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
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`__________________________________________________________________
`
`

`

`Table of Contents
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`TECHNOLOGICAL BACKGROUND .......................................................... 4
`A.
`Common Engine Oil Additives Perform Unpredictably When
`Combined .............................................................................................. 4
`Industry Specifications Do Not Require Use of Particular Additives .. 5
`B.
`III. OVERVIEW OF THE ’274 PATENT ..........................................................11
`IV. PETITIONER’S PRIOR ART .......................................................................15
`A.
`Colclough ............................................................................................15
`B. Nicholson .............................................................................................17
`C.
`Fetterman .............................................................................................18
`D. ACEA 2004 .........................................................................................20
`E.
`Arrowsmith ’371 .................................................................................20
`V. AFTON HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD OF
`SUCCESS ......................................................................................................21
`A.
`Colclough (Grounds 1 and 4) ..............................................................21
`B. Nicholson (Grounds 2 and 5) ..............................................................24
`1.
`Afton Failed to Identify the Differences Between Nicholson
`and the Claims As Required When Arguing Obviousness .......25
`Even if the Differences Had Been Identified, Afton Failed to
`Provide An Articulated Reasoning of Why One of Skill Would
`Arrive at the Claimed Subject Matter .......................................28
`Failure of Proof In Connection With Claim 3 ..........................32
`3.
`Failure of Proof In Connection With Claims 6 and 7 ...............35
`4.
`Fetterman (Ground 3) ..........................................................................42
`1.
`Failure of Proof In Connection With the Claimed Antioxidant
`Mass Percentage Range ............................................................43
`
`2.
`
`C.
`
`-i-
`
`

`

`2.
`
`Afton Failed to Explain Why One of Skill Would Modify
`Fetterman’s Examples to Arrive at the Claimed Subject
`Matter ........................................................................................46
`Secondary Considerations Presented During Prosecution Overcome
`Obviousness .........................................................................................53
`VI. CONCLUSION ..............................................................................................57
`
`D.
`
`-ii-
`
`

`

`Exhibit No. Name
`
`Exhibits
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Taylor et al., “Engine lubricant trends since 1990,” Proc. IMechE,
`Part J.: J. Eng’g Tribology, Vol. 219, pp. 331-346 (2004)
`(“Taylor”)
`
`Pawlak, “Tribochemistry of Lubricating Oils” (2003) (“Pawlak”)
`
`ACEA European Oil Sequences (1996) (“1996 ACEA Spec.”)
`
`Standard Specification for Performance of Engine Oils, ASTM
`Designation D 4485-05a (“API Specification”)
`
`American Petroleum Institute, Engine Oil Licensing and
`Certification System, Engine Oil Guide (2009)
`
`McGeehan et al., “API CJ-4: New Oil Category for 2007 Low
`Emission Diesel Engines Using Particulate Filters,” 15th Int’l
`Colloq. Tribology—Auto. and Indus. Lubrication, Jan. 17-19,
`2006 (“McGeehan”)
`
`U.S. Patent No. 4,908,145 to Fenoglio (“Fenoglio”)
`
`ACEA European Oil Sequences (1999) (“1999 ACEA Spec.”)
`
`ACEA European Oil Sequences (2002) (“2002 ACEA Spec.”)
`
`Wilby et al., “Development of Future Low Emission Engine
`Oils,” SAE 2003-01-1990 (2003) (“Wilby”)
`
`Stunnenberg et al., “Future Heavy Duty Diesel Lubricants For
`Low Emission Engines,” SAE 2001-01-3768 (2001)
`(“Stunnenberg”)
`
`Stachowiak, “Wear: Materials, Mechanisms and Practice” (2005)
`(“Stachowiak”)
`
`Excerpts from Mortier et al., “Chemistry and Technology of
`Lubricants” (1997) (“Chemistry and Technology of Lubricants”)
`
`-iii-
`
`

`

`2014
`
`2015
`
`Irganox L 57 Material Safety Data Sheet, Ciba Corp. (Jan. 29,
`2009 Revision) (“Irganox L 57 MSDS”)
`
`Specification of 4,4′-Methylenebis(2,6-di-tert-butylphenol)
`[online]. Sigma-Aldrich [retrieved on 2017-07-24]. Retrieved
`from the Internet: <URL:http://www.sigmaaldrich.com/catalog/
`product/aldrich/277924?lang=en&region=US>.
`
`2016
`
`U.S. Patent 4,234,435 to Meinhardt et al. (“Meinhardt”)
`
`-iv-
`
`

`

`I.
`
`INTRODUCTION
`
`The claims of U.S. Patent 8,076,274 (“the ’274 patent,” Ex. 1001) are
`
`directed to an inventive lubricating oil composition. Lubricating compositions
`
`include various different additives such as detergents, antioxidants, dispersants,
`
`and antiwear compounds, among other things. These additives help the engine oil
`
`continue to fulfill its lubrication function over time and when subject to the
`
`extreme conditions often experienced in an internal combustion engine.
`
`One particular type of detergent—magnesium detergents—were known in
`
`the prior art to offer the required level of detergency performance while producing
`
`a smaller amount of undesirable sulfated ash. Higher levels of sulfated ash can
`
`adversely impact engine and exhaust gas treatment system performance. But,
`
`magnesium detergents also have a known drawback: they result in increased
`
`amounts of bore polishing. Bore polishing is problematic because it interferes with
`
`an engine’s ability to maintain adequate amounts of lubricant in the areas where it
`
`is needed most. The ’274 patent recognized that more magnesium detergent can be
`
`included in a lubricant without giving rise to the expected bore polishing tradeoff if
`
`that detergent is coupled with specific amounts of at least one of two different
`
`types of antioxidants. The unexpectedly improved bore polishing performance of
`
`the ’274 patent’s lubricating compositions is exhibited by comprehensive testing
`
`set forth in the patent’s specification.
`
`-1-
`
`

`

`The ’274 patent has already been the subject of extensive prosecution.
`
`Despite this, Petitioner Afton now seeks inter partes review of the ’274 patent’s
`
`claims. Afton’s petition is premised on three primary prior art references, none of
`
`which are more pertinent than the references previously cited and overcome during
`
`prosecution: EP 0 280 579 to Colclough (“Colclough,” Ex. 1007), EP 0 663 436 to
`
`Nicholson (“Nicholson,” Ex. 1009), and EP 0 311 318 to Fetterman (“Fetterman,”
`
`Ex. 1010). Colclough, Nicholson, and Fetterman were published at a much earlier
`
`point in time and sought to address very different engine performance problems
`
`than those confronting the inventors of the ’274 patent. The teachings of these
`
`references likewise direct one of ordinary skill in the art to very different solutions
`
`than that claimed in the ’274 patent. Ignoring the actual teachings of Colclough,
`
`Nicholson, and Fetterman, Afton instead points to only one or two specific
`
`examples in each reference (and in some cases, only the disparaged comparative
`
`examples) and argues that the examples are close enough to the ’274 patent’s
`
`claims to either anticipate or render the claims obvious.
`
`None of these examples actually establish that the ’274 patent’s claims are
`
`unpatentable. For instance, the cited comparative examples in Colclough do not
`
`necessarily include the amount of antioxidant required by the claims. Thus,
`
`Colclough is not anticipatory. Next, while Afton argues that examples in
`
`Nicholson combined with the 2004 ACEA specification render the claims obvious,
`
`-2-
`
`

`

`it has not engaged in a proper Graham v. John Deere analysis. Afton fails to
`
`identify the difference between the Nicholson examples and the ’274 patent’s
`
`claims—the first step in such an analysis—and does not explain exactly what
`
`teaching the 2004 specification provides (let alone why it should be combined with
`
`Nicholson). Further, neither Nicholson nor the 2004 ACEA specification disclose
`
`certain of the limitations of claims 3, 6, and 7. The last identified reference—
`
`Fetterman—does not disclose use of the claimed antioxidants in the claimed
`
`amounts. Moreover, Fetterman employs a sulfurized antioxidant instead of the
`
`claimed “sulfur-free” antioxidant. Afton never adequately explains why it would
`
`be obvious to eliminate this required component from Fetterman’s compositions
`
`and replace it with the opposite.
`
`Finally, none of the references, which are all directed to different technical
`
`goals, include any teaching regarding the importance of combining an increased
`
`amount of magnesium detergent with the claimed types and amounts of
`
`antioxidants. In fact, in each of the references, the magnesium detergent and
`
`antioxidants required by the ’274 patent are entirely optional and can be eliminated
`
`or replaced with other, non-claimed additives. And, none of the references include
`
`any teachings at all regarding how the utilized additives effect bore polishing or
`
`sulfated ash production. This, however, is exactly what the ’274 patent discloses
`
`and claims: combinations of magnesium detergents and antioxidants that result in
`
`-3-
`
`

`

`acceptable levels of sulfated ash while providing unexpectedly improved bore
`
`polishing performance.
`
`II.
`
`TECHNOLOGICAL BACKGROUND
`
`A.
`
`Common Engine Oil Additives Perform Unpredictably When
`Combined
`
`“Engine lubricants consist predominantly of base oil”—approximately 80 to
`
`95%—“with the remainder being lubricant additives.” (Ex. 2001, Taylor at 332.)
`
`“Modern engine oils contain a wide range of additives which are blended with base
`
`oils to form a complete package capable of meeting demanding performance
`
`requirements.” (Ex. 2002, Pawlak at 11.) Among other things, additives such as
`
`dispersants, detergents, antiwear additives, and antioxidants have been known and
`
`available for use in lubricants for decades. (See id. at 17-18, 22-23.) Dispersants
`
`and detergents help “control sludge, soot and general engine deposits.” (Id. at 17,
`
`25.) Antiwear additives reduce wear resulting from “corrosion, metal-to-metal
`
`contact, or abrasion by solid particles.” (Id. at 21-23.) Antioxidants “reduce oil
`
`oxidation.” (Id. at 33.)
`
`While additives used in lubricants have known structures and some
`
`generally understood properties, the performance of a complete lubricant
`
`composition cannot be readily determined by simply summing up the
`
`characteristics of the individual additives that make up the composition. (See id. at
`
`11.) This is because “additives interact in a variety of ways, both in bulk oil and
`
`-4-
`
`

`

`on surfaces, resulting in synergism or antagonism which greatly complicate the
`
`task of oil formulation….” (Id.) Put another way, “[a]dditives used in lubricating
`
`oil formulations are not neutral compounds and interact with one another to change
`
`their properties in ways which are only partially understood.” (Id. at 37; see also
`
`Ex. 2012, Stachowiak at 85 (additive interactions “complicate[s] additive systems”
`
`and results in a “confusing picture.” There is no “universal rule to predict additive-
`
`additive interactions and so much is dependent on the conditions and the nature of
`
`the additives.”)
`
`In sum, as of the ’274 patent’s filing date, those of skill in the art knew that
`
`combinations of different additives could produce unpredictable, synergistic
`
`effects. (See 2002, Pawlak at 37.) The inventors of the ’274 patent identified one
`
`of these beneficial lubricant additive synergisms: the combination of a magnesium
`
`detergent with an ash-free aminic and/or sulfur-free phenolic antioxidant that
`
`provides required detergency while maintaining sulfated ash production at a
`
`reasonable level without bore polish.
`
`B.
`
`Industry Specifications Do Not Require Use of Particular
`Additives
`
`Petitioner’s brief relies heavily on industry specifications. These
`
`specifications have little to do with the technological advancement claimed by the
`
`’274 patent. Regardless, patent owner will attempt to summarize the role industry
`
`specifications actually play in lubricant development.
`
`-5-
`
`

`

`Industry-wide specifications are assembled and published by a variety of
`
`different entities. In the U.S., the American Petroleum Institute (API) is
`
`responsible for engine oil specifications. (See Ex. 2001, Taylor at 331.) These
`
`specifications employ test methods developed by the American Society for Testing
`
`and Materials (ASTM). (See id.) In Europe, the specifications are issued by
`
`Association des Constructeurs Européens d’Automobiles (ACEA). (Id.) And, a
`
`set of international specifications have been developed by the International
`
`Lubricant Specification and Approval Committee (ILSAC). (Id.) While engine
`
`oils can be labeled indicating that they comply with the industry specifications to
`
`provide clarity and guidance regarding performance to purchasers, the
`
`specifications are not mandatory. Instead, “[l]ubricant marketers are free to choose
`
`the mix of specifications that their products meet, and whether their products just
`
`meet the specifications or exceed them greatly, and they are also free to develop
`
`products which meet consumer needs that are not explicitly covered by industry
`
`standard specifications.” (Id.)
`
`Engine oil specifications have changed significantly over time. Thus, the
`
`specifications that were applicable in 1987 and 1988 (when Colclough and
`
`Fetterman published) and 1995 (when Nicholson published) are different from
`
`those that applied as of the ’274 patent’s 2006 filing date. The U.S. API
`
`specifications are all identified by a series of letters and numbers. The
`
`-6-
`
`

`

`specifications applicable to heavy duty diesel engines all bear a “C” prefix,
`
`followed by a second letter that increases in alphabetical order with each
`
`successive specification, and a number indicating the type of engine the
`
`specification is directed towards (2 or 4 stroke). The API CF-4 specification
`
`applied to oils was first available in 1990. (See Ex. 2005 at 3.) 1 This specification
`
`did not include any chemical limits, any limits on sulfated ash content, or any bore
`
`polishing limitation. (See Ex. 2004 at 10.) This was followed by the CG-4
`
`specification in 1995, the CH-4 specification in 1998, the CI-4 specification in
`
`2002, and finally the CJ-4 specification in 2006. (See Ex. 2005 at 3.) The first of
`
`these to impose a limit on sulfur, phosphorus, and sulfated ash content was the CJ-
`
`4 specification. (See Ex. 2006, McGeehan at Abstract; see also id. at 3 (noting that
`
`“[i]n previous API heavy-duty engine oil categories there were no chemical limits
`
`on the engine oil….”) This specification limited sulfated ash content to 1.0% by
`
`mass, phosphorus to 0.12% by mass, and sulfur to 0.40% by mass. (See id. at 3.)
`
`There was no lower limit on sulfated ash. (See id.)
`
`The European ACEA specifications changed in a similar manner. The
`
`ACEA specifications applicable to heavy duty diesel engines all start with the
`
`letter “E” which is then followed by a sequential number. The E1, E2, and E3
`
`1 Note that the specifications are published several years in advance of their
`effective date.
`
`-7-
`
`

`

`specifications, which all became available in 1996, limited sulfated ash content to
`
`less than 2.0% by mass but did not impose any limits on sulfur or phosphorus
`
`content. (See Ex. 2003, 1996 ACEA Spec. at 7-8.) The E4 and E5 specifications,
`
`applicable starting in 1999, limited bore polishing to 2% but did not alter the
`
`sulfated ash limitation or impose any limits on phosphorus or sulfur. (See Ex.
`
`2008, 1999 ACEA Spec. at 9-11.) Limits on phosphorus or sulfur did not appear
`
`until 2004, when the E6 and E7 specifications became available. (See Ex. 1012,
`
`2004 ACEA Spec. at 13-15.) These specifications limited sulfated ash content to
`
`either 1 or 2% by mass, limited phosphorus content to 0.08% by mass, and limited
`
`sulfur content to 0.3% by mass. (Id. at 13.) There was no lower limit on the
`
`sulfated ash content. (See id.) The 2% limitation on bore polishing was not
`
`changed. (See id. at 14.) Thus, when Colclough, Nicholson, and Fetterman
`
`published, lubricants were not subject to any chemical limits. And, while the
`
`European specification included a sulfated ash limitation, the U.S. specification did
`
`not.
`
`While limits on sulfur, phosphorus, and further limitations on sulfated ash
`
`did begin to appear in 2004, this had very little to do with the subject matter
`
`claimed by the ’274 patent. For instance, the limitations on sulfur content were
`
`intended to increase the compatibility of engine lubricants with the catalysts
`
`employed by automotive exhaust gas treatment systems. The vast majority of
`
`-8-
`
`

`

`sulfur in lubricants is contributed by the base stock, detergent, and antiwear
`
`additives. (See Ex. 2011, Stunnenberg at 4.) While other additives, including
`
`antioxidants, may contain sulfur, the amount of these antioxidants is typically
`
`relatively small and would not significantly diminish overall sulfur content even if
`
`entirely removed. (See, e.g., Ex. 1001, ’274 patent at 2:1-3.) Thus, the base stock,
`
`detergent, and antiwear additives—and not antioxidants—were the primary targets
`
`when seeking to eliminate or reduce lubricant sulfur. (See Ex. 2010, Wilby at 4.)
`
`The ’274 patent’s claims are not limited to any particular type of base stock, and
`
`permit the use of sulfur containing detergents and antiwear additives.
`
`Next, ZDDP antiwear additives are typically the only phosphorus containing
`
`compounds in a lubricant composition. (See Ex. 2011, Stunnenberg at 4.) Thus,
`
`limits on phosphorus content primarily served to limit the amount of ZDDP that
`
`could be included in a lubricant composition. (See Ex. 2010, Wilby at 4.) ZDDP,
`
`a type of metal hydrocarbyl dithiophosphate, is an optional component in claim 1
`
`of the ’274 patent. Further, when present, claim 1 permits up to 1.8% ZDDP by
`
`mass. Since ZDDP typically contains about 10% phosphorus (see id.), the ’274
`
`patent’s claims extend to lubricant compositions containing up to 0.18%
`
`phosphorus. This is more than double the 0.08% maximum imposed by the 2004
`
`specifications.
`
`-9-
`
`

`

`Last, while one specification category lowered the sulfated ash limits to 1%
`
`in 2004, metal from detergents and ZDDP is the largest source of sulfated ash in a
`
`lubricant composition. (See Ex. 2011, Stunnenberg at 5.) Thus, the 2004
`
`reduction in the maximum allowable sulfated ash content motivated lubricant
`
`manufactures to use less detergent and ZDDP. (See id.) Further, “dispersants can,
`
`to a large extent, fill the detergency role of metallic detergents in a lubricant.” (Id.)
`
`And, the “need of providing base can in part be decreased by moving to synthetic
`
`base stocks … while the lower fuel sulfur content will result in less acid formation
`
`also requiring less base.” (Id.) The ’274 patent’s independent claim does not
`
`require the use of any particular type or amount of dispersant, any particular type
`
`of base stock, or even low sulfur fuel. The patent’s claimed subject matter also
`
`facilitates the use of more (not less) detergent. And, the ’274 patent’s claims
`
`permit up to 2% sulfated ash. Indeed, certain dependent claims, including claims
`
`10 and 11 actually require more than 1% sulfated ash limit imposed in 2004. (See
`
`Ex. 1001, ’274 patent at 10:24-29.)
`
`Finally, while the 2004 specification changes are not technically related to
`
`the ’274 patent, they did have an important industry effect. In particular, “[t]he
`
`explosion of additive chemistries available, as well as the complexity of
`
`developments to meet the European and international performance requirements,
`
`have escalated the costs required for lubricant design.” (Ex. 2002, Pawlak at 20.)
`
`-10-
`
`

`

`While bench testing provides some insight, more comprehensive “[d]evelopment
`
`and optimization of a new high performance engine lubricant meeting key
`
`international specification and OEM requirements, is in the range of several
`
`million dollars to develop and engine test.” (Id.)
`
`III. OVERVIEW OF THE ’274 PATENT
`
`The ’274 patent was filed July 10, 2007 and claims priority back to a July
`
`20, 2006 foreign filing. (See Ex. 1001, ’274 patent.) The patent is generally
`
`directed to “lubricating oil compositions for use in diesel engines” and in
`
`particular, “diesel engines of the type referred to as heavy duty diesel engines….”
`
`(Id. at 1:6-10.)
`
`The ’274 patent explains that “[d]iesel engines comprise one or more bores
`
`in each of which a piston reciprocates.” (Id. at 1:11-12.) Each piston includes
`
`“rings around its periphery” that contact the bore “to provide a seal between the”
`
`engine’s “combustion chamber[s] and the crankcase.” (Id. at 1:12-14.) Because
`
`“[t]he reciprocating movement of the pistons” in the bore has “the potential to
`
`cause wear of the bore wall and the piston rings,” “a film of lubricating oil is
`
`maintained on the bore wall to avoid or reduce any direct contact between the
`
`piston rings and the bore wall.” (Id. at 1:15-22.) Heavy duty diesel engines
`
`additionally include an “array[] of grooves” on the bore wall “which act to retain
`
`lubricating oil” and further combat wear. (Id. at 1:23-32.) One particular problem
`
`-11-
`
`

`

`encountered by these engines is that “at least some regions of the bore wall
`
`between the grooves” can “become worn” resulting in a “reduced … ability … to
`
`retain lubricant.” (Id. at 1:33-37.) This “phenomenon of wear of bore regions
`
`between grooves is known as ‘bore polishing.’” (Id. at 1:41-42.)
`
`The ’274 patent next explains that “[t]he combustion of fuels in diesel
`
`engines … leads to the formation of acidic moieties which can have detrimental
`
`effects such as corrosion of parts of the engine and its exhaust system.” (Id. at
`
`3:16-19.) To account for this, “metal-containing detergents” are included in
`
`lubricants. (Id. at 2:23-30.) But, “[t]he amount of basic metal detergent which can
`
`be incorporated into a lubricating oil is restricted because the metal of the detergent
`
`gives rise to ash materials which adversely affect the operation of engine
`
`equipment such as exhaust gas filters and exhaust gas purification catalysts.” (Id.
`
`at 2:31-35.) While “magnesium detergents produce a lower mass of ash than
`
`calcium detergents,” the ’274 patent explains that “[a] well-known drawback of
`
`lubricant compositions comprising magnesium-containing detergents is that they
`
`tend to cause bore polishing….” (Id. at 2:39-50.) Thus, “the concentration of
`
`magnesium in engine oils has tended to be restricted to relatively low levels.” (Id.
`
`at 3:48-50.)
`
`The ’274 patent’s invention is meant to address this shortcoming in the prior
`
`art. In particular, “[t]he applicant has discovered that lubricating oils containing
`
`-12-
`
`

`

`relatively high concentrations of magnesium from magnesium-containing
`
`detergents can be formulated without giving rise to unacceptable levels of bore
`
`polishing or unacceptable levels of ash in diesel engines.” (Id. at 2:51-55.) To
`
`accomplish this, the ’274 patent discloses a lubricating composition that includes
`
`an increased amount of overbased magnesium detergent in combination with
`
`specific types of antioxidants—“one or more ash-free aminic and/or sulfur-free
`
`phenolic compounds”—present in specific amounts—0.6-3.0 mass % of the total
`
`lubricating composition. (See id. at 4:1-22.) Optionally, a “metal hydrocarbyl
`
`dithiophosphate compound” can also be included. (Id.)
`
`The ’274 patent also includes a number of working examples. “[O]il
`
`samples 1, 2, and 3 are illustrative of compositions having low magnesium
`
`contents and low antioxidant contents.” (Id. at 7:50-52.) These samples “all have
`
`bore polish results below the maximum limit….” (Id. at 7:58-59.) “Oil samples 4
`
`to 8 are illustrative of compositions having high magnesium contents and low
`
`antioxidant concentrations.” (Id. at 7:62-64.) Consistent with the understanding in
`
`the prior art that higher magnesium levels results in higher amounts of bore
`
`polishing, these samples “produce[d] Bore Polish ‘Fail’ results above the
`
`maximum limit….” (Id. at 8:5-8.) Samples 9 to 14 have both the claimed higher
`
`amount of magnesium detergent and the required types and amounts of
`
`antioxidants. (Id. at 8:49-54.) Contrary to the prior art’s understanding regarding
`
`-13-
`
`

`

`the interplay of magnesium and bore polishing, all of these claimed samples
`
`“produce[d] Bore Polish ‘Pass’ results below the maximum limit.” (Id. at 8:58-
`
`67.)
`
`The ’274 patent claims just such a composition. Claim 1, the patent’s only
`
`independent claim, is directed to a “lubricating oil composition for a diesel
`
`engine,” and requires:
`
`(a)
`
`“a lubricating oil basestock”;
`
`(b)
`
`“an antioxidant component” that is “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 %”; and
`
`(c)
`
`“a detergent component” that is “an overbased magnesium compound
`
`having a total base number (TBN) exceeding 350 mg/g KOH selected
`
`from one or more magnesium sulfonates, magnesium salicylates, and
`
`magnesium phenates and which provide the composition with greater
`
`than 0.05 mass % Mg.”
`
`The composition must have a “sulfated ash content of … at least 0.6 mass % to not
`
`more than 2.0 mass %.” And, “one or more metal hydrocarbyl dithiophosphate
`
`compounds” and/or “a calcium detergent compound” can also be optionally
`
`included.
`
`-14-
`
`

`

`While Afton includes a discussion of the meaning of certain of the ’274
`
`patent’s claim terms, Patent Owner is of the view that all the claim elements Afton
`
`discusses (and those it did not) can be afforded their plain and ordinary meaning.
`
`IV. PETITIONER’S PRIOR ART
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`None of the prior art references identified by Afton include any teachings
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`relating to beneficial effects achieved by combining increased amounts of
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`magnesium detergents with ash-free aminic and/or sulfur-free phenolic
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`antioxidants. Instead, all of petitioner’s prior art relates to old, obsolete additives
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`(or additive packages meant to address problems entirely different from that
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`addressed by the ’274 patent). None of these references explain that the
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`combination of magnesium detergent with the claimed antioxidants produces a
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`synergistic effect with unexpectedly improved bore polishing (or any other
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`synergistic effect). Instead, antioxidants are included simply to provide
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`antioxidancy to a lubricant. Accordingly, none of the references includes any
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`teaching that would motivate one of ordinary skill in the art to increase the total
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`level of magnesium detergent beyond conventional amounts to arrive at the
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`compositions claims in the ’274 patent.
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`A.
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`Colclough
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`Colclough published in 1988. (See Ex. 1007.) Colclough explains that, in
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`1988, “[t]here is currently a drive to reduce the amounts of phosphorus in
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`lubricants because of the deleterious effect phosphorus has on catalysts commonly
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`used in catalytic converters used for emission control.” (Id. at 2:5-6.) Thus,
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`Colclough discloses “lubricating compositions … containing low or zero amounts
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`of phosphorus and zinc.” (Id. at 2:3-4.) To facilitate this, Colclough’s
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`compositions include copper, which “suprising[ly]” “enables a low phosphorus oil
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`with performance meeting the requirements for modern oils to be obtained
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`economically and with good control of oxidation….” (Id. at 3:13-28.)
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`Colclough does note that “[m]agnesium and/or calcium containing additives
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`are frequently included in lubricating compositions either alone or in combination
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`with other alkali metal or alkaline earth metal additives such as those containing
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`sodium.” (Id. at 5:27-29.) “[O]ther similar metal-containing detergent additives,
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`for example, those containing barium, sodium, potassium or lithium” may also be
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`included. (Id. at 6:14-15.) But, these are merely optional components. And,
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`Colclough neither expresses a preference for the magnesium containing detergent
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`claimed by the ’274 patent, nor provides any direction that this detergent should
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`result in the incorporation of the mass percentage of magnesium required by the
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`claims. Likewise, Colclough notes that “supplementary antioxidants” can be
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`included. (Id. at 6:28-33.) But, “small amounts of copper generally removes the
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`need for these supplementary antioxidants.” (Id. at 6:34.) Even if included,
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`Colclough does not direct one of skill to use the claimed types of antioxidants or
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`the claimed antioxidant weight percentage range.
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`Colclough includes a number of examples. Petitioner cites only comparative
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`examples V and VI. (See, e.g., Petition at 21-23.) It ignores working examples 1
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`and 2. Consistent with Colclough’s teachings, working examples 1 and 2 include
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`copper-containing antioxidants but omit additional “supplementary antioxidants,”
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`including those required by the ’274 patent’s claims. (See Ex. 1007 at 6-8 (Table
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`1, showing Examples 1 and 2 omitting additives F and G).) Colclough also
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`includes no discussion of bore polishing. And, it does not discuss and is not
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`concerned with the amount of sulfated ash produced by its composition.
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`B.
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`Nicholson
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`Nicholson published in 1995. (See Ex. 1009.) Rather than focusing on
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`detergent / antioxidant interactions, bore polishing, or sulfated ash production,
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`Nicholson relates to “new and highly useful dispersants for use as additives to
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`natural and synthetic lubricating oils” that have “reduced reactivity toward
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`fluoroelastomers” used as seals “coupled with effective dispersancy….” (Id. at
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`2:1-4.) Like Colclough, Nicholson notes that “metal-containing detergents” can be
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`included in a lubricating compositions. (Id. at 9:38.) But, rather than focusing on
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`the magnesium-containing detergents required by the ’274 patent’s claims,
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`Nicholson identifies “sodium, potassium, lithium, calcium, magnesium, strontium
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`and barium” detergents as acceptable. (Id. at 9:38-10:21.) And, Nicholson does
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`not specify the amount of magnesium (or any other metal) that should be
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`incorporated.
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`Next, while Nicholson identifies many “[o]xidation inhibitors” that can be
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`included in its compositions (id. at 10:41-44), it does not direct one of skill to the
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`claimed ash-free aminic and/or sulfur-free phenolic antioxidants. Indeed, contrary
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`to the teachings of the ’274 patent, Nicholson identifies both “copper compounds”
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`and “phosphorus-containing antioxidants” (which contain metal and thus produce
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`ash) and “sulfurized phenolic antioxidants” as acceptable. (Id.) There is no
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`discussion of any beneficial effects obtained from combining particular types of
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`detergents with particular antioxidants.
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`Nicholson includes a number of examples. Petitioner focuses only on
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`Example IV. (See Petition at 34.) This is the only example that includes a
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`magnesium detergent. All of Nicholson’s other examples include only calcium
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`detergents. (See id. at 12:34-35, 13:14-15, 13:21-22, 13:54-14:2.) Finally, like
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`Colclough, Nicholson includes no discussion of bore polishing, or the importance
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`of targeting the sulfated ash range required by the ’274 patent’s claims.
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`C.
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`Fetterman
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`Fetterman published in 1989. (See Ex. 1010.) Fetterman relates to a
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`“lubricating oil” that contains an “ashless dispersant,” a “sulfurized alkyl phenol”
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`antioxidant, and “at least one organo-sulfur compound.” (Id. at 4:49-52.) The
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`“compositions … are characterized as being ashless, that is, by a total sulfate ash
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`value (SASH) concentration of less than 0.01 wt.% SASH, preferably substantially
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