Omya is sued by competitor over patents
July 5, 2004
By BRUCE EDWARDS Herald Staff
The two giants of the calcium carbonate industry are engaged in a legal battle over allegations of patent violations.
Minerals Technologies Inc. has filed a patent infringement lawsuit in federal court against Omya Inc., and its Swiss parent company.
Minerals Technologies alleges in its lawsuit that Omya has infringed on two of its patents related to the calcium carbonate process used in the manufacture of paper "by making, using, selling and/or offering to sell the invention patented ..." according to the five-page lawsuit filed last month in U.S. District Court in New York.
Headquartered in New York, Minerals Technologies alleges that its business has been damaged by the alleged patent infringement, "including a substantial loss of profits."
Minerals Technologies, and its subsidiary, Specialty Minerals, is seeking a permanent injunction against Omya and unspecified damages, as well as interest, costs and attorney's fees.
"We felt compelled to file this suit to protect that proprietary technology," Minerals Technologies president Paul Saueracker said in a press release.
Though he couldn't cite specific dates, company spokesman Rick Honey alleged that Omya had been infringing on the company's patents for some time. The patents were issued in 1991 and 1992.
In a statement issued from its Proctor headquarters, Omya vehemently denied the allegations, saying "that the lawsuit commenced by Minerals Technologies Inc. and its subsidiary Specialty Minerals Inc. is baseless, and that it intends to vigorously contest Mineral Technologies' claims of infringement."
Omya, which has yet to file a formal response to the complaint, said that it had "previously provided Mineral Technologies with information that makes clear that there is no infringement," and that Omya "fully intends to move forward and to compete with Mineral Technologies in the paper manufacturing industry."
Minerals Technologies is the world's largest producer of what is referred to as precipitated calcium carbonate, while Omya is the world's largest manufacturer of ground calcium carbonate.
Ground calcium carbonate is made from ground marble, which is then mixed with water. Precipitated calcium carbonate is made with quicklime, mixed with water and then injected with carbon dioxide to form a very fine and uniform synthetic product.
Both types of calcium carbonate, which come in slurry and powder form, have applications in a number of industries, including the paper, plastics, chemical and pharmaceutical industries.
Omya also operates a small number of precipitated calcium carbonate plants, while Minerals Technologies has a few ground calcium carbonate operations.
For papermaking purposes, precipitated calcium carbonate plants are located adjacent to paper mills, while ground carbonate slurry is shipped by rail. Minerals Technologies has 56 satellite plants located next to paper mills, including one in North Adams, Mass.
Honey said the two patents that Omya allegedly infringed upon are also applicable to the ground calcium carbonate business.
The two patents cover a process that allows calcium carbonate to be retained in the manufacture of acid-based paper. Without that process, the calcium carbonate would be destroyed by the paper's acidity.
Rutland patent attorney Jack Welsh said such lawsuits over patent infringement are not uncommon. Like other lawsuits, Welch said the verdict or decision often hinges on expert witnesses "well-versed in the particular arena of technology within which the patent would be described."
He said that by their very nature patent suits can be very complex and also very time consuming and expensive. He said it's not uncommon for such cases to run into the millions of dollars. Because of its intricacies, he said attorneys who wish to practice patent law have to take a special bar exam.
Based in Proctor, Omya Inc. is the company's North American headquarters. Also named in the lawsuit are Omya Industries of Proctor and Omya AG of Oftringern, Switzerland.
Founded in 1884, Omya AG (formerly Pluess-Staufer) is a privately held company.
Minerals Technologies is a publicly traded company that reported sales of $814 million last year.
Contact Bruce Edwards at email@example.com.