United States District Court, D. Delaware
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. and NIXON PEABODY LLP
By: Jason C. Kravitz, Esq. Gina M. McCreadie, Esq. Leslie
Hartford, Esq. and J.A. LINDEMAN & CO., PLLC By: Aaron M.
Raphael, Esq. David R. Lipson, Esq. Counsel for Defendant
L. HILLMAN, U.S.D.J.
before the Court is Plaintiff Evonik's post-trial Motion
for a Permanent Injunction. At trial, the jury awarded Evonik
money damages for Defendant Materia's pre-verdict
infringement of the ‘528 patent through September 30,
now seeks entry of a permanent injunction against
Materia's continued infringement of the ‘528
Court heard oral argument on the motion on June 20, 2017. For
the reasons stated herein, the motion will be granted.
Court finds the following facts based on the evidence
admitted at trial, Materia's Declaration of Mark Trimmer
filed in opposition to Evonik's instant motion, and other
undisputed or stipulated facts. See Fed. R. Civ. P.
undisputedly owns the ‘528 patent, and commercially
sells metathesis catalysts covered by that patent. (Trial
Transcript, hereafter “TT”, p. 290, 294) Materia
also sells metathesis catalysts, and is one of Evonik's
competitors in that market. (TT p. 305-06, 1374) Indeed, as
Materia elicited from Evonik's witness on
cross-examination, Materia is Evonik's “primary
competitor for olefin metathesis catalysts.” (TT p.
310) Both companies sell their metathesis catalysts primarily
to clients in the pharmaceutical, oleochemical, fine
chemical, and polymer industries. (TT p. 295, 1366-67)
business plan has never included licensing the patented
technology to its competitors. (TT p. 305) Even further,
Evonik has granted a license to practice the ‘528
patent only once. (TT p. 305) That license was not granted to
a competitor, but rather to a customer (TT p. 305), and it
was granted in connection with the settlement of this lawsuit
with one of Materia's co-defendants.
is much larger than Materia. Evonik is a multi-billion Euro
company, with 30 sites in the United States, and 200 sites
worldwide. (TT p. 278-80) Materia has only two locations: a
headquarters in California and a manufacturing facility in
Texas. (TT p. 1365)
has not made a profit during any of the years from 2008
through September 2016. (PTX1571.0023; see also TT p. 1370,
“Q: Is Materia profitable? A: No we're not.”)
However, Mark Trimmer, Materia's Vice President and Chief
Technology Officer, states in his declaration, “Materia
has sufficient funds to cover the damages awarded by the jury
in the amount of $1, 550, 916.95 and further royalty based on
the jury's 5.5% reasonable royalty rate . . . along with
any pre-judgment interest, if awarded, as well as a reasonable
ongoing royalty to practice Claims 8-10 of the ‘528
Patent through the two-year remaining life of that
patent.” (Trimmer Decl. ¶ 5) Trimmer also
testified that Materia's revenues in 2015 and 2016 were
“a little over 28 million” dollars. (TT p.
further states that Materia sells at least one other type of
catalyst-- the Grubbs I catalysts-- which undisputedly are
not covered by the ‘528 patent. (Trimmer Decl. ¶
3) However, Materia sells “far more” Grubbs II