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Gmbh v. Materia, Inc.

United States District Court, D. Delaware

August 9, 2017

MATERIA, INC., Defendant.

          REED SMITH LLP By: Eric J. Evain, Esq. Rudolph E. Hutz, Esq. R. Eric Hutz, Esq. Counsel for Plaintiff

          MORRIS, NICHOLS, ARSHT & TUNNELL LLP By: Jack B. Blumenfeld, Esq. Thomas C. Grimm, Esq. NIXON PEABODY LLP By: Jason C. Kravitz, Esq. Gina M. McCreadie, Esq. J.A. LINDEMAN & CO., PLLC By: Aaron M. Raphael, Esq. David R. Lipson, Esq. 319 Counsel for Defendant


          NOEL L. HILLMAN, U.S.D.J.

         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.


         The parties' arguments concerning the indefiniteness of Claims 8-10 have remained rather constant throughout this litigation.[1] The Court observed in its Markman opinion, “[i]n its simplest form, Evonik's argument is that the term N-heterocyclic 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 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, 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.


         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. 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 Robotic Vision Sys., Inc. v. View Eng'g, Inc., 189 F.3d 1370, 1377 (Fed.Cir. 1999)).


         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.”
Q. There's no objective dividing line, it would be a matter of judgment, ...

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