FRIDAY, MARCH 4, 2022
Attorneys informed a jury on Tuesday (March 1), that a 29-year-old patent will be the key in determining whether global coatings manufacturers PPG Industries or The Sherwin-Williams Company copied the other’s BPA-free spray-on food and beverage latex can liner.
The case, taking place in Pittsburgh, asks the jury and senior U.S. District Judge Joy Flowers Conti to weigh the validity of each manufacturer’s patents, previously created to avoid the bisphenol A chemical. The case is Sherwin-Williams Co. v. PPG Industries Inc., case number 2:17-cv-01023, in the U.S. District Court for the Western District of Pennsylvania.
Lawsuit History
Back in 2016, Sherwin-Williams issued a lawsuit against PPG over allegations that the Pittsburgh-based coatings supplier infringed five Sherwin patents covering a food or beverage can coating that substantially lacks any BPAs. Since then, however, PPG has stipulated to infringement in the case, but has also argued that the asserted patents aren't valid, according to a special master.
The patents-in-suit are U.S. Patent Nos. 8,617,663; 8,835,012; 9,242,763; 9,415,900; and 9,862,854.
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Attorneys informed a jury on Tuesday (March 1), that a 29-year-old patent will be the key in determining whether global coatings manufacturers PPG Industries or The Sherwin-Williams Company copied the other’s BPA-free spray-on food and beverage latex can liner. |
Some years later, in 2020, a motion was filed by PPG that part of a Sherwin expert F. Joseph Schork’s testimony relating to PPG’s own prior art patent, referred to as the Perez patent, be excluded. In November, Special Master Henry M. Sneath asserted to the Pennsylvania federal court that the motion should be granted.
According to reports, while Schork noted that the PPG patent didn’t cover a coating free of BPA, court documents revealed that Sherwin had said the opposite when it told the U.S. Patent and Trademark Office during reexamination proceedings in 2012 that the Perez patent did cover a BPA-free coating.
Special master Sneath said he found that Sherwin's statement to the USPTO was binding.
“It seems unfair that Sherwin gets another bite at characterizing the Perez Patent's disclosure over six years later in [its expert's] report, when it so clearly articulated its position in 2012 and PPG and its experts relied on that position from that point forward,” the special master wrote.
“That statement must be accepted at face value during this litigation. Because it was an unfettered statement about a reference and it was not couched in relation to any specific patent claim, it is immaterial whether that statement by Sherwin was ultimately relied upon by the USPTO examiner, the [Patent Trial and Appeal Board], or the Federal Circuit.”
In his report, the special master continually stood by his recommendation, arguing that the decision was based on the incorrect finding and that Sherwin be estopped from taking a different position in the case.
Despite these arguments, later that month, Sherwin-Williams urged Judge Conti not to block its expert, arguing that the exemption would allegedly contradict what the paint company told the patent office years ago. In its argument, Sherwin argued that Sneath’s recommendation “is also contrary to Federal Circuit precedent from earlier this year holding that it is the factfinder — here, the jury — that must decide what weight, if any, to give an admission made during Patent Office proceedings.”
At the time, the case was set for trial in February 2021 and was planned to be split into two phases: one concerning whether the asserted patents are valid and another concerning whether infringement was willful and what any damages should be, according to the special master's report and recommendation.
The case was indefinitely postponed in January 2021, however, as a result of the ongoing COVID-19 pandemic. That month, the court also ruled that PPG was entitled to rely on the position Sherwin took at the USPTO, thus binding Sherwin to the position it took at the USPTO that Perez discloses a BPA-free coating.
The court reasoned that the “prosecution history, which includes ‘all express representations made by or on behalf of the applicant to the examiner to induce a patent grant,’ limits the interpretation of the claims ‘so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.’”
Thus, “a patentee’s representations to the PTO during the prosecution of its patent application about the scope of the prior art is a binding admission and should ‘be accepted at face value’ during subsequent litigation over the patent.”
What Now
According to reports, upon review of a 29-year-old patent, a jury will have to determine if PPG copied a Sherwin can coating or whether Sherwin had copied an earlier PPG product based on validity of the patents.
In opening arguments presented earlier this week, counsel for PPG said five Sherwin-Williams patents for a BPA-free spray-on can liner shouldn’t have ever have been granted, as the company alleges that the patents were based on work PPG completed in the 1990s. In countering this statement, Sherwin-Williams said that PPG's earlier patent was different, and that it had been PPG that copied Sherwin when both started marketing BPA-free food and beverage can liners.
“PPG, not Sherwin, obtained the first patent on BPA-free coatings for inside cans, so Sherwin's patents should never have been granted,” said PPG representative Celine Crowson of Hogan Lovells. “Sherwin is trying to use its patents to compete with PPG, when it couldn't make a product better than PPG's.”
Crowson went on to report that the earlier patent—applied for in 1993 and granted to PPG by the USPTO in 1998—had included key components reused in Sherwin’s later products, including a “core-shell” structure free of BPA. In addition, the patent, invented by now-former PPG researcher Leon Perez, also covered spray-on application methods of testing that were also used in Sherwin patents.
In closing her argument, Crowson alleged that after BPA started raising concerns, PPG revisited Perez's work in 2008 and used that patent as a basis for Innovel, PPG's patented spray-on beverage can coating and the product that Sherwin said infringes on its own designs.
These statements were countered by representatives for Sherwin, who reported that the Perez patent had never been applied to food or beverage cans and was different from the product that Valspar and later Sherwin-Williams developed and patented starting in the early 2000s. Due to the timing of PPG’s launch of Innovel, it was actually Sherwin’s work that had been copied and not the company’s own prior research.
“PPG's own internal documents make clear that PPG was not the first to invent a BPA-free can coating,” said Garret Leach of Kirkland & Ellis, quoting from emails between PPG execs that said the company “needs a bigger boat… if we're going to pass the Valspar shark.”
Leach added that even if Perez had been the first to patent a BPA-free latex, Sherwin's version used different manufacturing methods, tweaked the other chemicals to make a new product, and was the first to successfully commercialize the coating for use in cans for soda, beer, water or energy drinks
An expert at Sherwin was reported to go as far as to try and recreate the Perez coating directly from the description in the older patent. According to the expert, the result was a “cottage cheese-like mess” that couldn’t have been the same as Sherwin’s product. However, when a PPG expert recreated the patent, Leach alleged that the recipe must have been tampered with, in order to get a result closer to what Sherwin made.
Instead of looking to the Perez patent from the start, PPG started its own “Manhattan Project” to catch up with Sherwin, including consulting with an engineer who had worked for Sherwin on its version before coming to work for PPG, Leach told the jurors.
At the end of the proceedings on Tuesday, the attorneys both outlined additional expert witnesses they intend to bring to the stand over the anticipated three-week trial. Witnesses include Perez himself, executives and researchers from both companies, and engineers who independently examined the patents at issue.
Representatives for Sherwin-Williams include Adam M. Kaufmann and Megan M. New of Barnes & Thornburg LLP, Garret A. Leach, Ashley Ross, Brian A. Verbus, Daniel P. Gross and Greg Polins of Kirkland & Ellis LLP and Gerald J. Schirato Jr. of Duane Morris LLP.
Representatives for PPG Industries Inc. include Andrew K. Fletcher, Kevin M. Eddy, Erica Graves and Richard M. Weibley of Blank Rome LLP and Celine J. Crowson, Joseph J. Raffetto, Keith O'Doherty, Ryan J. Stephenson, Corey T. Leggett and Nicholas W. Rotz of Hogan Lovells LLP.
According to a schedule published by the U.S. District Court for the Western District of Pennsylvania, a jury trial was slated to take place at 9:30 a.m. yesterday (March 3).
Tagged categories: Bisphenol A (BPA); Business matters; Business operations; Coating chemistry; Coating Materials; Coatings; Coatings manufacturers; Coatings Technology; Good Technical Practice; Health and safety; Laws and litigation; Lawsuits; PPG; Program/Project Management; Sherwin-Williams
