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`Paper No. 23
`Filed on May 18, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AFTON CHEMICAL CORPORATION
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`Patent Owner
`
`
`
`
`IPR2017-01321
`Patent 8,076,274
`
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE ON GROUNDS 1, 2, AND 5
`
`
`
`Case No. IPR2017-01321
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`The ‘274 Patent Employs Antioxidants to Address the Oxidation of
`Magnesium Detergents .................................................................................... 1
`III. Ground 1:Colclough Anticipates Claims 1-11 ................................................ 3
`A.
`Component G of Colclough is Used at 0.4 wt.% .................................. 3
`B.
`Petitioner Tested SASH of Colclough Using the Identified
`Commercial Product .............................................................................. 4
`Burden of Production, Not Patentability, Shifted to Infineum ............. 4
`1.
`Infineum Fails the Burden of Production ................................... 5
`2.
`Diluted Components Clearly Indicated in Colclough ................. 5
`3. MSDS Component Ranges Cannot Support Infineum’s
`Assertions .................................................................................... 6
`D.
`Infineum’s Other Arguments are Without Merit .................................. 8
`IV. Ground 2:Nicholson in view of ACEA-2004 Renders Claims 1-12 Obvious 8
`A.
`Example IV of Nicholson Invalidates Claims 1-12 .............................. 9
`1.
`Petitioner’s Evidence is Unrebutted ........................................... 9
`2. Motivation to Combine Nicholson and ACEA-2004 ................. 9
`3.
`No Impermissible Hindsight ..................................................... 10
`Nicholson Provides a Specific Example That Meets the Broad
`Limitations of Claim 1 ........................................................................ 13
`C. Age of Nicholson is not Relevant to Obviousness Combination ........ 14
`D. No Teaching Away in the Cited References ....................................... 14
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`C.
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`B.
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`E.
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`Infineum Cannot Base Unexpected Results on Examples that
`are Not Commensurate with the Scope of the Claims ........................ 15
`F.
`Obvious to Use Magnesium Range in Claim 3 ................................... 17
`G. Dispersants in Example IV have 0.8 mass% nitrogen and this
`Satisfies Claims 6 and 7 ...................................................................... 18
`1.
`Infineum used Misleading Nitrogen Calculations .................... 21
`2.
`No Criticality of Range Shown ................................................. 24
`H.
`Fenoglio Does Not Indicate the Proposed Variation in Nitrogen ....... 25
`V. Ground 5:Nicholson and ACEA-2004 in view of Arrowsmith ‘371 Renders
`Claim 13 Obvious .......................................................................................... 26
`VI. Conclusion ..................................................................................................... 26
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`TABLE OF AUTHORITIES
`
`Federal Cases
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`Altaire Pharm. v. Paragon Bioteck, Inc., App.No. 2017-1487, pp.14-19 (Fed. Cir.
`
`May 2, 2018) ........................................................................................................ 20
`
`Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir.
`
`1998) ...................................................................................................................... 8
`
`Eli Lilly & Co. v. Barr Labs, 251 F.3d 955, 971 (Fed. Cir. 2001) .......................... 13
`
`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) .......... 12
`
`In re Clemens, 622 F.2d 1029, 1036 (C.C.P.A. 1980) ............................................. 15
`
`In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ...................................................... 14
`
`In re McLaughlin, 443 F.2d, 1392, 1395 (C.C.P.A. 1971) ...................................... 11
`
`In re NuVasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016) ................................... 26
`
`In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ............................................. 17
`
`In re Rosenberger, 116 F.2d 507, 511 (C.C.P.A. 1941) ............................................ 8
`
`In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990) ...................................................... 25
`
`In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) ................................................... 14
`
`Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) 14
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................................... 12
`
`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008) . 5
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`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1362-64 (Fed.
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`Cir. 2012) ............................................................................................................. 15
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) .......................... 16
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`Cases
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`3D-Matrix, Ltd. v. Menicon Co., Ltd., IPR2014-00398, Paper 11:9 (PTAB Aug. 1,
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`2014) .................................................................................................................... 19
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`Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-00038, Paper 68:17
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`(PTAB Mar. 30, 2017) ......................................................................................... 20
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`Monsanto Co. v. Pioneer Hi-Bred Int'l, Inc., IPR2013-00022, Paper 43:4 (PTAB
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`Apr. 11, 2013) ...................................................................................................... 19
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`Federal Regulations
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`29 C.F.R. §1910.1200, Table-D.1 (2012) .................................................................. 7
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`37 C.F.R. §42.65 ............................................................................................... 19, 20
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`I.
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`Introduction
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`Petitioner submits the following Reply to Patent Owner’s Response
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`(“Response”) filed by Infineum. For the reasons discussed below, the Board
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`should cancel the claims of U.S. Patent No. 8,076,274.
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`
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`II. The ‘274 Patent Employs Antioxidants to Address the Oxidation of
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`Magnesium Detergents
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`Infineum characterizes the ‘274 Patent as teaching lubricating oil
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`compositions that “make beneficial use of the alkalinity of magnesium containing
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`detergents while minimizing ash formation and avoiding the bore polishing of
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`engine components commonly associated with use of magnesium compounds.”
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`[Response, p.1]. But such compositions were already well-known. For example,
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`magnesium detergents and antioxidants are well-known as even Infineum admits.1
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`[Ex.1046, p.142:4-13]. It was also known prior to the ‘274 Patent that magnesium
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`detergents contribute less SASH than other detergents, such as calcium detergents.
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`[Ex.1018, p.295]. Moreover, magnesium was known to cause bore polishing and
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`1 Magnesium detergents and antioxidants are widely used. [Exs.1040-1042;1044].
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`the mechanism was well-documented. [Exs.1023;1001, 3:44-48].2 Finally, it was
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`common knowledge that oxidation led to decreased engine performance, e.g.,
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`increased oil consumption. [Exs.1024, p.52;1046, p.103:5-15]. In light of these
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`known associations and mechanisms, skilled formulators would have two
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`strategies to counteract the oxidation of magnesium: (1) eliminate the magnesium
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`detergent (and lose the known associated benefits of lower SASH ) or (2) use an
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`antioxidant to mitigate oxidation. [Ex.1043, p.157].
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`To the extent Infineum argues that there remain slight discrepancies between
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`the prior art disclosures and the challenged claims, any changes would be obvious
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`to a POSITA. Heavy-duty diesel formulators regularly consider industrial
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`standards, such as ACEA-2004, to develop commercial formulations. [Ex.1004,
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`¶37]. Thus, there is a natural motivation to develop lubricants that meet these
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`standards. [Ex.1046, p.89:6-14]. The ‘274 Patent uses known components, i.e.,
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`magnesium detergents and antioxidants, in known ways, for known reasons to
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`achieve a SASH limit that meets industry standards.
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`2 A POSITA would have been aware that prior to the ‘274 Patent the oxidation of
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`magnesium detergents, which forms periclase, contributes to bore polish.
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`[Exs.1004, ¶¶38-42;1023, p.352;1038, p.201;1043, p.156;1046, p.104:2-17].
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`III. Ground 1:Colclough Anticipates Claims 1-11
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`Ground 1 shows that Claims 1-11 of the ‘274 Patent are anticipated by
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`Colclough. [Petition, pp.26-34].
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`It is undisputed that examples V and VI of Colclough teach the magnesium
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`detergents and antioxidants in Claim 1. And it is undisputed that Petitioner’s
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`testing of examples V and VI reveal SASH values within the claim range.
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`[Ex.1006, ¶¶29&46]. Infineum’s central argument is that the Board (1) should
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`disregard the clear and unambiguous teachings in Colclough that Component G -
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`an aminic antioxidant - is used in an amount of 0.4 wt.% and (2) improperly shifted
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`the burden to Infineum.
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`A. Component G of Colclough is Used at 0.4 wt.%
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`No amount of obfuscation by Infineum can change the fact that Colclough
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`clearly states that component G is “an alkylated diphenylamine antioxidant…” and
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`that Colclough discloses examples using component G at 0.4 wt.%. [Ex.1007,
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`p.7:5; p.8:1-67]. Infineum’s central argument rests on an attempt to inject
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`ambiguity into Colclough’s disclosure where none exists. For example, Infineum
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`argues that because Colclough provides an example commercial source for the
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`alkylated diphenylamine antioxidant, and that one could (without justification)
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`question the purity of the commercial component, that Colclough’s examples
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`somehow do not teach the claimed limitation. [Response, p.17].
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`However, Colclough discloses that component G is an “alkylated
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`diphenylamine commercially available as Irganox L-57 by Ciba Geigy.” Rather
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`than taking the explicit disclosure of component G (0.4 wt.% alkylated
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`diphenylamine), Infineum attempts to re-write Colclough’s disclosure to read 0.4
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`wt.% of Irganox L-57. But that is not what Colclough discloses. Infineum’s aim is
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`clear: to create ambiguity by introducing irrelevant speculation on Irganox L-57.
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`Infineum’s attempts to obfuscate Colclough’s clear teachings should be rejected.
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`B.
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`Petitioner Tested SASH of Colclough Using the Identified
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`Commercial Product
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`Petitioner has proved that examples V and VI of Colclough have SASH
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`values within the claimed range of 0.6 to 2.0 mass%. Mr. Styer prepared these
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`examples using 0.4 wt.% of Irganox L-57, a commercially available source of
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`alkylated diphenylamine. [Ex.1006, ¶¶17&34]. After making the examples in
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`Colclough, per Colclough’s clear teachings, testing of the samples revealed SASH
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`values squarely within the claims.
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`C. Burden of Production, Not Patentability, Shifted to Infineum
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`Infineum argues that the Board improperly shifted the burden to Patent
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`Owner. [Response, p.18]. But the Board did no such thing. Rather, the Board
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`shifted the burden of production, a distinct and shifting burden, to Infineum, which
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`is entirely proper here. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
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`1326–27 (Fed. Cir. 2008).
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`1. Infineum Fails the Burden of Production
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`Infineum cannot meet its burden because Colclough is clear the alkylated
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`diphenylamine antioxidant, component G, is used at 0.4 wt.%. [Ex.1007, p.7:5].
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`This teaching is not a presumption as Infineum attempts to cast it. It is an express
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`teaching of an explicit amount of an ingredient. Because of this clear teaching, the
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`burden of production properly shifts to Infineum.
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`Furthermore, Infineum cannot meet its burden of production because (a)
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`Colclough’s teaching is clear, (b) Infineum’s attempted re-write of Colclough’s
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`disclosure is factually and legally incorrect, and (c) Infineum’s supposed
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`contradictory evidence is deficient as discussed further below. Rather than an
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`alleged failure of proof by Petitioner, it is Infineum who has failed to meet its
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`burden.
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`2. Diluted Components Clearly Indicated in Colclough
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`Infineum attempts to inject confusion by arguing that commercially
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`available components could be diluted. However, when components are diluted,
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`Colclough explicitly states that the component is diluted – as it did with respect to
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`components A, B, C, D, F, H, and L. [Ex.1007, p.6:59-p.7:13]. Accordingly, based
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`on the explicit disclosure in Colclough, component G cannot represent a dilution.
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`[Ex.2027, p.142:10-p.145:21]. A POSITA would understand that the amount in
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`Table 1 is 0.4 wt.% of an alkylated diphenylamine antioxidant. There is no reason,
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`based on Colclough, to use less than 0.4 wt.% of an alkylated diphenylamine
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`antioxidant.
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`3. MSDS Component Ranges Cannot Support Infineum’s
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`Assertions
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`In a last ditch effort to create ambiguity, Infineum argues that Irganox L-57
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`would not provide the required amount of alkylated diphenylamine by relying on
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`latter publications and non-technical specifications in support of its argument.3
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`[Response, p.24]. But even the evidence used by Infineum for this legally and
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`factually incorrect argument is deficient. For example, Exhibits 2014, 2017, and
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`2018 were published after 2006 and if not excluded, should be given no weight in
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`3 Exhibits 2019 and 2020 are related to a different product, Irganox 5057.
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`[Ex.2026, p.59:18-23].
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`these proceedings.4 Moreover, Infineum relies on Material Safety Data Sheets
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`(MSDS) for the proposition that Irganox L-57 could contain something else. But
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`Infineum’s reliance on an MSDS is misplaced. First, Infineum relies on an MSDS
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`published after 2009, which is three years after the relevant date. [Ex.2025, ¶48].
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`Setting that aside, MSDS are not technical specifications that one would rely on for
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`precise disclosures of component concentrations. [Exs.2026, p.54:25-
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`p.55:14&p.92:16-p.93:5;2027, p.36:19-p.37&p.139:24-141:25]. In fact, OSHA
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`regulations explicitly provide exceptions for component concentrations and
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`explicitly allow for the use of ranges.5 29 C.F.R. §1910.1200, Table-D.1 (2012).
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`Even Infineum’s own expert was aware of this fact, yet continued to rely on the
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`MSDS. [Ex.1046, p.115:19-24]. Thus, the conclusions drawn by Infineum that the
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`ranges in the MSDS indicate something other than alkylated diphenylamine are not
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`supported by the OSHA regulations. Infineum’s reliance on the MSDS is both
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`misplaced and improper.
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`4 Infineum did not even bother to indicate a publication date of Exhibit 2024,
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`which could not have been published before 2017.
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`5 Exceptions allow ranges for trade secrets, batch variability, and substantially
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`similar chemical compounds.
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`D.
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`Infineum’s Other Arguments are Without Merit
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`Infineum also raises a hodge-podge of criticism regarding Colclough that
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`merely attempts to obfuscate Colclough’s clear anticipation. For example,
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`Infineum argues that Colclough is “decades old.” [Response, p.2]. But, a reference
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`is no less anticipatory because it is old. In re Rosenberger, 116 F.2d 507, 511
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`(C.C.P.A. 1941). Then, Infineum argues that Colclough is “directed to solving
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`fundamentally different problems” than the ‘274 Patent and that Colclough “is not
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`concerned with the amount of sulfated ash produced by its compositions.”
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`[Response, pp.2&13]. However, as the Board correctly found, these arguments
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`have “no bearing on the question of anticipation.” [Paper 8, p.12; Celeritas Techs.,
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`Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)]. Finally,
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`Infineum appears to take the position that Colclough’s disclosures were merely
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`“accidental or coincidental”. [Response, p.2]. Again, an inapplicable defense to
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`Coclough’s anticipating examples because it was well-known that magnesium
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`contributed to bore polishing.
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`IV. Ground 2:Nicholson in view of ACEA-2004 Renders Claims 1-12
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`Obvious
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`Petitioner’s Ground 2 details how Claims 1-12 of the ‘274 Patent would
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`have been prima facie obvious to a POSITA at the time of the invention over
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`Nicholson in view of the ACEA 2004 Sequences (“ACEA-2004”). [Petition,
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`pp.34-45].
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`A. Example IV of Nicholson Invalidates Claims 1-12
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`Nicholson’s Example IV, teaches all the features of Claim 1, except it does
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`not explicitly state the amount of magnesium metal delivered by a 400 TBN
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`magnesium alkylbenzene sulphonate detergent used at 2.28 wt.%. [Petition, p.34].
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`However, Petitioner has shown that the 400 TBN detergent in Example IV would
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`deliver an claimed amount of magnesium. [Ex.1004, ¶64]. Moreover, Nicholson
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`Example IV in combination with ACEA-2004 would lead POSITA to a
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`combination of additives that would render obvious all of the claims of the ‘274
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`Patent. [Petition, ¶¶36-39].
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`1. Petitioner’s Evidence is Unrebutted
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`The Petitioner remade Nicholson’s Example IV and tested for SASH content
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`using the standard specified in Claim 1 and measured magnesium. [Petition, ¶¶36-
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`38]. Neither Infineum nor its expert has submitted any contrary evidence for the
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`test results of Example IV.
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`2. Motivation to Combine Nicholson and ACEA-2004
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`At the time of filing of the ‘274 Patent, POSITA would be motivated to
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`manufacture a heavy-duty lubricant capable of meeting the requirements of the
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`ACEA-2004. [Petition, p.41;Ex.1004, ¶125]. POSITA would know that in order to
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`meet the requirements of ACEA-2004 a heavy-duty lubricant would have to
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`possess good seal performance, including AK6 fluoroelastomer seal compatibility.
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`[Ex.1012, pp.13-14]. A HDD lubricant formulator would look at the prior art and
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`find Nicholson which teaches lubricant compositions, including Example IV,
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`which have “excellent fluoroelastomer seal performance” on AK6 fluoroelastomer
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`seal materials. [Ex.1009, p.14:12-15].
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`A POSITA would also know that in addition to good seal performance, the
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`ACEA-2004 mandated low SASH requirements of below 2.0% (E7) and 1% (E6).
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`[Petition, p.39]. Accordingly, POSITA would particularly look to Example IV of
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`Nicholson because it is an example that uses the lighter and less ash-producing
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`magnesium detergent while also providing good fluoroelastomer seal performance.
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`3. No Impermissible Hindsight
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`Infineum argues that a combination of Nicholson and the ACEA-2004 by a
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`POSITA would constitute impermissible hindsight. But that is simply not correct.
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`Both Nicholson and the ‘274 Patent relate to HDD engine lubricants that meet or
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`exceed tests relevant to industry guidelines, use similar or the same amounts of
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`magnesium detergents and antioxidants, and have otherwise nearly identical
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`components. [Ex.1004, ¶¶110-111]. Thus, Nicholson shows or suggest all
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`elements of the claim, contains well-understood components that have predictable
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`results, is directly analogous to the ‘274 Patent, and complies with one or more
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`tests of the ACEA-2004. [Petition, pp.24-25]. Moreover, both Afton’s expert and
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`Infineum’s expert confirm that it was common and routine to follow industry
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`specifications in developing lubricant formulations. [Exs.1004, ¶125;1046, p.89:6-
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`14]. This proves that there is no hindsight here because it takes only a modest
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`amount of common sense to modify analogous prior art teachings in predictable
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`ways in view of market forces. In re McLaughlin, 443 F.2d, 1392, 1395 (C.C.P.A.
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`1971).
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`In fact, the ACEA-2004 points directly to the modification. First,
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`Nicholson’s Example IV already complied with ACEA-2004’s E7 SASH limits.
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`Thus it would have been natural to modify Nicholson to comply with the more
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`stringent E6 SASH standard as one would simply be using a lubricant already
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`known to pass other parts of the E7 guidelines. [Petition, p.39].
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`Second, Nicholson and the ‘274 Patent have significant areas of overlap,
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`which is indicative of the relatedness between the two patents. For example,
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`Nicholson, like the ‘274 Patent, is in the field of lubricating oils. Both patents
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`relate to HDD engines lubricants. [Ex.1004, ¶41]. Both patents relate to improving
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`performance of HDD engines using magnesium detergents. And both patents
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`comply with one or more parts of the ACEA-2004.
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`Accordingly, it would have been natural for a formulator looking to comply
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`with the E6 standard of the ACEA-2004 to start with a formulation that already
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`passed the E7 standard and a formulation that was in the same field (HDD
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`lubricants). Moreover, Nicholson’s example would have been known to POSITA
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`as being compliant with ACEA-2004’s fluoroelastomer seal compatibility
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`standard, something even Infineum acknowledges. [Ex.2025, ¶64]. The
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`materiality of this fact is that Nicholson’s Example IV would have served as a
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`compelling starting point for complying with other parts of the ACEA-2004.
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`Infineum complains that “[a]ll of Afton’s obviousness arguments are
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`premised on only a single, isolated example in Nicholson.” [Response, p.26] and
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`that the “claims of the ’274 patent do not even relate to or require any particular
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`seal compatible dispersant.” [Response, p.3]. But these arguments are irrelevant.
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`A “reference must be considered for everything it teaches by way of technology
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`and is not limited to the particular invention it is describing and attempting to
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`protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
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`1985). Thus, disclosure of Nicholson is not limited to dispersants or problems with
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`fluoropolymer seals, and must be considered for all that it discloses. KSR Int'l Co.
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`v. Teleflex Inc., 550 U.S. 398 (2007) (“The idea that a designer hoping to make an
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`adjustable electronic pedal would ignore Asano because Asano was designed to
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`solve the constant ratio problem makes little sense. A [POSITA] is also a person of
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`ordinary creativity, not an automaton.”). And even Infineum admits that Example
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`IV discloses a lubricating oil formulation for a test used for HDD engines.
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`[Ex.1046, p.125:14-17]. Accordingly, Infineum’s arguments are without merit.
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`B. Nicholson Provides a Specific Example That Meets the Broad
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`Limitations of Claim 1
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`Infineum states that claim 1 of the ‘274 Patent is “directed to a genus of
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`compositions with varying amounts and types of magnesium detergent,
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`antioxidant, and sulfated ash.” [Response, p.33]. But this argument is irrelevant
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`because the Federal Circuit has long recognized that a genus claim encompassing
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`even a single prior art species is unpatentable. Eli Lilly & Co. v. Barr Labs, 251
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`F.3d 955, 971 (Fed. Cir. 2001).
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`Moreover, Infineum’s argument that Nicholson teaches “generic and non-
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`specific” components. [Response, pp.29-30] is similarly misguided because
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`Nicolson teaches a specific arrangement in Example IV. [Ex.1009, p.13:36-53].
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`The specific components include a 400 TBN overbased magnesium alkylbenzene
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`sulfonate, sulfur-free phenolic antioxidants, and ash-free aminic antioxidants that
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`correspond to the elements of Claim 1. [Ex.1004, Table 9]. Thus, discussion of
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`“generic” components in other parts of Nicholson is not a teaching away where
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`there is a specific disclosure of specific components in an example.
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`C. Age of Nicholson is not Relevant to Obviousness Combination
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`Infineum argues that one would not have “started with a single example
`
`from a ten year old reference relating to dispersants.” [Response, p.30]. However,
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`“[t]he mere age of the references is not persuasive of the unobviousness of the
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`combination of their teachings.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977);
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`see also, Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
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`2004) (holding age of reference irrelevant without secondary considerations).
`
`Nowhere has Infineum shown any long-felt need or failure of others in the art, and
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`thus its arguments directed to age are irrelevant.
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`D. No Teaching Away in the Cited References
`
`Infineum argues that “rather than motivating a change in Nicholson, the
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`existence of the 2004 ACEA specification would actually deter one of ordinary
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`skill in the art from using Nicholson’s example compositions at all.” [Response,
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`p.31]. A teaching away, however, requires a reference to actually criticize,
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`discredit, or otherwise discourage the claimed solution. In re Gurley, 27 F.3d 551,
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`553 (Fed. Cir. 1994). Infineum has pointed to no portion of Nicholson or ACEA-
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`2004 that would criticize, discredit, or otherwise discourage the combination or
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`Case No. IPR2017-01321
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`claimed solution. Instead, Infineum argues that a POSITA would “comply with
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`more recent standards.” [Response, p.32]. Infineum’s arguments fall well short of a
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`teaching away. Formulators would and could consider prior formulations for
`
`meeting an industrial standard for the reasons discussed in Section IV.A.
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`E.
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`Infineum Cannot Base Unexpected Results on Examples that are
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`Not Commensurate with the Scope of the Claims
`
`Any claim of criticality must be commensurate in scope with the claims at
`
`issue. In re Clemens, 622 F.2d 1029, 1036 (C.C.P.A. 1980). For a number of
`
`reasons, Infineum’s alleged unexpected results are neither unexpected or
`
`commensurate with the scope of the claims.
`
`First, Infineum’s unexpected results encompass its own comparative
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`examples. Infineum asserts that its purported invention “provides required
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`detergency while unexpectedly maintaining sulfated ash production at a reasonable
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`level without bore polish.” Yet, all of the examples, including comparative
`
`examples, in the ‘274 Patent meet the SASH level of claim 1 and thus the results
`
`cannot be unexpected. Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
`
`F.3d 1356, 1362-64 (Fed. Cir. 2012). Further, several of the comparative examples
`
`in Table 1 of the ‘274 Patent report a bore polish value that is below 2 mass%.
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`Thus, the examples are insufficient to be commensurate with the scope of the ‘274
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`Case No. IPR2017-01321
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`Patent. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).
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`Second, the alleged unexpected results are not commensurate with the scope
`
`of the claims because the ‘274 Patent does not indicate the calcium detergent in
`
`examples 9-14, which is known to impact bore polish. [Exs.1046, p.163:9-23;1002,
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`10:19-46]. Even Infineum admits that it was well-known that calcium sulfonate
`
`detergents impact bore polish where the same amount of magnesium detergent is
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`used. [Ex.1039, p.206].
`
`Since claim 1 recites the calcium detergent as an optional component, one
`
`cannot determine whether the neutral calcium sulfonate detergent impacts bore
`
`polishing. This can be seen in examples 10 and 11 in the ‘274 patent as they both
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`have the same calcium and magnesium levels, but yield different bore polish
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`results. [Ex.1046, p.163:24-p.164:22]. Consistent with Infineum’s admissions in
`
`proceedings related to its European patent, this difference is possibly attributable to
`
`the absence of neutral calcium sulfonate. [Ex.1039, p.206]. Thus, the examples of
`
`the ‘274 Patent do not support the alleged unexpected results.
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`Third, because bore polishing was a known problem with magnesium
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`detergents and because Colclough and Nicholson disclose conventional treat rates
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`(including greater than 0.05 wt.% Mg and between 0.06-3.0 wt.% antioxidants),
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`Infineum has not shown that its arrangement of components yields unexpected
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`Case No. IPR2017-01321
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`results.
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`Finally, magnesium detergents were known to promote oxidation and the
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`addition of more antioxidant to counteract oxidation does not lead to an
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`unexpected result. Quite the opposite, it is an expected result.
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`F. Obvious to Use Magnesium Range in Claim 3
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`Infineum argues that one would not have been motivated to modify the
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`amount of magnesium in Nicholson to arrive at the claimed range found in Claim
`
`3. [Response, p.37]. But it is well establish that mere optimization is routine and
`
`requires no inventive skill. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
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`Because the ACEA-2004 indicates a minimum target to reduce SASH, there are
`
`market pressures associated with reducing the amount of components that
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`contribute to SASH. [Ex.2012]. Hence, using less magnesium, which was a known
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`contributor to SASH, is entirely normal and not at all unconventional. A POSITA
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`would be motivated to lower the Mg content of Example IV to meet the 1% SASH
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`limitations provided by ACEA-2004 E6. [Petition, p.41].
`
`More particularly, the precise amount of magnesium would have been
`
`obvious in light of these market pressures. Afton’s expert, Dr. Lam, explains that
`
`the magnesium in Nicholson’s Example IV was known as the component that
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`provided the most to SASH levels. For example, Dr. Lam calculates that
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`Case No. IPR2017-01321
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`Nicholson’s 2.28 wt. % of the detergent would provide approximately 0.197-0.228
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`wt.% magnesium. [Ex.1004, ¶113]. This corresponds to the measured amount of
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`magnesium in tests conducted by Mr. Styer. [Ex.1006, ¶56]. Using the E6-04
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`designation from ACEA-2004, having SASH requirement of less than 1.0 mass%,
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`a POSITA focused on reducing magnesium in Example IV (the component that
`
`contributes the most to SASH), would have easily been led to reduce the
`
`magnesium detergent so that it provides 0.15 mass% magnesium, which equates to
`
`0.975 mass% SASH. [Petition, p.41].
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`G. Dispersants in Example IV have 0.8 mass% nitrogen and this
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`Satisfies Claims 6 and 7
`
`Infineum raises two arguments in an attempt to distance itself from
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`Nicholson’s disclosure of the claim limitations in Claims 6 and 7. Infineum argues
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`that Nicholson does not explicitly recite the amount of nitrogen and that
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`Petitioner’s testing was somehow deficient. But both arguments fail because they
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`are premised on either an incorrect interpretation of the law, or because they rely
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`on incorrect calculations.
`
`First, although Nicholson does not explicitly report the amount of nitrogen,
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`Nicholson without question uses two components that contain nitrogen. And this
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`fact is not disputed by Infineum. To determine the amount of nitrogen that is
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`Case No. IPR2017-01321
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`necessarily part of Nicholson’s Example IV, Petitioner used the most
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`straightforward way of determining it – through standard measurement.
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`[Exs.1006, ¶¶55-56;2026, p.89]. Using this measured amount of nitrogen,
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`Petitioner’s expert, Dr. Lam, performed the routine calculation to determine the
`
`amount of nitrogen in Example IV as 0.08 mass%. [Ex.1004, ¶78].
`
`Infineum’s attack on this clear disclosure rests on convincing the Board that
`
`it should ignore the straightforward, standard measurements performed by a fact
`
`witness, and apply Infineum’s self-servingly restrictive interpretation of the
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`requirements of 37 C.F.R. §42.65.
`
`Although Section 42.65 does serve as an important standard for evaluating
`
`expert testimony, Monsanto Co. v. Pioneer Hi-Bred Int'l, Inc., IPR2013-00022,
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`Paper 43:4 (PTAB Apr. 11, 2013), the Board has also made clear that not all data
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`needs to be disclosed under Section 42.65. 3D-Matrix, Ltd. v. Menicon Co., Ltd.,
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`IPR2014-00398, Paper 11:9 (PTAB Aug. 1, 2014) (finding that, because peptide
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`charge computation is pH-dependent and executed via software, it is “the type of
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`technical data governed by §42.65(b)”). Infineum cites the Board’s decision in
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`Altaire Pharma, which has been remanded by the Federal C
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