Case 1:09-cv-00636-NLH-JS Document 480 Filed 11/21/13 Page 1 of 3 PageID #: 21759 UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

CHAMBERS OF

MITCHELL H. COHEN COURTHOUSE 1 John F. Gerry Plaza, Room 2060 CAMDEN, NJ 08101-0887 (856) 757-5446

JOEL SCHNEIDER
UNITED STATES MAGISTRATE JUDGE

LETTER ORDER ELECTRONICALLY FILED November 21, 2013

TO ALL COUNSEL OF RECORD

Re:

Evonik Degussa GmbH v. Materia Inc. Civil No. 09-636 (NLH/JS) Evonik Degussa GmbH v. Elevance Renewable Sciences Civil No. 10-200 (NLH/JS) District of Delaware

Dear Counsel: This Letter Order addresses the parties dispute regarding the effective date of the Community of Interest (COI) doctrine vis-a-vis Materia and UNO. The Court received the parties letter briefs (D.I. 472,475,479) and exercises its discretion to decide this dispute without oral argument. The Court agrees that the parties dispute is narrow. According to the parties submissions, the interference between Materia and UNO started on September 30, 2006 and ended on June 5, 2007. Evonik argues the COI doctrine does not apply before Materia and UNO executed their Second Amended and Restated Patent License Agreement (PLA) on May 3, 2007. Evonik argues this is the date Materia and UNO ceased being adversaries. Materia argues the trigger date for the COI doctrine is either January 12, 2007, the date Materia and UNO signed their Term Sheet for an Amended and Restated License Agreement (Term Sheet), or January 1, 2007, the effective date of the Term Sheet. As to the applicable case law, the Court incorporates by reference its discussion of the COI doctrine in its May 27, 2011 Letter Order. D.I. 283. Applying the law to the facts of the parties dispute, the Court finds that the start date for the COI doctrine between Materia and UNO was the date the PLA was signedMay 3, 2007. As of that date, and no earlier, Materia and UNOF

Case 1:09-cv-00636-NLH-JS Document 480 Filed 11/21/13 Page 2 of 3 PageID #: 21760 November 21, 2013 Page 2 had similar legal interests. In re Teleglobe Communications Corp., 493 F.3d 345, 364 (3d Cir. 2007). The Court rejects the argument that the Materia/UNO COI started on January 12, 2007. It is true the Term Sheet was signed that date. However, the Term Sheet was not binding until May 3, 2007. This is made clear on page 1 of the Term Sheet which states: The proposed transaction is subject to (i) the acceptance by both Company and UNO of the principal terms as finally negotiated, and (ii) the negotiation, execution and delivery of a definitive License Agreement and any other agreements related thereto. It is understood that this Term Sheet does not constitute a binding contract, and that the parties do not intend to be legally bound, unless and until a definitive License Agreement has been executed by both parties (except as provided below concerning Publicity, Publication, and Confidentiality). The point is repeated on page 7 of the Term Sheet: Except as indicated above in the first paragraph of this Term Sheet, the parties do not intend to be legally bound unless and until a definitive License Agreement has been executed by both parties. The parties, however, expressly agree that the provisions above concerning publicity, publication, and confidentiality, each shall survive the termination of this Term Sheet. Teleglobe emphasis that the COI doctrine applies when two or more clients have a common legal interest. Id. at 94. Until their final agreement was signed, Materia and UNO were adversaries and their legal interests were not common. During the January 12, 2007 - May 3, 2007 negotiation period, Materia and UNO were each acting in their own and not the common best interest. That is why Materia and UNO specifically indicated that the PLA was not final and binding until a final agreement was signed. Accordingly, for the foregoing reasons, the Court rules that the Materia-UNO COI did not become effective until May 3, 2007. The Court is not deciding whether any particular document is privileged.

Case 1:09-cv-00636-NLH-JS Document 480 Filed 11/21/13 Page 3 of 3 PageID #: 21761 November 21, 2013 Page 3 As to Evoniks spoliation and waiver arguments, the Court will not address the issues in this Letter Order. Evonik shall file a formal motion if it intends to pursue the issues. As to the date of Materias document production, the Court assumes the parties will agree upon an acceptable date so that the present scheduling deadlines will be met. If not, the Court is available to address the parties discovery dispute. The Court declines the invitation to review the subject documents in camera, especially in view of Materias representation that the documents at issue are innocuous and of dubious relevance to this action. D.I. 479 at 2. Very truly yours,

s/Joel Schneider
JOEL SCHNEIDER United States Magistrate Judge JS:jk cc: Hon. Noel L. Hillman