The Federal Circuit’s Super Sack decision is striking: a patentee’s covenant-not-to-sue for infringement divested the court of subject-matter jurisdiction in deciding the invalidity counterclaim. However, the intent and spirit of the Declaratory Judgment Act and of Federal Rule of Civil Procedure 41(a)(2) suggest that Super Sack may have missed the mark. An in-depth analysis of the Declaratory Judgment Act, Federal Rule of Civil Procedure 41(a)(2), and post-Super Sack patent cases reveals numerous policy reasons for the Federal Circuit to overturn Super Sack.
Vangelis Economou, Sacking Super Sack: Using Existing Rules to Prevent Patentees From Fleeing an Improvident Patent Infringement Lawsuit, 8 J. Marshall Rev. Intell. Prop. L. 90 (2008)