United States District Court, D. Delaware
NOEL L. HILLMAN, District Judge. 
This is a patent infringement action. Before the Court is a motion for partial summary judgment filed by Plaintiff Evonik Degussa GmbH ("Evonik"). Evonik argues that defendant Materia, Inc. ("Materia") is precluded from raising claims or defenses in this litigation that were decided in a previous patent Interference proceeding before the United States Patent and Trademark Office. For the reasons that follow, Evonik's motion will be granted in part and denied in part.
This Court exercises subject matter jurisdiction pursuant to 28 U.S.C. § 1331, federal question jurisdiction, and 28 U.S.C. § 1338(a), federal jurisdiction for matters arising under federal patent law.
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 here only those facts relevant to the present motion for partial summary judgment.
There are three patents at issue in this matter: (1) U.S. Patent No. 7, 378, 528 ("'528 Patent"); (2) U.S. Patent No. 7, 652, 145 ("'145 Patent"); and (3) U.S. Patent No. 7, 622, 590 ("'590 Patent"). Evonik's motion concerns only the '145 and '528 Patents. The '145 Patent was issued to Wolfgang Anton Herrmann, Wolfgang Schattenmann, and Thomas Weskampp on January 26, 2010, and assigned to Evonik. The '528 Patent was also issued to Herrmann, Schattenmann, and Weskampp on May 27, 2008, and subsequently assigned to Evonik.
B. The Subject Matter
The subject matter of the patents at issue in this infringement proceeding is directed toward (1) compounds that serve as catalysts in olefin methathesis as well as (2) the reaction process to prepare olefins itself. Olefins are chemical compounds containing at least one double bond connecting carbon atoms. Metathesis reactions, also known as double deplacement reactions, occur where two chemical compounds react resulting in an exchange of bonding partners. Thus, "[o]lefin metathesis involves the formal exchange of the carbene (divalent carbon, or R2 C) groups between two olefins." Olefins are used in many areas of chemistry, ranging from polymerization reactions to natural product synthesis.
C. Procedural History
Evonik brought an 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. Following the consolidation, and in response to 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 the University of New Orleans Foundation 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. Following the issuance of the Markman Opinion, third-parties University of New Orleans Foundation and the University of New Orleans Research and Technology Foundation 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.
Evonik then filed the instant motion for partial summary judgment against Materia based on issue preclusion and claim preclusion concerning the '145 and '528 Patents.
III. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate where the Court is 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.'" Marino v. Indus. Crating Co. , 358 F.3d 241, 247 (3d Cir. 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 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. Celotex , 477 U.S. at 324. 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. 2001) (internal quotations omitted). For "the non-moving party[ ] to prevail, [that party] must make a showing sufficient to 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.
In its motion for partial summary judgment, Evonik argues that Materia should be precluded under theories of issue preclusion and claim preclusion from re-litigating issues and asserting claims that were previously litigated before the United States Patent and Trademark Office ("USPTO") Board of Patent Appeals and Interferences (hereinafter collectively referred to as the "Board"). Specifically, Evonik contends that Materia is barred from reasserting that Evonik's patents are not entitled to the benefit of the filing date of its German Application date for priority purposes. Evonik additionally seeks to preclude Materia from re-litigating its challenge to the patentability of Evonik's claims based on 35 U.S.C. § 112 (enablement and written description). Finally, Evonik argues that Materia is precluded from raising new invalidity claims pursuant to 35 U.S.C. §§ 102 and 103 since it chose not to raise these arguments in the Interference proceeding out of self-interest. The Court will consider the nature of the Interference proceedings, applicability of issue and claim preclusion, and then address whether issue preclusion or claim preclusion bars Materia's claims concerning either priority or validity.
A. Interference Proceeding
Interference proceedings occur in situations where the grant of a patent for a patent application under examination by the USPTO "would interfere with any pending application, or with any unexpired patent" because the claims are for "the same or substantially the same subject matter." 35 U.S.C. § 135 (2006); see Human Genome Sciences, Inc. v. Amgen, Inc. , 553 F.Supp.2d 353, 355 (D. Del. 2008) aff'd, No. 07-526SLR-MPT, 2008 WL 5245979 (D. Del. Dec. 16, 2008) ("An interference is an inter partes administrative proceeding to determine which party first invented the subject matter of the interference as defined by the interference count.'"). In an interference proceeding, the Board creates one or more counts to identify subject matter that is common to both the pending patent application and the issued patent or patent application with which it is claimed to interfere. See Creative Compounds, LLC v. Starmark Labs. , 651 F.3d 1303, 1310 (Fed. Cir. 2011). The Board "shall determine questions of priority of the inventions and may determine questions of patentability." 35 U.S.C. § 135 (2006); see Gen. Instrument Corp., Inc. v. Scientific-Atlanta, Inc. , 995 F.2d 209, 210 (Fed. Cir. 1993) (discussing Board decisions in interference proceedings in the context of both priority of invention and patentability).
At the time the parties engaged in the Interference proceeding, patent interference procedures were governed by 37 C.F.R. § 41.100-41.208 (2006). The Federal Rules of Evidence generally apply to interference proceedings. 37 C.F.R. § 41.152 (2006). Furthermore, there is opportunity for limited discovery. 37 C.F.R. § 41.150 (2006). Exhibits, including affidavits, deposition transcripts, documents, and objects may be submitted into evidence. 37 C.F.R. § 41.154 ...