DCT

1:22-cv-12232

Umicore Precious Metals Chemistry USA LLC v. Trustees Of Boston College

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-12232, D. Mass., 12/30/2022
  • Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because the defendant, Boston College, has its principal place of business in the district.
  • Core Dispute: Plaintiff, an exclusive licensee of certain Boston College patent rights, seeks a declaratory judgment that its exclusive license also covers a later-issued patent, which the defendant licensor has allegedly licensed to third parties.
  • Technical Context: The dispute concerns patents related to ruthenium-based catalysts used for olefin metathesis, a chemical reaction critical for synthesizing complex molecules in the pharmaceutical, chemical, and materials industries.
  • Key Procedural History: The plaintiff, Umicore, acquired a patent license agreement from Materia, Inc. in late 2017. The complaint alleges that after the defendant, Boston College, issued a new patent in 2018, a dispute arose over whether this new patent falls under the scope of the existing exclusive license. The parties exchanged correspondence between February 2020 and December 2022 but were unable to resolve the dispute, leading to this declaratory judgment action.

Case Timeline

Date Event
2001-08-09 '555 Application filed (parent of licensed '735 and '141 patents)
2005-07-26 U.S. Patent No. 6,921,735 issues
2013-06-12 U.S. Patent No. 9,938,253 Priority Date (Provisional Filing)
2017-12-06 Boston College consents to license assignment to Umicore
2017-12-19 Umicore acquires Materia's rights under the License Agreement
2018-04-10 U.S. Patent No. 9,938,253 issues
2020-02-24 Umicore counsel sends letter to Boston College regarding license rights to '253 Patent
2020-03-17 Boston College counsel replies, rejecting Umicore's license claim
2022-11-18 Umicore counsel sends further letter detailing license claim
2022-12-19 Boston College counsel again replies, rejecting license claim
2022-12-30 Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,938,253 - "Catalysts for Efficient Z-Selective Metathesis"

The Invention Explained

  • Problem Addressed: The patent addresses the ongoing need for improved catalysts for olefin metathesis reactions. Specifically, it seeks to solve the problem of achieving better catalyst stability, efficiency, and, most importantly, stereoselectivity—the ability to control the spatial orientation of atoms in the resulting molecule (’971 Patent, col. 1:28-35).
  • The Patented Solution: The patent discloses a new class of ruthenium-based metal-organic compounds (catalysts) and methods for using them. These catalysts are designed to promote metathesis reactions with high "Z-selectivity," meaning they preferentially create a "Z" isomer (or "cis" isomer) of a carbon-carbon double bond, which is a significant challenge in synthetic chemistry (’971 Patent, Abstract; col. 10:1-6). Figure 1 illustrates the general principle, showing how different catalyst configurations can favor the formation of Z-selective (less favored) or E-selective (more favored) products.
  • Technical Importance: Achieving high Z-selectivity in olefin metathesis is critical for the efficient synthesis of many commercially important products, including pharmaceuticals and advanced polymers, where the specific 3D shape of a molecule dictates its biological activity or material properties (’971 Patent, col. 1:21-28).

Key Claims at a Glance

  • The complaint does not identify specific claims but seeks a declaration covering the entire patent (Compl. ¶37). The patent's independent claims are Claims 1 and 6.
  • Independent Claim 1 (Composition of Matter):
    • A compound having the structure of formula I: [chemical structure]
    • Wherein M is a metal selected from Group VIII;
    • L is a neutral ligand;
    • R¹ is a N-heterocyclic carbene (NHC);
    • X and Y are independently an anionic ligand;
    • R² and R³ define specific organic groups.
  • Independent Claim 6 (Method):
    • A method for performing a metathesis reaction;
    • comprising providing a compound of claim 1;
    • and providing an olefin.

III. The Accused Instrumentality

Product Identification

The "accused instrumentality" in this declaratory judgment action is not a commercial product. It is the Defendant's (Boston College's) alleged conduct: purporting to license U.S. Patent No. 9,938,253 to third parties, specifically VerBio and/or Ximo, and denying that the Plaintiff (Umicore) holds an exclusive license to that patent (Compl. ¶3, ¶27).

Functionality and Market Context

The complaint alleges that Boston College’s action of licensing the ’253 Patent to others directly harms Umicore’s business by undermining the exclusivity of its rights under the License Agreement (Compl. ¶2-3). The dispute centers on the contractual scope of the license, which Umicore alleges should include the ’253 Patent, thereby precluding Boston College from licensing it to competitors like VerBio or Ximo (Compl. ¶27, ¶36).

IV. Analysis of Infringement Allegations

The complaint does not allege patent infringement in the traditional sense. Instead, it alleges that Defendant Boston College is in breach of the License Agreement by licensing the '253 patent to others, and it seeks a declaratory judgment that the '253 patent falls within the scope of Plaintiff's exclusive license rights. The complaint references "charts attached hereto as Exhibits F and G" to illustrate that the '253 patent is covered by the license agreement (Compl. ¶25). These exhibits were not provided in the submitted documents. Therefore, a claim chart summary cannot be constructed.

The core theory appears to be that the '253 patent is covered by the license agreement either through its explicit contractual language (which is heavily redacted in the complaint) or through the legal principle of patent domination, where a license to a basic patent may be interpreted to cover later patents on improvements that cannot be practiced without infringing the basic patent (Compl. ¶26).

  • Identified Points of Contention:
    • Contractual Scope: The primary question is one of contract interpretation. Does the definition of "Licensed Patent Rights" in the License Agreement (Exhibit A, not provided) extend to patents filed after the agreement was signed, such as the '253 patent? The complaint's redactions prevent analysis of the specific contractual language that will be central to this question (Compl. ¶19, ¶22).
    • Technical Relationship / Domination: A key legal and technical question is whether the technology claimed in the '253 patent constitutes an "improvement" of, or is "dominated" by, the technology in the patents explicitly covered by the license (e.g., U.S. Patent No. 6,921,735). This raises the question of whether practicing the claims of the '253 patent would necessarily infringe the claims of the licensed '735 patent.

V. Key Claim Terms for Construction

Because this is a declaratory judgment action concerning the scope of a license agreement, the most critical terms for interpretation will be found within that agreement itself, not the patent claims. The complaint heavily redacts the relevant sections of the License Agreement, preventing a direct analysis of the key contractual terms.

However, the technical relationship between the patents is central to the plaintiff's argument. A technical term from the '253 patent that will likely be scrutinized is:

  • The Term: "Z-selective"
  • Context and Importance: The '253 patent is titled "Catalysts for Efficient Z-Selective Metathesis" and repeatedly emphasizes this feature ('253 Patent, Abstract; Title). The dispute may hinge on whether this Z-selectivity represents a fundamental, new invention outside the scope of the original license or merely an improvement upon the general metathesis catalysts covered by the earlier licensed patents. Practitioners may focus on this term because if Z-selective catalysts are deemed a patentably distinct invention rather than a simple improvement, it could support Boston College's position that the '253 patent is not covered by the prior agreement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discusses Z-selectivity in the context of general metathesis reactions and existing challenges, suggesting it is a goal within the established field. The patent presents the invention as providing "novel methods for metathesis reactions" generally, which could be framed as an evolution of the licensed technology (’253 Patent, col. 1:36-37).
    • Evidence for a Narrower Interpretation: The patent's abstract and summary highlight that the invention provides "compounds and methods for promoting highly efficient and highly Z-selective metathesis reactions" (’253 Patent, Abstract). The detailed description presents specific structural reasons for this enhanced selectivity, which could be argued to define a new, non-obvious class of catalysts distinct from those covered by the original license (’253 Patent, col. 10:33-50; Fig. 1).

VI. Other Allegations

This section is not applicable as the complaint is for declaratory judgment of license rights and does not allege indirect or willful patent infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this dispute will likely depend on the court's answers to two central questions:

  1. A core issue will be one of contractual interpretation: Does the specific language of the License Agreement, particularly its definition of what constitutes a "Licensed Patent Right," unambiguously include or exclude future patents on related technologies developed by the licensor?
  2. A key legal-technical question will be one of patent scope and domination: Is the technology claimed in the '253 patent—specifically, catalysts achieving high Z-selectivity—merely an improvement upon the foundational technology of the originally licensed patents, or does it represent a distinct and separately patentable invention that falls outside the grant of the license under Federal Circuit precedent?