News & Analysis as of

Covenant Not to Sue

McDermott Will & Emery

Promises, Promises: Covenant Not to Sue for Patent Infringement Includes Downstream Users

McDermott Will & Emery on

The US Court of Appeals for the Tenth Circuit affirmed that a district court did not err in applying ordinary rules of contract construction to a covenant not to sue and properly found that under the patent exhaustion...more

Mitchell, Williams, Selig, Gates & Woodyard,...

Prospective Purchaser Agreement: U.S. Environmental Protection Agency Public Notices Settlement Addressing St. Joseph, Missouri...

The United States Environmental Protection Agency (“EPA”) published in the August 7th Federal Register notice of a proposed Prospective Purchaser Agreement (“PPA”) with the City of St. Joseph, Missouri (“St. Jospeh”). See 89...more

McDermott Will & Emery

Read the Fine Print: Covenant Not to Sue “At Any Time” Terminated Upon License Expiration

McDermott Will & Emery on

Illustrating the importance of carefully drafting and reviewing language in a covenant not to sue, the US Court of Appeals for the Federal Circuit found that the plain language of a covenant permitted a licensor to sue a...more

Axinn, Veltrop & Harkrider LLP

Bayer Covenants Not to Sue, Still Has Headache

Bayer's ‘053 patent on its drug Xarelto® expires in November 2024, and Bayer granted Mylan a covenant not to sue. Bayer has a second patent that is subject to a pediatric exclusivity that expires later - February 2025 - and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc.,...

Nippon Shinyaku and Sarepta entered into a Mutual Confidentiality Agreement to facilitate discussions about a potential business relationship related to muscular dystrophy therapies. Section 6.1 of the MCA contained a mutual...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

International Lawyers Network

Parties to exploratory agreements beware: Contractual restrictions on IPR patent challenges are enforceable!

On February 8, 2022, the U.S. Court of Appeals for the Federal Circuit determined that certain restrictions on the ability to challenge the validity of patents are enforceable. Without such restrictions, companies that are...more

Jackson Lewis P.C.

Court Rules Separation Agreement’s Covenant Not to Sue Bars ERISA Breach of Fiduciary Duty Claim on Behalf of Plan

Jackson Lewis P.C. on

In an order issued on October 15, 2021, United States District Judge Thomas W. Thrash from the Northern District of Georgia granted an employer’s Motion for Summary Judgment and ruled that plaintiff’s separation agreement...more

Sands Anderson PC

Breach of a Covenant Not to Sue to Entail Liability for Attorney’s Fees

Sands Anderson PC on

The decision for prospective litigants to bring and defend lawsuits can be difficult to navigate given the uncertainty of costs, especially attorney’s fees. Contrary to popular assumption, in Virginia, the general rule for...more

Rosenberg Martin Greenberg LLP

Virginia Supreme Court Recognizes Exception to American Rule For Covenants Not to Sue

Under what is referred to as the “American Rule,” successful litigants in state and federal courts in the United States generally cannot recover their attorney’s fees and expenses from their opponents. Unless there is either...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Amneal Pharm. LLC v. Almirall, LLC, 960 F.3d 1368...

Abbreviated new drug (ANDA) applicant Amneal petitioned for an inter partes review (IPR) of Almirall’s patent listed in the Food and Drug Administration’s (FDA) Orange Book for a prescription drug to treat acne. Almirall...more

Sheppard Mullin Richter & Hampton LLP

Employee Separation Agreements Likely to Face Increased EEOC Scrutiny

The Equal Employment Opportunity Commission (“EEOC”)—the agency tasked with enforcing federal labor laws—was deputized by Congress in 1972 with authority to bring lawsuits against employers for violating anti-discrimination...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Fisher Phillips

So What Do We Do About PAGA? The Continued Viability Of Severance Agreements In The Wake Of Kim v. Reins

Fisher Phillips on

For decades, severance agreements have been a staple of the employment relationship, inhering to the benefit of employers and employees alike. Through their use, employers are able to obtain peace of mind against future...more

Akin Gump Strauss Hauer & Feld LLP

Merger Clause in a Patent License Agreement May Not Extinguish a Prior Covenant Not to Sue

The Federal Circuit recently affirmed a district court’s holding that a merger clause in a patent license settlement agreement did not extinguish a prior covenant not to sue on the same patent because the agreement did not...more

Bradley Arant Boult Cummings LLP

When Merger Clauses Don't Merge - Intellectual Property News

Last week, a divided panel of the Federal Circuit extinguished Molon Motor and Coil Corporation’s hopes of going forward with a patent infringement suit against its electric motor industry competitor Nidec Motor Corporation....more

Knobbe Martens

Integration Clause Does Not Necessarily Extinguish Prior Agreement on Same Patent

Knobbe Martens on

MOLON MOTOR AND COIL CORP. v. NIDEC MOTOR CORPORATION - Before Lourie, Reyna, and Hughes. Appeal from U.S. District Court for the Northern District of Illinois. Summary: In interpreting an integration clause that...more

Knobbe Martens

Defendant Awarded Attorney Fees After NPE Dismissed Frivolous Case with Prejudice

Knobbe Martens on

BLACKBIRD TECH LLC v. HEALTH IN MOTION LLC - Before Wallach, Prost, and Hughes. Appeal from U.S. District Court for the Central District of California. Summary: The Federal Circuit affirmed a finding that a frivolous...more

Knobbe Martens

Princeton Digital Image Corp. v. Office Depot Inc. Et Al.

Knobbe Martens on

Federal Circuit Summary - Before Dyk, Taranto, and Stoll. Appeal from U.S. District Court for the District of Delaware. Summary: The Federal Circuit lacks jurisdiction to hear an appeal from a district court judgment...more

Mitchell, Williams, Selig, Gates & Woodyard,...

Arkansas/Oklahoma Memorandum of Agreement Announced: Illinois River Watershed Collaboration

The states of Arkansas and Oklahoma announced on November 14th the execution of a document titled: Memorandum of Agreement by and Between the Oklahoma Secretary of Energy and Environment, the Oklahoma Secretary of...more

Dorsey & Whitney LLP

Great Scott! The DeLorean Estate Lawsuit Hits a Space Time Continuum Roadblock

Dorsey & Whitney LLP on

The recent decision of DeLorean v. DeLorean Motor Co. is no doubt significant to the parties as well as attorneys and courts who will cite it in future briefs and decisions. However, it is also important because it...more

Knobbe Martens

Aids Healthcare Foundation, Inc. v. Gilead Sciences, Inc.

Knobbe Martens on

Federal Circuit Summary - Before NEWMAN, DYK, and STOLL. Appeal from the Northern District of California. Summary: A consumer of a patented product has no standing under the Declaratory Judgment Act to challenge the...more

Knobbe Martens

PTAB Denies Institution of CBM Review for Lack of Standing in view of Covenant Not to Sue

Knobbe Martens on

The PTAB denied institution of Covered Business Method (CBM) Review, finding that the parties’ license agreement and covenant not to sue removed any “imminent” threat of an infringement suit. MasterCard International Inc., v....more

McDermott Will & Emery

Conditional Covenant Not to Sue Insufficient to Moot Patent Dispute

The US Court of Appeals for the Federal Circuit affirmed a summary judgment of non-infringement based on invalidity of asserted reissue claims as impermissibly broadened, notwithstanding a covenant not to sue that the patent...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Mylan v. Aurobindo the Circuit affirms the grant of a preliminary injunction based upon the infringement of one of the three patents in suit. However, the panel reverses the injunction as to the other two patents based on...more

50 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide