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