When is a Covenant just a Covenant? Of Meso, Newman and Transactions with Patents – Jorge Contreras

Post by guest blogger Jorge Contreras, University of Utah College of Law.

A petition for certiorari was recently filed with the Supreme Court in Meso Scale Diagnostics LLC v. Roche Diagnostics GmbH (Del. 2015). In it, Petitioner poses the following question: “Whether a covenant, promise, or agreement not to sue for the infringement of a federal patent is a license of that patent as a matter of federal law.”

Though phrased simply, the question is an important one for reasons that extend well beyond the immediate dispute between the parties (which itself is too complex to describe here). Among other things, its answer has serious implications for the doctrine of patent exhaustion and the treatment of industry-wide commitments to limit the enforceability of patents in contexts such as standard-setting (commitments I have elsewhere termed “patent pledges”).

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