DCT
2:17-cv-01023
Sherwin Williams Co v. PPG Industries Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Sherwin-Williams Company (Ohio)
- Defendant: PPG Industries, Inc. (Pennsylvania)
- Plaintiff’s Counsel: Duane Morris LLP; Kirkland & Ellis LLP
- Case Identification: 2:17-cv-01023, W.D. Pa., 03/01/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Pennsylvania because Defendant is incorporated in Pennsylvania and maintains its headquarters within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Innovel HPS line of coating compositions, used for the interior of food and beverage cans, infringes five patents related to coating formulations that are substantially free of Bisphenol A (BPA).
- Technical Context: Internal coatings for food and beverage cans are critical for preventing contamination and corrosion, and the market has seen a significant shift away from traditional epoxy-based coatings due to public and regulatory concerns regarding BPA.
- Key Procedural History: The complaint alleges Defendant was aware of the asserted patent family prior to the lawsuit, citing Defendant's inter partes reexamination requests against related, non-asserted patents and opposition proceedings against related European patents. Plaintiff also notes that the original complaint in this matter was filed on May 23, 2016, putting Defendant on notice of the allegations, and that Defendant subsequently undertook a "Re-Launch" of the accused product line.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-20 | Priority Date for all Patents-in-Suit |
| 2013-03-14 | ’663 Patent Application Publication Date |
| 2013-08-01 | ’012 Patent Application Publication Date |
| 2013-12-31 | U.S. Patent No. 8,617,663 Issues |
| 2014-09-16 | U.S. Patent No. 8,835,012 Issues |
| 2015-01-29 | ’763 Patent Application Publication Date |
| 2016-01-26 | U.S. Patent No. 9,242,763 Issues |
| 2016-05-19 | ’900 Patent Application Publication Date |
| 2016-05-23 | Original Complaint Filing Date |
| 2016-08-16 | U.S. Patent No. 9,415,900 Issues |
| 2016-09-01 | Accused Product "Re-Launch" (approximate) |
| 2018-01-09 | U.S. Patent No. 9,862,854 Issues |
| 2018-03-01 | Third Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,617,663 - "Coating Compositions for Cans and Methods of Coating"
The Invention Explained
- Problem Addressed: The patent addresses the market perception that compounds historically used in can coatings—such as bisphenol A (BPA), aromatic glycidyl ether compounds, and PVC compounds—are potentially harmful to human health, creating a need for alternative coating technologies ('663 Patent, col. 1:35-42).
- The Patented Solution: The invention is a method for creating a latex-based aqueous coating that is substantially free of these controversial compounds. The method involves a specific chemical process: forming a latex polymer by "emulsion polymerizing" a mixture of monomers (including one with an oxirane functional group) in an aqueous dispersion that already contains an "acid- or anhydride-functional polymer." This process creates a stable latex polymer suitable for spray-coating onto the interior of beverage cans ('663 Patent, col. 1:46-2:6).
- Technical Importance: This approach provides a pathway to produce can coatings that meet demanding performance requirements (e.g., food safety, adhesion, durability) without relying on traditional epoxy resin chemistry derived from BPA ('663 Patent, col. 1:26-35).
Key Claims at a Glance
- The complaint asserts independent method claim 16 ('663 Patent, Compl. ¶24).
- The essential elements of claim 16 are:
- Providing an aqueous coating composition that includes a latex polymer that is substantially free of bound BPA and aromatic glycidyl ether compounds and is made without using PVC compounds.
- Wherein the latex polymer is formed by emulsion polymerizing a mixture of ethylenically unsaturated monomers comprising 0.1 to 30 weight percent oxirane functional group-containing monomer... in the presence of an acid- or anhydride-functional polymer.
- Spray applying the coating composition to an interior surface of a food or beverage can or a portion thereof.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 8,835,012 - "Coating Compositions for Aluminum Beverage Cans and Methods of Coating Same"
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’663 Patent: the need for effective can coatings that do not contain BPA, aromatic glycidyl ethers, or PVC compounds (’012 Patent, col. 1:12-45).
- The Patented Solution: This patent claims the end product—a coated aluminum beverage can—rather than the method of making the coating. The solution is an aluminum can with a cured internal coating formed from a composition that includes an "emulsion polymerized latex polymer." This polymer is described as the reaction product of an unsaturated monomer component (containing an oxirane group) polymerized in the presence of an aqueous dispersion of a salt of an acid- or anhydride-functional polymer, with the entire composition made without using PVC, BPA, or aromatic glycidyl ether compounds (’012 Patent, col. 14:17-31).
- Technical Importance: By claiming the final article of manufacture, the patent provides a different scope of protection than a method claim, covering the cans themselves as they exist in the market, regardless of where or by whom the coating was applied (’012 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent product claim 80 (’012 Patent, Compl. ¶64).
- The essential elements of claim 80 are:
- A coated article comprising: an aluminum beverage can... and a cured coating on an interior surface.
- Wherein the coating is formed from a coating composition that includes an emulsion polymerized latex polymer.
- The latex polymer comprises a reaction product of an ethylenically unsaturated monomer component (including an oxirane group-containing monomer) polymerized in the presence of an aqueous dispersion of a salt of an acid- or anhydride-functional polymer.
- Wherein the coating composition is made without using PVC compounds, BPA, or aromatic glycidyl ether compounds.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 9,242,763 - "Coating Compositions for Aluminum Beverage Cans and Methods of Coating Same"
- Technology Synopsis: This patent claims a method of coating a beverage can. The method involves receiving a BPA-free coating composition with a specific latex polymer and then spray applying and curing it. The claim specifies that the monomer component used to make the polymer must contain at least 40% by weight of alkyl acrylates and methacrylates (Compl. ¶110).
- Asserted Claims: Independent method claim 1 (Compl. ¶104).
- Accused Features: The complaint alleges that Defendant’s customers directly infringe by receiving, spray applying, and curing the Innovel HPS coating composition onto beverage cans (Compl. ¶112).
U.S. Patent No. 9,415,900 - "Coating Compositions for Aluminum Beverage Cans and Methods of Coating Same"
- Technology Synopsis: This patent claims the coating composition itself. The claim requires an emulsion polymerized latex polymer prepared from ingredients that include a salt of an acid- or anhydride-functional acrylic polymer, an amine, and a monomer component that includes both a vinyl aromatic compound and an oxirane-group containing monomer. The composition must be substantially free of bound BPA and suitable for inside spray coating of a two-piece aluminum can (Compl. ¶147).
- Asserted Claims: Independent composition claim 1 (Compl. ¶144).
- Accused Features: The complaint alleges that the Innovel HPS product itself is an inside spray beverage can coating composition that meets all the limitations of the claim (Compl. ¶148-149).
U.S. Patent No. 9,862,854 - "Coating Compositions for Aluminum Beverage Cans and Methods of Coating Same"
- Technology Synopsis: This patent claims an inside spray beverage can coating composition that is substantially free of bound BPA. The claim requires a latex polymer prepared by emulsion polymerizing a monomer component in the presence of a salt of an "organic-solution polymerized" acid- or anhydride-functional acrylic polymer and a tertiary amine. The composition also requires a phenoplast crosslinker and must be made without using PVC compounds (Compl. ¶172).
- Asserted Claims: Independent composition claim 25 (Compl. ¶169).
- Accused Features: The complaint alleges that the Innovel HPS product is a coating composition that contains all the elements recited in the claim, including the specific polymer type, monomer components, and a phenoplast crosslinker (Compl. ¶173-174).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s “Innovel HPS” line of coating compositions (Compl. ¶6).
Functionality and Market Context
- The complaint alleges Innovel HPS products are "internal protective spray lacquers for the beverage can industry" and are marketed as a "water-based Bisphenol A non-intent (BPA-NI...)" technology (Compl. ¶35). These coatings are designed to replace "traditional epoxy-based coatings," allowing can makers to transition to a BPA-free internal lining for aluminum and steel beverage cans (Compl. ¶35). The complaint alleges these coatings are sold to U.S. manufacturers of beverage cans for spray application to the can interiors (Compl. ¶6).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,617,663 Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method, comprising the steps of: (a) providing an aqueous coating composition that includes a latex polymer that is substantially free of bound BPA and aromatic glycidyl ether compounds and is made without using PVC compounds, | Innovel HPS is alleged to be an aqueous coating composition that is substantially free of these compounds. | ¶31 | col. 3:25-4:14 |
| wherein the latex polymer is formed by emulsion polymerizing a mixture of ethylenically unsaturated monomers comprising 0.1 to 30 weight percent oxirane functional group-containing monomer, based on the weight of the mixture, in the presence of an acid- or anhydride-functional polymer; | The latex polymer in Innovel HPS is alleged to be formed by this specific emulsion polymerization process. | ¶31 | col. 6:8-14 |
| and (b) spray applying the coating composition to an interior surface of a food or beverage can or a portion thereof. | Defendant’s customers are alleged to spray apply the Innovel HPS coating to the interior of beverage cans. | ¶32 | col. 21:28-35 |
Identified Points of Contention
- Technical Question: The complaint alleges on "information and belief" that the latex polymer in Innovel HPS is formed via the claimed process (Compl. ¶31). A central question will be one of process identity: what evidence demonstrates that Defendant’s proprietary manufacturing process for the Innovel HPS polymer involves emulsion polymerization of monomers in the presence of an acid- or anhydride-functional polymer, as required by the claim?
- Scope Question: The claim requires a composition "substantially free of bound BPA." The patent provides a quantitative definition for this term ('663 Patent, col. 3:25-28). The dispute may raise the question of whether Defendant’s "BPA non-intent" formulation meets the specific threshold defined and claimed in the patent.
U.S. Patent No. 8,835,012 Infringement Allegations
| Claim Element (from Independent Claim 80) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A coated article comprising: an aluminum beverage can including a body portion and a bottom end portion; and a cured coating on an interior surface of the aluminum beverage can, | Defendant’s customers are alleged to make, use, and sell aluminum beverage cans with a cured coating of Innovel HPS on the interior surface. | ¶72 | col. 14:17-20 |
| wherein the coating is formed from a coating composition that includes an emulsion polymerized latex polymer that comprises a reaction product of an ethylenically unsaturated monomer component polymerized in the presence of an aqueous dispersion of a salt of an acid- or anhydride-functional polymer, | Innovel HPS is alleged to be a coating composition containing a latex polymer made via this specific reaction process. | ¶71 | col. 6:8-14 |
| wherein the ethylenically unsaturated monomer component includes an oxirane group-containing monomer, | The monomer component used to make the Innovel HPS polymer is alleged to include an oxirane group-containing monomer. | ¶71 | col. 7:29-34 |
| and wherein the coating composition is made without using PVC compounds, BPA, or aromatic glycidyl ether compounds. | The Innovel HPS coating is alleged to be made without using these specified compounds. | ¶71 | col. 1:35-42 |
Identified Points of Contention
- Evidentiary Question: As with the ’663 Patent, the infringement allegation hinges on the chemical composition and manufacturing process of the Innovel HPS polymer, which is alleged on "information and belief" (Compl. ¶71). The key factual question will be whether discovery confirms that the Innovel HPS latex polymer is a "reaction product" created in the specific manner required by the claim language.
- Scope Question: The claim requires the coating to be on an "aluminum beverage can." Should the accused product be used on steel cans or other types of containers, it would raise a question of whether such articles fall within the scope of this claim.
V. Key Claim Terms for Construction
The Term: "substantially free of bound BPA and aromatic glycidyl ether compounds" (’663 Patent, Claim 16)
Context and Importance
This term is central to the invention's purpose and the commercial distinction of the accused product. The precise quantitative meaning of "substantially free" will be critical to determining infringement, particularly how it relates to Defendant's characterization of its product as "BPA non-intent" (Compl. ¶35).
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent explicitly defines the term to mean the composition contains "less than 1000 parts per million (ppm) of the recited mobile compound" (’663 Patent, col. 3:25-28). A party could argue this sets a clear, objective, and relatively high ceiling.
- Evidence for a Narrower Interpretation: The patent specification also defines "essentially free" (<100 ppm) and "completely free" (<20 ppb) (’663 Patent, col. 3:29-39). A party might argue that these adjacent, more stringent definitions provide context suggesting that "substantially free" should be construed closer to the lower end of its defined range, or that it implies more than just meeting a numerical threshold.
The Term: "polymerized in the presence of an aqueous dispersion of a salt of an acid- or anhydride-functional polymer" (’012 Patent, Claim 80)
Context and Importance
This phrase describes the core chemical process for creating the claimed latex polymer. Infringement for both the method claims and product-by-process claims across the asserted patents depends on whether the accused Innovel HPS product is made using this specific technique. Practitioners may focus on this term because the sequence and nature of the polymerization reaction is a key technical distinction of the invention.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The detailed description states the process involves combining an unsaturated monomer component with the aqueous dispersion and then polymerizing it (’012 Patent, col. 8:59-65). This could support a reading that does not require a specific order or mechanism, as long as the functional polymer is present in the aqueous medium when polymerization occurs.
- Evidence for a Narrower Interpretation: The claim requires polymerization in the presence of the polymer salt dispersion. A defendant could argue this implies the polymer salt must act as a stabilizer or play a specific role during the emulsion polymerization, and that their process uses a different mechanism or sequence that avoids this limitation. The patent emphasizes that this polymer salt promotes water dispersibility, suggesting a functional rather than merely incidental role (’012 Patent, col. 13:1-4).
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement, stating that Defendant sells Innovel HPS to can manufacturers and provides "instructions on how to apply the coating compositions" (Compl. ¶6). It further alleges that Defendant publishes press releases, data sheets, and other materials that "encourage and instruct its customers" to use the product in a manner that directly infringes the asserted method claims (Compl. ¶¶ 34, 37).
Willful Infringement
- The complaint alleges willfulness based on Defendant's pre-suit knowledge of the patent family, dating back to at least the publication of the application for the ’663 patent on March 14, 2013 (Compl. ¶23). It further supports this allegation by citing Defendant's prior "freedom to operate" analyses, its challenges to related patents at the USPTO and in Europe, and its continued and escalating sales after being served with the original complaint in 2016 (Compl. ¶¶ 47, 50-52, 59-60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of process identity: can Plaintiff produce evidence to overcome the "information and belief" pleading standard and demonstrate that Defendant's proprietary method for manufacturing the Innovel HPS polymer is the same as the specific multi-step chemical process recited in the asserted claims (i.e., polymerization of specific monomers in the presence of a salt of an acid-functional polymer)?
- A second key issue will be one of definitional scope: does Defendant’s "BPA non-intent" product formulation fall within the patents' specific quantitative definition of being "substantially free" of BPA, and how will the court construe this term in light of the surrounding claim language and specification?
- A third question will relate to willfulness: given the complaint's allegations of Defendant's extensive pre-suit knowledge of the patent family and its active challenges to related patents, what evidence will be dispositive in determining whether the alleged infringement, if found, was egregious enough to warrant enhanced damages?