Evonik Degussa GmbH v. Materia Inc.

Filing 623

OPINION. Signed by Judge Noel L. Hillman on 5/15/2015. (gvw)

UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE

Evonik Degussa GmbH,

Plaintiff,
v.
Materia Inc.,
Defendant.

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APPEARANCES:
Eric James Evain, Esquire
R. Eric Hutz, Esquire
Rudolf E. Hutz, Esquire
Novak Druce Connolly Bove Quigg LLP
The Nemours Building
1007 North Orange Street
P.O. Box 2207
Wilmington, Delaware 19899
Counsel for Evonik Degussa GmbH
Jack B. Blumenfeld, Esquire
Julia Heaney, Esquire
Morris, Nichols, Arsht & Tunnell
1201 North Market Street
P.O. Box 1347
Wilmington, Delaware 19899
and
Aaron M. Raphael, Esquire
David R. Lipson, Esquire
Jeffrey A. Lindeman, Esquire
J.A. Lindeman & Co. PLLC
3190 Fairview Park Drive
Suite 480
Falls Church, Virginia 22042

Civil Action No.
09-cv-636 (NLH/JS)
(consolidated with
10-cv-200)
OPINION

and
Jason C. Kravitz, Esquire
Gina McCreadie, Esquire
Michelle A. Flores, Esquire
Nixon Peabody LLP
100 Summer Street
Boston, MA 02110
and
Richard D. Rochford, Jr., Esquire
30 Rockefeller Plaza
26th Floor
New York, New York 10112
Counsel for Materia Inc.
HILLMAN, District Judge: 1
Presently before the Court is a motion filed by Evonik
Degussa GmbH (“Evonik”) for reconsideration of the Court’s
ruling, as set forth in an Opinion and Order dated June 30,
2014, that Materia Inc.’s (“Materia”) § 112 validity challenges
to the ‘145 patent claims are not barred by the doctrine of
collateral estoppel.

By Order dated March 31, 2015, the Court

granted Evonik’s motion to the extent that Evonik asked the
Court to reconsider certain findings, and the Court has now
considered the issues raised in such motion.

For the reasons

expressed at the hearing on May 14, 2015, and as explained
below, the Court will deny without prejudice Evonik’s request

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United States District Court Judge for the District of New
Jersey, sitting by designation.

that the Court find that Materia is precluded from raising § 112
validity challenges to the ‘145 patent claims.
I.

Standard for Motion for Reconsideration
In the District of Delaware, motions for reconsideration are

governed by Local Civil Rule 7.1.5.

Motions for reconsideration

should be granted “sparingly” and may not be used to rehash
arguments which have already been briefed by the parties and
considered and decided by the court.

See Karr v. Castle, 768 F.

Supp. 1087, 1090 (D. Del. 1991), aff’d, 22 F.3d 303 (3d Cir.
1994), cert. denied, 513 U.S. 1084 (1995); Brambles USA, Inc. v.
Blocker, 735 F. Supp. 1239, 1240 (D. Del. 1990).

Grounds for

granting a motion for reconsideration occur “where the Court has
patently misunderstood a party, . . . [where the Court] has made a
decision outside the adversarial issues presented to the Court by
the parties, . . . or [where the Court] has made an error not of
reasoning but of apprehension[.]”

Schering Corp. v. Amgen, Inc.,

25 F. Supp. 2d 293, 295 (D. Del. 1998) (citing Brambles USA, Inc.
v. Blocker, 735 F. Supp. 1239, 1241 (D. Del. 1990)).
The movant has the burden of demonstrating either: "(1) an
intervening change in the controlling law; (2) the availability of
new evidence that was not available when the court [issued its
order]; or (3) the need to correct a clear error of law or fact or

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to prevent manifest injustice."

Max’s Seafood Café v. Quinteros,

176 F.3d 669, 677 (3d Cir. 1999)(citing N. River Ins. Co. v. CIGNA
Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995)).

Even when

one or more of these conditions are satisfied, the Court may deny
the motion if it would not alter the outcome.

See Becton

Dickinson & Co. v. Tyco Healthcare Group LP, No. Civ. A. 02-1694,
2006 WL 890995, at *2 (D. Del. Mar. 31, 2006).
II.

Evonik’s Motion for Reconsideration
In its previous opinion, Evonik Degussa GmbH v. Materia Inc.,

53 F. Supp. 2d 778, 787 (D. Del. 2014), the Court noted that the
Court of Appeals for the Third Circuit and the Court of Appeals
for the Federal Circuit both impose four requirements to support a
finding of collateral estoppel, also known as issue preclusion.
These requirements are: “(1) the issue must be identical to an
issue previously adjudicated; (2) the issue must have been
actually litigated; (3) the determination of the issue must have
been necessary to the prior judgment; and (4) the party against
whom preclusion is now asserted must have had a full and fair
opportunity to litigate the issue.”

Id. (citing Henglein v. Colt

Indus., 260 F.3d 201, 209 (3d Cir. 2001); In re Freeman, 30 F.3d
1459, 1465 (Fed. Cir. 1994)).

The Court found that Evonik did not

meet the first and second elements of issue preclusion regarding

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validity under 35 U.S.C. § 112.

Id. at 791-92.

Specifically, the

Court found that Evonik had not met the first two elements because
the scope of the patent claims asserted in this litigation are
broader than those that were asserted in the prior Interference
proceeding.

Id. at 791.

Evonik now requests partial reconsideration of the Court’s
ruling on grounds of error of fact.

Specifically, Evonik seeks

reconsideration of the Court’s statement in its Opinion that
“‘t[h]e ‘145 and ‘528 Patents in this litigation concern NHC with
and without a double bond.’”

(Evonik’s Mem. in Supp. of its Mot.

for Partial Reconsideration of the Court’s Ruling on Partial Summ.
J. [Doc. No. 533] 1.)

Evonik asserts that while that is a correct

statement regarding the scope of the ‘528 patent claims, it is not
correct with regard to the ‘145 patent claims.

(Id.)

Evonik

contends that all of the claims in the ‘145 patent are limited to
NHCs of formula II, and that all such NHCs contain a double bond.
(Id. at 1-2.)

Evonik then argues that the factual error altered

the disposition of whether issue preclusion applies to Materia’s §
112 defenses concerning validity of the ‘145 patent, because the
claims that Materia challenged in the Interference were directed
to catalyst complexes containing NHC ligands of formula II, III,
IV, and V, and Materia therefore purportedly challenged in the

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Interference catalysts having the same ligands that are claimed in
the ‘145 patent (i.e., NHC ligands of formula II).

(Id. at 5.)

Materia agrees with Evonik that “the L1 substituent of the
complex recited in the ‘145 Patent is limited to an NHC of formula
II, which contains a double bond.”

(Materia’s Opp. to Evonik’s

Mot. for Partial Reconsideration [Doc. No. 537] (hereafter,
“Materia’s Opp. Br.”) 1.)

Therefore, Evonik has presented valid

grounds -- error of fact -- for reconsideration.

Having

determined that all of the claims in the ‘145 patent are limited
to NHCs of formula II, and that all such NHCs contain a double
bond, the issue is whether correction of this error warrants a
different conclusion on Evonik’s summary judgment motion.
In its earlier Opinion, the Court concluded that Evonik's
claims for the ‘145 and ‘528 patents in this litigation recite
broader subject matter than the counts in the Interference.
Evonik, 53 F. Supp. 3d at 789.

Finding that Materia’s § 112

validity challenges during the Interference covered catalysts
having the same NHC ligands that are claimed in the ‘145 patent,
the Court agrees that the scope of the claims in this litigation
are less broad than originally considered.

However, the issue

remains whether Evonik has met its burden of showing that the
validity issue before this Court is identical to what was decided

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in the Interference proceeding.

Although there is some overlap,

Evonik has not shown at this time, even considering the narrower
scope of the claims after correcting the factual error regarding
the ‘145 patent, that Materia should be barred from challenging
the patentability of Evonik’s claims based on § 112.
Materia argues that even setting aside the scope of the
claims concerning the L1 substituent of the claimed complex,
Evonik’s claims of the ‘145 patent are nonetheless broader than
the counts that were pending during the Interference.

In this

regard, Materia focuses on the claims concerning the R1 and R2
substituents of the ‘145 patent, specifically contending that
Evonik’s claims pending during the Interference recited that the R1
and R2 substituents of the claimed complex “contain” a ring,
whereas the language in the ‘145 patent recites that these
substituents may “form” a ring.

(Materia’s Opp. Br. 4.)

According to Materia, “containing” a ring and “forming” a ring are
materially different.

(Id.)

Materia asserts that it could not

have raised an argument during the Interference regarding Evonik’s
claim that R1 and R2 “form a ring” because such language was not
added until after the Interference.

(Id. at 6.)

The Court recognized Materia’s argument concerning the R1 and
R2 substituents in a footnote its initial Opinion, noting that “to

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the extent” such argument could be construed as a claim
construction challenge, it was untimely.
at 789 n.14.

Evonik, 53 F. Supp. 3d

Subsequent to the issuance of the Opinion, Materia

filed a summary judgment motion [Doc. No. 561] on the issue of
whether the ‘528 and ‘145 patents are invalid under § 112, because
the inventions claimed therein claim a complex in which the R1 and
R2 substituents “form a ring,” when their respective patent
specifications are limited to a complex in which the R1 and R2
substiutents “have” or “contain” a ring.

(Materia, Inc.’s Opening

Br. in Supp. of its Mot. for Summ. J. of Invalidity of U.S. Patent
Nos. 7,378,528 and 7,652,145 Due to Lack of Written Description
Support for “Form a Ring” [Doc. No. 562] 1.)

In opposition,

Evonik argues, among other things, that the Court -- in the
footnote of its prior Opinion -- already ruled on Materia’s
contention.

(Evonik’s Mem. in Opp. to Materia’s Mot. for Summ. J.

of Invalidity of U.S. Patent Nos. 7,378,528 and 7,652,145 Due to
Alleged Lack of Written Description Support for “Form a Ring”
[Doc. No. 590] 1.)
The Court did not intend through its footnote to resolve an
issue an important as whether Evonik’s revision of language
concerning the R1 and R2 substituents was a material, significant
and substantial change or was merely a clarification of the

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original language.

In the footnote, the Court only rejected

Materia’s argument to the extent it was a claim construction
challenge.

As is evident from the subsequently-filed summary

judgment motion, Materia’s argument concerning the R1 and R2
substituents goes to the issue of invalidity under § 112, and not
the issue of claim construction.
The Court finds that at this time it cannot resolve the issue
of whether Materia is barred from raising a § 112 defense
concerning the ‘145 patent, as such issue is intertwined with the
pending summary judgment motion on the issue of whether the phrase
“form” a ring is materially different from the language “contain”
a ring.

If the Court determines that there is a material

difference between these descriptions, then the claims that were
at issue in the Interference would be different than those
currently at issue in this patent action, and Materia would not be
barred from raising a § 112 defense under the doctrine of issue
preclusion.

By contrast, if the Court determines that the change

in language was merely a clarification, then the scope of the
claims of the ‘145 patent pending during the Interference would be
the same as the scope of the claims here, thus precluding Materia
from raising a § 112 defense in this case.

Given that the

materiality of the change in descriptive language is directly

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related to the scope of claims, the Court will defer its decision
on the issue of collateral estoppel until it resolves the summary
judgment motion [Doc. No. 561].
III. Conclusion
Having reconsidered Evonik’s argument and Materia’s
opposition, the Court finds that Evonik has not met its burden of
proving that the claims in this litigation are identical to what
was presented during the Interference proceeding.

The Court

therefore will deny without prejudice Evonik’s request that the
Court find that Materia is precluded from raising § 112 validity
challenges to the ‘145 patent.

The issue of collateral estoppel

will be addressed at the time the Court decides the pending
summary judgment motion concerning whether the language “form a
ring” is materially different from the phrases “contain a ring” or
“have a ring.”
An Order will be filed consistent with this Opinion.

s/ Noel L. Hillman
NOEL L. HILLMAN, U.S.D.J.
Dated: May 15, 2015
At Camden, New Jersey

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