The Elimination of the Dispute Does Not Always Eliminate the Controversy

Caraco Pharmaceutical Laboratories, Ltd., v. Forest Laboratories, Inc., [2007-1404] (April 1, 2008) [GAJARSA, Friedman, Prost] The Federal Circuit reversed dismissal for lack of Article III jurisdiction on the grounds that it had been rendered moot when Forest unilaterally granted Caraco a covenant not to sue for infringement of the patent-in-suit.
SIGNIFICANCE: The elimination of a dispute may not eliminate the need for a judicial determination.
BRIEF: In the context of the Hatch-Waxman framework, Forest’s covenant not to sue did not eliminate the controversy between the parties. A judgement of invalidity or non-infringement was required under the Hatch-Waxman Act. The granting of a covenant not to sue did not satisfy the need for a declaration. Accordingly, the Federal Circuit held that Caraco’s declaratory judgment action presents a continuing Article III controversy, and reversed and remanded for further proceedings.