In a recent order, Judge Noel L. Hillman, sitting by designation, ruled on one of defendant Materia’s motions in limine in this long-running litigation. Materia moved to “preclude Evonik from referencing or offering any evidence relating to [a] covenant not to sue or claims already dismissed.” Evonik Degussa GMBH v. Materia, Inc., C.A. No. 09-636 (NLH-JS), Order at 1 (D. Del. Jan. 12, 2017). Judge Hillman denied the motion to the extent it was an attempt to “preclude Evonik from referring to Materia as an infringer of the 50 Materia products addressed in the Court’s summary judgment opinion.” Id. Judge Hillman also found than the motion was partially moot because Evonik had proffered that it would not disclose the covenant not to sue at issue or the Court’s dismissal of a counterclaim based on it, or the fact that inequitable conduct claims and invalidity counterclaims had been dismissed by the parties. Id. However, Judge Hillman granted the motion in limine in part by ordering that “Evonik is barred from introducing in its case-in-chief any evidence regarding [the patent that was the subject of the covenant not to sue] and its assertion and adjudication in this case to support an argument that Materia asserts highly questionable patents against competitors as a tool to compete in the metathesis catalyst industry. However . . . Evonik may seek leave of Court to use such evidence on cross-examination, or any rebuttal case, to demonstrate a witness’s prior inconsistent statement or to assess a witness’s credibility. Stated differently, Evonik may use such evidence as a shield but not a sword.” Id. at 1-2.
Evonik Degussa GMBH v. Materia, Inc., C.A. No. 09-636 (NLH-JS) (D. Del. Jan. 12, 2017).