United States District Court Strikes Patentee’s Expert’s Testimony That Contradicted The Patentee’s Statements Made In A Vacated Reexamination Proceeding
On January 21, 2021, the United States District Court for the Western District of Pennsylvania adopted the report and recommendation of the special master recommending the court grant defendant’s motion to exclude options set forth in an expert report prepared on behalf of patentee-plaintiff, because those opinions were contradicted by patentee-plaintiff’s statements to the patent office made during reexamination of the at-issue patent. The Sherwin-Williams Company v. PPG Industries, Inc., 2-17-CV-01023 (W.D. Pa. Jan. 21, 2021) (Conti, J.).
In 2012, PPG Industries, Inc. (“PPG”) filed a reexamination proceeding to challenge claims of two patents assigned to The Sherwin-Williams Company (“Sherwin”) that were related to the patents asserted in the district court litigation. The patent office agreed that the two patents were invalid, in part, because the so-called Perez prior art reference did not teach the presence of BPA. Sherwin then sought reconsideration of the patent office decision, where its attorney expressly admitted that the Perez reference did disclose a BPA-free coating: “Perez, on the other hand, is a BPA free coating.” Sherwin was ultimately successful, and the Court of Appeals for the Federal Circuit (“CAFC”) vacated the reexamination decision.
In 2017, in the district court litigation, Sherwin contradicted its admission regarding Perez in an expert report contending that Perez did not disclose a BPA-free coating. Sherwin argued that it should not be bound by its attorney statement made during the reexamination because the CAFC “wiped the slate clean for Sherwin to relitigate the issue,” and, as such, the estoppel doctrines do not apply. Sherwin, 2-17-CV-01023 at 4. PPG argued that the CAFC “vacated the decision, but did not expunge the record, of the reexamination proceeding.” Id. (emphasis in the original).
The special master held for PPG, finding that Sherwin’s statement was not “an off-the-cuff comment,” but rather, it was an “unambiguous position taken . . . in a written brief.” Id. The district court agreed and adopted the report and recommendation of the special master. The court noted that “filings in the patent office represent positions of the party which have consequences.” Id. at 5. Further, the court concluded that PPG is entitled to rely on Sherwin’s positions taken at the patent office to distinguish prior art, and that such positions should be accepted at face value. A patentee cannot take a specific position to obtain a patent and assert a contrary position in a litigation. Accordingly, the court held that the proffered inconsistent expert testimony is not probative and is not admissible.