Covenant Not To Sue Destroys Jurisdiction

Merck & Co., Inc., v. Apotex, Inc., [2007-1362] (July 16, 2008) [GAJARSA, Friedman, Prost] The Federal Circuit affirmed the district court’s denial of Apotex’s motion to add an antitrust counterclaim as within the district court’s discretion, and because the infringement and invalidity counterclaims have been rendered moot, vacated the district courts dismissal for lack of jurisdiction, and remanded with instructions to dismiss the claims as moot.
BRIEF: The Federal Circuit noted that in the context of Hatch Waxman it had recently held that Article III jurisdiction can survive a covenant not to sue, but noted that Apotex no longer suffers a delay in entering the market under either the thirty-month stay provision or the 180-day exclusivity provision that is traceable to Merck and redressible by a court judgment. The Federal Circuit also affirmed the denial of Apotex’s motion to add an antitrust counterclaim, finding no error in the Court’s conclusion that the pleadings failed to allege facts sufficient to support its antitrust counterclaim.