Axalta Coating Systems LLC v. PPG Industries Ohio Inc

1. Case Identification

• Case #: IPR2022-00675
• Patent #: 7,981,505
• Filed: March 5, 2022
• Petitioner(s): Axalta Coating Systems, LLC
• Patent Owner(s): PPG Industries Ohio, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Coated Articles and Multi-Layer Coatings
• Brief Description: The ’505 patent discloses a three-layer ("tricoat") coating system, primarily for automotive applications. The system comprises a metallic basecoat layer, a color-imparting "non-hiding" (transparent) layer, and a clearcoat layer, where the non-hiding layer contains organic pigments with an average primary particle size of less than 150 nanometers and a maximum haze of about 10%.

3. Grounds for Unpatentability

Ground 1: Obviousness over EP '931 and Kondo - Claims 1-19

• Prior Art Relied Upon: EP '931 (European Patent Application EP 0388931) and Kondo (Patent 5,830,568).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that EP '931 teaches a multi-layer coating system for motor vehicles comprising a metallic primary base coat, a transparent pigmented intermediate coat with organic pigments, and a transparent topcoat. EP '931 also discloses that its layers can be formulated for ambient temperature cure. However, EP '931 did not expressly disclose the claimed pigment particle size (<150 nm) or maximum haze (<10%) for its intermediate layer. Petitioner asserted that Kondo, which relates to automotive laminated glass, remedies this deficiency by teaching that using ultra-fine particles with a diameter up to 150 nm in a transparent interlayer results in "superior transparency" and an "extremely low haze value" (as low as 0.3%).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the tricoat system of EP '931 with the teachings of Kondo to improve the optical properties of the intermediate layer. Because EP '931 already taught a transparent intermediate layer, a POSA would have looked to known techniques, such as those in Kondo, to optimize that transparency and reduce haze by using very small pigment particles.
  • Expectation of Success: A POSA would have a high expectation of success because both references relate to multi-layer transparent systems for the automotive industry and teach similar compositions for the intermediate layer (a resinous binder and a pigment).

Ground 2: Obviousness over EP '931, Kondo, and Grubenmann - Claims 1-19

• Prior Art Relied Upon: EP '931, Kondo, and Grubenmann (a 1986 article on organic pigments).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of EP '931 and Kondo. The addition of Grubenmann was argued to reinforce the motivation to use small particle sizes specifically for organic pigments, as taught by EP '931. Petitioner highlighted that Grubenmann explicitly teaches that "high transparency of [coating] pigmented systems... is achieved with particles smaller than 100 nm."
  • Motivation to Combine: While Kondo taught small particle sizes for primarily inorganic pigments, Grubenmann provides the direct link for applying this principle to the organic pigments used in EP '931's system. A POSA seeking to optimize the transparency of EP '931's organic pigment layer would have been motivated by Grubenmann's teachings to reduce the particle size, confirming the approach suggested by Kondo.
  • Expectation of Success: The addition of Grubenmann, which directly addresses the behavior of organic pigments in coatings, would have increased a POSA's expectation of success in achieving a highly transparent, low-haze intermediate layer.

Ground 3: Obviousness over JP '535 and Kondo - Claims 1-19

• Prior Art Relied Upon: JP '535 (JP Application # 2000-271535A) and Kondo (Patent 5,830,568).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that JP '535 provides an alternative primary reference that discloses a multi-layer automotive coating system with a "metallic coating film" layer (corresponding to the claimed non-hiding layer). Critically, JP '535 was asserted to teach that this layer contains a colored pigment with an average particle diameter of at most 50 nm, which is well below the claimed <150 nm threshold. While JP '535 teaches the small particle size, it does not explicitly state the resulting haze value.
  • Motivation to Combine: A POSA would combine JP '535 with Kondo to understand and confirm the optical properties that result from using the small (≤50 nm) pigment particles disclosed in JP '535. Kondo explicitly teaches that such small particles achieve "extremely low haze," thereby supplying the haze limitation of the challenged claims.
  • Expectation of Success: A POSA would have every expectation of success, as both references are directed to automotive coating systems and teach using small pigment particles in a transparent layer to achieve superior optical effects.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of EP '931, JP '535, and Kondo, as well as combinations including Grubenmann with JP '535, but relied on similar theories of combining teachings on coating structures with teachings on small particle sizes to achieve low haze and high transparency.

4. Key Claim Construction Positions

• "metallic pigment" (claims 1, 19): Petitioner proposed the construction "a pigment containing a metal as a substantial component," based on illustrative examples provided in the ’505 patent's specification, such as aluminum flake and metal oxide coated mica.
• "capable of ambient cure" (claims 1, 17, 18): Petitioner argued this term should be construed as "the ability of a coating layer to be cured at ambient temperature." Petitioner contended this is a non-limiting process limitation that does not materially affect the final cured product, citing the prosecution history where the Examiner repeatedly made the same finding. This construction was central to arguing that prior art teaching ambient-curable chemistries (like the urethanes in EP '931) meets this limitation, even if high-temperature curing is also disclosed.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the primary prior art references asserted in the petition (EP '931, Kondo, JP '535, and Grubenmann) were not before the Examiner during the original prosecution.
• Petitioner also argued that discretionary denial under Fintiv was unwarranted. It was asserted that the parallel district court litigation was in a very early stage, with discovery just beginning and a claim construction hearing not scheduled until eight months after the petition filing date. With a trial date not expected until 2024 at the earliest, the IPR would conclude long before trial, weighing heavily in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 7,981,505 as unpatentable under 35 U.S.C. §103.