April 20, 2016

Jenner & Block secured significant victories for client Nissan North America, Inc. when the Patent Trial and Appeal Board (PTAB) invalidated patent claims asserted by Diamond Coating Technologies (DCT). 

DCT had sued Nissan North America Inc. and Hyundai Motor America in separate actions. DCT alleged that engine parts in Nissan vehicles infringe claims 3 - 5 of U.S. Patent No. 6,354,008, generally directed to a diamond-like or hard carbon coating arrangement that provides protection and favorable friction properties.

The car makers, along with Hitachi Automotive Systems Ltd., petitioned for inter partes review, challenging the validity of claims 3 - 5.  On April 20, the PTAB agreed with Hyundai and Nissan, finding that claims 3 and 5 were anticipated, while claim 4 was obvious in light of the prior art.

DCT also alleged Nissan engine parts infringed claim 1 of U.S. Patent No. 6,066,399, which relates to a hard carbon or diamond-like thin film formed on a substrate, wherein the film has a graded structure.  The PTAB invalidated that claim as anticipated on April 20 as well.

Finally, in view of the decisions on behalf of the automotive companies, DCT on April 22 voluntarily dismissed related district court litigation. 

The firm team representing Nissan was led by Partner Reginald J. Hill and included Partner Peter J. Brennan, Associates Rachel C. Bell and Chad J. Ray, and Senior Paralegal David Nelson.