Declaratory judgment plaintiff Pride Manufacturing filed suit seeking a declaratory judgment that Defendant Evolve Golf’s design patent and US trademark are invalid and not infringed. Evolve answered the complaint, asserting counterclaims of trademark infringement but admitting the Pride does not infringe the design patent. Evolve then sent Pride a release and covenant not-to-sue on the design patent. Nevertheless, Judge Robinson heard and decided cross motions, Evolve’s motion to dismiss for lack of subject matter jurisdiction and Pride’s motion for judgment of non-infringement. Pride Manufacturing Co., LLC v. Evolve Golf, Inc., C.A. No. 15-1034-SLR, Memo. at 1 (D. Del. Oct. 31, 2016).
Judge Robinson first recognized that a “covenant not-to-sue deprives the court of declaratory judgment jurisdiction relating to claims addressed by the covenant.” Id. at 4. Her Honor was “satisfied that, despite the covenant’s lack of any specific product descriptions, the covenant meets the purpose of removing any concern of liability for infringement of the patent currently in suit.” Id. at 5. Thus, the motion to dismiss for lack of jurisdiction was granted and the motion for judgment denied as moot, but, as Judge Robinson explained, “a controversy still exists regarding the trademark infringement claims and counterclaims.” Id.