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August 13, 1992


The opinion of the court was delivered by: Richard Mills, District Judge:


This case raises a plethora of issues:

— process patents,

— patent infringement,

— transfer,

— long-arm jurisdiction,

— failure to state a claim,

— the Sherman Act,

— the Lanham Act,

— preliminary injunctions,

— permanent injunctions, and

— summary judgment.

Writings on such broad subject matter are perhaps best left to the likes of Michner — but the task is ours and we do our best.

This order addresses and resolves the following motions: Defendants' motion to transfer the case to Florida (or, alternately, to stay the case); Goemar, S.A.'s motion to dismiss for lack of personal jurisdiction; Defendants' motion to dismiss for failure to state a claim upon which relief can be granted; Plaintiff's motion for partial summary judgment; and Plaintiff's motion for preliminary injunction.

In sum, Plaintiff's motion for partial summary judgment is allowed, and all other motions are denied.

I. Background

Agrimar Corp. is the U.S.-based subsidiary of Laboratories Goemar, S.A., a French company. Agrimar primarily develops and sells agricultural foliar nutritional sprays in the United States. Agrimar's principal foliar products are Goemar BM86 and Goemar MZ63, in which the active and essential ingredient is Goemar GA-14, an algae extract. Agrimar has an exclusive license to produce GA-14 pursuant to United States Patent No. 4,023,734 (the "'734 patent"), the scope of which is the primary issue in this case.

Brandt Consolidated is in the business of formulating fertilizer mixtures. Agrimar provided GA-14 to Brandt under two agreements — an August 1986 distribution agreement and a May 1987 tolling agreement. These agreements gave Brandt the right to use GA-14 in certain of its own nutritional products and to blend for Agrimar the Goemar BM86 and MZ63 products. Agrimar thus provided Brandt with the trade secret information on the use of GA-14 in blending liquid fertilizers. Brandt, in turn, agreed to keep this information confidential and not to use it to make unauthorized products. By contractually limiting Brandt's rights to use GA-14, Agrimar was seeking to prevent Brandt from making products that would compete with Agrimar's products.

Both the distribution and tolling agreements terminated in 1989 pursuant to their terms. Upon termination of the distribution agreement, Brandt was contractually obligated to cease formulating Agrimar's products, to remove all labels bearing Agrimar's trademarks, and to generally refrain from all conduct which would associate Brandt with Agrimar.

Despite the restrictions in the distribution agreement, Brandt apparently manufactured and sold after 1989 a product virtually identical to Agrimar's Goemar BM86 — Clawel BM86. In addition to similarities in packaging, Clawel BM86's formulation was identical to Goemar BM86, including the use of GA-14 as the primary ingredient. Upon discovering this apparent violation of the distribution agreement, Agrimar filed suit against Brandt in the Middle District of Florida, Tampa Division, on July 30, 1990 (Case No. 90-935-CIV.T-98C). On August 9, 1990, the Florida court entered a final order, with Brandt's consent, which permanently enjoined Brandt from representing that any Brandt product was authorized by or originated from Agrimar, from using the Agrimar formulations for the BM86 and/or MZ63 products, and from selling any product formulated in the same manner as the BM86 or MZ63 products. The order did not, however, enjoin Brandt from using GA-14 or from making products which contain GA-14.

In November of 1991, Agrimar accused Brandt of violating the terms of the injunction by mixing and selling formulations containing GA-14 to Vigoro Industries, Inc., a competitor of Agrimar who marketed the formulations in Florida. In addition, Agrimar accused Brandt of violating the injunction by providing an Agrimar comparison study to Vigoro to use on its label, thus suggesting to Vigoro that Agrimar had authorized Brandt's conduct. In response to Brandt's actions, Agrimar sent letters to Brandt and Vigoro indicating that the use of GA-14 was either a patent infringement or a violation of Agrimar's common law rights against unfair competition and breach of contract, as well as a violation of the 1990 injunction. Ultimately, on January 15, 1992, Agrimar filed in the Florida court a motion for an order adjudging Brandt in contempt of the 1990 injunction. Agrimar also filed a patent infringement suit against Brandt. On June 17, 1992, the Florida court denied Agrimar's contempt motion. The patent infringement suit is still pending.

Brandt, however, had preempted Agrimar by filing this suit against Agrimar and Goemar, S.A., on December 27, 1991, for declaratory judgment, an injunction, and compensatory and punitive damages for Agrimar's "unjustified" patent infringement claims. Brandt primarily seeks a declaratory judgment that it has not infringed upon the '734 patent by using GA-14 in its own products, and it wants the Court to enjoin Agrimar from publicly claiming that Brandt has infringed the patent. Brandt essentially argues that the '734 patent is for a method for producing GA-14, not for GA-14 itself. Since Goemar produced GA-14 and transferred it to Brandt, Brandt claims it is not infringing the patent by using GA-14 in its products.

Brandt's second claim is that Goemar-Agrimar have violated § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by falsely claiming exclusive rights in the GA-14 product pursuant to the '734 patent.

Third, Brandt is accusing Goemar-Agrimar of using false accusations about patent infringement to ...

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