Richards Layton & Finger
 

Judge Robinson Grants Motion to Dismiss and Denies Motion for Declaratory Judgment

December 15, 2016

In Pride Manufacturing Co. v. Evolve Golf, Inc., C.A. No. 15-1034-SLR (Oct. 31, 2016), Judge Robinson granted the defendant’s motion to dismiss for lack of subject matter, and denied the plaintiff’s motion for declaratory judgment of noninfringement. The plaintiff brought an action for declaratory judgment of noninfringement and invalidity. In its answer, the defendant admitted that the plaintiff’s product did not infringe. The defendant also sent the plaintiff a release and covenant not-to-sue letter. The Court held that the covenant not-to-sue rendered the plaintiff’s claim for declaratory judgment moot because it protected the plaintiff from the threat of future litigation for infringement by any existing products. The Court’s decision, however, did not end the litigation because trademark claims and counterclaims were pending.

Key Points:  A comprehensive covenant not-to-sue typically deprives the Court of declaratory judgment jurisdiction relating to claims addressed by the covenant.