National Institute for Strategic Technology Acquisition Commercialization v. Ford Motor Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: National Institute for Strategic Technology Acquisition and Commercialization (NISTAC) (Kansas)
  • Defendant: Ford Motor Company (Ford) (Delaware)
  • Plaintiff’s Counsel: Fulbright & Jaworski LLP.
• Case Identification: 5:08-cv-00058, E.D. Tex., 02/11/2008
• Venue Allegations: Plaintiff alleges that venue is proper because Defendant has committed acts of infringement and conducts business within the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s automotive vehicles infringe four patents related to specialized coatings for engine components after Defendant unilaterally terminated a license agreement for the patents-in-suit.
• Technical Context: The technology involves applying specific solid film lubricant coatings to piston assemblies and other engine components to reduce friction, wear, and heat, thereby improving overall engine efficiency and performance.
• Key Procedural History: The procedural history is notable. The patents-in-suit were originally developed by and assigned to Ford. Ford later donated the patents to Plaintiff's predecessor, claiming a significant charitable tax deduction based on an independent valuation. Plaintiff then licensed the patents back to Ford. The complaint alleges that Ford terminated this license agreement but continued to use the patented technology. Consequently, Plaintiff asserts the doctrine of assignor estoppel, which may prevent Ford, as the original seller of the patents, from challenging their validity or enforceability in this litigation.

Case Timeline

Date	Event
1993-01-07	Priority Date for '955 and '919 Patents
1993-08-31	'955 Patent Issued
1994-05-24	'919 Patent Issued
1994-07-05	Priority Date for '777 Patent
1994-10-07	Priority Date for '020 Patent
1995-11-28	'777 Patent Issued
1996-09-10	'020 Patent Issued
2006-04-05	NISTAC granted patent license to Ford
2007-04-04	Ford unilaterally terminated the NISTAC license agreement
2008-02-11	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,239,955, "Low Friction Reciprocating Piston Assembly," issued August 31, 1993

The Invention Explained

• Problem Addressed: The patent’s background section states that conventional piston skirt design is a major contributor to engine friction losses because the lubricating oil film operates in the high-friction "boundary layer or mixed lubrication regime" rather than the more efficient hydrodynamic regime ('955 Patent, col. 1:31-37).
• The Patented Solution: The invention proposes a piston construction with specific surface modifications to the skirt. Portions of the skirt are relieved or "undercut" to define lands, which are then coated with a specific solid film lubricant (SFL) consisting of graphite, molybdenum disulfide, boron nitride, and an epoxy resin ('955 Patent, col. 2:1-17). This SFL is designed to attract an oil film and, in combination with the modified skirt geometry, induce operation in the low-friction hydrodynamic regime ('955 Patent, col. 2:56-63).
• Technical Importance: By shifting the lubrication regime, the invention aimed to significantly reduce a primary source of mechanical friction in internal combustion engines, thereby improving fuel efficiency and performance ('955 Patent, col. 7:12-16).

Key Claims at a Glance

• The complaint does not identify specific asserted claims. The broadest independent claims appear to be Claim 1 (an apparatus) and Claim 10 (a method of making).
• Claim 1 (apparatus) requires, in part:
  • A piston skirt wall with relieved portions.
  • At least the unrelieved portions having a solid film lubricant coating on the exterior.
  • The coating "consisting of graphite, molybdenum disulfide, boron nitride, and epoxy resin."
  • The resin comprising a polymer base that "provides a supply of at least one of water vapor and hydrocarbon to the graphite component and is effective to attract an oil film thereonto."
• Claim 10 (method) requires, in part:
  • "undercutting" the exterior of the piston side walls to define lands.
  • "introducing a predetermined pattern of asperities" into the lands.
  • "uniformly spraying" the specific solid film lubricant coating onto the lands.
  • "forming shallow pockets at the mouth of said asperities."
  • "polishing" the exposed solid film lubricant crystals.
• The complaint makes general allegations of infringement without tying them to specific claims (Compl. ¶12).

U.S. Patent No. 5,313,919, "Low Friction Reciprocating Piston Assembly," issued May 24, 1994

The Invention Explained

• Problem Addressed: As a divisional of the application that led to the '955 Patent, this patent addresses the identical technical problem: high friction losses in conventional piston designs due to operation in a suboptimal lubrication regime ('919 Patent, col. 1:33-38).
• The Patented Solution: The solution is substantively identical to that of the '955 Patent, describing a piston skirt with relieved portions and lands coated with a specific solid film lubricant to promote a more efficient hydrodynamic oil film ('919 Patent, Abstract; col. 2:3-19).
• Technical Importance: The stated purpose is to reduce engine friction losses, which are a significant factor in overall engine efficiency ('919 Patent, col. 7:15-18).

Key Claims at a Glance

• The complaint does not identify specific asserted claims. Independent claims include Claim 1 (apparatus) and Claim 2 (method of making).
• Claim 1 (apparatus) requires, in part:
  • A piston skirt wall with relieved portions.
  • Unrelieved portions with a solid film lubricant coating "consisting of graphite, molybdenum disulfide, boron nitride, and epoxy resin."
  • A polymer base in the resin that provides water vapor/hydrocarbon and is "effective to attract an oil film."
• Claim 2 (method) requires, in part:
  • "undercutting" the exterior of the side walls to define lands.
  • "introducing a predetermined pattern of asperities" into the lands.
  • "uniformly spraying" the specific solid film lubricant.
  • "forming shallow pockets" at the mouth of the asperities.
  • "polishing" the lubricant crystals.
• The complaint's infringement allegations are general and not tied to specific claims (Compl. ¶16).

U.S. Patent No. 5,469,777, "Piston Assembly Having Abradable Coating," issued November 28, 1995

• Technology Synopsis: This patent describes a piston assembly designed to achieve near-zero clearance with the cylinder wall to reduce crevice volume and fluid blow-by ('777 Patent, col. 2:21-38). The solution involves an "abradable coating" on the piston lands that contains both solid lubricants and thermally conductive particles (e.g., copper). During initial operation, the coating wears down ("abrades") to conform perfectly to the cylinder wall, while a heat sink feature manages thermal expansion ('777 Patent, Abstract).
• Asserted Claims: The complaint makes a general allegation of infringement; independent claims include 1, 4, and 9 (Compl. ¶20).
• Accused Features: The complaint accuses unspecified "vehicles that incorporate the invention that is the subject of the '777 Patent" (Compl. ¶20).

U.S. Patent No. 5,554,020, "Solid Lubricant Coating for Fluid Pump or Compressor," issued September 10, 1996

• Technology Synopsis: This patent applies a similar solid lubricant coating technology to the relatively-moving parts of fluid pumps or compressors, such as engine superchargers ('020 Patent, col. 2:55-65). Applying the coating to components like rotors and housings allows for the use of lightweight materials (e.g., aluminum) and enables essentially zero clearance, which in turn increases pumping efficiency and reduces internal leakage ('020 Patent, Abstract).
• Asserted Claims: The complaint makes a general allegation of infringement; the sole independent claim is Claim 1 (Compl. ¶24).
• Accused Features: The complaint accuses unspecified "vehicles that incorporate the invention that is the subject of the '020 Patent" (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are identified generally as "Ford automotive vehicles" that incorporate the patented inventions (Compl. ¶10).

Functionality and Market Context

The complaint alleges that the patents-in-suit are "directed to the lubrication of engine components used extensively and found in Ford automotive vehicles" and that the technology provides for "greater engine operating efficiency as well as greater component stability" (Compl. ¶10). The complaint does not provide sufficient detail for analysis of the specific technical features or operation of the accused engine components. It alleges that Ford continued to use the technology after terminating a license agreement that covered the patents-in-suit (Compl. ¶11). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint provides only conclusory allegations of infringement for each patent-in-suit (Compl. ¶12, 16, 20, 24). It does not contain or reference any claim charts and does not map any specific features of an accused Ford product to the elements of any asserted patent claim. The infringement theory appears to be that because Ford previously licensed the technology and allegedly continued using it after terminating the license, its vehicles must necessarily infringe.

• Identified Points of Contention:
  • Given the lack of specific allegations, any infringement analysis will first require discovery to identify the exact composition and manufacturing processes of the coatings used in Ford's engines after April 4, 2007.
  • Scope Questions: A central question for the '955 and '919 Patents will be whether any coating used by Ford meets the specific four-part "consisting of" limitation (graphite, molybdenum disulfide, boron nitride, and epoxy resin). A dispute could arise over whether Ford's materials are technically different, thereby avoiding literal infringement.
  • Technical Questions: For the method claims, a key question will be whether Ford's manufacturing process includes the discrete steps of "undercutting" to form lands, "introducing... asperities," and "forming shallow pockets," as recited in the claims. The Plaintiff would need to present evidence that Ford's process is not merely a standard surface treatment but includes the specific structural and functional steps taught by the patents. For the '777 Patent, a question will be whether any coating used by Ford is "abradable" in the manner claimed. For the '020 Patent, the question will be whether the coating technology is applied to fluid pumps or compressors within Ford vehicles.

V. Key Claim Terms for Construction

While the complaint does not frame any claim construction disputes, the following terms from the independent claims of the '955 Patent are likely to be central to the case.

• The Term: "solid film lubricant coating... consisting of graphite, molybdenum disulfide, boron nitride, and epoxy resin" ('955 Patent, Claim 1)

  • Context and Importance: The use of the transitional phrase "consisting of" is highly restrictive in patent law. The infringement analysis for Claim 1 will likely depend on whether Ford's accused coating is limited to these four components or if it contains others. Practitioners may focus on this term because it offers a direct path for a non-infringement defense if Ford's coating formulation differs even slightly.
  • Evidence for a Broader Interpretation: A party seeking a broader scope might argue that trace impurities or non-functional additives should not defeat infringement, although this is a difficult argument against "consisting of."
  • Evidence for a Narrower Interpretation: The patent specification repeatedly identifies this specific combination of materials as the core of the invention ('955 Patent, col. 4:36-54). A defendant would argue that "consisting of" must be given its ordinary and legally accepted meaning as a closed-ended term, excluding any unrecited elements.

• The Term: "introducing a predetermined pattern of asperities into said lands" ('955 Patent, Claim 10)

  • Context and Importance: The definition of "asperities" and the method of their creation are fundamental to the claimed method. The dispute will question whether routine surface roughness from a manufacturing process qualifies, or if the term requires a specific, deliberately introduced texture for the claimed functional purpose.
  • Evidence for a Broader Interpretation: The specification discloses multiple ways to create asperities, including "acid etching," "low-pressure grit blasting," or using a "hard stainless steel wire... wheel" ('955 Patent, col. 6:49-59), suggesting the term is not limited to a single structure.
  • Evidence for a Narrower Interpretation: The patent describes a specific function for the asperities: to entrap the solid film lubricant and, after polishing, to form "shallow pockets" that serve as oil reservoirs ('955 Patent, col. 6:33-40). A defendant could argue that to qualify as "asperities" under the claim, the surface features must be shown to be intentionally created to perform this specific function, rather than being an incidental byproduct of a different process.

VI. Other Allegations

• Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement for all four patents (Compl. ¶12, 16, 20, 24). However, it does not plead any specific facts to support these claims, such as referencing instructional materials or alleging specific actions taken by Ford to encourage infringement by others.
• Willful Infringement: The complaint alleges that Ford's infringement has been willful and deliberate (Compl. ¶14, 18, 22, 26). The alleged basis for this claim is Ford's pre-existing knowledge of the patents, established through the fact that Ford invented, assigned, and formerly licensed the patents-in-suit. The allegation is that Ford continued to infringe after unilaterally terminating the license agreement on April 4, 2007 (Compl. ¶11).

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on the court's decisions regarding three central questions:

• A primary issue will be one of legal estoppel: will the doctrine of assignor estoppel, as asserted by the Plaintiff, prevent Ford from challenging the validity of patents it once owned and assigned for value? An affirmative answer would significantly narrow the case to focus almost exclusively on infringement.
• A key evidentiary question will be one of technical proof: given the complaint's lack of specificity, can the Plaintiff produce evidence demonstrating that Ford's post-license engine components actually use coatings with the specific material compositions and are made by the specific manufacturing processes required by the patent claims?
• The dispute may ultimately turn on definitional scope: can the term "consisting of," as used in claims of the lead patents, be interpreted to read on the coating formulations used by Ford, or will evidence show that Ford successfully designed around this restrictive claim language?