Covenant not to sue allows plaintiff to dismiss its patent suit with prejudice
Merck & Co., Inc. v. Watson Laboratories, Inc., No. 658-GMS, June 2, 2006.
Sleet, J. Plaintiff’s motion to dismiss its patent suit with prejudice is granted after plaintiff gave defendant a covenant not to sue.
Merck alleged patent infringement against Watson Labs after Watson Labs filed its ANDA directed to one of Merck’s branded drugs. Merck later sought to dismiss the action after issuing a covenant not to sue Watson Labs on this product. Watson Labs objected, and Merck filed a motion to dismiss asserting lack of subject matter jurisdiction. The covenant not to sue eliminated reasonable apprehension of suit and dismissed the suit with prejudice. The Court rejected the argument that the covenant was void while the patent suit was pending, and that the covenant is unenforceable due to lack of consideration.
Sleet, J. Plaintiff’s motion to dismiss its patent suit with prejudice is granted after plaintiff gave defendant a covenant not to sue.
Merck alleged patent infringement against Watson Labs after Watson Labs filed its ANDA directed to one of Merck’s branded drugs. Merck later sought to dismiss the action after issuing a covenant not to sue Watson Labs on this product. Watson Labs objected, and Merck filed a motion to dismiss asserting lack of subject matter jurisdiction. The covenant not to sue eliminated reasonable apprehension of suit and dismissed the suit with prejudice. The Court rejected the argument that the covenant was void while the patent suit was pending, and that the covenant is unenforceable due to lack of consideration.
