{"id":2647,"date":"2020-01-10T16:54:00","date_gmt":"2020-01-10T21:54:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2647"},"modified":"2020-01-26T18:58:29","modified_gmt":"2020-01-26T23:58:29","slug":"settlement-agreement-did-not-void-earlier-covenant-not-to-sue","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2647","title":{"rendered":"Settlement Agreement Did Not Void Earlier Covenant Not to Sue"},"content":{"rendered":"\n

Molon Motor and Coil Corp. v. Nidec Motor Corp.<\/a>, [2019-1071](January 10, 2020), the Federal Circuit affirmed judgment in favor of Nidec Motor Molon\u2019s claim for infringement of U.S. Patent 6,465,915, on the ground that Molon was barred from enforcing the \u2019915 patent against Nidec pursuant to a covenant not to sue that Molon granted in 2006.\u00a0 Molon contended that the 2006 Covenant was extinguished by a clause in a Settlement, License and Release Agreement that the parties entered into in 2007, which stated that all prior covenants \u201cconcerning the subject matter hereof\u201d are \u201cmerged\u201d and \u201cof no further force or effect.\u201d The Federal Circuit agreed with the district court that the two agreements concern different subject matter and therefore do not merge.<\/p>\n\n\n\n

Molon sued Nidec\u2019s predecessor\nfor infringement of one patent, and Nidec\u2019s predecessor counterclaimed for a\ndeclaratory judgment invalidity\/non-infringement of two others including the \u2018915\npatent.  To eliminate the counterclaim,\nMolon granted Nidec\u2019s predecessor a covenant not to sue under the two\nadditional patents.  Eventually Molon and\nNidec\u2019s predecessor settled the original ligation with a settlement agreement granted\na limited license under all three patents. \nThis settlement agreement had an integration clause that provided:<\/p>\n\n\n\n

The district court found that\nthe 2006 Covenant gives Nidec a right to avoid suit for patent infringement on\ntwo patents, one of which is the \u2019915 patent, while the 2007 Settlement is in\nsome ways broader\u2014it is an exclusive license, it includes more than a dozen\npatents and applications, and it provides Nidec with some enforcement\nrights\u2014and in other ways narrower\u2014it is limited to a defined market of\ncustomers\u2014than the 2006 Covenant.<\/p>\n\n\n\n

All prior and contemporaneous conversations, negotiations, possible and al-leged agreements, representations and covenants concerning the subject matter hereof, are merged herein and shall be of no further force or effect.<\/p><\/blockquote>\n\n\n\n

The Federal Circuit agreed with\nNidec and the district court that it is incorrect to broadly define the subject\nmatter of both agreements as the right to practice the \u2019915 patent. Rather, to\ndetermine the subject matter of each agreement, the Federal Circuit said it must\nexamine the actual language of the agreements themselves, and consider how the\nlanguage of each agreement conveys the substantive rights and obligations\nexchanged between the parties.  The\nFederal Circuit observed:<\/p>\n\n\n\n

The 2006 Covenant is a unilateral promise by Molon not to sue [Nidec\u2019s predecessor] for infringement of two patents, one of which is the \u2019915 patent. The 2007 Settlement, in contrast, is a bilateral contract through which Molon transferred to [Nidec\u2019s predecessor] a share in the existing and potential exclusionary rights under more than a dozen listed patents and applications, one of which is the \u2019915 patent. Moreover, the 2006 Covenant is limited to products existing at the time of its execution, while the 2007 Settlement includes both existing and future products. And the 2006 Covenant is not limited to any specific market, while the 2007 Settlement is limited. The court concluded, the 2006 Covenant remains in effect be-cause it does not concern the same subject matter as the 2007 Settlement. <\/p>\n","protected":false},"excerpt":{"rendered":"

Molon Motor and Coil Corp. v. Nidec Motor Corp., [2019-1071](January 10, 2020), the Federal Circuit affirmed judgment in favor of Nidec Motor Molon\u2019s claim for infringement of U.S. Patent 6,465,915, on the ground that Molon was barred from enforcing the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[97],"tags":[],"class_list":["post-2647","post","type-post","status-publish","format-standard","hentry","category-settlement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2647","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2647"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2647\/revisions"}],"predecessor-version":[{"id":2649,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2647\/revisions\/2649"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2647"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2647"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2647"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}