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

Matthew K. Blackburn

©2014. Published in Landslide, Vol. 6, No. 4, March/April 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

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 Partial covenants not to sue (not extending to withdrawn or unasserted patent claims) may no longer moot declaratory judgment actions.

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