Calgon Carbon and Trojan Settle UV Patent Disputes

Q&A: The Settlement with Calgon

17. What are/will be the implications for existing customers?

1. For the benefit of our customers, this agreement extends immunity to all existing Trojan customers. Trojan will provide written confirmation on request.

17. Will we indemnify in future bids?

1. Yes.

17. What does immunity mean?

1. Immunity means that Calgon has agreed not to bring any legal action against any party to whom the immunity applies in order to enforce the “crypto” patents or any similar patent. This immunity applies all over the world.

17. Did Trojan sell out to Calgon?

1. No. We reached this agreement to benefit our customers and make it possible to move forward without any concerns. It is quite normal in any commercial litigation matter that both parties reach a point at which the cost of continuing the litigation outweighs the gains in a win, or avoiding the cost in the case of a loss. When this happens a settlement can normally be reached. Trojan and Calgon have made a number of unsuccessful attempts to settle this litigation over its five-year life. The circumstances were such that an agreement was reached this time.

17. Why did Trojan strike an agreement?

1. It is quite normal in any commercial litigation matter that both parties reach a point at which the cost of continuing the litigation outweighs the gains in a win, or avoiding the cost in the case of a loss. When this happens a settlement can normally be reached. Trojan and Calgon have made a number of unsuccessful attempts to settle this litigation over its five-year life. The circumstances were such that an agreement was reached this time.

17. Is Trojan going to charge their customers a fee?

1. There will be no royalty or user fee based on volumes of water treated or any other measure. For our customers, immunity is now a basic and automatic feature of every Trojan system.

17. Will Trojan charge a premium for their equipment?

1. There will be no royalty or user fee based on volumes of water treated or any other measure. For our customers, immunity is now a basic and automatic feature of every Trojan system.

17. Did Trojan reach an agreement because they thought they were going to lose?

1. No. In November of 2006 the Federal Court of Canada issued its decision based on the trial held earlier and clearly found in Trojan’s favor. Trojan was fully prepared to argue the appeal that Calgon launched in Canada.

17. I heard you paid a large sum of money to Calgon in exchange for immunity; is this true and how much?

1. Trojan is satisfied that a fair agreement was reached, which allows Trojan and all of our customers to move forward. Financial details are not being disclosed.

17. Does this mean all UV customers are immune?

1. No. Only those customers and manufacturers to whom Calgon has granted immunity are protected. All past, present and future Trojan customers are included in this protected group. 

17. Is this agreement exclusive to Trojan?

1. This agreement is between Trojan and Calgon. Calgon may enter into similar agreements with other UV manufacturers or specific customers in the future. That is up to Calgon.

17. What about other manufacturers?

1. This agreement is between Trojan and Calgon. Calgon may enter into similar agreements with other UV manufacturers or specific customers in the future. That is up to Calgon.

17. Is the immunity technology driven?

1. No. The immunity is independent of the technology employed. These patents do not cover equipment, but rather the effect of using UV on specific organisms. The immunity means that regardless of the technology, a Trojan customer cannot be accused of infringement because they inactivate crypto, for example. Of course, it is still true that the equipment used is not allowed to infringe valid equipment patent claims, which are beyond the scope of the immunity.

17. Is this agreement limited to current Crypto patents? Does it also apply to Giardia? What about other microorganisms?

1. The immunity is broader than just the patents that have been published so far. It also will extend to any similar patents that Calgon might obtain in the future (i.e. patents aimed at the inactivation of a different specific organism using traditional UV doses).

17. Can Trojan provide a document in writing confirming our immunity?

1. Yes.

17. What is the geographical scope of this agreement?

1. The immunity is global in scope.

17. What does this mean for Calgon installations?

1. Trojan cannot comment on the implications for customers of other manufacturers.

17. What’s the catch? Is there a catch?

1. There is no catch for Trojan customers. With this agreement, Trojan has removed patent barriers for Trojan customers with respect to this case.

17. How much did this cost Trojan?

1. Trojan is not prepared to comment on the financials around this agreement. Trojan would not have made this agreement unless we believed it to be in our best interest to do so, as compared to alternative possible courses of action.