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MINERALS TECHNOLOGIES INC. v. OMYA AG

October 8, 2004.

MINERALS TECHNOLOGIES INC. and SPECIALTY MINERALS INC. Plaintiffs,
v.
OMYA AG, OMYA INDUSTRIES INC., and OMYA, INC. Defendants.



The opinion of the court was delivered by: VICTOR MARRERO, District Judge

DECISION AND ORDER

Plaintiffs Minerals Technologies Inc. ("MTI") and Specialty Minerals Inc. ("SMI") (collectively, "Plaintiffs") have moved the Court for a preliminary injunction pursuant to Fed.R. Civ. P. 65 enjoining Defendants Omya AG, Omya Industries, Inc., and Omya, Inc. (collectively, "Omya") from infringing or inducing infringement of Claim 1 of United States Patent No. 5,043,017, attached as Exhibit 1 to Declaration of Anthony J. Constantini dated August 27, 2004 (the "`017 Patent").*fn1 For the reasons described below, Plaintiffs' motion is denied.

I. FACTUAL BACKGROUND

  The '017 Patent relates to a formulation of calcium carbonate that does not affect the acidity of paper when it is mixed with pulp during the papermaking process.*fn2 Normally, calcium carbonate, an alkaline substance, decreases the acidity of pulp when mixed with it. This change in acidity can be harmful for certain types of neutral or weakly acidic paper.

  The '017 Patent was issued in 1991 to Dr. June Passaretti for a formulation of calcium carbonate that is acidstabilized, such that it does not affect the acidity of pulp when introduced to the papermaking process. Claim 1 of the patent asserts protection for:
An acid-stabilized finely divided calcium carbonate comprising a mixture of at least about 0.1 weight percent of a compound selected from the group consisting of a calcium-chelating agent and a conjugate base, together with at least about 0.1 weight percent of weak acid, with the balance to give 100 weight percent being finely divided calcium carbonate, such that the calcium carbonate is coated by and is in equilibrum [sic] with the calcium-chelating agent or conjugate base and the weak acid.
'017 Patent, col. 7 l. 65-col. 8 l. 6. SMI, a subsidiary of MTI that is the successor in interest regarding the '017 Patent, has sought to commercialize the invention by creating and marketing an acid-stabilized form of calcium carbonate to the papermaking industry. SMI alleges that it has invested over $24 million in commercializing the invention, and that the potential market for the product is projected to be over $150 million per year.

  SMI seeks injunctive relief against Omya, its primary competitor in the relevant market, on the grounds that Omya is inducing papermakers to infringe the '017 Patent and compromising the value of its invention by conducting papermaking tests in which calcium carbonate, a chelating agent, and a weak acid (collectively, the "three elements") are used to reduce the alkalinity of the resulting paper product, and by evidencing its intentions to expand its business in this field. SMI cites specifically to papermaking tests conducted at a mill owned by a firm named Stora Enso during December 2003 and August of this year as instances in which Omya induced infringement of SMI's patents by providing supplies and instructions for papermaking that used the three elements to make paper.

  Omya admits that it has conducted the Stora Enso tests, but claims that for several reasons, neither the tests, nor its contemplated activities in the marketplace for calcium carbonate products, infringe or induce infringement upon the '017 Patent. First, Omya asserts that the '017 Patent, properly construed, covers only calcium carbonate that is itself acid-stabilized through the process described in the patent; it does not, according to Omya, cover all papermaking processes in which the three elements are used together to reduce the alkalinity of the resulting calcium carbonate-containing paper product. Second, Omya claims that the Stora Enso tests did not infringe because the calcium carbonate used in the tests was not acid-stabilized, and the resulting paper product was alkaline rather than neutral or acidic, as the product would be if SMI's patented technology had been used. Third, Omya claims that SMI's patent, if construed as broadly as SMI claims it reaches, is invalid as anticipated by prior art.

  II. STANDARD OF REVIEW

  Pursuant to 35 U.S.C. § 283,*fn3 district courts may grant injunctive relief to a patentholder in order to "prevent the violation of any right secured by patent." Id. The decision whether or not to grant a preliminary injunction to preserve the status quo pending final resolution of an infringement suit is "within the sound discretion of the district court." Amazon.com, Inc. v. Barnsandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (citing Novo Nordisk of N. Am., Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed Cir. 1996)).

  In order to show its entitlement to a preliminary injunction, SMI must prove: "(1) a reasonable likelihood of success on the merits; (2) irreparable harm if an injunction is not granted; (3) a balance of hardships tipping in its favor; and (4) the injunction's favorable impact on the public interest." Amazon. com, 239 F.3d at 1350. None of the factors are independently dispositive, but a party must establish both of the first two factors, at minimum, in order to prevail. See id.

  In order to demonstrate a likelihood of success on the merits, SMI must show that, in light of the burdens that will inhere at trial on the merits of SMI's claim of induced infringement (1) SMI will likely prove that Omya induced infringement of the '017 Patent, and (2) that SMI's infringement claim "will likely withstand [Omya's] challenges to the validity and enforceability" of the '017 Patent. See id. at 1350-51 (discussing the standard of proof for demonstrating likelihood of success on the merits in a direct infringement suit); 35 U.S.C. § 271(b) (2000) (stating that "whoever actively induces infringement of a patent shall be liable as an infringer").

  III. DISCUSSION

  Because SMI has not shown that it will likely prove that Omya induced infringement of the '017 Patent, it has not met the predicate condition of a preliminary injunction based on alleged induced infringement: demonstrating that a predicate act of infringement has taken or is taking place. See Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544 (Fed Cir. 1990) (concluding that a plaintiff alleging induced infringement must demonstrate that "the alleged infringer's actions induced infringing acts") (emphasis added).

  SMI seeks to characterize the scope of the '017 Patent in very broad terms. According to SMI's asserted construction of the patent, any use of calcium carbonate along with chelating agents and a weak acid in neutral or acidic papermaking processes would fall within the scope of the patent. (See Plaintiffs' Memorandum of Law in Support of SMI's Motion for Preliminary Injunction (hereinafter, "Pfs.' Mem. of Law") at 12 (alleging that the Stora Enso trial infringed the '017 Patent because the test involved the three elements listed in the ...


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