Jury backs Evonik in dispute over olefin metathesis patent

A federal jury has ordered technology and catalyst firm Materia to pay Evonik Industries royalties of more than $1.5 million in a dispute over the ownership of a key patent covering ruthenium-based olefin metathesis catalysts used to make plastics and specialty oleochemicals.

However, the jury also decided that Materia had not willfully or maliciously violated the Evonik patent. It did not assess punitive damages.

The Delaware jury’s decision may end a seven-year-old dispute covering academic patents licensed to Materia based on discoveries by Robert H. Grubbs of Caltech and other scientists. Grubbs, along with Yves Chauvin and Richard R. Schrock, shared the 2005 Nobel Prize in Chemistry for their role in the discovery of olefin metathesis.

According to Evonik, an earlier ruling by the judge hearing the case denied the validity of Materia’s opposing patent. “A significant number of Materia’s metathesis catalysts and some products they make with them are now covered by our patent,” an Evonik spokesman says. “They will need to take a license and pay royalties in the future.”

But Materia says the dispute isn’t over. “There are issues remaining that could reverse the decision,” says J.J. Dupré, the firm’s legal affairs director. Materia’s patents, he says, remain in force, and the legal tussle will have little effect on the firm’s ability to service clients’ catalyst needs.

The situation is different in Europe, where the European Patent Office revoked Evonik’s European ruthenium catalyst patent in 2012 because it lacked an inventive step. Thus Evonik cannot force Materia to pay a license on catalysts it might make in Europe.

C&EN was unable to talk with Grubbs by press time, but the chemist earlier said the dispute is not so much about science as it is about a large company oppressing a smaller one. The science “had been presented in the open literature and settled,” he said.