Evonik Degussa GmbH v. Materia Inc.

Filing 664

AMENDED OPINION--Redacted copy of DI 648 originally filed 12/21/15. Signed by Judge Noel L. Hillman on 12/21/15. (bkb)

UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE

Evonik Degussa GmbH,

Plaintiff,
v.
Materia Inc.,
Defendant.

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

Hillman, District Judge.1
This matter concerns a patent infringement action.

Before

the Court are six motions for partial summary judgment, a motion
to strike, and one Daubert motion2 filed by the parties,
Plaintiff Evonik Degussa GmbH (“Evonik”) and Defendant Materia,
Inc. (“Materia”).

The Court held oral argument on October 5,

2015 and December 11, 2015.

I.

JURISDICTION
This Court exercises subject matter jurisdiction pursuant

1

United States District Court Judge for the District of New
Jersey, sitting by designation.
2

At oral argument, the parties requested that the Court stay
Materia’s Motion to Exclude Cameron K. Weiffenbach from Offering
Opinions Regarding Patent Practice and Procedure [D.I. 574]
until a later date. The Court will deny this motion without
prejudice. If Materia wishes to reactivate this motion, it may
do so by filing a letter.

to 28 U.S.C. § 1331, federal question jurisdiction, and 28
U.S.C. § 1338(a), federal jurisdiction for matters arising under
federal patent law.

II.

BACKGROUND
A.

The Patents

The Court previously set forth the factual background of
this case in its Markman Opinion dated September 30, 2013.
Accordingly, the Court sets forth herein only those facts
relevant to the present motions.
There are three patents at issue in this matter: (1)
Evonik’s U.S. Patent No. 7,378,528 (“‘528 Patent”); (2) Evonik’s
U.S. Patent No. 7,652,145 (“‘145 Patent”); and (3) Materia’s
U.S. Patent No. 7,622,590 (“‘590 Patent”).

The ‘528 Patent was

issued was issued to Wolfgang Anton Herrmann, Wolfgang
Schattenmann, and Thomas Weskampp on May 27, 2008, and
subsequently assigned to Evonik.

The ‘145 Patent was issued to

Herrmann, Schattenmann, and Weskampp on January 26, 2010, and
assigned to Evonik.
the ‘145 Patent.

The ‘528 Patent is a divisional patent of

The ‘590 Patent was issued to Steven P. Nolan

and Jinkun Huang on November 24, 2009 and was assigned to former
Third-Party Plaintiff, The University of New Orleans Foundation

2

(“UNOF”).
B.

The Subject Matter

The subject matter of the patents relate to the
facilitation of chemical reactions, particularly olefin
metathesis catalyst reactions.

The patented catalysts all

contain a central atom, ruthenium (“Ru”), that is double bonded
to a carbon (“C”) atom (“Ru = C”).

In addition to the double

bonds with the carbon atom, ligands are also attached to the
ruthenium atom.

The ruthenium catalyst causes the double bond

of the carbon atom to break, resulting in an olefin metathesis
reaction.

The chemical reaction facilitated by the use of the

particular catalyst at issue has been influential in the area of
pharmaceutical, petrochemicals, and specialty chemicals.
C.

Procedural History

Evonik brought this action against Materia on August 26,
2009, alleging that Materia infringed upon the ‘528 Patent
assigned to Evonik.

Subsequently, on March 11, 2010, Evonik

brought another patent infringement suit against Elevance
Renewable Sciences, Inc. (“ERS”), which included allegations
that ERS and Materia both infringed upon the ‘528 Patent and
‘145 Patent.3

3

Following the consolidation, and in response to

ERS subsequently settled its dispute with Evonik and
3

Evonik’s second complaint, Materia joined UNOF as a third-party,
and the two filed a counterclaim against Evonik alleging (1)
invalidity and unenforceability of Evonik’s ‘145 Patent; (2)
unenforceability of Evonik’s ‘528 Patent; (3) and infringement
and willful infringement of the ‘590 Patent that had been
assigned to UNOF and licensed to Materia.

In responding to

Materia’s counterclaim, Evonik alleged invalidity and
unenforceability of Materia’s ‘590 Patent.
Subsequently, the Court heard argument on the issue of
claim construction in a Markman hearing held on July 20, 2011.
Based on the hearing and extensive briefs filed on the issue,
the Court issued its Markman Opinion, in which it resolved the
meaning of several disputed terms in the patent claims at issue.4

is no longer a party to the present lawsuit.
4

Specifically, in the Markman Opinion, the Court
construed: (1) the term “N-heterocyclic carbene” or “NHC” in the
‘528 Patent and ‘145 Patent as: “a carbene having a molecular
structure that comprises at least one ring containing at least
one nitrogen atom in the ring;” (2) the term “and” in the ‘528
Patent and ‘145 Patent as R1, R2, R3, and R4 in the Formulae
II, III, IV and V may be identical or different to one another,
and may each be a hydrogen or a hydrocarbon. Additionally, R3
and R4 may also be halogen, nitro, nitroso, alkoxy, aryloxy,
amido, carboxyl, carbonyl, thio or sulfonyl. R3 and R4 may
not, however, be both a hydrogen or hydrocarbon and also a
halogen, nitro, nitroso, alkoxy, aryloxy, amido, carboxyl,
carbonyl, thio or sulfonyl; (3) the term “neutral electron
donor” in the ‘145 Patent as: “an uncharged molecular groups
that tends to transfer electron density from a lone electron
4

Following the issuance of the Markman Opinion, third-parties
UNOF and the University of New Orleans Research and Technology
Foundation (“UNORTF”) filed a motion pursuant to Federal Rule of
Civil Procedure 21 to be dropped as parties from this
litigation.

The Court granted the motion in an Order dated

September 30, 2013.
On October 2, 2013, Evonik filed a motion for partial
summary judgment against Materia based on issue preclusion and
claim preclusion concerning the ‘145 and ‘528 Patents.

The

Court denied Evonik’s motion, except to the extent Evonik sought
to preclude Materia’s validity claims based on 35 U.S.C. §§ 102
and 103.

On July 16, 2014, Evonik filed a motion for

reconsideration.

The Court granted Evonik’s motion but denied

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

III. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate where the Court is

pair to another separate atom or molecular group;” and (4) the
term “aryl” in the ‘590 Patent as: “an aromatic hydrocarbon in
which at least one hydrogen has been removed.”
5

satisfied that “‘the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to
any material fact and that the moving party is entitled to a
judgment as a matter of law.’”

Celotex Corp. v. Catrett, 477

U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (citing
Fed.R.Civ.P. 56).

An issue is “genuine” if it is supported by

evidence such that a reasonable jury could return a verdict in
the nonmoving party's favor.

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

A

fact is “material” if, under the governing substantive law, a
dispute about the fact might affect the outcome of the suit.
Id.

“In considering a motion for summary judgment, a district

court may not make credibility determinations or engage in any
weighing of the evidence; instead, the nonmoving party's
evidence ‘is to be believed and all justifiable inferences are
to be drawn in his favor.’”
F.3d 241, 247 (3d Cir.

Marino v. Indus. Crating Co., 358

2004) (citing Anderson, 477 U.S. at

255).
Initially, the moving party bears the burden of
demonstrating the absence of a genuine issue of material fact.
Celotex, 477 U.S. at 323 (“[A] party seeking summary judgment

6

always bears the initial responsibility of informing the
district court of the basis for its motion, and identifying
those portions of ‘the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any,’ which it believes demonstrate the absence
of a genuine issue of material fact.” (citation omitted); see
also Singletary v. Pa. Dept. of Corr., 266 F.3d 186, 192 n.2 (3d
Cir.

2001) (“Although the initial burden is on the summary

judgment movant to show the absence of a genuine issue of
material fact, ‘the burden on the moving party may be discharged
by “showing”—that is, pointing out to the district court—that
there is an absence of evidence to support the nonmoving party's
case’ when the nonmoving party bears the ultimate burden of
proof.”) (citing Celotex, 477 U.S. at 325).
Once the moving party has met this burden, the nonmoving
party must identify, by affidavits or otherwise, specific facts
showing that there is a genuine issue for trial.
U.S. at 324.

Celotex, 477

A “party opposing summary judgment may not rest

upon the mere allegations or denials of the ... pleading [s.]”
Saldana v. Kmart Corp., 260 F.3d 228, 232 (3d Cir.
(internal quotations omitted).

2001)

For “the non-moving party[ ] to

prevail, [that party] must ‘make a showing sufficient to

7

establish the existence of [every] element essential to that
party's case, and on which that party will bear the burden of
proof at trial.’”

Cooper v. Sniezek, 418 F. App'x 56, 58 (3d

Cir. 2011) (citing Celotex, 477 U.S. at 322).

Thus, to

withstand a properly supported motion for summary judgment, the
nonmoving party must identify specific facts and affirmative
evidence that contradict those offered by the moving party.
Anderson, 477 U.S. at 256–57.

IV. ANALYSIS5
A. Evonik’s Motion for Partial Summary Judgment that Evonik
Does Not Infringe the ‘590 Patent [D.I. 552]
The first dispute concerns whether Materia admitted that
there was no literal infringement as to the ‘590 Patent in its
Rule 36 Admissions.

Evonik’s Request for Admission No. 220

stated:
The catalyst shown below, which is designated RF2 by
Evonik, is not within the scope of the ‘590 Patent.
[Cy = cyclohexyl]

5

On October 3, 2014, Evonik moved for partial summary judgment
that certain Materia products literally infringe the ‘528 and
‘145 Patents [D.I. 550]. Materia conceded these literal
infringements and Evonik’s motion was granted. See Oct. 20,
2015 Order [D.I. 641].
8

Evonik Br. at 9 [D.I. 553] (citing Ex. I, RFA No. 220).
Materia’s response was as follows:
Subject to and without waiving the General Objections,
Materia admits that the catalyst shown in the Request
is not within the scope of any claim of the ‘590
patent based on the Court’s construction of “aryl” in
its September 30, 2013 Markman Order, which Materia
respectfully disagrees with. Notwithstanding the
foregoing, Materia further admits that the catalyst is
within the equivalent scope of at least one claim of
the ‘590 patent.

Materia argues its admission of non-infringement was limited to
one of its two theories of literal infringement – that Evonik’s
products contain a group that falls within the definition of the
term “aryl” as used in the ‘590 Patent claims.

This was the

argument the Court rejected in its Markman decision when it
construed “aryl” not to include “heteroaryl.”

Materia contends

its answer left open the argument that Evonik also literally
infringed the ‘590 Patent with non-aryl substituents for R and

9

R1, namely, a “C1-C20 alkyl . . . substituted with a functional
group.”

Materia further argues Evonik knew of the “alkyl

substituted with a functional group” argument and should have
applied this caveat to Materia’s admission.

In support of this

argument, Materia points to a footnote in a November 30, 2010
Joint Claim Construction Statement and another footnote in a
declaration submitted three months earlier and notes that Evonik
responded to this alternative argument on September 15, 2010 in
its non-infringement contentions.

Materia does not argue that

Evonik’s question was vague or ambiguous and does not move to
amend or withdraw its admission.
Under Federal Rule of Civil Procedure 36, “[a] party may
serve on any other party a written request to admit, for
purposes of the pending action only, the truth of any matters
within the scope of Rule 26(b)(1) relating to: (A) facts, the
application of law to fact, or opinions about either[.]”
R. Civ. P. 36(a)(1)(A).

Fed.

“A matter admitted under this rule is

conclusively established unless the court, on motion, permits
the admission to be withdrawn or amended.”
36(b).

Fed. R. Civ. P.

Further, “Rule 36 admissions are conclusive for purposes

of the litigation and are sufficient to support summary
judgment.”

Langer v. Monarch Life Ins. Co., 966 F.2d 786, 803

(3d Cir. 1992).

A Rule 36 admission is
10

[a] studied response, made under sanctions against
easy denials, to a request to assert the truth or
falsity of a relevant fact pointed out by the request
for admission.... [T]he presence of the party's oath
in both instances, with its sanction of the penalty
for perjury, does not make an admission of a request
the same in all respects as sworn testimony. For
requests for admission, although answered under the
oath of a party, are normally made under the direction
and supervision of counsel, who has full professional
realization of their significance.

Airco Indus. Gases, Inc. Div. of the BOC Grp., Inc. v. Teamsters
Health & Welfare Pension Fund of Philadelphia & Vicinity, 850
F.2d 1028, 1036 (3d Cir. 1988) (citing McSparran v. Hanigan, 225
F. Supp. 628, 636–37 (E.D. Pa. 1963), aff'd, 356 F.2d 983 (3d
Cir. 1966)).

In Airco, an employer brought a suit against an

employee benefit plan to recover erroneous overpayments.
1029-30.

Id. at

A main dispute in the case concerned the controlling

refund policy adopted by the trustees of the employee benefit
plan on November 3, 1983.

Id. at 1035.

In a Rule 36 admission,

the employee benefit plan admitted the trustees adopted a policy
not to refund employer overpayments on November 3, 1983.
1035.

Id. at

The district court found that the employee benefit plan

intended to admit that the meeting in 1983 only confirmed a 1981
decision to adopt a no-refund policy, thus there was no
admission that the trustees agreed to adopt a no-refund policy
in 1983.

Id.

The Third Circuit reversed, finding that there

11

was no ambiguity in the admission which stated that, “the
trustees unanimously agreed to adopt a [no-refund] policy” on
November 3, 1983.

Id. at 1036.

The court noted that, “[w]here

there is a dispute as to the meaning of an admission, we will
not contort the plain wording of the admission to favor either
party's interpretation.”

Id.; see also Ajinomoto Co. v. Archer–

Daniels–Midland Co., 228 F.3d 1338, 1351 (Fed. Cir. 2000) (pretrial infringement admissions were binding because accused
infringer “offered no correction of these admissions before the
court’s judgment”).
Evonik’s request for admission was unqualified and precise.
It asked whether Evonik’s product was in the scope of Materia’s
‘590 Patent.

Materia responded, in pertinent part, that

Evonik’s product “is not within the scope of any claim of the
‘590 [P]atent.”

Stated simply, when Materia responded that

Evonik’s product was not within the scope of ‘590 Patent, it
admitted that there was no infringement.

Materia did not state

that its admission did not cover its “alkyl substituted with a
functional group” argument.

The Court will not contort the

plain wording of Materia’s admission which was unqualified and
expressed no limitation.

Accordingly, Evonik’s Motion for

Partial Summary Judgment that Evonik Does Not Infringe the ‘590
Patent will be granted.
12

B. Materia’s Motion for Partial Summary Judgment on the
Invalidity of the ‘528 and ‘145 Patents Due to Lack of
Description of “Form a Ring” [D.I. 561]
This dispute concerns Claims 1 and 8-11 of Evonik’s ‘528
Patent and Claims 1, 2, 22-25 of Evonik’s ‘145 Patent.

Materia

alleges these claims are invalid as lacking a written
description under 35 U.S.C. § 112, ¶ 1 and are not entitled to
the benefit of the earlier filing dates of their priority
applications.

Specifically, Materia argues that the asserted

claims are invalid because Evonik’s claims of a complex of
formula I in which its R1 and R2 substituents “form a ring” in
the ‘145 and ‘528 Patents are not adequately described by their
patent specifications which are limited to a complex of formula
I in which its R1 and R2 substituents “have” or “contain” a ring.
Materia thus argues that a person of ordinary skill in the art
would not understand that the ‘145 or ‘528 Patent adequately
describes that R1 and R2 “form a ring” in the asserted claims.
The written description requirement of § 112, ¶ 1 provides:
The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.
35 U.S.C. § 112, ¶ 1.

“Compliance with the written description

13

requirement is a question of fact but is amenable to summary
judgment in cases where no reasonable fact finder could return a
verdict for the non-moving party.”

Spine Solutions, Inc. v.

Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1312-13 (Fed.
Cir. 2010) (citing PowerOasis, Inc. v. T–Mobile USA, Inc., 522
F.3d 1299, 1307 (Fed. Cir. 2008)).

The written description must

“clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.”

Ariad Pharm.,

Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citation omitted).

Thus, the court must look objectively at

the four corners of the specification from the perspective of a
person of ordinary skill in the art.

Id.

Ultimately, “[w]hat

is claimed by the patent application must be the same as what is
disclosed in the specification; otherwise the patent should not
issue.”

Festo Corp. v. Shokesu Kinzoku Kogyo Kabushiki Co., 535

U.S. 722, 736 (2002).
As an initial matter, the Court addresses Evonik’s argument
that Materia’s motion is untimely.

While the Court previously

found Materia’s “form a ring” argument untimely for purposes of
claim construction (see D.I. 525 at 21 n.14), Materia’s instant
motion relates to invalidity and is not untimely.
The Court next considers whether no reasonable factfinder
could find that the ‘528 and ‘145 Patents have an adequate
14

written description which reasonably conveys to one of ordinary
skill in the art that the inventors had possession of the
claimed subject matter.

The Court finds that reasonable

factfinders could disagree on this issue.
Materia’s technical expert, Professor Jacobsen opined that
one of ordinary skill in the art would understand the ordinary
meaning of the phrase “form a ring” as describing that R1 and R2
forming a cyclic structure.6

Materia’s Br. at 16 [D.I. 562].

Materia further argues that one

of ordinary skill in the art would have understood the phrase
“have/contain a ring” in the context of R1 and R2 of formula I in
the specification of the ‘145 and ‘528 Patents was that R1 and R2
may, independently, have/contain unconnected cyclic structures.

6

The example below shows a cycloalkyl ring.
15

Id. at 17.

Thus, Materia argues that “form a ring” and

“have/contain a ring” are inconsistent with the agreed upon
definition of “form a ring.”

Materia further argues that the

fact that Evonik amended its ‘145 Patent to replace the words
“have/contain” with “form” illustrates that those claims are
invalid due to lack of description.
Evonik admits that at various times during the ‘528 and
‘145 Patent prosecutions, Evonik revised its patent claims to
replace references to “have/contain a ring” to “forms a ring.”
Evonik argues that these revisions were for purposes of
clarification, and were summarily authorized by the U.S. Patent
and Trademark Office (“USPTO”) which did not consider these
revisions to be new matter.

Evonik’s technical expert, Dr.

Cooper, opined that one of ordinary skill in the art would
interpret the original “have/contain” language to mean to same
thing as “form a ring.”

Evonik Br. at 17 [D.I. 590] (citing
16

Rebuttal Expert Report, Ex. W at 9).

“Form,” Evonik argues,

could describe a process in the transitive sense of creating or
producing a ring.

Alternatively, “form” could be used in the

intransitive sense, used to describe the nature of different
structures.

As the Court interprets Evonik’s argument, “form”

could describe an action, as in “the campers formed a ring
around a campfire in order to toast their marshmallows” but
could also describe a shape, as in “the petals form a ring
outside the center of the flower.”

Thus, Evonik’s expert opined

that one skilled in the art would recognize that when “form a
ring” is used to describe structurally different catalysts and
their R1 and R2 substituents, “form” is used in the intransitive
sense that R1 and R2 display or constitute (“have/contain”) a
ring.
Evonik argues that one of ordinary skill the art would not
interpret the “have/contain” language to mean that R1 and R2
separately or independently possess a ring.

In support of their

argument, Evonik notes that R1 and R2 can be a “hydrocarbon
group,” illustrated by a “cyclic” radical such as “aryl” – a
ring structure.

The ‘528 disclosure further notes that another

alternative for R1 and R2 is that one or more hydrogen atoms in
the hydrocarbon group can be replaced by others, such as a
“aryl” or “aryloxy group,” both of which contain rings.
17

Under

Materia’s interpretation, Evonik argues, the claim language
would read that R1 and R2 each have a cyclic group or they can
each have a ring, which is redundant.

According to Evonik, the

only reasonable interpretation to one of ordinary skill in the
art is that R1 and R2 can each have a cylic group or, together,
they can form a ring.

Evonik Br. at 17 [D.I. 590] (citing Dr.

Cooper’s Rebuttal Expert Report, Ex. W at 9).
While the USPTO did not find that the amendment from
“have/contain” to “form” was new matter, the Court recognizes
that it is the “final arbiter of patent validity and, although
courts may take cognizance of, and benefit from, the proceedings
before the patent examiner, the question is ultimately for the
courts to decide, without deference to the rulings of the patent
examiner.”

Quad Envtl. Technologies Corp. v. Union Sanitary

Dist., 946 F.2d 870, 876 (Fed. Cir. 1991).

Nonetheless, drawing

all reasonable inferences in Evonik’s favor, there is dispute of
material fact regarding what this language would mean to one of
ordinary skill in the art.

This “battle of the experts” renders

summary judgement improper.

Edwards Sys. Tech., Inc. v. Digital

Control Sys., Inc., 99 F. App'x 911, 921 (Fed. Cir. 2004).

18

C. Materia’s Motion for Partial Summary Judgment of
Invalidity Due to Lack of Written Description as to
Claims 8-22 of the ‘528 Patent that Claim Complexes
Containing the NHC Ligand in the L1 position of the
Formula I Complexes [D.I. 565]
Materia generally argues that “NHC” as now construed, is so
overbroad that it renders Claims 8-11 of the ’528 Patent, which
contain that term without further limitation, invalid for
indefiniteness, non-enablement, and lack of written description.
According to Materia, these three arguments are related in that
they result from the overbroad construction of NHC that Evonik
advocated and the Court adopted.

In this motion, Materia argues

that Claims 8-11 of Evonik’s ‘528 Patent are invalid under §
112, ¶ 1 because the formula I complexes claimed contain a “Nheterocyclic carbene” (NHC) ligand in the L1 position, and the
‘528 Patent fails to describe the NHC ligand L1 so that one of
ordinary skill in the art would have understood the named
inventors possessed the claimed invention at the time their
patent application was filed.
By way of brief background, in the Court’s Markman Opinion
it decided “NHC” as used in the ’528 Patent requires only three
structural, component parts: (1) a carbene whose molecular
structure comprises (2) at least one ring containing (3) at
least one nitrogen atom in the ring.

Materia argues that the

asserted claims are invalid because the ‘528 Patent fails to
19

describe a representative number of species falling within the
scope of the genus of structural features common to members of
the broad NHC genus of L1.

Materia claims that previously,

Evonik argued that the definition of NHC and consequently L1 is
not limited, but Evonik now argues that the claims should be
limited to useful ligands in metathesis catalysts.

Materia

argues Evonik’s new definition of L1 NHC tries to limit the scope
of NHC and is an impermissible new claim construction challenge
to avoid an invalidity determination.

Further, Materia argues

that the ‘528 Patent fails to describe either (1) an adequate
number of representative species of the NHC genus and ruthenium
complexes containing them, or (2) relevant identifying
characteristics common to the members of the NHC genus
sufficient to demonstrate that the inventors possessed the full
scope of the NHC genus and ruthenium complexes containing them.
Evonik responds that it is in no way changing the Court’s
construction of “NHC” in connection with ligand L1 in Claims 811.

Evonik contends that a patentee may rely on information

that is “well-known in the art” for purposes of the written
description requirement.

Evonik Br. at 5 [D.I. 597] (citing

Falk-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-68 (Fed. Cir.
2008)).

Specifically, Evonik argues that its expert, Dr.

Cooper, opined that a person of ordinary skill trying to
20

practice the ‘528 inventions would apply a practical knowledge
of which ligands were more likely to be useful than others.

As

an example, Evonik argues that one trying to practice a rolling
suitcase patent would not affix it with large wagon wheels
instead of small plastic ones.

Rather, one of ordinary skill in

the art would take into account common sense factors, in this
case, whether a NHC would be useful.
In contrast, Materia argues that one of ordinary skill
would be unable to conclude from the ‘528 patent specification
that the inventors had possession of the full scope of the
claimed ruthenium complexes encompassing all of the possible
NHCs which fall within the Court’s definition of that term.

In

other words, Materia accuses Evonik of narrowing the Court’s
definition.

Materia cites AbbVie Deutschland GmbH & Co., KG v.

Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir. 2014), for
the proposition that to show that an inventor has invented a
genus it must describe sufficient representative species
encompassing the breadth of that genus.
that question went before a jury.

Id.

However, in AbbVie,
Indeed, “[w]hether a

written description requirement for a genus is met by a
particular disclosure depends upon the facts.”
The same consideration is warranted here.

Id. at 2999.
The written

description requirement calls for “an objective inquiry into the
21

four corners of the specification from the perspective of a
person of ordinary skill in the art.”
1351.

Ariad Pharm., 598 F.3d at

Here, there are factual disputes as to whether the ‘528

Patent fails to describe either (1) an adequate number of
representative species of the NHC genus and ruthenium complexes
containing them, or (2) relevant identifying characteristics
common to the members of the NHC genus sufficient to demonstrate
that the inventors possessed the full scope of the NHC genus and
ruthenium complexes containing them.

Stated a different way,

there is a factual dispute as to whether one of ordinary skill
in the art, applying their ordinary skills, would conclude from
the ‘528 patent specification that the inventors had possession
of the full scope of the claimed ruthenium complexes
encompassing all of the possible NHCs which fall within the
Court’s definition of that term.

Accordingly, summary judgment

is inappropriate on this issue.
D. Materia’s Motion for Partial Summary Judgment of
Invalidity Due to Non-Enablement as to Claims 8-11 of
the ‘528 Patent that Claims Complexes Containing the NHC
Ligand [D.I. 563]
To constitute an enabling disclosure, “the specification of
a patent must teach those skilled in the art how to make and use
the full scope of the claimed invention without ‘undue
experimentation.’”

Harris Corp. v. IXYS Corp., 114 F.3d 1149,

22

1155 (Fed. Cir. 1997) (citing In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993)).

Enablement is a

question of law based on underlying factual findings.
Wands, 858 F.2d 731, 735 (Fed. Cir. 1988).

In re

“The determination

of what constitutes undue experimentation in a given case
requires the application of a standard of reasonableness, having
due regard for the nature of the invention and the state of the
art.

The test is not merely quantitative, since a considerable

amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed.”

In re Wands, 858 at

737 (internal citations and quotations omitted).

Wands further

sets forth eight factors a court may consider when determining
if a disclosure requires undue experimentation: (1) the quantity
of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the
breadth of the claims.

Id.

Under the definition adopted by the Court, the ‘528 Patent
must teach one of ordinary skill in the art to make the full
23

scope of complexes containing NHC ligands at L1 without
limitation, as long as it satisfies the structural requirements
of the Court’s definition.

Materia argues that the ‘528 Patent

fails to teach one skilled in the art how to make, without undue
experimentation, the full scope of the formula I complexes
containing a NHC ligand in the L1 position.

In support of their

argument, Materia notes that the ‘528 Patent required a more
comprehensive disclosure since the parties agree someone with
ordinary skill in the art need only have a bachelor’s degree in
chemistry.

Materia further argues that based on the limited

prior art and the unpredictability of the full scope of the
claimed complexes, the experimentation needed to produce the
invention is undue.

In sum, Materia argues the ‘528 Patent

lacks sufficient direction, guidance or examples regarding how
to make what it considers “the extraordinarily broad and varied
scope of claimed complexes containing an ‘NHC’ ligand at L1.”
Materia Br. [D.I. 566] at 27.
Evonik argues that Materia disregards how one of ordinary
skill in the art would understand “NHC” as used in the patent.
Specifically, Evonik argues that one of ordinary skill would
understand that some species within the literal scope of “NHC”
would be more likely to be useful to make the claimed ruthenium
complexes for olefin metathesis and rank them accordingly.
24

The

Court notes that “it is not necessary that a patent applicant
test all the embodiments of his invention . . . what is
necessary is that he provide a disclosure sufficient to enable
one skilled in the art to carry out the invention commensurate
with the scope of his claims.”

Id. at 1213.

Evonik further

argues that Materia’s motion is based on their technical expert,
Dr. Jacobsen, who provided only conclusory statements that one
of ordinary skill in the art could not make the full scope of
Claims 8-11 without undue experimentation without addressing
what experimentation would be required.

In contrast, Evonik’s

expert opined that it would only take one day to conduct the
experiments which would not be onerous.

Citing Atlas Powder Co.

v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576-77 (Fed.
Cir. 1984), Evonik argues that even if some of the claimed
combinations are inoperative the claims are not necessarily
invalid for lack of enablement.

See also In re Dinh-Nguyen, 492

F.2d 856, 858–59, 181 USPQ 46, 48 (CCPA 1974) (“It is not a
function of the claims to specifically exclude ... possible
inoperative substances[.]”).

Rather, it is only where the

number of inoperative combinations requires undue
experimentation that the claim might be invalid.
F.2d at 1577.

Atlas, 750

Evonik additionally argues that a genuine dispute

of material fact exists as to many of the Wands factors,
25

including the state of the prior art, the predictability of the
art, the nature of the claimed complexes, the guidance and
direction provided by the patent and the presence and
sufficiency of working examples.
Evonik has raised a genuine issue of material fact as to
the amount and type of experimentation required, facts that will
determine whether such experimentation is undue for one of
ordinary skill in the art.

Crown Operations Int'l, Ltd. v.

Solutia Inc., 289 F.3d 1367, 1381 (Fed. Cir. 2002) (citing Enzo
Biochem Inc., v. Calgene Inc., 188 F.3d 1362, 1371, 52 USPQ2d
1129, 1135–36 (Fed. Cir. 1999) (holding that a reasonable amount
of experimentation does not invalidate a patent, but undue
experimentation does invalidate)).

This dispute affects a

majority of the Wands factors: the quantity of experimentation
necessary, the amount of direction or guidance presented, the
presence or absence of working examples, the nature of the
invention, and the breadth of the claims.7
While ultimately a trier of fact may reach the conclusion
that the required experimentation is undue, Evonik’s expert has
refuted Materia’s arguments by stating that one of ordinary
skill in the art could make and use the full scope of the

7

The parties' experts also dispute the state of the prior art
and its predictability.
26

claimed invention without undue experimentation.

Materia, thus,

has not proven through clear and convincing evidence that the
‘528 Patent is invalid for non-enablement.

In simple terms,

what the Court has before it is insufficient to grant partial
summary judgment in Materia’s favor.

Materia has argued that

the Wands factors leave no question that the experimentation
required to make and use the full scope of the claims in the
‘528 Patent is undue.

However, Materia has not explained what

experimentation would be required or why that amount of
experimentation would be undue other than to say Professor
Herrmann was unable to make the claimed complexes containing
“acyclic carbenes” even though they satisfied the Court’s
definition of NHC.

Evonik, conversely, cites to its expert

testimony which states that such experiments could be performed
in a day and would not be onerous.

Clearly, this is a genuine

dispute of material fact and the Court upon a summary judgment
motion cannot weigh expert credibility.

Accordingly, summary

judgment is improper.
E. Materia’s Motion for Partial Summary Judgment of
Invalidity Due to Indefiniteness as to Claims 8-11 of
the ‘528 Patent that Claimed Complexes Containing a NHC
Ligand [D.I. 567]

The Patent Act also requires that a patent specification
“conclude with one or more claims particularly pointing out and
27

distinctly claiming the subject matter which the applicant
regards as [the] invention.”

35 U.S.C. § 112, ¶ 2.

The Supreme

Court recently clarified the definiteness requirement in
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 189
L. Ed. 2d 37 (2014).

Definiteness requires that a patent’s

claims “viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of the
invention with reasonable certainty.”

Id. at 2129.

Whether a

patent is invalid for indefiniteness is a question of law.

Utah

Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381
(Fed. Cir. 2003).
Materia argues that Evonik is trying to introduce a
subjective, ambiguous limitation which includes only NHC ligands
that one of the ordinary skill of the art would have
contemplated as being a “useful” ligand.

Materia points to

Evonik’s response to its Request for Admissions wherein Materia
admitted that certain chemical structures were NHCs as defined
by the Court but could not determine whether each chemical
structure “exists or whether a person of ordinary skill would
conceive of, much less attempt to use this hypothetical molecule
as a ligand in the way suggested.”
(citing Ex. II at Nos. 338-391).

Mat. Br. at 10 [D.I. 568]

Materia argues that in this

admission Evonik “essentially concede[s]” that its claims are
28

indefinite.

Id.

Materia argues there is no objective standard

to determine when a NHC could have been contemplated as a useful
L1 ligand in metathesis catalyst at the time of invention – thus
the invention is indefinite under Nautilus because the
definition is subjective and uncertain.

Under Evonik’s

“subjective” definition, Materia argues, one skilled in the art
would not know whether “acyclic carbenes” are NHC’s because
Evonik’s definition does not state whether the carbene atom is
present in the ring containing at least one nitrogen atom.
Evonik responds that there is no reason for this motion
because Materia concedes that the Court’s definition of NHC
provides an objective criteria for someone skilled in the art to
know whether a chemical structure is a NHC, thereby satisfying
the definiteness requirement.

Evonik asserts it is seeking a

common sense interpretation based on scientific knowledge and
experiments that can be objectively measured and evaluated by a
person of ordinary skill in the art.

Evonik also points out

that the cases cited by Materia to support their argument that
Evonik’s claims are indefinite are distinguishable.
agrees.

The Court

The Federal Circuit case Datamize, LLC v. Plumtree

Software, Inc., C(Fed. Cir. 2005) abrogated by Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 189 L. Ed. 2d 37
(2014) concerned the subjective claim term “aesthetically
29

pleasing.”

The Federal Circuit found the subjective term failed

to provide direction to one skilled in the art to determine the
scope of the claimed invention.

Id. at 1352.

The claim term in

Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir.
2014) cert. denied, (U.S. Oct. 5, 2015) was “unobtrusive manner”
and the Federal Circuit came to the same conclusion.

Here, NHC has been objectively defined in the Court’s claim
construction.

Materia argues that Evonik now seeks to add a new

subjective meaning to the ligand L1 to include that it must be
useful in a metathesis catalyst.

The Court does not agree that

that Evonik claims are suddenly subjective.

Instead, Evonik is

bound by the objective definition of NHC as construed by the
Court.

Accordingly, summary judgment is denied on this claim.

F. Materia’s Motion for Summary Judgment of No Inequitable
Conduct as to the ‘590 Patent [D.I. 557] and Evonik’s
Motion to Strike [D.I. 618]

Inequitable conduct claims are governed by Federal Circuit
law.

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,
30

Dickinson and Co., 649 F.3d 1276, 1289 (Fed. Cir. 2011).

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 Federal Circuit 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.”
1289.

Id. at

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 to deceive and materiality.

Id. at 1287.

The Federal

Circuit rejected prior lower standards that permitted proof of
31

intent to deceive on findings of gross negligence or negligence,
or that permitted a reduced showing of intent if the record
contained a strong showing of materiality.

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.

Here, Evonik alleges in its counterclaim that Materia’s
‘590 Patent is unenforceable due to a failure to disclose
certain information related to an argument that the claimed
inventions were derived in violation of 35 U.S.C. § 102(f).8
Materia argues that Evonik’s counterclaim fails as a matter of
law because: (1) Evonik cannot satisfy the “but-for materiality”
requirement of Therasense because it cannot prove the ‘590
Patent was derived; (2) if Evonik does not rely on derivation,
the narrow exception for extraordinary cases where materiality
may be presumed does not apply because the exception does not

8

Previously, Materia moved to dismiss Evonik’s inequitable
conduct counterclaim. The Court denied Materia’s motion,
finding that Evonik’s inequitable conduct claim was sufficiently
pled in accordance with Fed. R. Civ. P. 9(b). [D.I. 389].
32

apply when the alleged inequitable conduct involves the
nondisclosure of information rather than “affirmative egregious
misconduct”; and (3) Evonik cannot satisfy the “specific intent
to deceive” requirement of Therasense because it cannot prove
that the individuals involved in the prosecution of ‘590 Patent
(a) knew that the information related to the purported
allegation of derivation was material, (b) made a deliberate
decision not to disclose that information, and (c) did so in
order to deceive the USPTO into granting on or more unwarranted
claims of the patent.
By way of background,9 the named inventors of the ‘590
Patent are Professor Steven Nolan and Dr. Jinkun Huang.

Between

1990 and 2006, Professor Nolan was employed by the University of
New Orleans.

Prior to discovering the inventions claimed in the

‘590 Patent, from 1996 (or 1997) to 1998 during a sabbatical,
Professor Nolan worked as a Visiting Associate in Chemistry at
the California Institute of Technology (“Caltech”) in the lab of
Professor Robert H. Grubbs.

While at Caltech, Professor Nolan

and others worked on metathesis catalytic reactions involving

9

At oral argument, Materia contended that it would be entitled
to summary judgment assuming all the following events occurred.
For purposes other than deciding this motion, the
characterization of events may be disputed.
33

ruthenium complexes.

Evonik contends that in 1998 Professor

Herrmann discovered the benefits of using NHCs as metathesis
ligands and authored a paper for the Journal of the American
Chemical Society (JACS).

Professor Grubbs peer-reviewed

Professor Herrmann’s paper, and the then-unpublished paper was
present in his office during Professor Nolan’s sabbatical.10
Evonik contends that while at Caltech, Professor Nolan read both
the Herrmann paper and the notebooks of researchers who were
working on metathesis in Grubbs’ lab without permission.11

Then,

when back at the University of New Orleans, Materia contends
Professor Nolan and Dr. Huang discovered the subject matter
contained in the ‘590 Patent.12

Evonik finds suspect that Dr.

Huang, the purported co-inventor of the ‘590 Patent, had not
signed his laboratory notebook for nine months, then curiously
signed his notebook and had it witnessed the first time he
prepared a metathesis catalysis using a NHC ligand, before he

10

When Grubbs reviewed Nolan’s paper for JACS he wrote to Nolan
and accused him of finding “something that was of potential
value.” Evonik argues Grubbs is referencing the Herrmann paper.
11

Evonik further notes that the idea for using NHCs as ligands
in metathesis was not found in Nolan’s idea books, in which he
routinely recorded all of his ideas.
12

Evonik contends that during this time Grubbs was unable to
research NHCs as ligands because he was reviewing Herrmann’s
paper which concerned the same subject.
34

knew whether the reaction would work.
On September 1, 1998, Professor Nolan and Dr. Huang
submitted a scientific paper to JACS.

On September 10, 1998,

Professor Nolan and Dr. Huang filed the Nolan ‘722 Provisional
Application entitled “Synthesis of an Olefin Metathesis Catalyst
Bearing a Carbene Ancillary Ligand.”
The parties agree Professor Grubbs was unhappy to learn
that Professor Nolan continued his work on olefin metathesis
without collaborating with him, and sent Professor Nolan an
email to this effect on November 11, 1998.

Materia’s Br. [D.I.

558], Ex. E. (Professor Grubbs stated: “collaborations do not
start and end at the whim of one side” and “when you found
something that was of potential value that was part of the theme
of the cooperation – you with held [sic] it from me and
established a secret and competative [sic] program.”).

The

parties disagree about the meaning of Grubbs’ sentiments.

While

Materia does not contest that Professor Grubbs was unhappy with
Professor’s Nolan’s actions, it argues Professor Grubbs never
believed Professor Nolan derived his invention either from the
laboratory notebook or the Herrmann paper Professor Grubbs had
in his office.

Indeed, Materia cites to Professor Grubbs

deposition testimony where he states that he never questioned
the inventorship of the ‘590 Patent.
35

Materia. Br. at 6-7

(citing Ex. F, Grubbs Dep. May 12, 2011 at 81:25-82:11; Ex. G,
Grubbs Dep. March 7, 2014 at 226:10-228:12).

Evonik, in turn,

highlights that Nolan had no experience in metathesis catalysts
prior to his visit to Caltech, yet used the NHC ligands, the
“breakthrough” described in the Herrmann paper.

Evonik contends

that the timing is suspect and Nolan’s knowledge of NHC ligands
came from the then-unpublished Herrmann paper.
In unrelated litigation in 2002, Caltech and Materia filed
a patent infringement action against Boulder Scientific Company
(“Boulder”) in the District of Colorado, California Institute of
Technology and Materia, Inc. v. Boulder Scientific Co., No. 02463 (D. Colo. 2002) (“the Boulder litigation”).

Caltech and

Materia alleged that Boulder infringed two of Professor Grubbs’
patents related to olefin metathesis catalysts.

In that action,

Boulder sought to retain Professor Nolan as an expert witness
but Caltech and Materia objected and filed a motion to prevent
the disclosure of litigation-related confidential information to
Professor Nolan because he was a competitor.

In support of its

motion, Materia submitted the Grubbs Declaration (and deposition
testimony) wherein Grubbs alludes to the fact that Nolan had
previously misused information he discovered in Grubbs’ lab.13

13

Grubbs later testified that Nolan did not misuse information
about NHCs, but “broad-based information” about metathesis.
36

This sentiment was later echoed by Materia in its Boulder
opposition.

Evonik Br. at 16 [D.I. 588] citing Ex. LL at 12

(“[Nolan’s] eager, unaccredited and undisclosed use of Caltech
technology in the very field at issue in this litigation
[metathesis catalysts] demonstrates that disclosure of Caltech’s
and Materia’s AEO [Attorney’s Eyes Only] information to Prof.
Nolan creates an unacceptable risk of its use and/or
disclosure[.]”).

Materia also submitted a Declaration from Dr.

Mark Trimmer, Materia’s Vice President, which stated that if
Nolan were permitted to be an expert he would learn Materia’s
trade secrets and because of Nolan’s overlapping research, any
patent application by Nolan would trigger his duty to disclose
Materia’s trade secrets to the USPTO.

Evonik contends that

Trimmer later breached the same duty of disclosure because
Materia eventually obtained rights in the Nolan application and
Trimmer became involved in its prosecution but did not disclose
to the USPTO his knowledge of the same Materia trade secrets he
previously cited to preclude Professor Nolan from testifying.
On June 3, 2005, the claims in the Nolan ‘869 Application
were found to be allowable but prosecution was suspended due to
potential interference with Grubbs’ patent applications.

Evonik Br. [D.I. 588] at 23 (citing Ex. X at 238:11-19).
37

On

September 30, 2015, Senior Administrative Patent Judge Fred E.
McKelvy of the USPTO Board of Patent Appeals and Interferences
declared two interferences between Nolan’s ‘869 Application and
Grubbs’ two patent applications, U.S. Pat. App. Nos. 09/576,370
and 10/124,745 (the ‘373 and ‘374 Interferences).

The Grubbs-

Nolan ‘373/’374 Interferences concerned whether Professor Nolan
conceived of the inventions claims in his ‘869 Application
(later the ‘590 Patent).

During the interference proceedings,

Professor Grubbs submitted a motion list which contemplated
bringing a motion to correct inventorship of the ‘869
Application and a derivation motion.
In the Grubbs-Nolan ‘373 Interference, the Board ruled in
Grubbs’ favor.

In the Grubbs-Nolan ‘374 Interference, the Board

found in favor of Grubbs on some counts and in favor of Nolan on
others.

Following the interference proceedings, prosecution of

the Nolan ‘869 Application resumed.
Following the Interferences, Mark Warzel was hired as an
in-house patent agent for Materia and was involved in the postinterference prosecution of the Nolan application on Materia’s
behalf.

Evonik argues that Warzel breached his duty to

thoroughly review the prosecution history.

If he had, Evonik

argues, he would have seen the list of preliminary motions that
Materia filed against the application he was now helping to
38

prosecute.
Evonik contends that for many years prior to the instant
lawsuit, Materia and Grubbs knew Nolan was not the inventor of
the ‘590 Patent, but denies this knowledge since it gained an
interest in the Nolan application.

Evonik’s inequitable conduct

allegations are based in part on the non-disclosure of
information to the USPTO during the post-interference
prosecution of the ‘590 Patent.

Specifically, Evonik notes that

the USPTO was not informed about: (1) the basis of the
contemplated derivation motion against Nolan; (2) the other
motions for unpatentability Materia contemplated; (3) Grubbs’
Boulder declaration; (4) Grubbs’ testimony regarding Nolan’s
actions in the Boulder litigation; (5) Trimmer’s Boulder
Declaration; (6) the trade secrets that Trimmer said would have
to be disclosed the USPTO based on the duty of disclosure; (7)
the motion Materia filed against Nolan in the Boulder
litigation; and (8) email communications between Grubbs and
Nolan.
Materia asserts that in order to meet the “specific intent
to defraud” element required by Therasense, Evonik must prove by
clear and convincing evidence that during the prosecution of the
‘590 Patent, Materia knew of information related to Professor
Grubbs alleged allegations of derivation against Professor
39

Nolan, knew that those allegations were material to the
patentability of the ‘590 Patent, and “made a deliberate
decision” to withhold the information with the specific intent
of deceiving the USPTO.
Materia additionally asserts that Evonik has failed to
prove that any information withheld from the USPTO was so
material that the USPTO would not have allowed one or more
claims to issue but-for its non-disclosure.

Further, Materia

argues that the narrow exception where proving but-for
materiality is not required does not apply because this is not a
case of affirmative egregious misconduct from which materiality
may be presumed.
The parties do not dispute that derivation is material.
The dispute is over whether the ‘590 Patent was derived.

In

order to establish derivation in support of a claim for patent
invalidity, an alleged infringer must prove “both prior
conception of the invention by another and communication of that
conception to the patentee.”

Creative Compounds, LLC v.

Starmark Labs., 651 F.3d 1303, 1313 (Fed. Cir. 2011) (citing
Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1334 (Fed.
Cir. 2003)).

“In the chemical arts, ‘[c]onception requires (1)

the idea of the structure of the chemical compound, and (2)
possession of an operative method of making it.’”
40

GlaxoSmithKline LLC v. Banner Pharmacaps, Inc., No. 11-046, 2013
WL 4082232, at *13 (D. Del. Aug. 9, 2013) aff'd, 744 F.3d 725
(Fed. Cir. 2014) (quoting Oka v. Youssefyeh, 849 F.2d 581, 583
(Fed. Cir. 1988)).
The Court will reserve its decision on whether Materia
engaged in inequitable conduct until the question of whether the
‘590 Patent was derived, or conceived by another, is resolved by
a jury.

Determining inventorship in this case is material to a

finding of inequitable conduct.

See also St. Clair Intellectual

Prop. Consultants, Inc. v. Acer, Inc., 961 F. Supp. 2d 610, 617
(D. Del. 2013) (question of fact as to inventorship precludes
inequitable conduct ruling).14

Once the jury advises the Court

whether Professor Nolan was the inventor of the ‘590 Patent, the
Court will be able decide whether Materia engaged in inequitable
conduct.

Accordingly, Materia’s motion for partial summary

judgment as to no inequitable conduct will be denied.

G. Materia’s Motion to Exclude Stephen Cooper from Offering
Testimony Regarding the “Miscellaneous” Issues

14

In light of the Court’s decision that Materia’s motion
for partial summary judgment raises questions of fact that must
first be resolved by a jury, Evonik’s motion to strike arguments
related to misappropriation from the Herrmann paper in Materia’s
Reply Brief will be denied as moot. These arguments do not
affect the Court’s analysis in any way.
41

Referenced in his Report or his Understanding of the
German Language [D.I. 577]
The Court turns now to Materia’s motion to exclude one of
Evonik’s experts, Dr. Stephen Cooper, because he does not meet
the requirements of Federal Rule of Evidence 702 or the standard
under Daubert v. Merrell Dow Pharma., 509 U.S. 579 (1993).15
Federal Rule of Evidence 702 governs the admissibility of expert
testimony. Rule 702 states:
If scientific, technical, or other specialized
knowledge will assist the trier of fact to
understand the evidence or to determine a fact
in issue, a witness qualified as an expert by
knowledge, skill, experience, training, or
education, may testify thereto in the form of
15

In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S.
579, 572 (1993), the Supreme Court analyzed Rule 702, and
instructed that a two-step analysis is to be used to assess the
admissibility of the proffered expert testimony on scientific
issues under Rule 702. The expert testimony must be reliable, so
that it must be “scientific,” meaning grounded in the methods
and procedures of science, and it must constitute “knowledge,”
meaning something more than subjective belief or unsupported
speculation. Daubert, 509 U.S. at 590. Guideposts that the court
may consider in assessing the reliability of the proffered
expert testimony include, but are not limited to: (1) whether
the expert's methodology has been tested or is capable of being
tested; (2) whether the technique has been subjected to peer
review and publication; (3) the known and potential error rate
of the methodology; and (4) whether the technique has been
generally accepted in the proper scientific community. Id. at
593–94; In re TMI Litig., 193 F.3d 613, 663–64 (3d Cir. 1999).
Ultimately, a court is required to act as a gatekeeper “to make
certain that an expert, whether basing testimony upon
professional studies or personal experience, employs in the
courtroom the practice of an expert in the relevant field.”
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999).
42

an opinion or otherwise, if (1) the testimony
is based upon sufficient facts or data, (2)
the testimony is the product of reliable
principles and methods, and (3) the witness
has applied the principles and methods
reliably to the facts of the case.
Fed. R. Evid. 702.
The three requirements outlined in Rule 702 are referred to
as: qualification, reliability and fit.

Calhoun v. Yamaha Motor

Corp., U.S.A., 350 F.3d 316, 321 (3d Cir. 2003) (citing
Schneider v. Fried, 320 F.3d 396, 405 (3d Cir.2003)).

The Third

Circuit explained the three requirements as follows:

First, the witness must be qualified to
testify as an expert. Qualification requires
that
the
witness
possess
specialized
expertise.
We
have
interpreted
this
requirement liberally, holding that a broad
range of knowledge, skills, and training
qualify an expert as such. Second, the
testimony must be reliable. In other words,
the expert's opinion must be based on the
methods and procedures of science rather than
on
subjective
belief
or
unsupported
speculation; the expert must have good grounds
for his or her belief. An assessment of the
reliability of scientific evidence under Rule
702 requires a determination as to its
scientific
validity.
Third,
the
expert
testimony must fit, meaning the expert's
testimony must be relevant for the purposes of
the case and must assist the trier of fact.
Id. (internal quotations and citations omitted).

43

Here, Materia seeks to bar Evonik’s technical expert, Dr.
Stephen R. Cooper, from offering any opinions on translation,
grammatical usage or interpretation of the German language,
specifically as it relates to Evonik’s German and international
patent applications, both of which are written in German.
Materia additionally seeks to bar Dr. Cooper from offering
testimony on the “miscellaneous” issues at the end of his expert
report because they fail to meet the requirements of Fed. R.
Civ. P. 26.
The Third Circuit instructs that the qualification
requirement should be interpreted liberally, and that “a broad
range of knowledge, skills, and training qualify an expert as
such.”

Calhoun, 350 F.3d at 321 (citing In re Paoli R.R. Yard

PCB Litig., 35 F.3d 717, 741 (3d Cir. 1994) (“Paoli II”));
Thomas & Betts Corp. v. Richards Mfg. Co., 342 Fed. App’x 754,
760–61 (3d Cir. 2009); Holbrook v. Lykes Bros. S.S. Co., 80 F.3d
777, 782 (3d Cir. 1996) (finding it “an abuse of discretion to
exclude testimony simply because the trial court does not deem
the proposed expert to be the best qualified or because the
proposed expert does not have the specialization that the court
considers most appropriate.”).
As to Materia’s argument that Dr. Cooper should not be

44

permitted to testify about the German language, this appears to
be a qualification argument.

Evonik argues that Dr. Cooper is

not being called as a translator or German language expert at
trial, but will only opine on how he understood the German words
in the original German priority application.

Dr. Cooper

explained that his understanding of the German words affected
his understanding of the meaning of “form” a ring.

The Court

finds that Dr. Cooper should be able to testify about his
understanding of the German patent application.

As the Court

sees it, Dr. Cooper will not be testifying as a German expert,
but about his own understanding of the original German priority
application.

If necessary, the Court will provide the jury a

limiting instruction to this effect.

Accordingly, Materia’s

motion to bar Dr. Cooper from testifying about the German
language will be denied.
Materia takes issue with Dr. Cooper’s “miscellaneous”
opinions regarding: (1) the importance of a scientist’s
reputation in the academic community; (2) what was publically
known in the field of metathesis catalysts during Professor
Nolan’s sabbatical at Caltech; (3) the duties of reviewers of
scientific papers, when they are published, and how laboratory
notebook are maintained; (4) Dr. Huang’s research notebook as
evidence of Nolan’s alleged derivation of the ‘590 Patent and on
45

the student theses of Professor Grubbs’ former students to prove
Materia’s pattern of misconduct.

Materia argues that because

Dr. Cooper does not describe in depth his anticipated opinions
and what facts or data he considered, his opinions run afoul of
Fed. R. Civ. P. 26(a)(2)(B).16
The Court admonishes Evonik for failing to comply with the
letter of Rule 26.

However, under the circumstances of this

case and given the extensive discovery, motion practice and
depositions, the Court is confident of the parties’ joint
knowledge of the operative factual and legal questions

16

The Rule states:
Witnesses Who Must Provide a Written Report. Unless
otherwise stipulated or ordered by the court, this
disclosure must be accompanied by a written report-prepared and signed by the witness--if the witness is
one retained or specially employed to provide expert
testimony in the case or one whose duties as the
party's employee regularly involve giving expert
testimony. The report must contain: (i) a complete
statement of all opinions the witness will express and
the basis and reasons for them; (ii) the facts or data
considered by the witness in forming them; (iii) any
exhibits that will be used to summarize or support
them; (iv) the witness's qualifications, including a
list of all publications authored in the previous 10
years; (v) a list of all other cases in which, during
the previous 4 years, the witness testified as an
expert at trial or by deposition; and (vi) a statement
of the compensation to be paid for the study and
testimony in the case.

Fed. R. Civ. P. 26(a)(2)(B).
46

underlying Dr. Cooper’s miscellaneous opinions, thus complying
with the spirit of the Rule.

Here, the opinions underlying Dr.

Cooper’s report are known to Materia, and no prejudice is
apparent.

To the extent it can be fairly said that the Court is

granting Evonik some leeway, it should not be used as an open
door to add wholly new and unsupported opinions not referenced
in Dr. Cooper’s report at trial.

Materia’s motion will be

denied, subject to the parameters set forth by the Court.

V. CONCLUSION
For all the foregoing reasons, Evonik’s Motion for Partial
Summary Judgment that Evonik Does Not Infringe the ‘590 Patent
will be granted.

Materia’s Motion for Partial Summary Judgment

on the Invalidity of the ‘528 and ‘145 Patents Due to Lack of
Description of “Form a Ring” will be denied.

Materia’s Motion

for Partial Summary Judgment of Invalidity Due to Lack of
Written Description as to Claims 8-22 of the ‘528 Patent will be
denied.

Materia’s Motion for Partial Summary Judgment of

Invalidity Due to Non-Enablement as to Claims 8-11 of the ‘528
Patent will be denied.

Materia’s Motion for Partial Summary

Judgment of Invalidity Due to Indefiniteness as to Claims 8-11
of the ‘528 Patent will be denied.

Materia’s Motion for Summary

Judgment of No Inequitable Conduct as to the ‘590 Patent and
47

Evonik’s Motion to Strike will be denied.

Materia’s Motion to

Exclude Stephen Cooper from Offering Testimony Regarding the
“Miscellaneous” Issues Referenced in his Report or his
Understanding of the German Language will be denied.

Materia’s

Motion to Exclude Cameron K. Weiffenbach from Offering Opinions
Regarding Patent Practice and Procedure will be denied.
Opinion will be filed under seal.

This

The parties shall submit for

the Court’s review a proposed redacted version of this Opinion
no later than January 29, 2016, and the Court will subsequently
release a public version of its Opinion.
An appropriate Order follows.

s/ Noel L. Hillman
NOEL L. HILLMAN, U.S.D.J.

At Camden, New Jersey
Dated:

December 21, 2015

48