THE VALSPAR CORPORATION et al v. PPG INDUSTRIES, INC.

Filing 279

MEMORANDUM OPINION re: Claim Construction Signed by Chief Judge Joy Flowers Conti on 8/13/2018. (ahm)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
SHERWIN-WILLIAMS CO.,
Plaintiffs,
v.
PPG INDUSTRIES, INC.,
Defendants.

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Civ. A. No. 17-01023

MEMORANDUM OPINION
CONTI, Chief District Judge
I.

INTRODUCTION
This patent infringement case involves five patents (the “Asserted Patents”), i.e., U.S.

Patent Nos. 8,617,663 (the “’663 Patent”); 8,835,012 (the “’012 Patent”); 9,242,763 (the “’763
Patent”); 9,415,900 (the “’900 Patent); and 9,862,854 (the “’854 Patent”). (ECF No. 194.) The
Asserted Patents are continuations of U.S. Patent No. 8,173,265, which is a continuation-in-part
of U.S. Patent No. 7,592,047 (the “’047 Patent). (ECF No. 207 at 2.) The Asserted Patents share
the same specification and relate, generally, to a coating composition for the interior of food or
beverage cans that includes an emulsion polymerized latex polymer and is substantially free of
bisphenol A (“BPA”), along with methods of using such coatings. (’900 Patent, col. 1, ll. 41–43;
49–52; 56–58.)
The parties submitted a joint disputed claim terms chart along with the appendices
containing intrinsic evidence. (ECF Nos. 214, 215, 216.) Sherwin-Williams Company (“Sherwin”)
filed an opening claim construction brief, to which PPG Industries, Inc. (“PPG”) responded. (ECF
Nos. 220, 230.) Both parties filed identifications of extrinsic evidence with their initial briefs and

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cross-objections to the opposing party’s extrinsic evidence. (ECF Nos. 221, 232, 231, 249.)
Sherwin also filed a claim construction reply brief which was followed by PPG’s sur-reply claim
construction brief. (ECF Nos. 248, 265.) Once the matter was fully briefed, the court held a
technology tutorial and a claim construction hearing.1 (ECF No. 266 (Tr.).)
Initially, the parties requested construction of two claim terms, and PPG contended that
three additional claim terms were indefinite and, therefore, invalid. (ECF No. 214 at 2–15.) The
parties also stipulated to an agreed upon construction of an originally disputed claim. (ECF No.
214-1 at 1.) Subsequently, PPG withdrew its proposed construction of one of the disputed terms
along with one of its indefiniteness challenges and, therefore, adopted Sherwin’s construction of
those terms.2 (ECF No. 230 at 7 n.1.) With respect to the final disputed term—if the court
determines it to be limiting—the parties agree to its construction and scope. (ECF Nos. 248 at 7
n.4; 248-3; 266 at 79, 82–83, 87.) Accordingly, as reflected in the chart below, the court must
resolve two indefinite challenges and ascertain whether one claim term is limiting.
Disputed Term
1. “quaternary salt linkage”

2. “global extraction result”

Sherwin’s Construction
“linkage resulting from a tertiary
amine neutralized acidfunctional polymer reacting with
an oxirane-functional monomer
or polymer”
Not indefinite; “result from the
test described at ’900 patent, col.
23, ll. 49–63”

1

PPG’s Construction
PPG agrees to Sherwin’s
construction

Indefinite under 35 U.S.C.
§ 112, ¶ 2

After the claim construction hearing, and well beyond the close of briefing, PPG filed another
piece of extrinsic evidence asserting it was a “First Notice of Supplemental Authority.” (ECF No.
271.) PPG did not seek approval of its desire to open the briefing. This exhibit is untimely and
will, therefore, not be considered by the court in its claim construction analysis.
2
The court has an “independent obligation to determine the meaning of the claims,
notwithstanding the views asserted by the adversary parties.” X2Y Attenuators, LLC v. Int’l Trade
Comm’n, 757 F.3d 1358, 1365 (Fed. Cir. 2014) (quoting Exxon Chem. Patents, Inc. v. Lubrizol
Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995)). After reviewing the intrinsic record, the court finds
adequate support for the parties’ stipulated constructions and, therefore, adopts those constructions
as set forth in the accompanying order.
2

3. “the coating composition
is suitable for forming an
inside spray coating of a
two-piece drawn and
ironed aluminum beverage
can”

Not indefinite; plain and
ordinary meaning

Not indefinite; Plain and
ordinary meaning:
4. “polymerizable
“polymerizable unsaturated
unsaturated monomer”
monomer used to generate the
acid- or anhydride-functional
acrylic polymer”
5. “inside spray beverage can This term is limiting
coating composition”3
II.

Indefinite under 35 U.S.C.
§ 112, ¶ 2

PPG agrees to Sherwin’s
construction

This term is not limiting

LEGAL STANDARDS
A.

Generally Applicable Principles of Claim Construction

Claim construction is a question of law. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388–91 (1996)).
“It is a bedrock principle of patent law that the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (en banc) (internal quotation marks and citations omitted). “[T]he words of a claim are
generally given their ordinary and customary meaning[,]” which is “the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
of the effective filing date of the patent application.” Id. at 1312–13 (internal quotation marks and
citations omitted). In arriving at this meaning, courts consider intrinsic evidence which includes
“the words of the claims themselves, the remainder of the specification, [and] the prosecution
history,” along with “extrinsic evidence concerning relevant scientific principles, the meaning of

The parties agree that—if limiting—this term means “a coating composition that can be spray
applied to a metal substrate such as a can using spray equipment.” (ECF No. 266 at 87.)
3

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technical terms, and the state of the art.” Id. at 1313 (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
“[T]he language of the claim frames and ultimately resolves all issues of claim
interpretation.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002)
(quoting Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997)). While claim
language “provide[s] substantial guidance as to the meaning of particular claim terms,” the context
of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314.
Furthermore, “[o]ther claims of the patent in question, both asserted and unasserted,” can be highly
instructive because “terms are normally used consistently throughout the patent.” Id. (citations
omitted). “Differences among claims can also be a useful guide in” claim construction. Id. (citation
omitted). Under the doctrine of claim differentiation, “the presence of a dependent claim that adds
a particular limitation gives rise to a presumption that the limitation in question is not present in
the independent claim.” Id. at 1314–15 (citation omitted).
Claims “must be read in view of the specification, of which they are a part.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996). “The specification may assist in resolving ambiguity where the ordinary and accustomed
meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to
be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. “Usually, [the specification] is
dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed Cir. 1996)). “Although
the specification may aid the court in interpreting the meaning of disputed language in the claims,
particular embodiments and examples appearing in the specification will not generally be read into
the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)

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(citations omitted). “Even when the specification describes only a single embodiment, the claims
of the patent will not be read restrictively unless the patentee has demonstrated a clear intent to
limit the claim scope ‘using words or expressions of manifest exclusion or restriction.’” LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, 299 F.3d at
1327).
In their claim construction analysis, courts “should also consider the patent’s prosecution
history, if it is in evidence.” Markman, 52 F.3d at 980 (citing Graham v. John Deere Co., 383 U.S.
1, 33 (1966)). A patent’s prosecution history “consists of the complete record of the proceedings
before the PTO [Patent and Trademark Office] and includes the prior art cited during the
examination of the patent.” Phillips, 415 F.3d at 1317 (citation omitted). “[T]he prosecution history
can often inform the meaning of the claim language by demonstrating how the inventor understood
the invention and whether the inventor limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.” Id. The reexamination history of a patent is
also part of its prosecution history. Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1379
(Fed. Cir. 2017) (citing Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1266 (Fed.
Cir. 2015)).
Finally, “[i]n some cases,” courts “need to look beyond the patent’s intrinsic evidence and
to consult extrinsic evidence in order to understand, for example, the background science or the
meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at 841
(citation omitted). “Extrinsic evidence consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
Markman, 52 F.3d at 980. However, “[e]xtrinsic evidence is to be used for the court’s
understanding of the patent, not for the purpose of varying or contradicting the terms of the

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claims.” Id. at 981. “In most situations, an analysis of the intrinsic evidence alone will resolve any
ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic
evidence.” Vitronics, 90 F.3d at 1583 (citations omitted). In sum, “[t]he construction that stays
true to the claim language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa per Azioni, 158
F.3d 1243, 1250 (Fed. Cir. 1998) (citations omitted).
B.

Indefiniteness

Section 112 requires that a patent specification “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the applicant regards as
his invention.” 35 U.S.C. § 112, ¶ 2. This provision mandates that “a patent’s claims, viewed in
light of the specification and prosecution history, inform those skilled in the art about the scope of
the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2129 (2014). The definiteness requirement of § 112, ¶ 2 strikes a “delicate balance” between the
“inherent limitations of language” and providing “clear notice of what is claimed.” Id. (citations
omitted). However, “absolute precision is unattainable.” Id. “[T]he certainty which the law
requires in patents is not greater than is reasonable, having regard to their subject-matter.” Id.
(quoting Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 270 (1916)). Whether a claim meets the
definiteness requirement is a question of law. Amgen Inc. v. F. Hoffman–LA Roche Ltd., 580 F.3d
1340, 1371 (Fed. Cir. 2009). Indefiniteness must be proven by clear and convincing evidence.
Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (citing Teva Pharm.
USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir. 2015)).

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C.

Claim Construction and Patent Families

“Where multiple patents derive from the same parent application and share many common
terms,” courts “must interpret the claims consistently across all asserted patents.” SightSound
Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (internal quotation marks and
citation omitted). “Any statement of the patentee in the prosecution of a related application as to
the scope of the invention [is] relevant to claim construction[.]” Microsoft Corp. v. Multi–Tech
Systems, 357 F.3d 1340, 1350 (Fed. Cir. 2004). “When multiple patents derive from the same
initial application, the prosecution history regarding a claim limitation in any patent that has issued
applies with equal force to subsequently issued patents that contain the same claim limitation.”
Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (citing Jonsson v. The
Stanley Works, 903 F.2d 812, 817–18 (Fed. Cir. 1990)).
III.

CONSTRUCTION OF DISPUTED CLAIM TERMS
A.

Person of Ordinary Skill in the Art

The parties provided the court with proposed definitions of the Person of Ordinary Skill in
the Art (the “POSITA”) at the time of the inventions set forth in the Asserted Patents. Sherwin
describes the POSITA as having
at least a bachelor’s degree in a field such as chemistry, organic
chemistry, chemical engineering, materials science, or a similar
subject, as well as at least four years of practical experience in the
field of coatings for food and beverage containers, including
experience with inside spray coatings for beverage cans.
(ECF No. 220 at 21.) PPG describes the POSITA as having a
Bachelor’s degree in chemistry, polymer science, chemical
engineering, mechanical engineering (including materials science),
or a similar discipline, as well experience in the coatings field (such
as development, use, testing, or optimization of coatings for end
uses). The more education one has (e.g., additional studies,
coursework, or degrees), the less experience needed to attain an

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ordinary level of skill. Likewise, more extensive experience might
substitute for some educational requirements.
(ECF No. 230 at 9–10.) The court need not resolve the minor differences between the parties’
definitions of the POSITA because they are not dispositive with respect to any claim construction
or indefiniteness dispute.
B.

Claims to be Construed

The court must decide whether two claim terms are indefinite and determine whether one
claim term is limiting.
1.

“global extraction result”4

Asserted Patents and Claims
’763 Patent: claim 40
’012 Patent: claim 24
’900 Patent: claim 19
’854 Patent: claims 1, 6,
15, 20

Sherwin’s Construction

PPG’s Construction

Not indefinite; “result from Indefinite under 35 U.S.C. §
the test described at ’900 112, ¶ 2
patent, col. 23, ll. 49–63”

The “global extraction test is designed to estimate the total amount of mobile material that
can potentially migrate out of a coating and into food packed in a coated can.” (’900 Patent, col.
23, ll. 40–42.) Certain claims of the Asserted Patents require that the coating achieve a specified
“global extraction result.” For example, claim 19 of the ’900 Patent requires the coating
composition cured under the conditions described in that claim to “exhibit[ ] a global extraction
result of less than 10 ppm.” (Id. at col. 58 ll. 62–67.) The specification explains that “[a]cceptable
extraction conditions and media can be found in 21 CFR 175.300 paragraph (d) and (e).” (Id. at
col. 23 ll. 44–46.) The next paragraph states that “[t]he extraction procedure used in the current

Sherwin’s proposed construction of the “global extraction result” cites to the ’012 Patent’s
specification. However, throughout this opinion the court references the ’900 Patent’s specification
which, for all pertinent purposes, is identical to specification of the ’012 Patent. Therefore, to be
consistent, the court will cite to the relevant specification passages from the ’900 Patent in
construing this claim term as well.
4

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invention is described in 21 CFR 175.300 paragraph (e)(4)(xv)” with certain, explicit
“modifications to ensure worst-case scenario performance . . . .” (Id. at ll. 49–52.) After listing
those modifications, the specification provides that “the amount of extractives was determined as
described in 21 CFR 175.300 paragraph (e)(5) . . . .” (Id. at ll. 59–61.) The dispute between the
parties is whether a POSITA can determine, with reasonable certainty, how to calculate the “global
extraction result.”
a.

Parties’ Arguments

Sherwin asserts that the POSITA would understand, with the requisite reasonable certainty,
that the “global extraction result” must be calculated using the procedure described in 21 CFR §
175.300 paragraph (e)(4)(xv). (ECF No. 220 at 18.) PPG, on the other hand, reads the specification
as endorsing all the procedures in 21 C.F.R. § 175.300(d) and (e) for calculating the “global
extraction result,” and argues that Sherwin did not incorporate any of these procedures into the
claims. (ECF No. 230 at 27–28.) Therefore, PPG contends that a POSITA cannot determine, with
reasonable certainty, which one of over a dozen acceptable procedures set forth in 21 C.F.R. §
175.300(d) and (e) must be utilized to calculate the “global extraction result.” (Id. at 27.) PPG also
argues that all these tests are found in the “Examples” section of the specification with an explicit
disclaimer that these examples “are not to be construed as limiting the scope” of the invention. (Id.
at 29.) Accordingly, PPG construes the specific reference to 21 CFR § 175.300 paragraph
(e)(4)(xv) as, at best, relating to a preferred embodiment that must not be read into the claims. (Id.)
b.

Analysis

The court agrees with Sherwin that, based upon the specification, a POSITA would
understand, with reasonable certainty, how to calculate the “global extraction result.” The record
reflects that “global extraction result” is a measurable quantitative value, that is, the total amount

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of mobile material that can potentially migrate out of a coating and into food packed in a coated
can. The claim language, however, does not delineate a procedure for measuring this value.
Therefore, the court turns to the specification for guidance. The specification explains that there
are various acceptable procedures to calculate a “global extraction result,” which are listed in 21
C.F.R. § 175.300(d) and (e). Out of those procedures, the specification adopts the one described
in § 175.300 paragraph (e)(4)(xv) with certain explicitly stated modifications. In sum, the
specification acknowledges that “multiple known approaches exist,” but informs the POSITA of
“which approach to select[ ]” to calculate the global extraction result. Dow Chemical Co. v. Nova
Chemicals Corp. (Canada), 803 F.3d 620, 630 (Fed. Cir. 2015).
PPG’s argument that, because it appears in the “Examples” section of the specification, the
procedure described in 21 CFR § 175.300 paragraph (e)(4)(xv) relates, at best, to a preferred
embodiment is untenable for two reasons. (ECF Nos. 230 at 29; 265 at 5.) First, the language in
the specification explicitly states that the aforementioned extraction procedure is “used in the
current invention[.]” (’900 Patents, col. 23, ll. 49–50.) Therefore, it would be an error to confine
this procedure only to a preferred embodiment, as PPG suggests, because “[w]hen a patentee
‘describes the features of the present invention as a whole,’ he implicitly alerts the reader that ‘this
description limits the scope of the invention.’” Luminara Worldwide, LLC v. Liown Elecs. Co.,
814 F.3d 1343, 1353 (Fed. Cir. 2016) (quoting Regents of the Univ. of Minn. v. AGA Med. Corp.,
717 F.3d 929, 936 (Fed. Cir. 2013)). Second, the specification further provides that “[p]referred
coatings give global extraction results of less than 50ppm, more preferred results of less than
10ppm, even more preferred results of less than 1ppm.” (’900 Patent, col. 23, ll. 63–65.) Whether
a coating composition is a preferred embodiment of the invention is not tied to the procedure used

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to calculate the “global extraction result;” rather, it depends on the numerical value of the “global
extraction result.”
Based upon the foregoing, the court finds that PPG failed to prove by clear and convincing
evidence that the claim term “global extraction result” is indefinite. Accordingly, the court
construes “global extraction result” as the “result from a test described at ’900 Patent, col. 23, ll.
49–63.”
2.

“the coating composition is suitable for forming an inside spray
coating of a two-piece drawn and ironed aluminum beverage can”
(the “suitable for” term)

Asserted Patents and Claims
’900 Patent: claims 1, 3, 6, 8,
10, 12, 13, 16, 17, 19, 24, 26,
27, 29, 31, 32, 34, 36, 38, 39,
43, 44, 47, 50, 52, 53,
55, 57, 68, 70, 71, 73

Sherwin’s Construction
Not indefinite; plain
ordinary meaning

PPG’s Construction

and Indefinite under 35 U.S.C. §
112, ¶ 2

The ’900 Patent’s claims require that “[t]he coating composition is suitable for forming an
inside spray coating of a two-piece drawn and ironed aluminum beverage can.” (’900 Patent, claim
1.) The dispute between the parties is whether a POSITA can determine, with reasonable certainty,
what makes a coating composition “suitable for” use as a spray-applied interior-can coating.
a.

Parties’ Arguments

Sherwin primarily argues that the “suitable for” term should be given its plain and ordinary
meaning because a POSITA in the interior-can coatings’ industry fully understands what makes a
composition “suitable for” use as a spray-applied interior-can coating. (ECF. No. 220 at 21.)
Sherwin also draws the court’s attention to the “Background” section of the ’900 Patent as
identifying four specific criteria—high-speed application to the substrate; safe for food contact;
excellent adhesion to the substrate; and resist degradation over long periods of time—as providing
further certainty to the scope of the claims. (Id.) Relying on its expert’s declaration, Sherwin asserts

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that the POSITA would not only “inherently know what makes a coating suitable for use as a
coating on the interior of a beverage can, but [also] that the specification comports with this
knowledge.” (Id. at 23.) Finally, Sherwin presents PPG’s marketing materials—that describe
PPG’s own coatings using the “suitable for” language—as further evidence that the disputed term
has an established meaning in the interior-can coatings’ industry. (Id.)
PPG maintains that the “suitable for” term is a term of degree and that the specification
fails to provide objective guidance by which one could determine, with reasonable certainty, when
a coating is “suitable” to act as a spray-applied interior-can coating. (ECF No. 230 at 10–11.) PPG
argues that the specification discloses different tests for assessing various performance
characteristics of coating compositions but does not identify “which tests must be passed, how
many must be passed, or how test results should be balanced, in order to determine when a coating
is ‘suitable’ for beverage cans.” (Id. at 12.) PPG asserts that Sherwin’s reliance on the
“Background” section is misplaced because the “suitable for” term is not used in that section, there
is no explanation why the criteria listed there are determinative of suitability, and those criteria are
equally indefinite. (Id. at 14–15.)
PPG contends that giving the “suitable for” term its plain and ordinary meaning would
allow Sherwin to “later argue it to mean whatever Sherwin wants.” (Id. at 11.) In support of this
contention, PPG claims that the prosecution history of the ’047 Patent—the parent patent of the
Asserted Patents—reflects that Sherwin repeatedly argued to the USPTO that in order to be
“suitable for” use as a spray-applied interior-can coating, a composition must have an undefined
“balance” of “stringent properties.” (Id. at 15–16.) According to PPG, however, Sherwin’s list of
these “stringent properties” has never been objectively bounded and has, in fact, evolved over time.

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(Id. at 15.) PPG argues that such a “moving target” renders the “suitable for” term indefinite. (Id.
at 18.)
Relying on its expert’s declaration, PPG asserts that the “suitable for” term is indefinite
because suitability requires compliance with individual customer requirements which “is a
subjective process that varies based on each customer.” (Id.) Finally, PPG rejects Sherwin’s notion
that the “suitable for” term has an established meaning as reflected in PPG’s own marketing
materials related to coatings because those materials “long post-date the ’900 Patent and are not
properly considered.” (Id. at 21 n.13.)
b.

Analysis

The court agrees with Sherwin that the POSITA can determine, with reasonable certainty,
what makes a coating composition “suitable for” use as a spray-applied interior-can coating. The
claim language, which is the starting point of the court’s analysis, does not define the scope of the
“suitable for” term. The specification, however, identifies certain base-line requirements that
provide objective boundaries for the “suitable for” term. The prosecution history reveals not only
that the POSITA would understand the “suitable for” term as falling within those base-line
requirements, but also that the requirements associated with the “suitable for” term are well known
in the interior-can coatings’ industry.
i.

The specification

The “Background” section of the ’900 Patent states that:
Packaging coatings should preferably be capable of high-speed
application to the substrate and provide the necessary properties
when hardened to perform in this demanding end use. For example,
the coating should be safe for food contact, have excellent adhesion
to the substrate, and resist degradation over long periods of time,
even when exposed to harsh environments.

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(’900 Patent, col. 1, ll. 36–40.) (emphasis added). In the court’s view, the above emphasized
baseline characteristics “provide[ ] enough certainty to one of skill in the art when read in the
context of the invention” to render the “suitable for” term definite. Sonix Tech. Co. v. Publ’ns
Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1369 (Fed. Cir. 2014)). The specification’s language that such coatings “provide
the necessary properties when hardened to perform in this demanding end use,” further reflects
that there are certain requirements specific to these coating compositions. (’900 Patent, col. 1, ll.
35–37.) The prosecution history of the ’047 Patent, discussed in the next section, confirms that
those requirements are well known in the interior-can coatings’ industry.
PPG also argues that the “suitable for” term is indefinite because the specification discloses
various tests for assessing characteristics of a coating without providing absolute pass/fail criteria
for these tests. (ECF No. 230 at 12.) This argument is untenable for three reasons. First, as Sherwin
correctly argues, “a patentee need not define his invention with mathematical precision in order to
comply with the definiteness requirement.” Sonix Tech., 844 F.3d at 1377. (ECF. No. 248 at 3.)
Second, the court agrees with Sherwin that these tests are tools that the POSITA “can use to assess
properties of a coating but are not themselves the criteria for determining whether” a coating
composition is “suitable for” use as a spray-applied interior-can coating.5 (Id.) Third, as Sherwin
accurately contends, the “claims directed to these specific tests are set forth separately in the
dependent claims,”—e.g., claims 19–21, 35–38, 49–52 of the ’900 Patent—and “[u]nder the

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PPG acknowledged the existence of these tests in the past. During the inter partes reexamination
of the ’047 Patent, PPG argued that its prior art patent disclosed “subject[ing] the coated aluminum
panels to tests that were recognized in the art to demonstrate suitability for beverage can coatings.”
(ECF No. 216-11 at 15–16.)
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doctrine of claim differentiation, the specific tests and numerical values set forth in the dependent
claims are presumed to have different meaning[s].”6 (Id. at 3–4.)
Based upon the foregoing, it is evident that the base-line requirements identified in the
specification provide sufficient objective boundaries for the POSITA to determine, with
reasonable certainty, what makes a coating composition “suitable for” use as a spray-applied
interior-can coating. Therefore, the “suitable for” term is not indefinite.
ii.

Prosecution History

PPG claims that the ’047 Patent’s prosecution history reflects that the “suitable for” term
envisages a coating composition with an “undefined balance” of “stringent properties.” (ECF No.
230 at 15.) PPG asserts that the “suitable for” term is indefinite because Sherwin’s list of these
“stringent properties” is objectively unbounded and has evolved over time. (Id.) The court’s review
of the ’047 Patent’s prosecution history, however, reveals that PPG failed to prove by clear and
convincing evidence that the “suitable for” term is indefinite. In fact, as explained below, ’047
Patent’s prosecution history reflects that the “stringent properties” associated with the “suitable
for” term are not only well known in the interior-can coatings’ industry, but are also within the
scope of the base-line requirements outlined in the specification.
During prosecution of the ’047 Patent, the examiner found that a PPG prior art patent, U.S.
Patent No. 4,692,491 (“Ranka”), disclosed all the compositional elements of the ’047 Patent’s
independent claims. (ECF No. 215-24.) In response, Sherwin argued that the claimed coating
compositions in its application were “suitable food-contact coatings of food or beverage cans,”

Sherwin’s claim differentiation argument is supported by the prosecution history of ’047 Patent
where, after explaining that can interior coatings must exhibit a balance of stringent coating
properties, Sherwin noted that “[i]n preferred embodiments, the coating composition of the
invention exhibits a suitable balance of [those] properties . . . .” (ECF No. 216-2 at 8.)
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and that to be “suitable for food-contact applications, a coating must exhibit a balance of stringent
coating properties.” (ECF No. 216-2 at 8.) Sherwin explained that, “[i]n preferred embodiments,
the coating composition of the invention exhibits a suitable balance of [those] properties . . . .”
(Id.) Sherwin asserted that while Ranka discloses a polymer that may be useful in coating
applications, it does not “disclose using [that] polymer in coatings intended for any particular end
use, let alone in food or beverage packaging coating.” (Id. at 9.) Sherwin was able to overcome
the examiner’s obviousness rejection by arguing that the POSITA seeking a food or beverage can
coating would have no reason to focus on or pick the Ranka composition.7 (Id. at 10.)
Once the ’047 Patent issued, PPG challenged its validity in an inter partes reexamination
proceeding. (ECF No. 216-11.) PPG argued that U.S. Patent No. 5,714,539 (“Perez”)—another
PPG prior art patent—“teaches the coating compositions of claim 1 of the ’047 Patent, as well as
their suitability to coat beverage cans.” (Id. at 15.) PPG listed several reasons why a POSITA
would have understood Perez to teach the suitability of its compositions to coat the inside surfaces
of beverage-cans including the fact that Perez disclosed “subject[ing] the coated aluminum panels
to tests that were recognized in the art to demonstrate suitability for beverage can coatings.” (Id.
at 15–16.) The examiner agreed with PPG and found that Perez disclosed the composition claimed
in the ’047 Patent. (ECF No. 215-29.) In response, Sherwin narrowed the claims of the ’047 Patent
“to coating compositions for the inside surfaces of food and beverage cans.” (ECF No. 216-12 at
18.) Sherwin asserted that this was a significant limitation because “[c]an-interior coatings are
specialty products that must meet stringent requirements.” (Id. at 18, 22.) Sherwin argued that a

PPG’s assertion that, at this stage, “Sherwin’s core argument was that its coating compositions
were novel and non-obvious because they exhibited “a suitable balance” of these properties[,]”
is not supported by the record. (ECF No. 230 at 16.)
7

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POSITA would not have looked to Perez as the starting point for an interior-can coating because
Perez does not discuss those stringent requirements at all.8 (Id. at 27.)
Sherwin submitted evidence documenting the industry’s view of the art regarding the
stringent requirements for interior-can coatings. (Id. at 22–26.) Sherwin referenced an article
written by PPG’s own expert in that proceeding, Dr. Raymond Good. (Id. at 22.) In that article,
Dr. Good discussed some of the demands placed on interior-can coatings and noted that, among
other things, such coatings must have low applied cost, good corrosion resistance, good abuse
resistance, and impart no off flavor to product.9 (Id. at 22–23.) Sherwin offered the statement of
an unrelated company, Akzo Nobel, summarizing the industry’s view that “there are particularly
stringent and specific requirements of coating compositions for can interiors which are different
from those for other coatings.” (Id. at 26.) Sherwin included various excerpts from previously
issued PPG patents demonstrating that PPG was aware of these stringent requirements. (Id. at 23–
25.) In response, PPG admitted that the stringent requirements for interior-can coatings were
known, but argued that the ’047 Patent did not claim those requirements. Specifically, PPG stated:
[Sherwin] argues that the stringent and demanding requirements for
can coatings were well known to those skilled in this technology,
yet criticizes Perez for failing to reiterate those well known
requirements. Perez should not be criticized for not telling skilled
persons what they already knew. Moreover, the ’047 Patent claims
contain no recitation of any of those supposedly critical features.
(ECF No. 216-14 at 9–10.)

PPG mischaracterizes the prosecution history by claiming that, at this stage, Sherwin “reiterated
that ‘suitability’ requires an undefined balance of ‘stringent’ properties,” and urged that the prior
art—in particular, Perez—did not sufficiently meet these performance requirements.” (ECF No.
230 at 17.)
9
In the current proceeding, PPG erroneously attributes these additional properties to Sherwin and
argues that “[t]his growing list of ‘stringent’ properties creates an endlessly malleable approach
for determining whether a coating composition is ‘suitable for forming an inside spray coating.’”
(ECF No. 230 at 17.)
8

17

From the foregoing, it is evident that—based upon the stringent requirements of the
interior-can coatings’ industry—PPG has a clear understanding of what makes a coating
composition “suitable for” use as a spray-applied interior-can coating. This understanding, in turn,
supports Sherwin’s primary argument that the POSITA—with the appropriate education
background and practical experience in the interior-can coatings’ industry—would know what
makes a composition suitable for use as a spray-applied interior-can coating.
In sum, PPG failed to prove by clear and convincing evidence that the “suitable for” term
is indefinite. The specification identifies certain base-line requirements that provide objective
boundaries for the “suitable for” term. The ’047 Patent’s prosecution history reflects that the plain
and ordinary meaning of the “suitable for” term is sufficiently clear to the POSITA. Accordingly,
the “suitable for” term will be given its plain and ordinary meaning.
3.

“inside spray beverage can coating composition” (the “preamble
phrase”)

Asserted Patents and Claims
’900 Patent: claims 1, 3, 6, 8,
10, 12, 13, 16, 17, 19, 24, 26,
27, 29, 31, 32, 34, 36, 37, 38,
39, 43, 44, 47, 50, 52, 53, 55,
57, 68, 70, 71, 73, 79 and 80
’854 Patent: claims 1, 6, 15,
20, 25, 31, 38, 43, 50 and 58

Sherwin’s Construction

PPG’s Construction

This term is limiting

This term is not limiting

The “preamble phrase” appears in the independent claims of the ’900 and the ’854
Patents. Claim 1 of the ’900 Patent is fairly representative and provides:
An inside spray beverage can coating composition, comprising:
an emulsion polymerized latex polymer that is prepared from ingredients
including:
a salt of an acid- or anhydride-functional acrylic polymer and an
amine;
an ethylenically unsaturated monomer component that includes a
vinyl aromatic compound and an oxirane-group containing
monomer; and
water;
18

wherein the coating composition is substantially free of bound bisphenol
A, and wherein the coating composition is suitable for forming an inside
spray coating of a two-piece drawn and ironed aluminum beverage can.
(’900 Patent, claim 1.) (emphasis added). The dispute between the parties is whether the
above emphasized language, that is, the “preamble phrase” is limiting.
a.

Parties’ Arguments

Sherwin contends that the “preamble phrase” is limiting because it imposes a structural
limitation on the claimed composition, i.e., the claimed composition has “to be capable of being
sprayed on the inside of a can.” (ECF No. 266 at 77.) Sherwin also argues that the claims of the
’900 and the ’854 Patents depend on the “preamble phrase” for antecedent basis. (ECF No. 248 at
7.) PPG asserts that the “preamble phrase” is not limiting because the claims define a structurally
complete composition and the “preamble phrase” only states, at best, a convenient descriptive
name or an intended use of the claimed composition. (ECF. Nos. 230 at 23–24; 266 at 79.)
b.

Analysis

The court agrees with Sherwin that the “preamble phrase” is limiting. It is well
established that
a preamble may be limiting if: it recites essential structure or steps;
claims depend on a particular disputed preamble phrase for
antecedent basis; the preamble is essential to understand limitations
or terms in the claim body; the preamble recites additional structure
or steps underscored as important by the specification; or there was
clear reliance on the preamble during prosecution to distinguish the
claimed invention from the prior art.
Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017) (quoting
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)) (internal
quotation marks and brackets omitted). Conversely, “[a] preamble is not a claim limitation if the
claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a

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purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997)).
Whether a preamble should be treated as a claim limitation depends upon “the facts of each
case in light of the claim as a whole and the invention described in the patent.” Storage Tech. Corp.
v. Cisco Sys., 329 F.3d 823, 831 (Fed. Cir. 2003). Accordingly, to ascertain whether the “preamble
phrase” limits the claims, the starting point of the court’s analysis is the language of the claims.
After reviewing the claim language of the aforementioned exemplary claim 1 of the ’900 Patent,
the court is not persuaded by PPG’s assertion that the “preamble phrase” merely states a convenient
descriptive name or an intended use of the claimed composition. The court construes the “preamble
phrase” as providing an essential structure of the claimed composition. Specifically, the court finds
that the “preamble phrase” adds a distinct structural limitation that the claimed composition must
be capable of being spray applied to the interior of a can.
Alternatively, the court finds that the claims in both the ’900 and the ’854 Patents depend
on the “preamble phrase” for antecedent basis. As Sherwin correctly asserts, each of the
independent claims in the ’854 Patent incorporating the “preamble phrase”—i.e., claims 1, 25, 38,
50, 58—also recite the “preamble phrase” as a limitation in the body of the claims.10 (ECF No.

10

Claim 25 of the ’854 Patent is fairly representative and provides:
An inside spray beverage can coating composition, comprising:
an emulsion polymerized latex polymer that is substantially free of bound
[b]isphenol A and bound aromatic glycidyl ether compounds and is
prepared by emulsion polymerizing an ethylenically unsaturated monomer
component in the presence of an aqueous dispersion of a salt of an organicsolution polymerized acid- or anhydride-functional acrylic polymer and a
tertiary amine, wherein the ethylenically unsaturated monomer component
includes an alkyl (meth)acrylate, a glycidyl ester of an alpha, betaethylenically unsaturated acid or anhydride, and a vinyl aromatic
component that is at least 20 wt-% of the ethylenically unsaturated
monomer component; and
a phenoplast crosslinker;
20

248 at 7.) The independent claims of the ’900 Patent incorporating the “preamble phrase”—claims
1, 53, 73—also rely upon the “preamble phrase” as antecedent basis for limitations recited in the
body of those claims by referring in the claim body back to a portion of the “preamble phrase,”
that is, “the coating composition.”11 (Id.)
Based on the foregoing, the court concludes that the “preamble phrase” is limiting and
adopts the parties’ agreed upon construction regarding its meaning and scope. Accordingly, the
“preamble phrase” refers to a “a coating composition that can be spray applied to a metal substrate
such as a can using spray equipment.” (ECF No. 266 at 87.)
IV.

CONCLUSION
For the reasons set forth above, the court adopts the foregoing claim constructions, and

concludes that PPG failed to establish that any claim terms are indefinite. The court resolved the
parties’ claim construction and indefiniteness dispute without relying on extrinsic evidence.
Accordingly, the parties’ objections to extrinsic evidence (ECF Nos. 231, 249,) will be overruled

wherein the inside spray beverage can coating composition is made without using
PVC compounds.
(’854 Patent, claim 25.) (emphasis added).
11
Claim 1 of the ’900 Patent provides:
An inside spray beverage can coating composition, comprising:
an emulsion polymerized latex polymer that is prepared from ingredients
including:
a salt of an acid- or anhydride-functional acrylic polymer and an
amine;
an ethylenically unsaturated monomer component that includes a
vinyl aromatic compound and an oxirane-group containing
monomer; and
water;
wherein the coating composition is substantially free of bound bisphenol
A, and wherein the coating composition is suitable for forming an inside
spray coating of a two-piece drawn and ironed aluminum beverage can.
(’900 Patent, claim 1.) (emphasis added).
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as moot. An order setting forth the construction of all claim terms that were disputed at any point
in these proceedings will be filed contemporaneously with this opinion.
By the court,
Dated: August 13, 2018

/s/ JOY FLOWERS CONTI
Joy Flowers Conti
Chief United States District Judge

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