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

Vol. 6 No. 4


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

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 Partial covenants not to sue (not extending to withdrawn or unasserted patent claims) may no longer moot declaratory judgment actions.

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