UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AFTON CHEMICAL CORPORATION
`
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`
`Patent Owner
`
`Case IPR2017-01321
`Patent 8,076,274
`
`__________________________________________________________________
`
`SUPPLEMENTAL DECLARATION OF JACK EMERT, Ph.D
`__________________________________________________________________
`
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`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AFTON CHEMICAL CORPORATION
`
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`
`Patent Owner
`
`Case IPR2017-01321
`Patent 8,076,274
`
`__________________________________________________________________
`
`SUPPLEMENTAL DECLARATION OF JACK EMERT, Ph.D
`__________________________________________________________________
`
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`
`
`TABLE OF CONTENTS
`
`I.
`
`BACKGROUND AND QUALIFICATIONS, MATERIALS
`CONSIDERED, CLAIM INTERPRETATION, LEGAL STANDARDS,
`AND LEVEL OF SKILL IN THE ART ......................................................... 3
`SUPPLEMENTAL ASSIGNMENT ............................................................... 4
`II.
`III. PURPORTED OBVIOUSNESS OF CLAIMS 1-12 OVER FETTERMAN
`AND ARROWSMITH ’371 (GROUND 3) .................................................... 5
`A. Overview of Fetterman .......................................................................... 5
`B. Overview of Arrowsmith ’371 .............................................................. 6
`C.
`Fetterman and Arrowsmith ’371 Do Not Render the Claims
`Obvious.................................................................................................. 6
`IV. PURPORTED OBVIOUSNESS OF CLAIM 13 OVER COLCLOUGH
`AND ARROWSMITH ’371 (GROUND 4) ..................................................16
`V. UNEXPECTED RESULTS ...........................................................................17
`
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`
`
`I, Jack Emert, Ph.D declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS, MATERIALS
`CONSIDERED, CLAIM INTERPRETATION, LEGAL STANDARDS,
`AND LEVEL OF SKILL IN THE ART
`1.
`I have prepared another declaration in connection with this matter. I
`
`understand that that declaration has been filed as Exhibit 2025.
`
`2.
`
`Paragraphs 1-9 of my previous declaration set forth my educational,
`
`work, and other technical background and qualifications. Moreover, a copy of my
`
`CV was attached to that declaration as Attachment A.
`
`3.
`
`Paragraphs 10-15 of my previous declaration summarize the
`
`assignment at issue in that declaration, along with the materials that I have
`
`reviewed in forming the opinions I have offered in connection with this
`
`proceeding.
`
`4.
`
`Paragraphs 16-18 of my previous declaration discuss my
`
`understanding of the proper construction of the terms of U.S. Patent No. 8,076,274
`
`(“the ’274 patent”).
`
`5.
`
`Paragraphs 19-28 of my previous declaration set forth the legal
`
`standards I applied in arriving at my opinions.
`
`6.
`
`And, paragraphs 29-32 of my previous declaration set forth my
`
`understanding and definition of the level of ordinary skill in the art that applies to
`
`the ’274 patent.
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`
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`7.
`
`Rather than reproducing the actual text, I incorporate all of this
`
`discussion into this supplemental declaration by reference.
`
`II.
`
`SUPPLEMENTAL ASSIGNMENT
`8.
`In supplement to my previous declaration, I have been asked consider,
`
`analyze, and explain two additional grounds of purported unpatentability relating
`
`to the claims of the ’274 patent. This includes the alleged obviousness of claims 1-
`
`12 in view of the combination of E.P. Publication No. 0 311 318 A1 (“Fetterman”)
`
`and U.S. Pub. No. 2004/0127371 (“Arrowsmith ‘371”), and the alleged
`
`obviousness of claim 13 in view of the combination of E.P. Publication No. 0 280
`
`579 A2 (“Colclough”) and Arrowsmith ’371.
`
`9.
`
`The opinions expressed in this declaration are not exhaustive of my
`
`opinions regarding the patentability of the claims of the ’274 patent. Therefore, the
`
`fact that I do not address a particular point should not be understood to indicate an
`
`agreement on my part that any claim does not comply with the requirements of any
`
`applicable patent or other rules.
`
`10.
`
`I reserve the right to amend and supplement this declaration in light of
`
`additional evidence, arguments, or testimony presented during this IPR.
`
`11.
`
`In forming the opinions set forth in this declaration, I have considered
`
`and relied upon my education, knowledge of the relevant field, knowledge of
`
`scientific and engineering principles, and my experience. I have also reviewed and
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`
`
`considered the materials I listed in my previous declaration. However, I note that
`
`this declaration focuses on the ’274 patent, Fetterman, Colclough, and
`
`Arrowsmith ’371.
`
`III. PURPORTED OBVIOUSNESS OF CLAIMS 1-12 OVER
`FETTERMAN AND ARROWSMITH ’371 (GROUND 3)
`12.
`In my opinion, as of the ’274 patent’s filing date, one of ordinary skill
`
`in the art would not consider the subject matter of claims 1-12 to be obvious over
`
`the combination of Fetterman and Arrowsmith ’371.
`
`A.
`13.
`
`Overview of Fetterman
`Fetterman relates to “ashless lubricating oil compositions.”
`
`(Fetterman at 2:2-5.)
`
`14.
`
`To make its compositions “ashless,” Fetterman omits (or at least
`
`attempts to mimimize) its use of ash forming components. This includes, for
`
`instance, metal containing detergents and the zinc dialkyl dithiophosphate antiwear
`
`agent. This is reflected in Fetterman’s examples. Example 1 employs 0.51% of a
`
`magnesium detergent that is 9.2 wt. % magnesium. (Fetterman at Table 1.) This
`
`results in 0.046% magnesium in the lubricant. Example 2 employs no detergent
`
`and thus includes no magnesium.
`
`15.
`
`I also note that Fetterman purposefully employs a specific sulfurized
`
`phenolic antioxidant. (Fetterman at Abstract, 4:49-5:3.)
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`
`
`Overview of Arrowsmith ’371
`B.
`16. Arrowsmith ’371 relates to a “low-ash lubricating oil” with “improved
`
`lead corrosion protection and improved compatibility with engines equipped with
`
`particulate traps.” (Arrowsmith ’371 at ¶ [0001].) Arrowsmith ’371’s oils
`
`preferably have between 0-0.6 wt % ash. (Arrowsmith ’371 at ¶¶ [0008], [0060].)
`
`17. Arrowsmith ’371 also explains that “[s]urprisingly, it has been found
`
`that, in engines operated by low-sulphur … fuels, the amount of detergent needed
`
`to provide detergency and acid neutralization can be reduced from conventional
`
`amounts.” (Arrowsmith ’371 at ¶ [0056].)
`
`18. Arrowsmith ’371 does include a very generic statement that an
`
`amount of antioxidant between 0-5 mass % can be included in a lubricating
`
`composition, but it does not direct one of ordinary skill in the art to use any
`
`particular antioxidant, or use the specific types and concentration of antioxidants
`
`required by the ’274 patent’s claims in combination with the required specific type
`
`and concentration of magnesium detergent. (Arrowsmith ’371 at ¶¶ [0071],
`
`[0077].)
`
`C.
`
`Fetterman and Arrowsmith ’371 Do Not Render the Claims
`Obvious
`19. As an initial matter, I understand that for a claim to be obvious over a
`
`combination of prior art references, those references must disclose all the
`
`limitations required by the claim.
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`
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`20.
`
`In my opinion, Fetterman and Arrowsmith ’371 do not disclose use of
`
`an “antioxidant component” “selected from one or more ash-free aminic and/or
`
`sulfur-free phenolic compounds” “in an amount of at least 0.6 mass % up to 3.0
`
`mass %” in combination with the magnesium detergent of the ’274 claims.
`
`21. According to Afton and its expert Dr. Lam, Fetterman’s comparative
`
`examples A and B render claims 1-12 obvious. But, these examples use only a
`
`“sulfurized phenol antioxidant.”
`
`22.
`
`Fetterman does explain that “[o]ther oxidation inhibitors can also be
`
`employed in addition” to the sulfurized antioxidant. (Fetterman at 14:32-33.) But,
`
`Fetterman never states—or otherwise instructs one of ordinary skill in the art—that
`
`the entirety of its sulfurized antioxidant can be replaced by these “other oxidation
`
`inhibitors.” And, Fetterman provides no other guidance regarding how much of
`
`these “other oxidation inhibitors” can or should be included in its compositions.
`
`23.
`
`Likewise, while Arrowsmith ’371 provides a very broad range of total
`
`“antioxidant” that one could potentially include in a composition, it provides no
`
`guidance whatsoever regarding what amount of additional “other oxidation
`
`inhibitors” should be included in Fetterman’s compositions which already include
`
`a specific and large dose of sulfurized antioxidants and other components.
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`
`
`24.
`
`In my opinion, one of ordinary skill in the art would also not be
`
`motivated to modify Fetterman’s comparative examples A and B to arrive at the
`
`claimed subject matter.
`
`25.
`
`Fetterman explains that its working examples 1 and 2 “provide
`
`superior crownland cleanliness without sacrificing any of the remaining
`
`performance properties.” (Fetterman at 20:51-52.) Thus, one of ordinary skill in
`
`the art reviewing Fetterman would focus only on these better performing examples,
`
`and not the poorer performing comparative examples A and B, for potential use
`
`and modification. These working examples, however, do not employ the amount
`
`of magnesium detergent required by the ’274 patent’s claims. Moreover, one of
`
`ordinary skill in the art would not even be motivated to make arbitrary
`
`modifications to the working examples such as swapping antioxidants or
`
`detergents. Any changes could cause the compositions to sacrifice not only
`
`Fetterman’s targeted crownland cleanliness properties, but also cause the
`
`compositions to no longer maintain the other performance properties.
`
`26. And, Fetterman explicitly instructs one of ordinary skill in the art to
`
`use substantially ash free compositions. (See, e.g., Fetterman at 4:49-5:19.) This
`
`instruction would serve to further direct one of ordinary skill in the art away from
`
`the use of ash producing comparative examples A and B and towards working
`
`examples 1 and 2. Hence, if one of ordinary skill in the art did try to modify
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`
`
`comparative examples A and B based on Arrowsmith ’371, one of ordinary skill in
`
`the art would follow Arrowsmith ’371’s instruction to remove (or substantially
`
`reduce) the magnesium detergent. This would produce a composition more like
`
`Examples 1 and 2, and not a composition falling within the scope of the ’274
`
`patent’s claims.
`
`27.
`
`Further, even if one of ordinary skill in the art did for some reason
`
`decide to modify the poorer performing and ash producing comparative examples
`
`A and B, they would not be motivated to replace the examples’ sulfur-containing
`
`antioxidants with the types of antioxidants required by the ’274 patent’s claims.
`
`28. Again, Fetterman purposefully employs a sulfurized phenolic
`
`antioxidant. (Fetterman at Abstract, 4:49-5:3.) In fact, a sulfurized antioxidant is
`
`one of only three required components identified by Fetterman, and is present in all
`
`of its examples. (Fetterman at 4:49-5:3, Table I.) And, not only did Fetterman
`
`require sulfurized antioxidants, it instructs one to include and use one very
`
`particular type of sulfurized antioxidant (a sulfurized phenol antioxidant) to the
`
`exclusion of sulfurized olefin, sulfurized ester, sulfurized thiocarbamates or
`
`sulfurized aromatic heterocycles or any of the myriad other options. The particular
`
`synergy of sulfur and phenol in this form was critical for Fetterman’s application
`
`and his environment.
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`
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`29.
`
`The ’274 patent’s claims require the opposite—a sulfur-free aminic or
`
`phenolic antioxidant and an ash producing magnesium detergent of high base
`
`number. In my opinion, modifying Fetterman’s comparative examples to conform
`
`to the claims would require abandoning Fetterman’s teachings. Such a modified
`
`composition would be ash producing (since it would include metal detergents) and
`
`would no longer employ a specifically defined sulfurized antioxidant (which would
`
`be replaced with a sulfur-free phenolic antioxidant). This is nothing like what
`
`Fetterman discloses, and one of ordinary skill in the art would have no reason to
`
`make such a drastic change to Fetterman due to significant risk of sacrificing the
`
`primary or any of the other performance properties provided by Fetterman’s
`
`compositions.
`
`30. Next, Afton and its expert argue that a “global trend” towards
`
`reducing sulfated ash, phosphorus, and sulfur levels in lubricants would have
`
`motivated one of ordinary skill in the art to remove the sulfurized antioxidants
`
`from Fetterman. Afton and its expert also point to a statement in Arrowsmith ’371
`
`noting that “the use of sulfur-containing additives should be minimized or avoided
`
`when possible.” (Arrowsmith ’371 at ¶ [0066].)
`
`31.
`
`This would not, in my opinion, motivate one of ordinary skill in the
`
`art to change Fetterman’s composition in the manner Afton and its expert suggest.
`
`Again, a sulfurized antioxidant is a required component in Fetterman’s
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`
`
`composition. Thus, rather than swapping this required component for something
`
`else, one of ordinary skill in the art would more likely discard Fetterman’s
`
`compositions in their entirety and design a new formulation based on an alternative
`
`strategy if they desired to produce a very low sulfur lubricating composition.
`
`32. Moreover, Fetterman’s compositions include numerous other sulfur
`
`containing components in addition to the antioxidant, including base oil, ZDDP,
`
`detergents, and corrosion inhibitors. (See Fetterman at Table I.)
`
`33. Arrowsmith ’371 focuses on sulfur reduction of the base oil and
`
`ZDDP, and not on the antioxidant, when exemplifying ways to “minimize”
`
`lubricant sulfur levels. (Arrowsmith ’371 at ¶ [0066].) This is because these
`
`components generally contain the highest sulfur content. Reduction of ZDDP also
`
`reduces phosphorus and ash levels.
`
`34. Rather than motivating one of ordinary skill in the art to attempt to
`
`limit the sulfur content of Fetterman’s compositions by swapping antioxidants,
`
`Arrowsmith ’371 actually teaches that a low sulfur composition can employ
`
`numerous, sulfur containing antioxidants, including “calcium nonylphenol
`
`sulfide,” “sulphurized phenates, “phoshosulphurized or sulphurized hydrocarbons,”
`
`and “thiocarbamates.” (Ex. 1020, Arrowsmith ’371 at ¶ [0071].) Indeed, sulfur
`
`containing antioxidants are still widely in use today.
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`
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`35. Next, in my opinion, one of ordinary skill in the art would already
`
`consider Fetterman’s inventive compositions to have relatively low sulfur levels
`
`that are not in need of further modification to reduce sulfur. Fetterman, achieves
`
`its relatively low sulfur levels by reducing or eliminating ZDDP, the prime sulfur
`
`contributor. (See Fetterman at Table I.) Thus, one of ordinary skill in the art
`
`would consider Fetterman to already be following the approach of Arrowsmith
`
`’371. Elimination of ZDDP allows space for the use of Fetterman’s specific
`
`sulfurized phenolic antioxidants that is an essential ingredient of performance.
`
`36.
`
`Fetterman’s comparative examples—and the components those
`
`examples contain—serve to highlight the formulation approach Fetterman
`
`employs. Arrowsmith ’371 explains that ZDDP compounds at typical treat levels
`
`can contribute up to 0.28% sulfur to a lubricating composition, while detergents
`
`can contribute up to 0.09%. (Arrowsmith ’371 at Table 2.)
`
`37.
`
`This information can be used to estimate the amount of sulfur
`
`contributed to the lubricant by the components present in Fetterman’s comparative
`
`examples A and B. These examples include three primary sulfur-containing
`
`compounds: sulfurized antioxidant (identified 70% active ingredient, with 7%
`
`sulfur), a ZDDP (up to 0.28% sulfur), and an overbased magnesium sulfonate
`
`detergent (up to 0.09% sulfur). (Fetterman at Table 1.)
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`
`
`38.
`
`To assemble an estimate, I used the sulfur level provided by
`
`Fetterman for its antioxidant. For the ZDDP, I used Arrowsmith ’371’s typical
`
`maximum value for Example A, and then multiplied this value by 1.45/1.75 for
`
`Example B. For the detergent, I used Arrowsmith ’371’s typical maximum value
`
`for Example B, and then multiplied this value by 1.19/1.45 for example A.
`
`39.
`
`This results in the following, estimated sulfur levels:
`
`Comparative Example A
`Vol. % % Sulfur Approximate Sulfur
`Contributed
`
`2.83%
`
`1.75%
`
`1.19%
`
`7.00%
`
`---
`
`---
`
`0.20%
`
`0.28%
`
`0.07%
`
`Comparative Example B
`Vol. % % Sulfur Approximate Sulfur
`Contributed
`
`1.80%
`
`1.45%
`
`1.45%
`
`7.00%
`
`---
`
`---
`
`0.13%
`
`0.23%
`
`0.09%
`
`Component
`
`Sulfurized alkyl
`phenol antioxidant
`ZDDP
`Overbased Mg
`sulfonate detergent
`
`Component
`
`Sulfurized alkyl
`phenol antioxidant
`ZDDP
`Overbased Mg
`sulfonate detergent
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`
`
`As can be seen, the ZDDP is the largest contributor of sulfur in both of the
`
`comparative examples.
`
`40.
`
`Since ZDDP contributes the largest amount of sulfur, if one of
`
`ordinary skill in the art were to modify comparative examples A and B in an
`
`attempt to reduce sulfur, he would follow the instructions of both Fetterman in its
`
`working examples and Arrowsmith ’371, and reduce the ZDDP level, and not
`
`change the type or amount of antioxidant. This—combined with the necessity of
`
`sulfur containing antioxidants in Fetterman’s compositions—would strongly
`
`motivate one of ordinary skill in the art to not modify the antioxidant employed by
`
`Fetterman’s compositions.
`
`41.
`
`Further, different types of antioxidants have different mechanisms of
`
`action.
`
`42.
`
`For instance, the phenolic and aminic antioxidants required by the
`
`’274 patent’s claims act as so-called radical scavengers. Sulfur containing
`
`antioxidants generally act as hydroperoxide decomposers. And, the specific sulfur-
`
`containing phenolic antioxidants of Fetterman synergistically act as both radical
`
`scavengers and hydroperoxide decomposers. Further, sulfur based antioxidants
`
`normally act via acidic mechanisms, while aminic antioxidants are basic. The
`
`different mechanisms of actions of these different types of antioxidants cause them
`
`to behave in different ways. By way of example, one of ordinary skill in the art
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`
`
`would not be able to expect that an antioxidant that acts as radical scavenger would
`
`have the same impact on the oxidation of a metal detergent to a metal oxide like
`
`MgO or the required impact on the other desired performance attributed provided
`
`by Fetterman’s compositions.
`
`43.
`
`The different mechanisms of action cause the antioxidants to interact
`
`with the environment and with other lubricating additives in different ways
`
`requiring different treats and component design. One of ordinary skill in the art
`
`would, therefore, not consider the sulfur-containing phenolic antioxidants of
`
`Fetterman and the antioxidants required by the ’274 patent to be interchangeable
`
`without reworking the entire formulation from scratch. And, not only would
`
`replacing or swapping antioxidants have an unknown effect on lubricant
`
`performance, but it could also serve to create problems that could render the
`
`composition unacceptable for use. For instance, U.S. Patent No. 6,004,910 to
`
`Bloch (“Bloch”) explains that “aromatic amines,” one of ’274 patent’s claimed
`
`types of antioxidants, have “been found to adversely affect soot induced viscosity
`
`increases.” (Bloch at Abstract, 15:59-16:2) Thus, one of ordinary skill would
`
`understand that replacing Fetterman’s antioxidants could (and would likely) cause
`
`Fetterman’s compositions to develop multiple new performance problems. This
`
`would serve as a further impediment and would motivate one of ordinary skill in
`
`the art to not attempt to replace Fetterman’s specific sulfur-containing phenolic
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`
`
`antioxidants with the antioxidants required by the ’274 patent.
`
`44. Neither Afton nor its expert have addressed the effect that changing
`
`antioxidants would have on the operability of Fetterman’s compositions and all the
`
`remaining performance properties that Fetterman was anxious not to sacrifice. In
`
`my opinion, in view of the different mechanisms of actions of the different
`
`antioxidants of the ’274 patent and Fetterman, one of ordinary skill in the art would
`
`not be motivated to simply replace Fetterman’s antioxidants with those of the ’274
`
`patent, and would not expect Fetterman’s compositions to perform in the same
`
`manner if such a swap were made.
`
`45.
`
`Further, Fetterman’s compositions are meant to be operable in
`
`particular circumstances and particular environments. One of ordinary skill in the
`
`art would not consider lubricants for use in one type of circumstance and
`
`environment to be interchangeable with or usable as lubricant oils that need to
`
`perform in a different type of environment with a particular engine metallurgy,
`
`temperature, pressure, shear environment, fuel type, etc. Hence, additives used in
`
`one application cannot be automatically substituted in another application.
`
`IV. PURPORTED OBVIOUSNESS OF CLAIM 13 OVER COLCLOUGH
`AND ARROWSMITH ’371 (GROUND 4)
`46.
`In my opinion, as of the ’274 patent’s filing date, one of ordinary skill
`
`in the art would not consider the subject matter of claims 13 to be obvious over
`
`combination of Colclough and Arrowsmith ’371.
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`
`
`47.
`
`I provided an overview of the Colcough reference at paragraphs 34-38
`
`of my previous declaration. An overview of Arrowsmith ’371 can be found at
`
`paragraphs 16-18.
`
`48.
`
`I note that Afton’s obviousness argument focuses only on Colcough’s
`
`comparative examples V and VI, and not working examples 1 and 2.
`
`49. Colclough, however, explains that working examples 1 and 2
`
`“provide[] a surprising advantage in lubricants which have excellent antioxidant,
`
`anti-wear, and bearing corrosion inhibition with substantial absence of phosphorus
`
`and zinc.” (Colclough at 7:22-28.) The comparative examples, however, had
`
`“inadequate” performance. (Colclough at 7:22-28.)
`
`50.
`
`In view of this, one of ordinary skill in the art reviewing Colclough
`
`would focus only on the better performing working examples 1 and 2, and not on
`
`the poorer performing comparative examples V and VI, for potential use and
`
`modification. These working examples, however, do not employ the types and
`
`amounts of antioxidant required by the ’274 patent’s claims.
`
`V.
`
`UNEXPECTED RESULTS
`51.
`Paragraphs 181-187 of my previous declaration discuss the
`
`unexpected results achieved by the subject matter claimed by the ’274 patent.
`
`52.
`
`In my opinion, these unexpected results set forth in the ’274 patent
`
`confirm the above opinions regarding the patentability the ’274 patent’s claims.
`
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`
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`
`
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