Evonik Degussa GmbH v. Materia Inc.

Filing 389

OPINION re 368 motion to dismiss for failure to state a claim and motion to dismiss count four of amended reply. Signed by Judge Noel L. Hillman on 9/28/12. (dab)

UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE

Evonik Degussa GmbH,
Plaintiff,
v.
Materia Inc., et al.,
Defendants.

Materia Inc.,
Counterclaim
Plaintiff,
and
University of New Orleans
Foundation,
Third-Party
Plaintiff,
v.
Evonik Degussa GmbH.,
Counterclaim
and
Third-Party
Defendant.

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Civil Action No.
09-cv-636 (NLH-JS)
CONSOLIDATED
OPINION

APPEARANCES:
Daniel Christopher Mulveny
Alan Richard Silverstein
Brian R. Lemon
Claudia Schultze
Eric James Evain
Jeffrey B. Bove
R. Eric Hutz
Rudolf E. Hutz
Connolly, Bove, Lodge & Hutz
The Nemours Building
1007 North Orange Street
P.O. Box 2207
Wilmington, DE 19899
Attorneys for Plaintiff, Third Party Defendant, and Counter
Defendant Evonik Degussa GmbH
Jack B. Blumenfeld
Julia Heaney
Morris, Nichols, Arsht & Tunnell
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
Attorneys for Defendant Materia Inc., Third Party Plaintiff
The University of New Orleans Foundation and Counter Claimant
Materia Inc.
HILLMAN, District Judge
In this consolidated patent infringement action,1
Plaintiff Evonik Degussa GmbH (“Evonik”) alleges Defendant
Materia Inc. willfully infringes U.S. Patent Nos. 7,378,528 and
7,652,145.

In response, Materia Inc. alleges Evonik’s patents

are unenforceable because of inequitable conduct.

Third Party

Plaintiff, the University of New Orleans Foundation (“UNOF”)
joins Materia Inc. and counterclaims that Evonik willfully

1

The Court notes that a Markman hearing has been held in this
matter and a written opinion will be forthcoming shortly.
2

infringes UNOF’s U.S. Patent No. 7,622,590 (“‘590 Patent”).

In

response, Evonik moved to amend its counterclaim to allege that
the ‘590 Patent is unenforceable due inequitable conduct.

This

opinion concerns whether Evonik has properly plead its
counterclaim for inequitable conduct concerning the ‘590 Patent.2
On December 13, 2011, the Magistrate Judge assigned to
this matter entered an order granting Evonik’s motion to amend
its reply to include allegations of inequitable conduct in
connection with the prosecution of the ‘590 patent (Count Four of
the amended reply).

Before the Court is Materia Inc. and UNOF’s

(referred to collectively as “Materia”) objection to the
Magistrate Judge’s Order or, alternatively, a motion to dismiss
Count Four pursuant to Fed.R.Civ.P. 12(b)(6).

For the reasons

discussed below, the Magistrate Judge’s Order will be affirmed
and the motion to dismiss will be denied.
I.

JURISDICTION

This Court exercises subject matter jurisdiction
pursuant to 28 U.S.C. § 1331 (federal question jurisdiction) and
28 U.S.C. § 1338(a) (federal jurisdiction relating to patents).

2

The ‘590 Patent was issued on November 24, 2009, entitled
“Catalyst Complex with Carbene Ligand.” The named inventors are
Steven P. Nolan and Jinkun Huang. UNOF is the owner of the ‘590
Patent, and Materia Inc. has exclusive rights, including the
right to sue for patent infringement. Materia has alleged that
Evonik has infringed certain claims under the ‘590 Patent and
Evonik has counterclaimed that the ‘590 Patent is not enforceable
because Materia engaged in inequitable conduct in applying for
the patent, particularly, by failing to provide material
information to the U.S. Patent and Trademark Office (“PTO”).
3

II.

DISCUSSION

Materia is requesting reconsideration of the Magistrate
Judge’s Order permitting Evonik to amend Count Four of its reply,
or alternatively, moving to dismiss count four of Evonik’s
amended reply for failure to state a claim upon which relief can
be granted.

Although presented as two separate arguments,

the

standard applied is the same.
Materia argues that Evonik should not have been
permitted to amend its reply because the amendment is futile.3
The standard for futility is the same as legal insufficiency.
See In re Alpharma Inc. Securities Litigation, 372 F.3d 137, 153
(3d Cir. 2004) (“As we have previously held, ‘[f]utility’ means
that the complaint, as amended, would fail to state a claim upon
which relief could be granted.’”) (citing In re Burlington Coat
Factory Securities Litigation, 114 F.3d 1410, 1434 (3d Cir.
1997)).

“Thus, in assessing futility, the district court applies

the same standard of legal sufficiency as applies under Rule

3

Amendments to pleadings are governed by Federal Civil
Procedure Rule 15, which provides that the Court “should freely
give leave when justice so requires.” Fed.R.Civ.P. 15(a)(2).
The Third Circuit has shown a strong liberality in allowing
amendments under Rule 15 in order to ensure that claims will be
decided on the merits rather than on technicalities. Dole v.
Arco Chemical Co., 921 F.2d 484, 487 (3d Cir. 1990); Bechtel v.
Robinson, 886 F.2d 644, 652 (3d Cir. 1989). An amendment must be
permitted in the absence of undue delay, bad faith, dilatory
motive, unfair prejudice, or futility of amendment. Grayson v.
Mayview State Hosp., 293 F.3d 103, 108 (3d Cir. 2002) (citing
Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222
(1962)).
4

12(b)(6).”

Id. at 153-54 (internal quotations omitted).

Therefore, in requesting reversal of the Magistrate Judge’s Order
on grounds that the amendment of Count Four is futile, or
requesting dismissal of Count Four on grounds that it fails to
state a claim upon which relief could be granted, Materia is
requesting the same relief pursuant to the same standard.

Thus,

to streamline the analysis, the Court will analyze Materia’s
motion under the Rule 12(b)(6) standard for a motion to dismiss.
A.

Standard for Motion to Dismiss

When considering a motion to dismiss a complaint for
failure to state a claim upon which relief can be granted
pursuant to Fed. R. Civ. P. 12(b)(6), a court must accept all
well-pleaded allegations in the complaint as true and view them
in the light most favorable to the plaintiff.
Fisher, 423 F.3d 347, 351 (3d Cir. 2005).

Evancho v.

It is well settled

that a pleading is sufficient if it contains “a short and plain
statement of the claim showing that the pleader is entitled to
relief.”

Fed. R. Civ. P. 8(a)(2).

Under the liberal federal

pleading rules, it is not necessary to plead evidence, and it is
not necessary to plead all the facts that serve as a basis for
the claim.

Bogosian v. Gulf Oil Corp., 562 F.2d 434, 446 (3d

Cir. 1977).

However, “[a]lthough the Federal Rules of Civil

Procedure do not require a claimant to set forth an intricately
detailed description of the asserted basis for relief, they do
require that the pleadings give defendant fair notice of what the
5

plaintiff’s claim is and the grounds upon which it rests.”
Baldwin County Welcome Ctr. v. Brown, 466 U.S. 147, 149-50 n.3
(1984) (quotation and citation omitted).
A district court, in weighing a motion to dismiss, asks
“‘not whether a plaintiff will ultimately prevail but whether the
claimant is entitled to offer evidence to support the claim.’”
Bell Atlantic v. Twombly, 127 S. Ct. 1955, 1969 n.8 (2007)
(quoting Scheuer v. Rhoades, 416 U.S. 232, 236 (1974)); see also
Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (“Our decision in
Twombly expounded the pleading standard for ‘all civil actions’ .
. . .”); Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir.
2009) (“Iqbal . . . provides the final nail-in-the-coffin for the
‘no set of facts’ standard that applied to federal complaints
before Twombly.”).
Following the Twombly/Iqbal standard, the Third Circuit
has instructed a two-part analysis in reviewing a complaint under
Rule 12(b)(6).

First, the factual and legal elements of a claim

should be separated; a district court must accept all of the
complaint's well-pleaded facts as true, but may disregard any
legal conclusions.
Ct. at 1950).

Fowler, 578 F.3d at 210 (citing Iqbal, 129 S.

Second, a district court must then determine

whether the facts alleged in the complaint are sufficient to show
that the plaintiff has a “‘plausible claim for relief.’”
(quoting Iqbal, 129 S. Ct. at 1950).

Id.

A complaint must do more

than allege the plaintiff’s entitlement to relief.
6

Id.; see also

Phillips v. County of Allegheny, 515 F.3d 224, 234 (3d Cir. 2008)
(stating that the “Supreme Court's Twombly formulation of the
pleading standard can be summed up thus: ‘stating . . . a claim
requires a complaint with enough factual matter (taken as true)
to suggest’ the required element.

This ‘does not impose a

probability requirement at the pleading stage,’ but instead
‘simply calls for enough facts to raise a reasonable expectation
that discovery will reveal evidence of’ the necessary element”).
A court need not credit either “bald assertions” or
“legal conclusions” in a complaint when deciding a motion to
dismiss.

In re Burlington Coat Factory Sec. Litig., 114 F.3d

1410, 1429-30 (3d Cir. 1997).

The defendant bears the burden of

showing that no claim has been presented.

Hedges v. U.S., 404

F.3d 744, 750 (3d Cir. 2005) (citing Kehr Packages, Inc. v.
Fidelcor, Inc., 926 F.2d 1406, 1409 (3d Cir. 1991)).
Finally, a court in reviewing a Rule 12(b)(6) motion
must only consider the facts alleged in the pleadings, the
documents attached thereto as exhibits, and matters of judicial
notice.

Southern Cross Overseas Agencies, Inc. v. Kwong Shipping

Group Ltd., 181 F.3d 410, 426 (3d Cir. 1999).

A court may

consider, however, “an undisputedly authentic document that a
defendant attaches as an exhibit to a motion to dismiss if the
plaintiff’s claims are based on the document.”

Pension Benefit

Guar. Corp. v. White Consol. Indus., Inc., 998 F.2d 1192, 1196
7

(3d Cir. 1993).

If any other matters outside the pleadings are

presented to the court, and the court does not exclude those
matters, a Rule 12(b)(6) motion will be treated as a summary
judgment motion pursuant to Rule 56.
B.

Fed. R. Civ. P. 12(b).

Claim for Inequitable Conduct.

Materia seeks to have Evonik’s counterclaim for
inequitable conduct dismissed.
governed by Federal Circuit law.

An inequitable conduct claim is
See Exergen Corp. v. Wal-Mart

Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009).

Recently,

the Federal Circuit examined the standard of proof needed for a
claim of inequitable conduct and found the standard too low
resulting in a “plague” on the courts and the patent system.

See

Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276,
1289 (Fed. Cir. 2011).4

4

The Therasense case, however, did not

In Therasense, the Federal Circuit recounted how inequitable
conduct in patent law evolved from a trio of Supreme Court cases
interpreting the doctrine of unclean hands. Id. at 1285 (citing
Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 54
S.Ct. 146, 78 L.Ed. 293 (1933), Hazel–Atlas Glass Co. v.
Hartford–Empire Co., 322 U.S. 238, 64 S.Ct. 997, 88 L.Ed. 1250
(1944), overruled on other grounds by Standard Oil Co. v. United
States, 429 U.S. 17, 97 S.Ct. 31, 50 L.Ed.2d 21 (1976), and
Precision Instrument Manufacturing Co. v. Automotive Maintenance
Machinery Co., 324 U.S. 806, 65 S.Ct. 993, 89 L.Ed. 1381 (1945)).
The Court remarked that over time, charging inequitable conduct
became a “common litigation tactic” and “[l]eft unfettered, the
inequitable conduct doctrine has plagued not only the courts but
also the entire patent system.” Id. at 1289. The Federal
Circuit also noted that “[w]ith inequitable conduct casting the
shadow of a hangman’s noose, it is unsurprising that patent
prosecutors regularly bury PTO examiners with a deluge of prior
art references, most of which have marginal value.” Id.
A claim for inequitable conduct requires a finding of both intent
8

address the proper standard to be applied at the pleading stage.
See id. at 1284-85 (reversing and remanding trial court decision
finding patent unenforceable due to inequitable conduct after
bench trial).
Cases decided after Therasense, have applied the
pleading standard as set forth in Exergen.

See Delano Farms Co.

v. Ca. Table Grape Comm’n, 655 F.3d 1337, 1350 (Fed. Cir. 2011)
(permitting inequitable conduct claim where it was plead that
information was withheld from PTO concerning patented varieties
of grape vines used for wine in California).

In Delano, the

Federal Circuit held, “[a] charge of inequitable conduct based on
a failure to disclose will survive a motion to dismiss only if
the plaintiff’s complaint recites facts from which the court may
reasonably infer that a specific individual both knew of
invalidating information that was withheld from the PTO and
to deceive and materiality. Id. at 1287. The Court rejected
prior lower standards that permitted proof of intent to deceive
on findings of gross negligence or negligence (knew or should
have known), or that permitted a reduced showing of intent if the
record contained a strong showing of materiality (sliding scale
approach). Instead, the Federal Circuit held that to ”prevail on
a claim of inequitable conduct, the accused infringer must prove
that the patentee acted with the specific intent to deceive the
PTO” and must show “ but-for materiality,” meaning “[w]hen an
applicant fails to disclose prior art to the PTO, that prior art
is but-for material if the PTO would not have allowed a claim had
it been aware of the undisclosed prior art.” Id. at 1290-91.
Although Therasense did not address the proper standard at
the pleading stage, the case is instructive regarding the Court’s
concern over the proliferation of inequitable conduct claims, and
the evidence needed to ultimately prove such a claim.

9

withheld that information with a specific intent to deceive the
PTO.”

Id. at 1350 (citing Exergen, 575 F.3d at 1318, 1330, and

citing generally Therasense, 649 F.3d 1276 (en banc)).5
Other courts have followed Delano and applied the
Exergen standard for determining whether an inequitable conduct
claim has been properly plead at the pleading stage.

See Taro

Pharmaceuticals North America Inc. v. Suven Life Sciences, Ltd.,
No. 11-2452, 2012 WL 2513523, at *5 (D.N.J. Jun. 28, 2012)
(applying pleading standard in Exergen because “[w]hile
Therasense established a more stringent standard for proving
inequitable conduct, the decision did not address whether
Therasense’s more stringent standards ... should apply at the
pleading stage.”) (citing Delano, 655 F.3d at 1350); Milwaukee
Elec. Tool Corp. v. Hitachi Koki Co., Ltd., No. 09–948, 2012 WL
1952977, at *6 (E.D.Wis. May 29, 2012) (finding that Therasense
does not apply to the pleading stage, and applying Exergen
standard); W.L. Gore & Assocs., Inc. v. Medtronic, Inc., ---

5

In Delano, the Federal Circuit ruled that a charge of
inequitable conduct was adequately plead based on allegations
that the co-inventor, Dr. Ramming, “had detailed knowledge that
the [California Table Grape] Commission had gone out of its way
to seek out information regarding widespread prior use of the
patented [grape] varieties, had learned of multiple instances of
such use, and had encouraged those in possession of the patented
varieties to cease such use.” This information, however, was not
disclosed to the PTO. Id. at 1431. The Court found that a
“reasonable jury could infer that Dr. Ramming knew of the prior
use, appreciated that the prior use was material, and decided not
to disclose that information to the PTO, with deceptive intent.”
Id. at 1350.
10

F.Supp.2d ----, No. 10-441, 2012 WL 368272, at *3 (E.D.Va. Feb.
3, 2012) (“Although the facts alleged in [defendant’s]
counterclaim may not be enough to satisfy the Therasense elements
by clear and convincing evidence, the alleged facts are
sufficient to satisfy Exergen’s pleading requirements.”).
Therefore, the proper standard to apply at this stage
in the proceedings is the standard set forth in Exergen.

As

stated in Exergen, a claim for inequitable conduct must be plead
with particularity under Rule 9(b).

Exergen, 575 F.3d at 1326

(stating that under Federal Circuit law, inequitable conduct,
while a broader concept than fraud, must be pled with
particularity under Rule 9(b)) (citing Ferguson Beauregard/Logic
Controls, Div. of Dover Resources, Inc. v. Mega Sys., LLC, 350
F.3d 1327, 1344 (Fed. Cir. 2003)).

“The substantive elements of

inequitable conduct are: (1) an individual associated with the
filing and prosecution of a patent application made an
affirmative misrepresentation of a material fact, failed to
disclose material information, or submitted false material
information; and (2) the individual did so with a specific intent
to deceive the PTO.”

Id. at 1327 n.3. (citing Star Scientific,

Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed.Cir.
2008); Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178, 1181
(Fed.Cir. 1995); 37 C.F.R. § 1.56 (2008)).
Therefore, “to plead the ‘circumstances’ of inequitable
11

conduct with the requisite ‘particularity’ under Rule 9(b), the
pleading must identify the specific who, what, when, where, and
how of the material misrepresentation or omission committed
before the PTO.”

Id. at 1328.

“Moreover, although ‘knowledge’

and ‘intent’ may be averred generally, a pleading of inequitable
conduct under Rule 9(b) must include sufficient allegations of
underlying facts from which a court may reasonably infer that a
specific individual (1) knew of the withheld material information
or of the falsity of the material misrepresentation, and (2)
withheld or misrepresented this information with a specific
intent to deceive the PTO.”

Id. at 1328-29.

In this case, Evonik states that it meets the pleading
requirements under Exergen and Rule 9(b).

Specifically, Evonik

pleads that Steven Nolan, Ph.D. (Professor of Chemistry), Mark S.
Trimmer, Ph.D. (executive vice president of Materia Inc.), and
Mark Warzel (patent agent for Materia Inc.) withheld information
from the PTO.

Evonik alleges that they never informed the PTO

that work Nolan claimed to have invented in connection with the
‘590 Patent was instead derived from Nolan’s time spent with
Professor Robert Grubbs while at the California Institute of
Technology (“Caltech”).

Evonik alleges that during 2007, after

Materia entered into a patent license agreement with UNOF
(regarding certain methods or compositions attributed to Nolan),
it participated in the prosecution of the ‘590 Patent but did not
inform the PTO that Nolan did not invent the subject matter
12

claimed.
Evonik also alleges that in 2003, in a different court
proceeding, Grubbs submitted a declaration stating that
“Considering the level of [Nolan’s] involvement in my lab, it
would be impossible for Prof. Nolan to separate out his
individual ideas and work from what he learned as a result of our
collaboration and his time at Caltech.”

Evonik also relies on

two motions submitted by Materia during an interference
proceeding (a priority contest before the PTO to determine who
was original inventor), one to correct the inventorship of
Nolan’s application and a second motion to challenge whether
Nolan invented the subject matter.
Evonik pleads that the ‘590 Patent would not have
issued but for the failure of at least Trimmer, Warzel or Nolan
to disclose the Grubbs declaration or the facts concerning the
challenge to Nolan’s inventorship of the ‘590 Patent.

Evonik

argues that Materia has been making allegations for years to the
PTO and in district court proceedings that Nolan was not the
inventor of the ‘590 Patent, but that after Materia signed the
license with UNOF and gained a certain interest in the ‘590
Patent, those allegations vanished and Materia failed to disclose
this information to the PTO.6

6

The issue was raised whether Grubbs’ testimony taken in this
case is biased now that his interests are aligned with Nolan and
Materia. Grubbs now testifies that he has no concerns about
13

Materia argues that Evonik’s inequitable conduct claim
must fail because Evonik has not alleged facts showing that Nolan
“derived” the invention claimed in the ‘590 Patent from Grubbs.
Materia maintains that the Grubbs declaration does not provide
evidence of derivation.

Rather, Materia states that in his

declaration Grubbs only criticized Nolan’s behavior,
specifically, that Nolan did not seek consent or credit Grubbs in
any way.

Materia states that Grubbs characterized Nolan’s

failure to seek consent as a breach of “academic custom” rather
than of any legal obligation.

Materia also argues that Evonik’s

reliance on Grubbs’s testimony that graduate students found Nolan
reading their research notebooks in the Caltech laboratory at
night is faulty because Evonik does not allege that the notebooks
disclosed any inventions claimed by Nolan in any patent or patent
application.7
Materia argues that Evonik is alleging an inequitable
conduct claim based on derivation, and that in order for Evonik
Nolan’s inventorship. While the Court cannot make credibility
determinations at this stage, see Marino v. Indus. Crating Co.,
358 F.3d 241, 247 (3d Cir. 2004), the Court may disregard selfserving testimony or affidavits. See Brown v. Henderson, 257
F.3d 246, 252 (2d Cir. 2001). In any event, the Court takes all
inferences in the light most favorable to the non-moving party.
See Evancho v. Fisher, 423 F.3d 347, 350 (3d Cir.2005). At this
stage, Evonik need only plead sufficient facts in support of its
inequitable conduct claim. See Twombly, 127 S. Ct. at 1969 n.8;
Iqbal, 129 S. Ct. at 1949.
7

Evonik asserts that Nolan’s time at Caltech did not involve
research on metathesis catalysis, the subject of the ‘590 patent,
while the notebooks of Grubbs’s assistants reflected such work.
14

to prove derivation, it must allege facts supporting “complete
conception” by Professor Grubbs of the specific compounds claimed
in the ‘590 Patent.

Materia argues that there is no evidence

that Grubbs conceived of the specific compounds and, therefore,
there can be no derivation claim and, without a derivation claim,
there can be “but-for” materiality, an element required for
inequitable conduct.
In response, Evonik argues that it is not required to
allege facts showing that Grubbs is the inventor of the specific
compounds claimed in the ‘590 Patent in order to state a claim
for inequitable conduct.

Evonik maintains that all it has to do

is allege facts showing that Materia withheld information from
the PTO that Nolan was not the inventor.
As stated, the two basic requirements to prove
inequitable conduct are intent to deceive and materiality.

See

Therasense, 649 F.3d at 1290; Delano 655 F.3d at 1327 n.3 (“The
substantive elements of inequitable conduct are: (1) an
individual associated with the filing and prosecution of a patent
application made an affirmative misrepresentation of a material
fact, failed to disclose material information, or submitted false
material information; and (2) the individual did so with a
specific intent to deceive the PTO.”).
The intent and materiality requirements must be viewed
separately.

See Therasense, 649 F.3d at 1290 (“A district court
15

should not use a ‘sliding scale,’ where a weak showing of intent
may be found sufficient based on a strong showing of materiality,
and vice versa.”).
materiality.

The materiality required is “but-for”

See id. at 1291.

“When an applicant fails to

disclose prior art to the PTO, that prior art is but-for material
if the PTO would not have allowed a claim had it been aware of
the undisclosed prior art.”

Id.

Materia has not challenged Evonik’s facts concerning
the “intent” requirement based on its allegations that Trimmer,
Warzel or Nolan failed to disclose the Grubbs declaration or the
facts concerning the challenge to Nolan’s inventorship of the
‘590 Patent to the PTO.

Rather, Materia is challenging Evonik’s

allegations that the information not disclosed was material.
Materia argues that Evonik has not shown but-for materiality
because it has not alleged facts showing that Grubbs is the true
inventor rather than Nolan.
At this stage of the proceedings, the pleading stage,
requiring proof of the true inventor of the ‘590 Patent is
premature.

What Evonik needs to plead, and has plead, is that

the PTO would not have allowed the patent to be issued had it
known of Materia’s prior challenges to Nolan’s inventorship.

At

this stage, such allegations meet the pleading requirements.

The

determination of whether Nolan, Grubbs, or someone else, is the
true inventor is a determination that will require extensive
16

reliance on documents outside of the pleadings and likely be the
subject of further proceedings.

See Southern Cross, 181 F.3d at

426 (a court in reviewing a Rule 12(b)(6) motion must only
consider the facts alleged in the pleadings, the documents
attached thereto as exhibits, and matters of judicial notice).
The Court does not decide the merits of the claim at this stage,
only whether materiality has been properly alleged with
sufficient particularity.

See XpertUniverse, Inc. v. Cisco

Systems, Inc., --- F.Supp.2d ----, No. 09-157, 2012 WL 2335938,
at *5 (D.Del., Jun. 19, 2012) (finding claim of inequitable
conduct properly plead where defendant “specifically identified
the alleged patent application and its date of publication, and
alleged that it constitutes a printed publication sufficient to
trigger the printed publication bar” and, therefore, the court
“can reasonably infer that but for the alleged omission of this
published patent application, the Examiner would not have issued
the patents in suit.”).
Accordingly, Evonik has sufficiently plead a claim for
inequitable conduct.

Materia’s motion to dismiss will be denied,

and the decision of the Magistrate Judge will be affirmed.
C.

Timeliness of Motion to Amend

Materia also argues that the Order of the Magistrate
Judge granting Evonik’s motion to amend was in error because the
motion was filed more than five months after the deadline for
17

such motions.
The Magistrate Judge found that Evonik demonstrated
sufficient diligence and found good cause to permit the late
filing. (12/13/11 Op. at 8).

The Magistrate Judge found that

although some information suggesting an inequitable conduct claim
may have existed prior to February 1, 2011, the deadline to file
motions to amend, the information was incomplete. (Id.).
Depositions of Grubbs and Trimmer were not held until May 2011
and the motion to amend was filed shortly thereafter.

The

Magistrate Judge found it prudent that Evonik waited until after
it had the factual support it needed to amend its counterclaim.
The Magistrate Judge also found that the depositions could not
reasonably be taken earlier because of incomplete document
production and scheduling difficulties.
A district court judge will only reverse a magistrate
judge’s opinion on pretrial matters if it is “clearly erroneous
or contrary to law.” See 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ.
P. 72(a); L. Civ. R. 72. 1(c)(1)(A).

A ruling is contrary to law

if the magistrate judge has misinterpreted or misapplied
applicable law.

Gunter v. Ridgewood Energy Corp., 32 F. Supp. 2d

162, 164 (D.N.J. 1998).
There are no grounds to overturn the Magistrate Judge’s
decision to permit Evonik to file a motion to amend beyond the
deadline.

Accordingly, the decision shall be affirmed.
18

III. CONCLUSION
For the foregoing reasons, Materia’s motion to dismiss
will be denied and the Magistrate Judge’s Order will be affirmed.
An appropriate Order will be entered.

s/Noel L. Hillman
NOEL L. HILLMAN, U.S.D.J.
At Camden, New Jersey
Dated:

September 28, 2012

19