UNITED STATES DISTRICT COURTDISTRICT OF NEW JERSEY

CHAMBERS OF MITCHELL H. COHEN COURTHOUSE

JOEL SCHNEIDER 1 John F. Gerry Plaza, Room 2060

UNITED STATES MAGISTRATE JUDGE CAMDEN, NJ 08101-0887 (856) 757-5446

LETTER ORDERELECTRONICALLY FILEDNovember 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 SciencesCivil No. 10-200 (NLH/JS)District of Delaware

Dear Counsel:

This Letter Order addresses the parties’ dispute regardingthe effective date of the Community of Interest (“COI”) doctrinevis-a-vis Materia and UNO. The Court received the parties’ letterbriefs (D.I. 472,475,479) and exercises its discretion to decidethis dispute without oral argument.

The Court agrees that the parties’ dispute is narrow. According to the parties’ submissions, the interference betweenMateria and UNO started on September 30, 2006 and ended on June 5,2007. Evonik argues the COI doctrine does not apply beforeMateria and UNO executed their “Second Amended and Restated PatentLicense Agreement” (“PLA”) on May 3, 2007. Evonik argues this isthe date Materia and UNO ceased being adversaries. Materia arguesthe trigger date for the COI doctrine is either January 12, 2007,the date Materia and UNO signed their “Term Sheet for an Amendedand 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 byreference its discussion of the COI doctrine in its May 27, 2011Letter Order. D.I. 283. Applying the law to the facts of theparties’ dispute, the Court finds that the start date for the COIdoctrine between Materia and UNO was the date the PLA was signed-May 3, 2007. As of that date, and no earlier, Materia and UNOF

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had “similar legal interests.” In re Teleglobe CommunicationsCorp., 493 F.3d 345, 364 (3d Cir. 2007). The Court rejects theargument that the Materia/UNO COI started on January 12, 2007. Itis true the Term Sheet was signed that date. However, the TermSheet was not binding until May 3, 2007. This is made clear onpage 1 of the Term Sheet which states:

The proposed transaction is subject to (i)the acceptance by both Company and UNO of theprincipal terms as finally negotiated, and(ii) the negotiation, execution and deliveryof a definitive License Agreement and anyother agreements related thereto. It isunderstood that this Term Sheet does notconstitute a binding contract, and that theparties do not intend to be legally bound,unless and until a definitive LicenseAgreement 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 firstparagraph of this Term Sheet, the parties donot intend to be legally bound unless anduntil a definitive License Agreement has beenexecuted by both parties. The parties,however, expressly agree that the provisionsabove concerning “publicity,” “publication,”and “confidentiality,” each shall survive thetermination of this Term Sheet.

Teleglobe emphasis that the COI doctrine applies when two ormore clients have a “common legal interest.” Id. at 94. Untiltheir final agreement was signed, Materia and UNO were adversaries and their legal interests were not “common.” Duringthe January 12, 2007 - May 3, 2007 negotiation period, Materia andUNO were each acting in their own and not the common bestinterest. That is why Materia and UNO specifically indicated thatthe PLA was not final and binding until a final agreement wassigned.

Accordingly, for the foregoing reasons, the Court rules thatthe Materia-UNO COI did not become effective until May 3, 2007. The Court is not deciding whether any particular document isprivileged.

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As to Evonik’s spoliation and waiver arguments, the Courtwill not address the issues in this Letter Order. Evonik shallfile a formal motion if it intends to pursue the issues.

As to the date of Materia’s document production, the Courtassumes the parties will agree upon an acceptable date so that thepresent scheduling deadlines will be met. If not, the Court isavailable to address the parties’ discovery dispute.

The Court declines the invitation to review the subjectdocuments in camera, especially in view of Materia’srepresentation that the documents at issue are “innocuous and ofdubious relevance to this action.” D.I. 479 at 2.

Very truly yours,

s/Joel Schneider

JOEL SCHNEIDERUnited States Magistrate Judge

JS:jkcc: Hon. Noel L. Hillman

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