Umicore v. Trustees of Boston College: Z-Selective Metathesis Catalyst Dispute Ends at 972 Days
Umicore Precious Metals Chemistry USA and Umicore AG & Co. KG filed suit against the Trustees of Boston College asserting US9938253B2, a patent covering catalysts for efficient Z-selective olefin metathesis. After 972 days of litigation in Massachusetts District Court, the parties reached an executed agreement and Umicore voluntarily dismissed all claims with prejudice — each side bearing its own costs.
A University Research Portfolio Collides with Specialty Catalyst IP
On 30 December 2022, Umicore Precious Metals Chemistry USA, LLC and its parent Umicore AG & Co. KG filed an infringement action in the Massachusetts District Court before Judge George A. O’Toole, asserting US9938253B2 against the Trustees of Boston College. The patent-in-suit covers catalysts for efficient Z-selective olefin metathesis — a class of precision organometallic chemistry tools that enable stereocontrolled carbon-carbon bond formation and have significant commercial value in pharmaceutical, agrochemical, and advanced materials synthesis.
The case resolved on 28 August 2025 when Umicore voluntarily dismissed all claims with prejudice pursuant to an executed agreement among the parties. A dismissal with prejudice is a final adjudication on the merits for res judicata purposes: Umicore cannot refile these specific claims against Boston College. All parties were directed to bear their own attorney’s fees and costs, suggesting neither side extracted a fee-shifting award under 35 U.S.C. § 285. The terms of the underlying agreement remain confidential on the public record.
The 972-day duration — spanning late 2022 to mid-2025 — is consistent with patent cases that proceed through substantial discovery and claim construction before reaching a negotiated resolution. The mutual cost-bearing provision is notable: it suggests a balanced negotiating posture rather than a clear capitulation by either side. What drove the final agreement — a licence, a technology access arrangement, or simply litigation fatigue — is not disclosed in the public record, and the confidential nature of the executed agreement means the commercial terms remain unknown.
Filing to Voluntary dismissal in 972 days
972 days in litigation — above the median for patent infringement actions in D. Mass.
Dismissed with prejudice by agreement: what the terms mean for both parties
Voluntary dismissal with prejudice is a final, permanent bar
Under Federal Rule of Civil Procedure 41(a), a voluntary dismissal with prejudice operates as a final adjudication on the merits. Umicore cannot re-assert the same infringement claims against Boston College in a future action. The dismissal was expressly tied to an executed agreement between the parties, strongly suggesting a negotiated resolution rather than a unilateral decision to abandon the case.
FRCP Rule 41(a) — with prejudiceUmicore closes the door — likely in exchange for something of value
Umicore’s decision to dismiss with prejudice pursuant to an executed agreement typically signals that the plaintiff obtained some form of consideration — a licence, royalty arrangement, or technology access terms — before agreeing to close the matter permanently. The absence of a cost award against Boston College, however, suggests Umicore did not achieve a clear merits win; the commercial terms of the deal remain undisclosed.
Claims barred — agreement executedBoston College exits litigation under confidential terms
The Trustees of Boston College avoided a formal infringement finding, and the mutual cost-bearing provision means no fee-shifting was imposed. Whether Boston College obtained a patent licence, made a design-around commitment, or agreed to other restrictions on its Z-selective metathesis research activities is not apparent from the public record. The executed agreement language suggests obligations run in both directions, though their scope is confidential.
No infringement finding — terms sealedUS9938253B2 remains enforced — but its reach is now privately negotiated
The dismissal does not invalidate or limit US9938253B2, which remains in force against third parties. For competitors and research institutions working on Z-selective metathesis catalysts, this case signals Umicore’s willingness to actively enforce its patent portfolio in this space. The private resolution means no claim construction ruling or invalidity decision entered the public domain — preserving uncertainty that may deter potential challengers or infringers.
Patent survives — enforcement risk persistsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Umicore Precious Metals Chemistry USA, LLC | Company | Specialty catalysis and precious metals chemistry company — holder of US9938253B2Search in Eureka ↗ |
| Co-Plaintiff | Umicore AG & Co., KG | Company | Search in Eureka ↗ |
| Defendant | Trustees of Boston College | Individual | Research university with organometallic chemistry program in Boston, Massachusetts.Search in Eureka ↗ |
| Plaintiff counsel | Amani Kmeid | Attorney | Counsel for Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Plaintiff counsel | John W. Custer | Attorney | Counsel for Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Morgan McDonald | Attorney | Counsel for Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Ruben J. Rodrigues | Attorney | Counsel for Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Foley & Lardner LLP | Law Firm | Representing Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Wolf, Greenfield & Sacks PC | Law Firm | Representing Umicore Precious Metals Chemistry USA, LLCSearch in Eureka ↗ |
| Defendant counsel | Alexandra Lu | Attorney | Counsel for Trustees of Boston CollegeSearch in Eureka ↗ |
| Defendant counsel | Alicia Rubio-Spring | Attorney | Counsel for Trustees of Boston CollegeSearch in Eureka ↗ |
| Defendant counsel | Anna Zhou | Attorney | Counsel for Trustees of Boston CollegeSearch in Eureka ↗ |
| Defendant counsel | Brian T. Drummond | Attorney | Counsel for Trustees of Boston CollegeSearch in Eureka ↗ |
| Defendant law firm | Goodwin Procter LLP | Law Firm | Representing Trustees of Boston CollegeSearch in Eureka ↗ |
| Presiding judge | Judge George A. Otoole | Judge | Massachusetts District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice explicitly ties the with-prejudice termination to ‘an executed agreement between and amongst the parties,’ confirming this is a negotiated exit rather than a unilateral abandonment. The with-prejudice designation is significant: it extinguishes Umicore’s right to reassert these claims, functioning as a permanent bar. The mutual attorney’s fees provision — neither side recovering costs — is consistent with a balanced settlement and distinguishes this resolution from cases where one party capitulates. No merits ruling was issued, leaving US9938253B2’s validity and infringement scope unaddressed by the court.
US9938253B2 — Catalysts for Efficient Z-Selective Olefin Metathesis
US9938253B2, filed under application number US14/303523, protects catalysts enabling efficient Z-selective olefin metathesis — an organometallic reaction class that stereoselectively forms carbon-carbon double bonds in the Z (cis) configuration. Z-selectivity is highly prized in pharmaceutical and fine chemical synthesis because it controls the three-dimensional geometry of reaction products, which directly affects biological activity and downstream processing. The patent covers the catalyst compositions and their structural features that confer this stereoselectivity.
For Umicore — a global leader in precious metals chemistry and catalysis — this patent sits at the intersection of academic research and industrial application. Z-selective metathesis catalysts have been a focus of significant academic output, particularly from groups associated with Boston College and Nobel laureate chemistry programs. Umicore’s enforcement of US9938253B2 against an academic institution signals the company treats this patent as a meaningful commercial boundary, not merely a defensive filing. Competitors developing next-generation metathesis catalysts or licensing ruthenium-based chemistry should treat this patent as a primary FTO target.
Should your team run an FTO analysis against US9938253B2?
Any organisation developing, commercialising, or licensing Z-selective olefin metathesis catalysts — including ruthenium-based and other transition-metal catalyst systems — should assess their exposure to US9938253B2. This case confirms Umicore actively monitors and enforces this patent, including against research institutions. Pharmaceutical companies, agrochemical developers, and specialty chemical manufacturers using Z-selective metathesis in synthesis workflows are particularly exposed. Technology transfer offices at universities should also evaluate whether their metathesis research programmes fall within the patent’s claim scope.
PatSnap Eureka’s FTO Search Agent can map your specific catalyst structures and synthesis workflows against the claim language of US9938253B2, identify prior art that may inform validity challenges, and surface related Umicore patent family members that could expand the risk perimeter. Because no claim construction ruling entered the public record in this case, a robust FTO analysis against the as-written claims is especially important for any commercial or research actor in the Z-selective metathesis space.
Run a freedom-to-operate analysis on US9938253B2 to assess your product’s exposure
Run FTO in Eureka →Similar Patent Cases: Organometallic Chemistry & Catalyst IP in Federal Court
Cases involving specialty catalyst and organometallic chemistry patents litigated in Massachusetts District Court and comparable federal venues — resolved by settlement or dismissal.
What this case signals for the specialty catalysis IP landscape
Umicore’s enforcement action against a leading research university underscores the commercial stakes around Z-selective olefin metathesis IP.
Research universities are not immune to precision chemistry patent enforcement
This case demonstrates that Umicore is prepared to pursue infringement actions against academic institutions whose research activities engage with protected catalyst technologies. R&D teams and technology transfer offices at universities working with organometallic or metathesis chemistry should treat Umicore’s portfolio as an active enforcement risk, not a theoretical one.
No public claim construction means US9938253B2 scope remains untested
Because the case resolved before any Markman ruling or invalidity determination, the claim boundaries of US9938253B2 have not been judicially defined. Third parties seeking freedom to operate in Z-selective metathesis cannot rely on a court-narrowed claim scope — increasing the value of a proactive FTO analysis against the patent’s as-written claims.
Umicore v Trustees — key questions answered
The case was voluntarily dismissed with prejudice on 28 August 2025 pursuant to an executed agreement between the parties. All parties bear their own attorney’s fees and costs. No infringement finding, invalidity ruling, or damages award was issued. The terms of the underlying agreement are not disclosed in the public record.
US9938253B2 covers catalysts for efficient Z-selective olefin metathesis — organometallic catalyst compositions that enable stereocontrolled formation of Z-configuration carbon-carbon double bonds. This technology is commercially relevant to pharmaceutical, agrochemical, and advanced materials synthesis. The patent was asserted against Boston College in an infringement action filed in December 2022.
Dismissal with prejudice, as entered here under FRCP Rule 41(a), is a final adjudication on the merits. The plaintiff is permanently barred from re-filing the same claims against the same defendant. Dismissal without prejudice allows the plaintiff to refile. In this case, Umicore’s with-prejudice dismissal tied to an executed agreement suggests a negotiated resolution with permanent effect.
There is no public winner or loser in this case. The voluntary dismissal with prejudice pursuant to a confidential executed agreement means no merits ruling was issued. The mutual cost-bearing provision suggests neither party extracted a clear litigation victory. The commercial terms — whether a licence or other arrangement was agreed — remain undisclosed.
This case suggests Umicore actively enforces its Z-selective metathesis catalyst patents, including against academic research institutions. US9938253B2 remains in force and no claim construction or invalidity ruling was issued, leaving its scope judicially untested. Organisations working with Z-selective metathesis chemistry should assess their FTO exposure against Umicore’s portfolio.
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