October 30, 2012

Jenner & Block recently achieved dismissal of a patent infringement suit against client Nissan Motor Co., Ltd. of Japan and its subsidiary Nissan North America, Inc.

In October 2010, the auto manufacturer was sued for infringement in federal court in Kansas by the National Institute for Strategic Technology Acquisition and Commercialization (NISTAC), a not-for-profit corporation associated with Kansas State University.  NISTAC asserted three patents related to a piston configuration in combination with a solid film lubricant coating and a solid film lubricant coating composition for pistons.  NISTAC had obtained the patents as a part of a donation from Ford valued at $27 million.

In March 2011, the Firm successfully transferred the lawsuit to the federal court in the Eastern District of Michigan, i.e., Detroit, and the case was set for a Markman hearing in December 2011.

Prior to the Markman hearing, one of the plaintiff’s patents was dismissed from the case in view of ownership defects relating to a terminal disclaimer on the patent and another patent not involved in the suit, which was still owned by Ford.

On September 27, 2012, the court’s Markman ruling essentially adopted all of the defendants’ positions and rejected the aggressive positions taken by plaintiff.  Though a Markman ruling itself is not case dispositive, this ruling was so well-reasoned and detrimental to plaintiff’s case that it resulted in a stipulated dismissal of the case with prejudice on October 16.

The Firm team defending Nissan was led by Partners Reginald J. Hill and Peter J. Brennan and included Associates Joseph R. Dunn and Yusuf Esat.