PSN Pharma, LLC v. Niazi, No. 14 C 6865, Slip Op. (N.D. Ill. Apr. 1, 2016) (Coleman, J.).

Judge Coleman granted declaratory judgment defendant’s (“Defendant”) Fed. R. Civ. P. 12(b) motion to dismiss for lack of subject matter jurisdiction after providing declaratory judgment plaintiffs (collectively “PSN Pharma”) a covenant not to sue on the patents at issue.

Defendant provided PSN Pharma with a broad covenant not to sue, protecting PSN Pharma from suit as to any claim of the patents in suit based upon PSN Pharma’s past, present or future products, including specifically identifying the accused products. Defendant’s covenant divested the Court of subject matter jurisdiction over the patent suit. The fact that the covenant did not establish Defendant’s ownership – which PSN Pharma disputed in the suit – was not sufficient to maintain the Court’s jurisdiction. The Court can only decide issues between the parties before it. So, whether or not another entity owned some or all of the patents, Defendant’s covenant resolved all disputed issues in this suit, regardless of who, or who else, owns the asserted patents.

Without any federal claims, the Court dismissed the state law claims without prejudice to refile them in state court.