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Supreme Court's Dismissal of Invalidity Counterclaim Based on Covenant Not to Sue Raises New Potential Avenues for Argument in Hatch-Waxman Act Cases

January 16, 2013

By BRUCE M. WEXLER, JASON T. CHRISTIANSEN & SIMON KUNG

Last week, in a trademark decision that has potential implication in patent cases, the Supreme Court unanimously affirmed the dismissal for lack of jurisdiction of an alleged infringer's counterclaim for trademark invalidity after the trademark owner provided a covenant not to sue. Already, LLC v. Nike, Inc., 568 U.S. ---, No. 11-982 (2013) (Slip Op.).

In this alert, we discuss the Court's reasoning that the covenant mooted the counterclaim and how it may provide potential new arguments for use in the context of patent cases, particularly in Hatch-Waxman ANDA litigation, where this issue has frequently arisen in recent years.