PTAB

IPR2022-00676

Axalta Coating Systems LLC v. PPG Industries Ohio Inc

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Key Events
Petition

1. Case Identification

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 use, comprising a metallic basecoat layer, a color-imparting transparent ("non-hiding") intermediate layer, and a final clearcoat layer.

3. Grounds for Unpatentability

Ground 1: Obviousness over '621 Patent and Kondo - Claims 1-19 are obvious over the '621 patent in view of Kondo.

  • Prior Art Relied Upon: Patent 6,165,621 (’621 patent) and Kondo (Patent 5,830,568).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’621 patent teaches a three-coat metallic coating system for automobiles that discloses all key layers of claim 1: a metallic basecoat (Layer A), a transparent colored intermediate layer with an organic pigment (Layer B), and a clear topcoat (Layer C). However, the ’621 patent did not explicitly disclose the claimed small particle size (<150 nm) and low haze (<10%) for the pigments in the intermediate layer. Petitioner asserted that Kondo, which relates to laminated glass with colored interlayers, remedies this by teaching the use of ultra-fine pigment particles (1 to 150 nm) to achieve superior transparency and extremely low haze (as low as 0.3%).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) seeking to improve the aesthetic appearance (e.g., transparency, deep color) of the coating system taught in the ’621 patent would combine its teachings with Kondo. Kondo explicitly taught that using very small pigment particles achieves superior transparency and low haze, providing a clear reason to apply this known principle to the intermediate layer of the ’621 patent's automotive coating system.
    • Expectation of Success: A POSA would have a high expectation of success because both references relate to creating transparent, colored layers for the automotive industry, and the principle of using smaller particles to reduce light scattering (and thus haze) was a well-understood concept.

Ground 2: Obviousness over '621 Patent, Kondo, and EP ’931 - Claims 1-19 are obvious over the '621 patent in view of Kondo and EP ’931.

  • Prior Art Relied Upon: Patent 6,165,621 (’621 patent), Kondo (Patent 5,830,568), and EP ’931 (EP Application # 0388931).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 by adding EP ’931 to explicitly teach the limitation that one or more layers are "capable of ambient cure." While the ’621 patent and Kondo established the core tricoat structure with low-haze pigments, Petitioner argued they did not expressly disclose ambient curing. EP ’931, which also teaches a tricoat automotive coating system, explicitly discloses that for refinish applications, ambient temperature cure materials are preferred and teaches specific chemistries (e.g., polyisocyanates reacting with hydroxyl-bearing polymers) that readily cure at room temperature.
    • Motivation to Combine: A POSA would combine the tricoat system of the ’621 patent (as modified by Kondo) with the teachings of EP ’931 to adapt the system for the automotive refinish market. In refinish applications, curing at ambient temperature is highly desirable to reduce equipment costs and repair time, providing a strong motivation to incorporate the known ambient-cure chemistries taught by EP ’931 into the system.
    • Expectation of Success: Success was expected because EP ’931 and the ’621 patent both describe very similar automotive coating systems, making the incorporation of known ambient-cure compositions straightforward for a POSA.

Ground 3: Obviousness over Hall, Kondo, and EP ’931 - Claims 1-19 are obvious over Hall in view of Kondo and EP ’931.

  • Prior Art Relied Upon: Hall (Application # 2003/0039746), Kondo (Patent 5,830,568), and EP ’931 (EP Application # 0388931).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented Hall as an alternative primary reference to the ’621 patent. Petitioner contended that Hall, directed to retroreflective multi-layer coating systems, also discloses a tricoat system with a pigmented basecoat containing aluminum pigment (BC), a transparent mid-coat (MC), and a clear coat (CC). The motivations to combine Hall with Kondo (for small particle size and low haze) and EP ’931 (for ambient cure capability) were analogous to the arguments made in Grounds 1 and 2. Hall provided the foundational three-layer structure, which a POSA would then modify using the known techniques from Kondo and EP ’931 to achieve all claimed features.
    • Motivation to Combine: A POSA would combine these references for the same reasons as in the prior grounds: to improve the optical properties (transparency, haze) of Hall's transparent mid-coat by applying Kondo's teachings, and to make the system suitable for refinish applications by incorporating the ambient-cure chemistries taught by EP ’931.
    • Expectation of Success: A POSA would have a reasonable expectation of success because all three references are directed to automotive coatings and address similar technical objectives, making their teachings compatible and combinable.

4. Key Claim Construction Positions

  • "metallic pigment" (claims 1[a], 19[a]): Petitioner proposed this term be construed to mean "a pigment containing a metal as a substantial component." This construction was based on examples in the ’505 patent's specification, such as aluminum flake and metal oxide coated mica.
  • "capable of ambient cure" (claims 1[c], 17, 18): Petitioner argued this phrase should be construed as "the ability of a coating layer to be cured at ambient temperature." Petitioner asserted, consistent with the examiner's position during prosecution, that this is a non-limiting process limitation that does not materially affect the final cured product, as a prior art apparatus that can perform the function is sufficient to render the claim obvious.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. The petition asserted that the parallel district court litigation was in its earliest stages, with discovery having just begun and claim construction not scheduled until months after the institution decision. Petitioner further stipulated that if the inter partes review (IPR) was instituted, it would not pursue the same invalidity grounds in the district court. These factors, combined with the asserted strength of the Petitioner's obviousness grounds, were argued to weigh heavily in favor of institution.

6. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-19 of the ’505 patent as unpatentable under 35 U.S.C. §103.