DCT
1:18-cv-02037
Arch Chemicals Inc v. Sherwin Williams Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Arch Chemicals, Inc. (Virginia)
- Defendant: The Sherwin-Williams Company (Delaware); The Valspar Corporation (Delaware)
- Plaintiff’s Counsel: Richards, Layton & Finger, P.A.; Crowell & Moring LLP
- Case Identification: 1:18-cv-02037, D. Del., 12/21/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are Delaware corporations and thus reside in the district.
- Core Dispute: Plaintiff alleges that Defendants’ paint and coating products, which contain certain biocides, infringe a patent related to antimicrobial compositions that use zinc ions to enhance the effectiveness of an isothiazolinone biocide.
- Technical Context: The lawsuit concerns chemical compositions used as "wet-state preservatives" in products like latex paint to prevent microbial growth and spoilage while the product is in its liquid form (e.g., in the can).
- Key Procedural History: The complaint alleges a history between the parties, including a long-standing supply relationship, a 2017 Request for Proposal (RFP) process, and subsequent unsuccessful business discussions. Plaintiff alleges it provided Defendants with actual notice of the patent-in-suit in September 2017. The complaint also references a prior lawsuit filed in July 2018 involving the patent-in-suit and another patent, which Plaintiff has chosen not to reassert in this action based on Defendants' representations regarding their manufacturing process.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-26 | Priority Date for U.S. Patent No. 9,723,842 |
| 2017-06-01 | Sherwin-Williams acquires Valspar |
| 2017-08-08 | U.S. Patent No. 9723842 Issued |
| 2017-09-18 | Plaintiff allegedly provides actual notice of the '842 Patent to Defendant Sherwin-Williams |
| 2018-05-11 | Sherwin-Williams allegedly admits use of key chemical components in paints |
| 2018-07-02 | Plaintiff files initial lawsuit against Sherwin-Williams |
| 2018-12-05 | Plaintiff files amended complaint in the prior lawsuit |
| 2018-12-13 | Defendant's counsel allegedly provides letter with non-infringement assertions |
| 2018-12-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,723,842 - Isothazolinone Biocides Enhanced by Zinc Ions
The asserted patent is U.S. Patent No. 9,723,842, issued August 8, 2017 (the “’842 Patent”).
The Invention Explained
- Problem Addressed: The patent describes a need for effective antimicrobial compositions for "wet state applications" (e.g., paint) that are cost-effective and minimize environmental and toxicological concerns, as the amount of biocide that can be used is often limited by these factors (’842 Patent, col. 2:30-38).
- The Patented Solution: The invention is an antimicrobial composition that combines an isothiazolinone-based biocide (such as 1,2-benzisothiazolin-3-one, or "BIT") with a zinc compound (such as zinc oxide or zinc chloride) (’842 Patent, Abstract; col. 2:42-56). The patent purports that the zinc compound "enhances the antimicrobial activity" of the isothiazolinone, which "permits achieving the desired antimicrobial activity at a lower usage rate" than using the isothiazolinone alone (’842 Patent, Abstract).
- Technical Importance: This approach suggests a method to either increase the antimicrobial efficacy of a paint formulation at a given cost or to reduce the amount (and cost) of the primary biocide needed to achieve a required level of preservation (’842 Patent, col. 1:14-19, col. 2:24-38).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specifying them (Compl. ¶39). Independent claim 1 is representative of the core composition claims.
- Independent Claim 1: An antimicrobial composition comprising:
- (a) at least one isothiazolin-3-one selected from a specific group including 1,2-benzisothiazolin-3-one ("BIT");
- (b) at least one zinc compound comprising zinc chloride, zinc oxide, or a combination thereof;
- wherein the isothiazolin-3-one is present in an amount of from 1 to 500 ppm;
- wherein the zinc compound is present in an amount of from 5 to 200,000 ppm; and
- wherein the weight ratio of the isothiazolin-3-one to the zinc compound is from 1:100 to 100:1.
- The complaint does not explicitly reserve the right to assert dependent claims, but the broad allegation of infringing "one or more claims" leaves this possibility open (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are specific lines of paint and coating products sold under the Sherwin-Williams and Valspar brand names (Compl. ¶¶31, 33). These include, among others, Sherwin-Williams’ “Harmony,” “Emerald,” and “Super Paint” lines, and Valspar’s “Simplicity Paint,” “Signature Paint,” and “Ultra Paint” lines (Compl. ¶¶31, 33).
Functionality and Market Context
The complaint alleges these products are compositions for paint and coatings (Compl. ¶1). The relevant functionality is that they are water-based formulations that allegedly incorporate specific biocides to control the growth of microorganisms, as recited in the claims of the ’842 Patent (Compl. ¶28). The complaint alleges Defendants are manufacturers and distributors of these products for both home and industrial use (Compl. ¶6). It further alleges that Sherwin-Williams admitted its products contain both a zinc compound and the specific biocide known as BIT (Compl. ¶29).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint does not contain a claim chart, but the narrative allegations can be mapped to the elements of a representative claim.
’842 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) at least one isothiazolin-3-one selected from the group consisting of 1,2-benzisothiazolin-3-one... | Defendants' accused paints allegedly contain "the biocide BIT" (1,2-benzisothiazolin-3-one), which is an isothiazolin-3-one. | ¶¶29, 31, 33 | col. 13:58-62 |
| wherein the isothiazolin-3-one is present in an amount of from 1 to 500 ppm | The accused paint products are alleged to contain "the biocide BIT present between 5 and 500 parts per million." | ¶¶31, 33 | col. 13:66 - 14:1 |
| (b) at least one zinc compound comprising zinc chloride, zinc oxide, or a combination thereof | Defendants' accused paints allegedly contain "a zinc compound like zinc oxide." The complaint also cites a Defendant admission to using "zinc oxide." | ¶¶29, 31, 33 | col. 13:63-65 |
| wherein the zinc compound is present in an amount of from 5 to 200,000 ppm | The accused paint products are alleged to contain "a zinc compound like zinc oxide present between 5 and 500 parts per million." This range falls within the broader claimed range. | ¶¶31, 33 | col. 14:2-4 |
| wherein the weight ratio of the isothiazolin-3-one to the zinc compound is from 1:100 to 100:1 | The accused paint products are alleged to have "a BIT-to-zinc compound ratio of between 1:100 and 100:1." | ¶¶31, 33 | col. 14:1-6 |
Identified Points of Contention
- Scope Questions: The complaint anticipates a central dispute over claim scope. Defendants have allegedly articulated a non-infringement theory that the ’842 Patent claims are "limited to concentrates that are added to functional fluids like paints instead of the functional fluid itself" (Compl. ¶25). Plaintiff contends the claims "are not limited to concentrates" and cover the final paint products (Compl. ¶27). This raises the question of whether the term "composition" as used in the claims can be limited by specification language discussing "concentrates" (’842 Patent, col. 2:60).
- Technical Questions: A related question arises from Defendants' alleged admission that "the isothiazoline-3-one and zinc compound are added separately and sequentially in Sherwin-Williams’ manufacturing process" (Compl. ¶25). The court may need to consider whether a final product, formed by sequential addition of components, meets the "composition comprising" limitation, or if that limitation requires the components to be pre-mixed before being added to the paint.
V. Key Claim Terms for Construction
- The Term: "antimicrobial composition comprising"
- Context and Importance: The definition of this term appears to be the central issue foreshadowed by the complaint. Practitioners may focus on this term because Defendants’ primary non-infringement argument is allegedly that their products are not made with a pre-formed "antimicrobial composition concentrate," but rather by adding the constituent chemicals separately into the paint during manufacturing (Compl. ¶25). Whether the claims cover only pre-mixed concentrates or also the final mixture created in situ will likely be a dispositive issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of claim 1 recites a "composition comprising" its elements without requiring they be pre-mixed as a concentrate. Furthermore, other claims, like claim 3, are directed to a "functional fluid composition" which itself contains a "wet state preservative comprising an antimicrobial composition," suggesting the claimed "composition" can exist within the final fluid product (’842 Patent, col. 14:6-19).
- Evidence for a Narrower Interpretation: The "Summary of the Invention" section of the patent includes a description of "an antimicrobial composition concentrate that, upon dilution with water, provides antimicrobial efficacy in a functional fluid" (’842 Patent, col. 2:60-63). A defendant may argue that this language serves to define and limit the scope of the term "antimicrobial composition" throughout the patent to such concentrates.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It claims Defendants had actual notice of the ’842 Patent as of at least September 18, 2017, through direct communications from the Plaintiff (Compl. ¶¶35, 40). The allegations also point to a long-standing business relationship, an RFP process concerning the patented technology, and subsequent failed negotiations as further evidence of knowledge (Compl. ¶¶14-19). Plaintiff asserts that Defendants "acted recklessly" and without "a justifiable belief that they do not infringe" (Compl. ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
The dispute as framed in the complaint appears to center on the following questions for the court:
- A core issue will be one of claim construction: does the term “antimicrobial composition” require the claimed chemical components to be supplied as a pre-mixed concentrate, or can it be construed to cover a final paint product where those same components are added separately during manufacturing and co-exist in situ?
- A key evidentiary question will be one of factual infringement: assuming the claims are construed to cover final paint products, what evidence will demonstrate that Defendants' numerous accused paint lines contain both the specific isothiazolinone and zinc compounds within the concentration and ratio ranges required by the asserted claims?