Evonik Degussa GmbH v. Materia Inc.

Filing 969

OPINION. Signed by Judge Noel L. Hillman on 8/9/2017. (fms)

UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE

EVONIK DEGUSSA GMBH,
Plaintiff,
v.
MATERIA, INC.,
Defendant.

APPEARANCES:
REED SMITH LLP
By: Eric J. Evain, Esq.
Rudolph E. Hutz, Esq.
R. Eric Hutz, Esq.
1201 Market Street, Suite 1500
Wilmington, Delaware 19801
Counsel for Plaintiff
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
By: Jack B. Blumenfeld, Esq.
Thomas C. Grimm, Esq.
1201 N. Market Street
P.O. Box 1347
Wilmington, Delaware 19899
and
NIXON PEABODY LLP
By: Jason C. Kravitz, Esq.
Gina M. McCreadie, Esq.
Leslie Hartford, Esq.
100 Summer Street
Boston, Massachusetts 02110

Civ. No. 09-636 (NLH/JS)
OPINION

and
J.A. LINDEMAN & CO., PLLC
By: Aaron M. Raphael, Esq.
David R. Lipson, Esq.
3190 Fairview Park Drive, Suite 480
Falls Church, Virginia 22042
Counsel for Defendant

HILLMAN, District Judge:
Presently before the Court is Defendant Materia’s remaining
invalidity counterclaim: the asserted indefiniteness of claims
8-10 of Plaintiff Evonik’s ‘528 patent.

In January, 2017, the

Court held a jury trial on the issues of lack of enablement,
lack of an adequate written description, willfulness of
Materia’s infringement, and damages.

The jury found for Evonik

on both invalidity counterclaims, and awarded damages to Evonik
for Materia’s infringement of the ‘528 patent, but found for
Materia on the issue of the willfulness of that infringement.
The parties have now filed post-trial briefs on indefiniteness.
The Court construes the briefs as cross-motions for summary
judgment on this issue of law.

The Court heard oral argument on

on June 20, 2017.
I.
The parties’ arguments concerning the indefiniteness of
Claims 8-10 have remained rather constant throughout this

2

litigation. 1

The Court observed in its Markman opinion, “[i]n

its simplest form, Evonik’s argument is that the term Nheterocyclic carbene as utilized in Claim 8 of the patent is a
broad term that includes more chemical structures than just
those depicted in Formulae II-V.” (Docket entry # 434, p. 17)
“Defendants, on the other hand, allege that Plaintiff’s
proffered definition is boundless.” (Id. at p. 19)

The Court

ultimately adopted Evonik’s proposed construction, thereby
setting the stage for Materia’s subsequent indefiniteness
argument at summary judgment.
Indeed, at summary judgment, Materia argued
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
[Evonik]
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.” Materia argues that in
this admission Evonik “essentially concedes” that its
claims are indefinite.
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
1

In light of the length of this litigation, and the present
procedural posture of this case, the Court writes primarily for
the parties. Familiarity with the underlying patented
technology, the case’s procedural history, and the Court’s
previous opinions is presumed.
3

not know
Evonik’s
atom is
nitrogen

whether “acyclic carbenes” are NHC’s because
definition does not state whether the carbene
present in the ring containing at least one
atom.

Evonik, 2015 U.S. Dist. LEXIS 175296 a *27-29.
Evonik responded,
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.
Id. at *29.
The Court rejected Materia’s argument, concluding that
Nautilus, and the Federal Circuit’s post-Nautilus decision in
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir.
2014), were distinguishable from this case.

The Court held,

“[t]he Court does not agree that Evonik’s claims are suddenly
subjective.

Instead, Evonik is bound by the objective

definition of NHC as construed by the Court.

Accordingly,

[Materia’s motion for] summary judgment is denied.” Id. at *30.
II.
The Court applies the basic summary judgment standard set
forth in its previous opinion addressing Materia’s Motion for
Partial Summary Judgment of Invalidity Due to Indefiniteness as
to Claims 8-11 of the ‘528 Patent. See Evonik Degussa GmbH v.

4

Materia Inc., 2015 U.S. Dist. LEXIS 175296 at *6-8 (D. Del. Dec.
21, 2015). 2

Indefiniteness must be proven by clear and

convincing evidence.

Talecris Biotherapeutics, Inc. v. Baxter

Int'l Inc., 510 F. Supp. 2d 356, 358 (D. Del. 2007)(citing

2

In supplemental briefing invited by the Court, Materia asserts
that its application should be construed as a motion for
findings of fact and conclusions of law pursuant to Fed. R. Civ.
P. 52. Evonik contends that summary judgment is the correct
procedural mechanism for deciding indefiniteness.
The Court concludes that summary judgment is most
appropriate. The parties agree that indefiniteness is an issue
of law. Simply stated, there are no facts for this Court to
find. Testimony of the parties’ experts is helpful to the Court
in informing its legal analysis, but the Court’s decision is not
based on any “evidence” other than the language of the “claims .
. . read in light of the patent’s specification and prosecution
history.” Nautilus, 134 S. Ct. at 2128.
Materia states that it “is unable to find any rule or
precedent that would allow a court to decide an issue on summary
judgment after a full trial on the merits has occurred.” (Docket
#961, p. 2) In the Court’s view, however, the authority is in
the summary judgment rule itself, which states that a motion for
summary judgment can be brought at any time if “the court
orders.” Fed. R. Civ. P. 56(b). Cf., Talecris Biotherapeutics,
Inc. v. Baxter Int'l Inc., 510 F. Supp. 2d 356, 358 (D. Del.
2007)(granting summary judgment sua sponte, on the issue of
indefiniteness).
Of course summary judgment is very often a pretrial
procedure, as the cases Materia cites demonstrate. Indeed,
perhaps it necessarily must be a pretrial procedure when the
issue is whether there are disputed issues of material fact.
But that is never the issue when the Court considers
indefiniteness-- whether decided pre-trial or post-trial. The
issue is whether Claims 8-10 are indefinite “as a matter of
law.” Fed. R. Civ. 56(a). Thus, the Court concludes that
summary judgment is the most appropriate procedural vehicle for
deciding the issue presently before the Court. In the
alternative, we consider Materia’s motion as one for reargument
under Delaware local rule 7.1.5 of our December 21, 2015 summary
judgment opinion, a motion we would deem as timely filed.
5

Robotic Vision Sys., Inc. v. View Eng'g, Inc., 189 F.3d 1370,
1377 (Fed.Cir. 1999)).
III.
Now, post-trial, Materia again argues that “the scope of
Claims 8-10 is not defined with reasonable certainty” because
“there is no objective dividing line with respect to how and
when the POSITA would have contemplated a particular chemical
structure as being potentially useful in a metathesis catalyst
in 1998.” (Moving Brief, p. 8)

According to Materia, Evonik’s

own expert, Dr. Cooper, even says so.

At trial, Dr. Cooper

testified, 3
Q. You can’t tell the jury what objective criteria a
person of skill in the art should apply to arrive at the
universe of contemplated NHCs, can you?
A. I'm not limiting it to contemplated NHCs. All of the
NHCs that are, by definition, the court’s definition,
fall within the scope of claim eight. Some of them are
more productive than others, that’s all.
. . . .
MR. KRAVITZ: I’m showing the witness page 224 from
his 2014 deposition.
BY MR. KRAVITZ: Q. Dr. Cooper, if you could please read
that question and answer to the jury.
A. Okay. Question: “What is the dividing line between
the two?” Answer. “Well, there’s no objective dividing
line. It would be a matter of judgment.”

3

Among other things, Dr. Cooper testified as to issues relevant
to Materia’s counterclaims / defenses of lack of enablement and
lack of an adequate written description.
6

Q. There’s no objective dividing line, it would be a
matter of judgment, right, Dr. Cooper?
A. Yes.
Q. If it’s not an objective dividing line and it’s a
matter of judgment, is it not subjective?
A. Well, that’s referring to which [NHCs] would be most
useful.
Q. Which ones would be contemplated, in other words, as
you described in your deposition?
A. Yes.

That’s a matter of judgment.

Q. So whether or not something is a contemplated NHC
would be a matter of judgment, right?
A. Yes.
. . . .
Q. . . . Where is the line that the person of skill in
the art is going to draw to determine which are the ones
that are most likely to be useful and which ones are
not?
A. Well, I think that many of the, in fact, almost all
of the RFAs [NHCs] that were drawn would be virtually
impossible to synthesize. I think many of them would be
difficult to synthesize and not be particularly useful,
and so they would be drawn to inoperative embodiments of
the invention.
Q. And so you get to disregard them, right?
A. No.
As I said, I didn’t disregard them. I didn’t
think of them in the first place.
Q. Now that you’re thinking of them, you’re disregarding
them, aren’t you?
A. I view them as a bit on the silly side, frankly.
Q. Okay. So you’re not considering them to be in your
universe of contemplated NHCs, right?
7

. . .
A. Well, I consider them within the scope of claim eight
because I think that’s certainly true. I don’t think
that they would be something that somebody trying to
practice the invention would be interested in pursuing.
Q. So they’re not contemplated, correct?
A. I did not contemplate them, no.
Q. Did the person of skill in the art contemplate those
in 1998?
A. Would someone of skill in the art have contemplated
them then? I don’t think so.
Q. But you don’t know, do you?
A. No, of course not.
Q. Because that requires subjective judgment to make
that determination, right?
A. Well, it’s a matter of judgment, yes.
Q. And just so I’m clear, Dr. Cooper, what happens when
there is a dispute between two eminently qualified
chemists about whether or not a particular ligand
structure would have been contemplated back in 1998 or
not?
A. It’s a matter of debate.
Q. And a matter of subjective judgment?
A. A matter of opinion I would say.
. . . .
Q. So at what point does that person have the right to
give up and decide that that’s not a contemplated ligand?
A. Well, I can’t give you a number for this. It’s a
matter of when you decide that I don’t think this is

8

going to work.
That’s
personal judgment.

almost,

that’s

a

matter

of

Q. There’s no objective dividing line, is there?
A. There’s no objective dividing line in doing any
chemical research of that type because some people have
magic hands that can make reactions work and they’re
really good at it, and other people cannot. And it’s
very common.
(Trial Transcript, p. 2533-34; 2544-46; 2549-50)
In opposition, Evonik again argues that the Court has
already (perhaps implicitly) decided that Claims 8-10 are not
indefinite-- either during claim construction, or at summary
judgment, or both. 4
Alternatively, Evonik argues that a POSITA would use his or
her scientific training and professional experience to determine
which NHCs might work, thereby rendering Claims 8-10 definite:
Q. So when you say they were not something someone would
think to practice, what do you mean by that?
A. Well, I mean if somebody’s trying to practice the
invention, they’re trying to maximize the chance of
success, they’re not trying to find something that won’t
work. Within the scope of the broad patent claims there
are invariably some embodiments, some manifestations
that won’t work. And if you lay awake at nights you can
think of some of those and come up with them. But if
you’re actually trying to practice the invention, you’re
doing just the opposite. You’re trying to figure out
what is most likely to work and how you can achieve your
result, not how you can frustrate your result.

4

At oral argument, Materia’s counsel stated, “typically
indefiniteness or definiteness is a concept that’s addressed at
the claim construction stage. It’s the flip side of claim
construction.” (June 20, 2017 Transcript, p. 16-17)
9

(Id. at p. 2500)
To the extent this issue remains undetermined by the Court
after the pre-trial motions for summary judgment, we now
expressly hold that Claims 8-10 of the ‘528 patent are not
indefinite.

Materia’s indefiniteness argument assumes a more

exacting legal standard than Nautilus requires. “[A]bsolute or
mathematical precision [of claim language] is not required.”
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.
Cir. 2014).

Rather, the certainty necessary for definiteness is

only that which is reasonable under the unique circumstances of
the case and relevant industry or scientific discipline.
Accordingly, reasonable certainly may be defined by how a POSITA
would approach making and using the claimed invention.

See

Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437
(1902)(any description sufficient to apprise industry
practitioner of the definite feature of the invention and serve
as adequate warning to others will sustain the patent).
Here, the Court finds that the claim language at issue
“provide[s] enough certainty to one of skill in the art when
read in the context of the invention.” Interval Licensing LLC v.
AOL, Inc., 766 at 1370.

First, Nautilus and Interval Licensing

which struggled with the inherent limitations of language and
the vagaries of generalized subjective phrases (“spaced
relationship” in Nautilus; “unobtrusive manner” in Interval
10

Licensing), the Court’s claim construction leaves no doubt as to
the meaning of NHC.

From that starting point, Dr. Cooper’s

testimony, which focuses on and explains how a POSITA would read
and practice the patent, supports the conclusion that, within
that well-defined and clear category, a POSITA would know
instinctively and by training what would and would not work.
While Nautilus rejected the overlying broad and amorphous
concepts of “not amenable to construction” or “insolubly
ambiguous”, the Court confirmed its earlier precedents that if
the patent as a whole is clear enough that a POSITA could
practice the claimed invention, § 112 is satisfied. See Eibel
Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 58
(finding definite patent for improvement for paper-making
machine where reader skilled in the art of paper making could
define the meaning of “substantial elevation” in actual use of
the machine).
To the extent that Dr. Cooper acknowledges some degree of
uncertainty 5 as to which NHCs might be more amenable to

5

We recognize that Professor Jacobsen, Materia’s expert, opines
in contrast that no objective basis exists to determine which
NHC a POSITA would or would not have contemplated for use in a
metathesis catalyst in 1998. We find Professor Cooper’s
ultimate opinion that a POSITA would use his or her informed
judgment in making that cut to be more persuasive and more than
sufficient to establish the “reasonable certainty” Nautilus
requires. In that regard, Materia has failed to meet its burden
of clear and convincing evidence of indefiniteness. We note
here, that while indefiniteness is a legal question for this
11

successful application, we view his testimony as more of an
honest assessment of the challenges of the scientific method and
lab work in general than the type of subjectivity barred by
Nautilus.

Just because something is difficult hard and may not

work for every POSITA every time is a practical reality across
many scientific endeavors.

We do not read Nautilus as to

invalidate a patent for an inventor who solves a challenging
problem.

Difficulty in application is not uncertainty in

description or concept.

Nautilus 6 and § 112 prohibit only the

latter. 7

Court, the jury heard both experts and the other evidence on the
issue of non-enablement and lack of written description and
found Professor Jacobsen’s related testimony on those issues to
be unpersuasive. While not binding on this court, the jury
determination that the metes and bounds of the invention were
sufficiently clear and that the invention was sufficiently
enabled without undue experimentation is consistent with our
determination the claims did not suffer from indefiniteness.
6

We note here that on remand the Federal Circuit in Nautilus
determined that a skilled artisan would have understood how to
gauge the “spaced relationship” described in the patent in suit
in that case. There, as here, a POSITA would understand the
“inherent parameters” of the invention. Biosig Instruments, Inc.
v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir.), cert. denied, 136
S. Ct. 569, 193 L. Ed. 2d 431 (2015).
7

The Nautilus Court was clearly concerned that the Federal
Circuit’s “amenable to construction” and “insolubly ambiguous”
standards would stifle innovation. Imprecision that creates “a
zone of uncertainty” would discourage “enterprise and
experimentation” by anyone reasonably adverse to the risk of an
infringement action. Nautilus, 134 S.Ct. at 2129 (quoting United
Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942)).
But an interpretation of Nautilus that creates too exacting a
standard for definitiveness also presents a risk of
12

Accordingly, Materia’s Motion for Summary Judgment will be
denied, and Evonik’s Cross-Motion for Summary Judgment will be
granted.
IV.
For the reasons set forth above, the Court concludes that
Claims 8-10 of the ‘528 patent are not indefinite.

Summary

judgment will be granted to Evonik on Materia’s counterclaim of
invalidity due to indefiniteness.
accompanies this Opinion.

An appropriate order

Further, as all remaining defenses to

infringement of the ‘528 patent have now been adjudicated, the
Court will enter Judgment on the jury’s verdict.

Dated: August 9, 2017
At Camden, New Jersey

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

disincentive. See Nautilus, 134 S.Ct. at 2128 (some modicum of
uncertainty is the “price of insuring the appropriate incentives
for innovation[]”)(quoting Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 732 (2002)). Between those twin
evils of the pendulum swing lies the anchor of the POSITA.
Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437
(1902)(patents addressed not to the public but those skilled in
the art). Here, Dr. Cooper’s testimony makes clear that a
POSITA would approach claims 8-10 of the ‘528 patent with a view
toward ignoring those formulations that would not work and
adopting those that would.
13