IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Jurisdiction

Declaratory Judgment Jurisdiction Considerations in Patent Cases: The District of New Jersey Speaks

Posted in Patent
IP practitioners should read and heed Judge Martini's recent decision in Medidata Solutions, Inc. v. DATATRAK Int'l, Inc., 2-12-cv-04748 (D.N.J. May 13, 2013, Docket 33), which addresses considerations for declaratory judgment jurisdiction in a patent dispute. The case involved two patents owned by DATATRAK, the "parent" '087 patent, and the "child" '294 patent, which issued from a continuation application… Continue Reading

Supreme Court Finds Covenant Not to Sue Sufficiently Broad

Posted in Trademark
Trademark holders no longer have to worry about not being able to dismiss a case by entering into a properly drafted covenant not to sue. In Already, LLC, dba Yums v. Nike, Inc., the Supreme Court unanimously affirmed the Second Circuit's opinion by ruling that Nike's covenant not to sue Yums for trademark infringement was sufficiently broad to render moot Yums' challenge to the validity of Nike's asserted registration. Yums had no reasonable apprehension of litigation and Nike met its burden of showing that Yums could not be sued later. Chief Justice Roberts delivered the opinion, which required a high standard for parties issuing the covenant, as they bear a "formidable burden" to establish that it is "absolutely clear" that the allegedly wrongful conduct cannot reasonably be expected to reoccur. Remand was not necessary under the circumstances, because the Court found that it "cannot conceive" of any shoe that Yums could make "that would potentially infringe Nike's trademark and yet not fall under the Covenant." Arguably, the Court construed the covenant so broadly as to exclude a claim of infringement based on Yums' sale of the exact shoe covered by Nike's challenged registration… Continue Reading

Supreme Court Hears Oral Argument in Already LLC v. Nike, Inc.

Posted in Litigation, Trademark
On Wednesday, the Supreme Court heard oral argument in the case of Already, LLC d/b/a Yums v. Nike, Inc. As we reported previously, that case arose from an appeal of the Second Circuit's decision affirming the Southern District of New York's holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties. We enclose the full transcript of the oral argument… Continue Reading

Yums v. Nike Update — Two Amicus Curiae Briefs Filed: One Arguing Vacatur and Remand and the Second in Support of Yums

Posted in Trademark
Last week, in a prior blog, we reported that Petitioner Already, LLC d/b/a Yums ("Yums") filed its opening brief with the Supreme Court, arguing that a trademark registrant's post-suit covenant not to sue does not divest a Federal District Court of standing to review a challenge to the validity of the underlying trademark registration… Continue Reading

Already v. Nike: Petitioner’s Brief Asserts that Jurisdiction Remains Despite Covenant Not to Sue

Posted in Patent, Trademark
In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit's decision affirming the Southern District of New York's holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties… Continue Reading

Supreme Court Visits Jurisdiction and Covenants Not to Sue

Posted in Patent
Yesterday, the Supreme Court granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, an appeal from the Second Circuit's decision that affirmed the Southern District's holding that a covenant not to sue entered in a trademark dispute between Nike and Yums ended the case or controversy between the parties. The lower court also dismissed defendant's counterclaims, which the Second Circuit also affirmed. See Nike, Inc. v. Already, LLC, 663 F.3d 89 (2nd Cir. 2011) (Lohier, J.)… Continue Reading
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