Sherwin Williams Co v. PPG Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Valspar Corporation (Delaware) and Valspar Sourcing, Inc. (Minnesota)
  • Defendant: PPG Industries, Inc. (Pennsylvania)
  • Plaintiff’s Counsel: Briggs and Morgan, P.A.; Kirkland & Ellis LLP
• Case Identification: 0:16-cv-01429, D. Minn., 01/05/2017
• Venue Allegations: Venue is based on allegations that Defendant sells the accused products to can manufacturers with facilities in the District of Minnesota and that Defendant conducts regular and substantial business in the state.
• Core Dispute: Plaintiff alleges that Defendant’s Innovel HPS coating compositions, and cans coated therewith, infringe four patents related to polymer-based, BPA-free coatings for food and beverage containers.
• Technical Context: The technology addresses the market demand for alternatives to traditional epoxy-based can linings, driven by regulatory and consumer health concerns regarding the chemical Bisphenol A (BPA).
• Key Procedural History: The complaint alleges that Defendant previously filed inter partes reexamination requests challenging the validity of two related, but not asserted, Valspar patents. It also notes Defendant filed oppositions to related Valspar patents in Europe, suggesting a prolonged and informed competition in the BPA-free coating space and Defendant's awareness of Plaintiff's patent portfolio.

Case Timeline

Date	Event
2004-10-20	Priority Date for ’663, ’012, ’763, and ’900 Patents
2013-12-31	U.S. Patent No. 8,617,663 Issues
2014-09-15	U.S. Patent No. 8,835,012 Issues
2016-01-26	U.S. Patent No. 9,242,763 Issues
2016-05-23	Original Complaint Filed
2016-08-16	U.S. Patent No. 9,415,900 Issues
2016-09-01	Alleged "Re-Launch" of Accused Innovel HPS Product (approx.)
2017-01-05	Second Amended Complaint Filed

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's need for food and beverage can coatings that do not contain mobile or bound bisphenol A (BPA), aromatic glycidyl ether compounds, or PVC compounds, which are perceived by some as potentially harmful to human health (’663 Patent, col. 1:35-45).
• The Patented Solution: The invention is a method of coating a can using a composition that includes a latex polymer created through emulsion polymerization. This process involves combining an ethylenically unsaturated monomer component (which includes an oxirane functional group) with an aqueous dispersion of a salt of an acid- or anhydride-functional polymer, thereby creating a coating that avoids the use of traditional epoxy-based chemistries associated with BPA (’663 Patent, Abstract; col. 2:7-24).
• Technical Importance: This technology provided a pathway to produce can liners that met performance requirements while addressing regulatory and consumer pressure to remove BPA from the food-contact supply chain (’663 Patent, col. 1:35-45).

Key Claims at a Glance

• The complaint asserts independent claim 16 (Compl. ¶24).
• Essential elements of claim 16:
  • A method comprising the steps of: (a) providing an aqueous coating composition including a latex polymer that is substantially free of bound BPA and aromatic glycidyl ether compounds and is made without using PVC compounds;
  • The latex polymer is formed by emulsion polymerizing a mixture of monomers that includes 0.1 to 30 weight percent of an oxirane functional group-containing monomer;
  • This polymerization occurs in the presence of an acid- or anhydride-functional polymer; and
  • (b) spray applying the coating to an interior surface of a food or beverage can.
• 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 need for BPA-free can coatings as the ’663 Patent (’012 Patent, col. 1:35-45).
• The Patented Solution: Rather than claiming a method, this patent claims the final product: a coated aluminum beverage can. The can has a cured coating on its interior surface formed from a specific composition made without PVC, BPA, or aromatic glycidyl ethers. The composition's core is an emulsion polymerized latex polymer formed from monomers (including an oxirane group) in the presence of an aqueous dispersion of a salt of an acid- or anhydride-functional polymer (’012 Patent, Abstract; col. 2:7-24).
• Technical Importance: The patent protects the commercial end-product—the can itself—thereby covering articles of manufacture made using the patented coating technology (’012 Patent, col. 1:35-45).

Key Claims at a Glance

• The complaint asserts independent claim 80 (Compl. ¶64).
• Essential elements of claim 80:
  • A coated article comprising: an aluminum beverage can and a cured coating on its interior surface;
  • The coating is formed from a composition that includes an emulsion polymerized latex polymer;
  • The latex polymer 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;
  • The monomer component includes an oxirane group-containing monomer; and
  • 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: The ’763 Patent claims a method of coating an aluminum beverage can. The method involves receiving, spray applying, and curing a specific coating composition that is substantially free of bound BPA. The composition's latex polymer is defined as being formed from monomers that include an oxirane group and, critically, at least 40% by weight of monomers selected from alkyl acrylates and methacrylates (’763 Patent, Abstract; col. 2:7-24).
• Asserted Claims: Independent claim 1 (Compl. ¶104).
• Accused Features: The accused features are Defendant’s Innovel HPS coating and the method of applying it to beverage cans, which allegedly meets the specific monomer composition requirements of the asserted claim (Compl. ¶¶111-112).

U.S. Patent No. 9,415,900 - "Coating Compositions for Aluminum Beverage Cans and Methods of Coating Same"

• Technology Synopsis: The ’900 Patent claims the coating composition itself, intended for inside spray application on aluminum beverage cans. The composition is defined by its ingredients, which include: a salt of an acid- or anhydride-functional acrylic polymer and an amine; an ethylenically unsaturated monomer component that includes both a vinyl aromatic compound and an oxirane-group monomer; and water. The composition is further defined as being substantially free of bound bisphenol A (’900 Patent, Abstract; col. 2:7-24).
• Asserted Claims: Independent claim 1 (Compl. ¶144).
• Accused Features: The accused feature is the Innovel HPS coating composition itself, which is alleged to be prepared from the claimed ingredients and be suitable for the claimed purpose (Compl. ¶¶148-149).

III. The Accused Instrumentality

Product Identification

Defendant’s Innovel HPS coating compositions and beverage cans coated therewith (Compl. ¶¶7, 10).

Functionality and Market Context

The complaint identifies Innovel HPS as an "aqueous coating composition" and an "internal protective spray lacquer for the beverage can industry" (Compl. ¶¶31, 35). The product is alleged to use "water-based Bisphenol A non-intent (BPA-NI, or with no BPA intentionally added) coatings technology" (Compl. ¶35). The complaint alleges the product is spray-applied to the interior of aluminum and steel beverage cans as a replacement for "traditional epoxy-based coatings" (Compl. ¶¶25, 35). It is further alleged to be commercially available, approved by major brands, and designed to "run efficiently on beverage-can production lines with little need for line changes or disruptions" (Compl. ¶¶35, 36).

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 including a latex polymer that is substantially free of bound BPA and aromatic glycidyl ether compounds and made without using PVC compounds.	¶31	col. 3:24-30
...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 emulsion polymerizing a mixture of monomers including 0.1 to 30 weight percent of an oxirane functional monomer in the presence of an acid- or anhydride-functional polymer.	¶31	col. 2:7-18
...and (b) spray applying the coating composition to an interior surface of a food or beverage can or a portion thereof.	Defendant and its customers are alleged to spray apply the Innovel HPS coating composition to the interior surface of beverage cans.	¶¶25, 32	col. 2:18-24

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 coated articles comprising an aluminum beverage can with a cured coating of Innovel HPS on its interior surface.	¶72	col. 3:66-4:2
...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...	The coating is alleged to be formed from the Innovel HPS composition, which includes an emulsion polymerized latex polymer made by polymerizing monomers in the presence of a salt of an acid- or anhydride-functional polymer.	¶71	col. 2:7-13
...wherein the ethylenically unsaturated monomer component includes an oxirane group-containing monomer...	The monomer component of the Innovel HPS polymer is alleged to include an oxirane group-containing monomer.	¶71	col. 2:13-14
...and wherein the coating composition is made without using PVC compounds, BPA, or aromatic glycidyl ether compounds.	The Innovel HPS composition is alleged to be made without using PVC compounds, BPA, or aromatic glycidyl ether compounds.	¶71	col. 3:24-30

Identified Points of Contention

• Scope Questions: The complaint alleges the accused product uses "BPA non-intent (BPA-NI, or with no BPA intentionally added) coatings technology" (Compl. ¶35). This raises the question of whether a "non-intent" formulation meets the legal standard of being "substantially free of bound BPA," a term defined in the patents (’663 Patent, col. 3:25-28). The case may turn on factual evidence of the accused product's chemical composition and the construction of this claim term.
• Technical Questions: The complaint's infringement allegations largely mirror the claim language (e.g., Compl. ¶¶30-31, 70-71). A key technical question will be what evidence demonstrates that the Innovel HPS polymer is actually formed by "emulsion polymerizing a mixture of... monomers... in the presence of an acid- or anhydride-functional polymer," as required by the claims. The specifics of Defendant's proprietary manufacturing process will be central to this inquiry.

V. Key Claim Terms for Construction

"substantially free of bound BPA"

• Context and Importance: This term is central to the patents' positioning as a BPA-free alternative. The accused product is marketed as "BPA non-intent" (Compl. ¶35). The dispute will likely focus on whether the amount of BPA, if any, present in a "non-intent" product falls within the scope of "substantially free."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent specification provides a quantitative definition, stating the term "means that the compositions of the present invention contain less than 1000 parts per million (ppm) of the recited mobile compound" (’663 Patent, col. 3:25-28). This explicit definition may support a broader interpretation that allows for some level of the compound to be present.
  • Evidence for a Narrower Interpretation: The specification also defines the stricter terms "essentially free" (<100 ppm), "essentially completely free" (<5 ppm), and "completely free" (<20 ppb) (’663 Patent, col. 3:28-39). A party could argue that, in the context of the patent's goal to solve a health-related problem, the "substantially free" language should be construed more narrowly to align with one of these stricter standards.

"in the presence of an acid- or anhydride-functional polymer"

• Context and Importance: This term defines a key step in the claimed polymerization process. Proving infringement requires showing that the accused Innovel HPS product is manufactured using this specific chemical pathway. Practitioners may focus on this term because it relates to the defendant's proprietary manufacturing process, which may differ from the patented method.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The detailed description states the latex polymer is prepared by polymerizing the monomers "in an aqueous medium in the presence of the salt of an acid group- or anhydride group-containing polymer" (’663 Patent, col. 6:2-5). This language suggests the co-existence of the components during the reaction is the critical factor.
  • Evidence for a Narrower Interpretation: The patent discloses preferred types of acid-functional polymers, such as acrylic polymers, alkyd resins, and polyesters (’663 Patent, col. 9:54-61). A party might argue that this term should be limited to the types of polymers disclosed or that the function performed by this polymer in the patented invention is distinct from any stabilizing agent used in the accused manufacturing process.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement based on Defendant's sale of Innovel HPS to can manufacturers accompanied by instructions, promotional materials, technical support, and press releases that allegedly encourage and direct customers to use the product in an infringing manner (Compl. ¶¶33-38). Contributory infringement is alleged on the basis that Innovel HPS is a material component of the patented inventions, is not a staple article of commerce, and is especially made for an infringing use (Compl. ¶¶39-41).

Willful Infringement

Willfulness is alleged based on Defendant's knowledge of the asserted patents since their issuance and of the underlying applications since their publication (Compl. ¶¶23, 63, 103, 143). The claim is further supported by allegations that Defendant filed challenges against related Valspar patents, demonstrating knowledge of the patent family, and "Re-Launched" the accused product in the U.S. after the initial complaint in the lawsuit was filed (Compl. ¶¶51, 59).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can Defendant's "BPA non-intent" product formulation be considered "substantially free of bound BPA" as that term is defined in the patents and understood in the art, or will factual evidence of trace contaminants create a triable issue of fact?
• A key evidentiary question will be one of process chemistry: does the secret, proprietary process used to manufacture the Innovel HPS coating align with the specific polymerization step recited in the claims, namely, that it occurs "in the presence of an acid- or anhydride-functional polymer"?
• A central question for damages will be willfulness and intent: given the allegations of Defendant's long-running awareness of Plaintiff's patent portfolio and its decision to allegedly increase sales efforts post-suit, can Plaintiff prove that any infringement was sufficiently egregious to justify enhanced damages?