Covenant Not to Sue

• Author: Kenneth L. Dorsney
• Pages: 717-717

Covenant Not to Sue

IN THE UNITED STATES DISTRICT COURT

[Name of District]

—

[DISTRICT COURT CAPTION]

COV ENA NT NO T T O S UE ON U. S. PAT ENT N O. 1

Plaintiff Brand, Inc. (“Brand”) and Defendant Generic, Inc. (“Generic”), by their

undersigned counsel, hereby stipulate and agree as follows:

1. This action for patent infringement (the “Action”) has been brought by

Brand against Generic for infringement of United States Patent No. 1 (“the ’001 patent”).

2. Brand and Generic have entered into a Settlement Agreement, under which

Brand will grant Generic a license to the ’001 patent (the “License”), pursuant to the

terms and conditions in the Settlement Agreement and License, which resolve all claims

in this Action.

3. Brand grants Generic a covenant not to sue with respect to the ’001 patent

pursuant to the Settlement Agreement.

4. Brand and Generic agree to dismiss without prejudice this Action with

respect to the ’001 patent.

5. Generic acknowledges that all the claims in the ’001 patent are valid and

enforceable in all respects.

6. Generic acknowledges that the filing of Abbreviated New Drug

Application (“ANDA”) No. 00-001 (together with any supplements or amendments

thereto, the “Generic ANDA”) technically infringed the ’001 patent under 35 U.S.C. §

271(e)(2)(A) and, in the absence of a license, that selling, offering for sale, using and/or

importing into the United States a product under or described in the Generic ANDA (the

“Generic Product”) would infringe the ’001 patent.

It is so STIPULATED.

Dated: [Insert Date]

[Name of Counsel for Plaintiff]

[Name of Attorney for Plaintiff]

[Address of Counsel for Plaintiff]

[Name of Counsel for Defendant]

[Name of Attorney for Defendant]

[Address of Counsel for Defendant]

SO ORDERED:

Dated: [Date of Order] ______________________________

[Signature of Judge]

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