In Lifeport Sciences LLC, et al. v. Cook Incorporation, et al., C.A. No. 13-362-GMS (D. Del. Feb. 5, 2015), Judge Gregory M. Sleet granted defendants’ motion for judgment on the pleadings regarding one of the patents-in-suit, finding that this patent was subject to a covenant not to sue between the parties.
Plaintiffs’ predecessor-in-interest had entered into an agreement (“2003 Agreement”) with defendants not to sue them or their customers for infringement of a certain family of products which “are or have been sold commercially anywhere in the world.” Id. at 1 n.1. The parties disagreed whether this agreement would apply to products sold after the effective date of the agreement. Applying Indiana law, the Court agreed with defendants’ interpretation that “the use of ‘are or have been sold’ . . . created an ongoing covenant not to sue, not limited in time by the effective date of the 2003 Agreement. The Plaintiffs place unwarranted emphasis on the argument that ‘are’ and ‘have been’ represent only present and past tense, but not future. This simplistic view ignores the fact that present-tense language may also imply future action as well.” Id. at 2 n.2. Further, plaintiffs’ reading would render “are” superfluous. Id. at 3 n.2. The Court was also not persuaded by plaintiffs’ citations to other sections of this agreement. Id.
In its analysis, the Court pointed out that while presenting matters outside the pleadings on a 12(d) motion typically converts it to a motion for summary judgment, here the agreement at issue was attached to defendants’ answer, “the parties did not dispute its authenticity, and plainly the Plaintiffs’ claim arising from [this patent] implicates the 2003 Agreement. Thus, the court may appropriately consider the 2003 Agreement at this stage.” Id. at 2 n.2.