United States District Court, S.D. New York
October 8, 2004.
MINERALS TECHNOLOGIES INC. and SPECIALTY MINERALS INC. Plaintiffs,
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
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
'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").
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 patent);
Transcript of Hearing on Plaintiffs' Motion for Preliminary
Injunction on September 21, 2004 (hereinafter, "Hr'g Tr.") at
At this stage of the proceedings, application of standard rules
of patent construction raises substantial doubts that the breadth
of the '017 Patent is nearly as expansive as SMI asserts. In
construing a patent, the Court must look first to the language of
the claim itself, with the presumption that the words contained
in the patent have their "ordinary and customary meaning." Display Techs., Inc. v. Paul
Flum Ideas, Inc., 75 F.Supp.2d 283, 290 (S.D.N.Y. 1999),
aff'd, 282 F.3d 1331, 1339 (Fed Cir. 2003). Patents must also
be construed in light of each claim limitation contained in the
patent, as the limitations are critical to an assessment of the
scope of the patent. See Southwall Technologies, Inc. v.
Cardinal IG Co., 54 F.3d 1570, 1575 (Fed Cir. 1995), cert.
denied, 116 S.Ct. 515 (1995).
Read in light of these interpretive guides, the plain language
of Claim 1 of the '017 Patent contains a critical limitation that
raises serious doubts regarding its asserted scope. As Omya
points out in its brief, the last clause of Claim 1 clearly
states that the mere presence of the three elements in the same
papermaking process does not, by itself, fall within the scope of
the process. Rather, according to the clause, Claim 1 of the '017
Patent covers "[a]n acid-stabilized finely divided calcium
carbonate" which is produced "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
(emphasis added). Thus, a plain reading of the patent strongly
suggests that Claim 1 only covers a particular form of
acid-stabilized finely divided calcium carbonate, one in which
the carbonate is: 1) coated by, and 2) in equilibrium with, the other two types of chemicals cited in
SMI's submissions to and arguments before the Court fail to
rebut this interpretation. SMI submits that Claim 1 "would have
well recognized meaning to one of ordinary skill in the art and
would require no construction by the Court" (Pfs.' Mem. of
Law at 16 (emphasis added)), but this conclusory statement does
not substitute for actual analysis of the plain language of the
claim, particularly where Omya has introduced a plausible
proposed interpretation that directly conflicts with the one
proposed by SMI. SMI's Memorandum of Law also asserts that the
"the '017 Patent also teaches, and development has shown,
that the point and order of addition of the three key components
into the papermaking system is not critical to the effectiveness
of the acid-tolerant papermaking technology" (Pfs.' Mem. of Law
at 9 (emphasis added)), but the claims determine the scope of the
patent, not what subsequent development shows could have
possibly been covered by the patented technology.*fn4 SMI's efforts to buttress its proposed interpretation of Claim
1 at oral argument on September 21, 2004, were similarly
unavailing. SMI focused its argument on an effort to prove that
the that the patent covers neutral, as well as acidic,
papermaking (See Hr'g Tr. at 10-17), but these arguments fail
to counter Omya's assertion that Claim 1 covers, not a
papermaking process to be used in environments of certain
acidities, but a type of calcium carbonate product that is most
useful in neutral or weakly acidic environments. The "Field of
Invention" section of the patent strongly supports Omya's
proposed interpretation. It describes the invention as relating
to three separate subjects: 1) "an acid-stabilized form of
calcium carbonate," 2) "a process for producing this
material," and 3) "a method for use of the material as a
filler material in the making of neutral to weakly
acidic paper. . . ." '017 Patent, col 1, ll. 8-13 (emphasis
added). The "material" referenced in the second and third
subjects of the patent clearly refers to the "acid-stabilized
form of calcium carbonate" that constitutes the first subject of
the patent; Claim 1, by its terms, refers to that "material," not
to the process used to produce it or to the methods by which the
"material" could be used in the making of neutral to weakly
A further reason counseling in favor of reading the '017 Patent to include only acid-stabilized forms of calcium carbonate
is the real possibility that the patent would be invalid as
anticipated by prior art if read broadly to include any
papermaking process that included the three elements. Under
federal law, "[a] patent shall be presumed valid."
35 U.S.C. § 282 (2000). Furthermore, a patent cannot be read broadly by a
court to find infringement but narrowly to avoid invalidity.
See Amazon.com, 239 F.3d at 1352. Thus, a patent should be
read narrowly enough in order to preserve its validity if a
broader reading would render its validity questionable as
anticipated by prior art.
Here, Omya has found references to papermaking processes that
incorporate the three elements in several patents, including U.S.
Patent No. 4,714,603 ("the '603 Patent"), which predates the '017
Patent by nearly four years.*fn5 The '603 Patent explicitly
discusses the use of calcium carbonate, a weak acid, and a
chelating agent in papermaking processes. See '603 Patent
(describing a process for making a spherical calcium carbonate
precipitate that involved addition of a chelating agent and a
weak acid to a calcium-containing chemical solution). Thus, if
the '017 Patent were read to cover all papermaking processes that
included the three elements, it would likely be invalid as anticipated by the '603 Patent.
Finally, the presence of a factual dispute concerning the
occurrences at the Stora Enso trials renders it impossible for
the Court to grant preliminary relief without further discovery.
SMI alleges that the Stora Enso tests infringed the '017 Patent,
but was not present at the tests. Omya, which was present at, and
which organized the tests, claims that nothing occurred that
could have conceivably infringed the patent. While it may be
possible for SMI to show that the Stora Enso tests did ultimately
use an acid-stablized form of calcium carbonate covered by the
patent, it cannot meet its burden of proving a sufficient
likelihood of success on the merits based on the record before
For the reasons discussed above, it is hereby:
ORDERED that the motion of Plaintiffs Minerals Technologies
Inc. and Specialty Minerals Inc. for a preliminary injunction is
denied; and it is further
ORDERED that the parties confer and submit by October 15,
2004, for the Court's approval a proposed case management plan to
govern the schedule of pretrial proceedings in this case. SO ORDERED.