence, I might have been persuaded to recognize an (illogical) exception to those principles if the Government had demonstrated that mere recitation of the word "attempt" in attempt indictments has been the traditional practice. But its effort to do so falls far short; in fact, it has not even undertaken such an effort. The Government has pointed to some cases that allow an indictment simply to use the word "attempt," and many others that invalidate an indictment for failure to allege an overt act. See Supplemental Brief for United States 15-21. It matters not whether more of one sort or the other of these cases arose in state courts or federal courts; the point is that there is no established historical "attempt" exception to the general principles of our jurisprudence. That being so, those principles must prevail. To be clear, I need not decide in this case whether, as the Ninth Circuit held, the Government was required to specify in the indictment which particular overt act it would be relying on at trial. Cf. Russell v. United States, 369 U. S. 749 (1962). It suffices to support the judgment, that the Government was required to state not only that Resendiz-Ponce "knowingly and intentionally attempted to enter the United States of America," but also that he "took a substantial step" toward that end. My dissenting view that the indictment was faulty (a point on which we requested supplemental briefing) puts me in the odd position of being the sole Justice who must decide the question on which we granted certiorari: whether a constitutionally deficient indictment is structural error, as the Ninth Circuit held, or rather is amenable to harmless-error analysis. I cannot vote to affirm or to reverse the judgment with SCALIA, J., dissenting out resolving that issue. Since the full Court will undoubtedly have to speak to the point on another day (it dodged the bullet today by inviting and deciding a different constitutional issue-albeit, to be fair, a narrower one) there is little use in my setting forth my views in detail. It should come as no surprise, given my opinions in United States v. Gonzalez-Lopez, 548 U. S. 140 (2006), and Neder v. United States, 527 U. S. 1, 30 (1999) (opinion concurring in part and dissenting in part), that I would find the error to be structural. I would therefore affirm the judgment of the Ninth Circuit. Syllabus MEDIMMUNE, INC. v. GENENTECH, INC., ET AL. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 05-608. Argued October 4, 2006-Decided January 9, 2007 After the parties entered into a patent license agreement covering, inter alia, respondents' then-pending patent application, the application matured into the "Cabilly II" patent. Respondent Genentech, Inc., sent petitioner a letter stating that Synagis, a drug petitioner manufactured, was covered by the Cabilly II patent and that petitioner owed royalties under the agreement. Although petitioner believed no royalties were due because the patent was invalid and unenforceable and because Synagis did not infringe the patent's claims, petitioner considered the letter a clear threat to enforce the patent, terminate the license agreement, and bring a patent infringement action if petitioner did not pay. Because such an action could have resulted in petitioner's being ordered to pay treble damages and attorney's fees and enjoined from selling Synagis, which accounts for more than 80 percent of its sales revenue, petitioner paid the royalties under protest and filed this action for declaratory and other relief. The District Court dismissed the declaratory-judgment claims for lack of subject-matter jurisdiction because, under Federal Circuit precedent, a patent licensee in good standing cannot establish an Article III case or controversy with regard to the patent's validity, enforceability, or scope. The Federal Circuit affirmed. Held: 1. Contrary to respondents' assertion that only a freestanding patent invalidity claim is at issue, the record establishes that petitioner has raised and preserved the contract claim that, because of patent invalidity, unenforceability, and noninfringement, no royalties are owing. Pp. 123-125. 2. The Federal Circuit erred in affirming the dismissal of this action for lack of subject-matter jurisdiction. The standards for determining whether a particular declaratory-judgment action satisfies the case-orcontroversy requirement-i. e., "whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant" relief, Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U. S. 270, 273-are satisfied here even though petitioner did not refuse to make royalty payments under the license agreement. Where Syllabus threatened government action is concerned, a plaintiff is not required to expose himself to liability before bringing suit to challenge the basis for the threat. His own action (or inaction) in failing to violate the law eliminates the imminent threat of prosecution, but nonetheless does not eliminate Article III jurisdiction because the threat-eliminating behavior was effectively coerced. Similarly, where the plaintiff's selfavoidance of imminent injury is coerced by the threatened enforcement action of a private party rather than the government, lower federal and state courts have long accepted jurisdiction. In its only decision in point, this Court held that a licensee's failure to cease its royalty payments did not render nonjusticiable a dispute over the patent's validity. Altvater v. Freeman, 319 U. S. 359, 364. Though Altvater involved an injunction, it acknowledged that the licensees had the option of stopping payments in defiance of the injunction, but that the consequence of doing so would be to risk "actual [and] treble damages in infringement suits" by the patentees, a consequence also threatened in this case. Id., at 365. Respondents' assertion that the parties in effect settled this dispute when they entered into their license agreement is mistaken. Their appeal to the common-law rule that a party to a contract cannot both challenge its validity and continue to reap its benefits is also unpersuasive. Lastly, because it was raised for the first time here, this Court does not decide respondents' request to affirm the dismissal of the declaratory-judgment claims on discretionary grounds. That question and any merits-based arguments for denial of declaratory relief are left for the lower courts on remand. Pp. 126-137. 427 F. 3d 958, reversed and remanded. SCALIA, J., delivered the opinion of the Court, in which ROBERTS, C. J., and STEVENS, KENNEDY, SOUTER, GINSBURG, BREYER, and ALITO, JJ., joined. THOMAS, J., filed a dissenting opinion, post, p. 137. John G. Kester argued the cause for petitioner. With him on the briefs were Paul B. Gaffney, Janet C. Fisher, Aaron P. Maurer, Harvey Kurzweil, Aldo Badini, and Henry J. Ricardo. Deanne E. Maynard argued the cause for the United States as amicus curiae urging reversal. With her on the brief were Solicitor General Clement, Assistant Attorney General Keisler, Deputy Solicitor General Hungar, John M. Whealan, and Joseph G. Piccolo. Opinion of the Court Maureen E. Mahoney argued the cause for respondents. With her on the brief for respondent Genentech, Inc., were J. Scott Ballenger, Amanda P. Biles, Daniel M. Wall, Mark A. Flagel, Roy E. Hofer, Meredith Martin Addy, John W. Keker, and Mark A. Lemley. Paul M. Smith, William M. Hohengarten, Ian Heath Gershengorn, Joseph M. Lipner, Laura W. Brill, and Jason Linder filed a brief for respondent City of Hope.* JUSTICE SCALIA delivered the opinion of the Court. We must decide whether Article III's limitation of federal courts' jurisdiction to "Cases" and "Controversies," reflected in the “actual controversy" requirement of the Declaratory Judgment Act, 28 U. S. C. § 2201(a), requires a patent li *Briefs of amici curiae urging reversal were filed for the Generic Pharmaceutical Association by Theodore Case Whitehouse; for Medtronic, Inc., by Kenneth C. Bass III and Robert G. Sterne; for the Natural Resources Defense Council, Inc., by Scott L. Nelson, Brian Wolfman, and Michael E. Wall; and for Three Intellectual Property Professors by Jay Dratler, Jr., and A. Samuel Oddi, both pro se. Briefs of amici curiae urging affirmance were filed for the American Bar Association by Michael S. Greco, Richard L. Rainey, and David H. Remes; for the American Intellectual Property Law Association by Edward R. Reines, Amber H. Rovner, and Melvin C. Garner; for the Boston Patent Law Association by Erik Paul Belt; for a Group of Law Professors by David Hricik, pro se; for the New York Intellectual Property Law Association by David F. Ryan and Christopher A. Hughes; for the Pharmaceutical Research and Manufacturers of America by Marjorie E. Powell; for Qualcomm Inc. et al. by E. Joshua Rosenkranz and Alan H. Blankenheimer; for the Trustees of Columbia University in the City of New York et al. by Jerrold J. Ganzfried, John F. Stanton, Teresa M. Corbin, Jennifer A. Sklenar, and Richard G. Taranto; for 3M et al. by Gary L. Griswold, Steven W. Miller, Q. Todd Dickinson, and John A. Dragseth; for John R. Allison et al. by Thomas F. Cotter, Mr. Allison, Christopher A. Cotropia, Thomas G. Field, Jr., and Michael S. Mireles, all pro se; and for Richard L. Donaldson et al. by Justin A. Nelson, Parker C. Folse III, Brooke A. M. Taylor, and Richard A. Epstein. Christine E. Lehman, James B. Monroe, and D. Brian Kacedon filed a brief for the Licensing Executives Society (U. S. A. & Canada), Inc., as amicus curiae. |