Nidec Zooms Over Patent Infringement Claims in Fed. Cir.

Written January 23, 2020

The Federal Circuit on January 10, 2020, held that patent infringement claims against Japanese electric motor manufacturer Nidec Corp. were barred by a covenant not to sue, and found that the covenant was not superseded by a later agreement involving the same patent. Molon Motor & Oil Corp. v. Nidec Motor Corp., Fed. Cir., No. 19-1071, 1/10/20.

Molon Motor & Coil Corp., an American gearmotor company, sued Nidec for patent infringement, but the lower court said their claims were barred based on a 2006 covenant not to sue Nidec’s predecessor.

Molon argued the covenant was extinguished by a 2007 settlement agreement that granted Nidec’s predecessor an exclusive license to exploit multiple Molon patents – including the patent in question, noting that the 2007 settlement included a merger clause that invalidated prior agreements “concerning the subject matter hereof.”

The Federal Circuit disagreed, finding that the covenant wasn’t extinguished because the agreements didn’t involve the same subject matter.