Case Name: National Institute for Strategic Technology Acquisition and Commercialization (NISTAC) v. Nissan North America, Inc. et al
Docket Number: 2:11-cv-11039-GCS-LJM
Date Filed: 10/4/2010
Judge: Hon. George Caram Steeh
Status: Closed

On October 4, 2010, Plaintiff National Institute for Strategic Technology Acquisition and Commercialization (NISTAC), an entity affiliated with Kansas State University, filed suit in the District of Kansas against multiple Japanese OEMs. The defendants included:

  • Nissan North America, Inc.;
  • Nissan Motor Co., Ltd;
  • Fuji Heavy Industries, Ltd;
  • Subaru of America, Inc.;
  • Toyota Motor Sales U.S.A., Inc.;
  • Toyota Motor Engineering & Manufacturing North America, Inc.; and
  • American Honda Motor Co, Inc.

The case was transferred to the Eastern District of Michigan on March 15, 2011.

Plaintiffs filed suit against Defendants upon belief that the Nissan Titan, Subaru Forester, Toyota Corolla, and Honda Fit motor vehicles all sold with infringing engine piston assemblies containing solid film lubricant coatings claimed by Plaintiff’s patents, specifically, U.S. Patent Nos. 5,239,955; 5,313,919; and 5,482,637. Plaintiff alleged direct infringement, as well as contributory infringement and inducement of infringement. Plaintiff requested both preliminary and permanent injunctions, as well as damages. Plaintiff further argued that Defendants were also vicariously liable for the infringing conduct of each Defendant’s subsidiaries.

On June 6, 2011, Defendants filed a motion to dismiss the allegations of indirect infringement and vicarious liability and to strike the allegations of willful infringement, which Judge Steeh partially granted on August 23, 2011 as to the vicarious liability claims. On the same day, Judge Steeh also granted Subaru’s motion to compel Plaintiff to provide more definite infringement contentions.

            All Defendants answered Plaintiff’s complaint generally with denials, boilerplate defenses and/or counterclaims requesting declaratory judgment of non-infringement and alleging invalidity of the patents-at-issue. On June 29, 2012, Judge Steeh dismissed the suit against Defendants Fuji Heavy Industries and Subaru pursuant to the parties’ settlement with Plaintiff. While the court’s Markman ruling was pending, Judge Steeh denied Federal-Mogul Corporation’s motion to intervene on August 22, 2012, finding the Tier-1 supplier’s request untimely because it had waited too long to intervene while having full knowledge of the proceedings. Judge Steeh issued his Markman ruling on September 27, 2012, and shortly afterward, on October 15, 2012, the remaining parties jointly stipulated to dismissal.