Mooting Declaratory Judgment Actions through Covenants Not to Sue after Already, LLC v. Nike, Inc.

Vol. 6 No. 4

By

Matthew K. Blackburn is the managing partner of Locke Lord LLP in San Francisco, California. He is a patent lawyer who advises clients on patent litigation. He can be reached at mblackburn@lockelord.com.

The Supreme Court’s recent trademark decision, Already, LLC v. Nike, Inc.,1 overturned over 20 years of Federal Circuit precedent. Since at least 1991, accused infringers have had to show that a covenant not to sue did not moot ongoing litigation. After Already, the intellectual property owner (not the accused infringer) has a formidable burden to show mootness under the voluntary cessation doctrine. It must be “absolutely clear” that the dispute is unlikely to recur. This trademark decision may have a significant impact on patent litigation. Partial covenants not to sue (not extending to withdrawn or unasserted patent claims) may no longer moot declaratory judgment actions.

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