Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 47
`Entered: October 18, 2018
`
`
`
`
`
`
`
`
`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 B2
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 47
`Entered: October 18, 2018
`
`
`
`
`
`
`
`
`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 B2
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`
`I. INTRODUCTION
`
`A. Background
`Afton Chemical Corporation (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–13 of U.S. Patent No.
`8,076,274 B2 (Ex. 1001, “the ’274 patent”). Infineum International Limited
`(“Patent Owner”) filed a Preliminary Response to the Petition. Upon
`consideration of the Petition, the Preliminary Response, and the parties’
`evidence, we determined that Petitioner had demonstrated a reasonable
`likelihood that it would prevail with respect to claims 1–13 of the ’274
`patent (Paper 8, “Dec. on Inst.”). Thus, we instituted review with respect to
`those claims. We did not, however, institute review on all asserted grounds
`of unpatentability set forth in the Petition. Dec. on Inst. 5, 26.
`On April 27, 2018, pursuant to the Supreme Court’s decision in SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018), we modified the institution
`decision to institute review of all challenged claims on all challenged
`grounds. Paper 20, 2.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper
`23, “Pet. Reply”). Patent Owner also filed a Supplemental Response
`addressing the newly-instituted grounds (Paper 22), to which Petitioner filed
`a Reply (Paper 32).
`With its Patent Owner Response, Patent Owner filed a contingent
`Motion to Amend (Paper 17, “MTA”), to which Petitioner filed an
`Opposition (Paper 24, “Opp. MTA”), Patent Owner filed a Reply (Paper 29,
`MTA Reply), and Petitioner filed a Sur-Reply (Paper 33, “MTA Sur-
`Reply”).
`
`2
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`In support of their respective arguments, Petitioner relies on the
`declaration testimony of Dr. William Y. Lam (Exs. 1004 and 1050) and
`Mr. Jeremy Styer (Ex. 1006) and Patent Owner relies upon the declaration
`testimony of Dr. Jack Emert (Exs. 2025, 2035, and 2039).
`An oral hearing was held on August 9, 2018, and a transcript of the
`oral hearing is included in the record. Paper 46 (“Tr.”).
`
`B. Related Proceedings
`Petitioner notes that a European Patent Application to which the ’274
`patent claims priority is the subject of a “Third Party Observation under
`Article 115 EPC.” Pet. 1. The parties identify no other related proceedings.
`Id.; Paper 4, 1.
`
`C. The ’274 Patent
`The ’274 patent, titled “Lubricating Oil Composition,” is directed to a
`lubricating oil composition for use in diesel engines. Ex. 1001, (54), 1:6–8.
`The ’274 patent explains that combustion of fuel 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. In
`order to neutralize these acidic moieties, lubricating oils for diesel engines
`“are usually formulated to have relatively high basicity (e.g. high total base
`number, TBN),” which is “attained by incorporating basic metal-containing
`detergents in the lubricating oils.” Id. at 3:19–25. The amount of basic
`metal detergent that can be used is limited, however, “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 3:31–35. Magnesium-containing detergents also “tend to
`cause bore polishing,” i.e., the wearing of lubricant-containing grooves in
`
`3
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`the bore wall, which limits the ability of the grooves to retain lubricant and
`potentially leads to increased wear and engine failure. Id. at 1:33–42, 3:43–
`48.
`
`According to the ’274 patent, the applicants discovered that by
`selecting an appropriate set of additives, a lubricating oil “containing
`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 3:51–
`55. This lubricating oil has the following components: (a) a lubricating oil
`basestock of lubricating viscosity; (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 % and up to 3.0 mass % based
`on the total mass of the lubricating composition”; (c) a detergent component
`that “is an overbased magnesium compound having a total base number
`(TBN) exceeding 350 mg/g KOH”; and optionally (d) one or more metal
`hydrocarbyl dithiophosphate compounds in an amount of from 0.0 to 1.8
`mass % and/or (e) a calcium detergent. Id. at 4:1–22, 9:25–27.
`
`D. Illustrative Claims
`Claim 1 is the only independent claim of the ’274 patent. Claims 1
`and 13 are illustrative of the challenged claims and are reproduced below:
`1. A lubricating oil composition for a diesel engine, comprising the
`following components:
`(a) a lubricating oil basestock of lubricating viscosity;
`(b) an antioxidant component;
`(c) a detergent component; and
`
`4
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`optionally (d) one or more metal hydrocarbyl dithiophosphate
`compounds in an amount of from 0.0 to 1.8 mass % and/or (e) a
`calcium detergent compound;
`wherein the antioxidant component (b) 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 % based on the total mass of the
`composition; and
`the detergent component (c) 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 based on the total mass of the composition, and
`wherein the sulfated ash content of the composition is at least 0.6
`mass % to not more than 2.0 mass % as determined by ASTM D874.
`Ex. 1001, 9:20–10:3.
`13. The composition of claim 1 wherein the detergent component
`(c) comprises salicylate detergent.
`Id. at 10:34–35.
`E. Instituted Grounds of Unpatentability
`We instituted trial to determine whether claims 1–13 of the ’274
`patent are unpatentable based on the following grounds (Pet. 26; Paper 20,
`2):
`
`Reference(s)
`Colclough1
`
`Nicholson2 and ACEA 20043
`
`Basis
`§ 102
`
`§ 103
`
`Claim(s) Challenged
`1–11
`
`1–12
`
`
`1 EP Patent Publication No. 0 280 579 A2, published Aug. 31, 1988
`(Ex. 1007).
`2 EP Patent Publication No. 0 663 436 A1, published July 19, 1995
`(Ex. 1009).
`3 ACEA European Oil Sequences, Service Fill Oils for Gasoline Engines,
`Light Duty Diesel Engines, Engines with After Treatment Devices & Heavy
`
`5
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`
`Reference(s)
`Fetterman4 and Arrowsmith5
`
`Colclough and Arrowsmith
`
`Nicholson, ACEA 2004, and
`Arrowsmith
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s) Challenged
`1–12
`
`13
`
`13
`
`F. Proposed Grounds of Unpatentability for Proposed Amended
`Claims 14–25
`As noted above, Patent Owner filed a contingent Motion to Amend
`seeking to add substitute claims 14–25 in place of original claims 1–13.
`MTA 27. Petitioner contends the proposed amended claims are unpatentable
`based on the following grounds (Opp. MTA 5):
`Reference(s)
`Basis
`Colclough
`§ 102
`
`Claim(s) Challenged
`14–23
`
`Arrowsmith ’2996
`
`Nicholson, ACEA 2004, and Stepina7
`
`Nicholson, ACEA 2004, Stepina, and
`Arrowsmith ’371
`
`Locke8
`
`§ 103
`
`§ 103
`
`§ 103
`
`14–25
`
`14–24
`
`25
`
`§ 103
`
`14–24
`
`
`Duty Diesel Engines, EUR. AUTOMOBILE MANUFACTURERS ASS’N (2004)
`(Ex. 1012).
`4 EP Patent Publication No. 0 311 318 A1, published Apr. 12, 1989
`(Ex. 1010).
`5 U.S. Patent Publication No. 2004/0127371 A1, published July 1, 2004
`(Ex. 1020) (“Arrowsmith” or “Arrowsmith ’371”).
`6 U.S. Patent Publication No. 2006/0116299 A1, published June 1, 2006
`(Ex. 1013) (“Arrowsmith ’299”).
`7 V. Stepina & V. Vesely, Lubricants & Special Fluids, Elsevier, 1992 (Ex.
`1018).
`8 U.S. Patent No. 6,423,670 B2, issued July 23, 2002 (Ex. 1002).
`
`6
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`
`Reference(s)
`Diggs9
`
`Diggs
`
`Bloch10 and Stepina
`
`Basis
`§ 102
`
`§ 103
`
`§ 103
`
`Claim(s) Challenged
`14–16 and 20–23
`
`17–19, 24, and 25
`
`14–24
`
`II. ANALYSIS OF ORIGINAL CLAIMS 1–13
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent . . . shall
`be given its broadest reasonable construction in light of the specification of
`the patent in which it appears.” 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of the
`broadest reasonable interpretation standard). In determining the broadest
`reasonable construction, we presume that claim terms carry their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that
`differs from its ordinary meaning; however, any special definitions must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner provides a proposed construction for the claim phrase
`“selected from one or more ash-free aminic and/or sulfur-free phenolic
`compounds” and for the term “optionally.” Pet. 12–15. Patent Owner does
`not address Petitioner’s proposed constructions or identify any other claim
`terms of the ’274 patent that it contends require construction. PO Resp. 10.
`
`
`9 U.S. Patent No. 8,513,169 B2, issued Aug. 20, 2013 (Ex. 1045).
`10 U.S. Patent No. 6,004,910, issued Dec. 21, 1999 (Ex. 2033).
`
`7
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`Upon review of the parties’ arguments and supporting evidence, we
`determine that no claim terms of the ’274 patent require express construction
`for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”)).
`
`B. Principles of Law
`A claim is anticipated under 35 U.S.C. §102 if a single prior art
`reference discloses, either expressly or inherently, each limitation of the
`claim. In re Cruciferous Sprout Lit., 301 F.3d 1343, 1349 (Fed. Cir. 2002).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) the differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Level of Ordinary Skill in the Art
`Dr. Lam testifies that one of ordinary skill in the art at the time of the
`earliest effective filing date of the ’274 patent “would have had an
`undergraduate degree in Chemistry or Chemical Engineering, or equivalent
`
`8
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`work experience of five to ten years of experience in the field of lubricants
`or tribology, and an understanding of formulation science.” Ex. 1004 ¶ 13.
`Dr. Emert generally agrees with this proposed level of ordinary skill in the
`art, but clarifies that five years of work experience in the field of lubricants
`or tribology (as opposed to ten years) “would be sufficient when coupled
`with an undergraduate degree in a relevant field” and that “[f]ive additional
`years of work experience could compensate for any missing formal
`academic training, including, for instance, an ungraduated degree in a non-
`chemical field.” Ex. 2025 ¶ 31.
`Upon review of the arguments set forth by Drs. Lam and Emert, we
`adopt Dr. Emert’s description of one of ordinary skill in the art, as it is
`consistent with the prior art of record and persuasively considers how the
`necessary level and type of education may be offset by work experience in
`the relevant field. We note, however, that neither party contends that the
`difference in education and experience level Drs. Lam and Emert assert for
`an ordinarily skilled artisan would have any impact on the parties’
`arguments or conclusions in this case. See, e.g., Ex. 2025 ¶ 32.
`
`D. Anticipation of Claims 1–11 by Colclough
`Petitioner contends claims 1–11 of the ’274 patent are anticipated by
`Colclough. Pet. 26–34.
`
`1. Colclough
`Colclough discloses “lubricating compositions, especially automobile
`crankcase lubricants, containing low or zero amounts of phosphorus and
`zinc.” Ex. 1007, 2:3–4. These lubricants have “antiwear, corrosion
`inhibition and antioxidant performance appropriate for modern oil
`
`9
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`requirements,” but do not require “large amounts and/or expensive forms of
`antioxidant.” Id. at 2:56–58.
`Colclough discloses Comparative Examples I–VI and Examples 1
`and 2. Id. at 6:55–7:14, Table 1. Additives A–H and J–M are utilized in one
`or more of these examples, and are described in the reference as follows:
`A is a dispersant V.I. additive comprising an oil solution containing
`21% of a multifunctional ethylene-propylene copolymer and
`containing 0.29 wt % N.
`
`B is an ashless dispersant comprising a 50 wt % oil solution of
`borated polyisobutenyl succinimide having a polyisobutenyl radical
`with a molecular weight of approximately 950 and containing 1.6 wt
`% N and 0.35 wt % B.
`
`C is an oil solution of an overbased magnesium sulphonate having a
`TBN of 400 and a magnesium content of 9.2 wt % and a sulphur11
`content of 1.7 wt %.
`
`D is an oil solution of an overbased calcium sulphonate having a TBN
`of 300 and a calcium content of 11.9 wt % and a sulphur content of
`1.9 wt %[.]
`
`E is an oil solution of copper oleate containing 4 wt % copper.
`
`F is a 30 wt % solution in oil of a hindered methylene bis-phenol
`antioxidant.
`
`G is an alkylated diphenylamine antioxidant, commercially available
`as Irganox L-57 from Ciba-Geigy.
`
`H is a 50 wt % oil solution of a zinc diamyl dithiocarbamate
`containing 6 wt % of zinc and 12 wt % sulphur.
`
`
`11 The ’274 patent refers to sulfur, whereas several of the prior art references
`refer to sulphur. We understand these terms to be synonymous and we use
`them interchangeably.
`
`10
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`J is an orthoborate ester made from ethoxyethanol comprising 5 to 6
`wt % of boron.
`
`K is 2,5-bis(nonyldithio)-1,3,4-thiadiazole, commercially available as
`Amoco 158 from Amoco Chemical Company, comprising 33 wt %
`sulphur.
`
`L is an oil solution containing 12 wt % of molybdenum as the octoate.
`
`M is a sulphurized ester sperm oil substitute, commercially available
`as Emery 9844 from Emery Corporation, and comprising 11.5 wt %
`sulphur.
`
`Example VI
`8.5 wt%
`3.0 wt%
`1.6 wt%
`0.9 wt%
`0.3 wt%
`1.0 wt%
`0.4 wt%
`1.5 wt%
`-
`
`Id. at 6:59–7:13.
`
`According to Table 1 of Colclough, Comparative Examples V and VI
`contain the following additives:
`Additive
`Example V
`A
`8.5 wt%
`B
`3.0 wt%
`C
`1.6 wt%
`D
`-
`E
`-
`F
`1.0 wt%
`G
`0.4 wt%
`H
`1.5 wt%
`J
`1.0 wt%
`2. The Parties’ Arguments
`Petitioner demonstrates that the lubricating compositions of
`Comparative Examples V and VI include a basestock of lubricating
`viscosity, antioxidants, and a magnesium sulfonate detergent having a TBN
`of 400 and contributing 0.15 wt% magnesium to the total mass of the
`composition. Pet. 26–28 (citing Ex. 1004 ¶ 43; Ex. 1007, 6:57–58, 6:64–65,
`7:4–5, Table 1). Petitioner also provides calculations and experimental
`evidence to establish that the lubricants of Comparative Examples V and VI
`
`11
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`have a sulfated ash (SASH) content of 0.89 mass % and 1.18 mass %,
`respectively.12 Id. at 28–29 (citing Ex. 1004 ¶¶ 51–52; Ex. 1006 ¶¶ 29, 46).
`With respect to the specific type and level of antioxidants used in
`Comparative Examples V and VI, Petitioner demonstrates that Components
`F and G in Colclough are “ash-free aminic and/or sulfur-free phenolic
`compounds” and calculates that these antioxidants are present “at a
`combined 0.7 wt.%.” Id. at 27–28 (citing Ex. 1004 ¶ 43; Ex. 1007, Table 1).
`Dr. Lam, testifying in support of Petitioner, explains that this total was
`derived by “adding Component G (0.4 wt.%) and taking the active percent
`of the solution for Component F (1.0 wt.% * (30%) = 0.3 wt.%) to arrive at
`0.7 wt.% (0.4 + 0.3 = 0.7 wt.%).”13 Ex. 1004 ¶ 43.
`Patent Owner asserts that Petitioner’s calculations with respect to the
`level of antioxidants in Colclough are flawed because there is no factual
`basis for presuming that Component G contains 100% alkylated
`diphenylamine. PO Resp. 16–17, 20–21. According to Patent Owner,
`material data safety sheets (MSDS) for Irganox L-57 indicate that the level
`of alkylated diphenylamine in this product can vary from 60% to 100%. Id.
`at 25. Applying the lowest level of active ingredient for Irganox L-57
`reported in these references, Patent Owner calculates that the ash-free aminic
`
`
`12 Dr. Lam testifies that the experiments were conducted according to ASTM
`D-874 and correlate closely with the calculated SASH values for these
`experiments. Ex. 1004 ¶¶ 45–48, 53.
`13 The prior art references disclose wt.% not mass %. Dr. Lam testifies that
`any differences between “[t]he wt.% reported in the prior art references” and
`the “mass % recited in the claims” would be “inconsequential.” Ex. 1004
`¶ 101 n.4. Patent Owner has not contested this assertion and we accept it for
`purposes of this Decision.
`
`12
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`and/or sulfur-free phenolic antioxidant content of Examples V and VI of
`Colclough could be 0.54 wt.%, which is outside the range recited in claim 1
`of the ’274 patent. Id. (citing Ex. 2025 ¶ 59).
`In reply, Petitioner asserts Patent Owner is attempting to “inject
`ambiguity into Colclough’s disclosure where none exists.” Pet. Reply 3.
`According to Petitioner, rather than accept Colclough’s disclosure of using
`0.4 wt.% of an alkylated diphenylamine, Patent Owner is attempting to re-
`write this disclosure “to read 0.4 wt.% of Irganox L-57.” Id. at 3–4 (citing
`Ex. 1007, 7:5, 8:1–67). Petitioner further asserts that, even if Colclough
`actually required the addition of 0.4 wt.% Irganox L-57, it is evident that the
`material used in Colclough was 100% pure as every component in
`Colclough that contains less than 100% of an identified ingredient is
`specifically identified as such. Id. at 5–6 (identifying additives A, B, C, D,
`F, H, and L of Colclough as containing less than 100% active ingredient).
`Petitioner also asserts that the material safety data sheets relied upon by
`Patent Owner do not reflect the contents of the Irganox L-57 used in
`Colclough as these references do not report the precise concentration of the
`product and each of these references was published after Colclough issued.
`Id. at 6–7 n.5.
`
`3. Analysis
`Upon review of the record as a whole, we are persuaded that
`Colclough discloses using 0.4 wt% of an alkylated diphenylamine. First,
`Colclough discloses that Component G “is an alkylated diphenylamine
`antioxidant,” not that Component G “contains” an alkylated diphenylamine
`antioxidant. Ex. 1007, 7:5; Pet. Reply 3–4. Second, each additive
`component that contains less than 100% active ingredient in Colclough is
`
`13
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`specifically identified as such in the reference. Pet. Reply 5–6; Ex. 1007,
`7:4 (“F is a 30 wt % solution in oil of a hindered methylene bis-phenol
`antioxidant.”). These disclosures support Petitioner’s argument that
`Colclough discloses using 0.4 wt.% of an alkylated diphenylamine
`antioxidant in the lubricating compositions of Comparative Examples V and
`VI.
`
`Although Colclough goes on to explain that the disclosed alkylated
`diphenylamine antioxidant of Component G is “commercially available as
`Irganox L-57 from Ciba-Geigy” (Ex. 1007 7:5), it is not clear from Patent
`Owner’s arguments why this disclosure requires the use of commercially-
`sourced Irganox L-57, as opposed, for example, to alkylated diphenylamine
`antioxidants manufactured on site or sourced from an alternate supplier.
`See, e.g., Pet. Reply 4. Patent Owner also does not explain persuasively why
`one of ordinary skill in the art, if he or she contemplated that a particular
`batch of Irganox L-57 had less than 100% alkylated diphenylamine
`antioxidant, would not ensure that 0.4 wt.% of the alkylated diphenylamine
`antioxidant is added to the lubricant, as is expressly disclosed in Colclough,
`as opposed to applying unknown levels of antioxidant that may be below the
`level recited in the reference. See PO Resp. 20 (Patent Owner contending
`that Colclough “instructs that the commercial product be used for
`Component G regardless of the amount of active antioxidant actually present
`in that product”). 14
`
`
`14 Irganox L-57 is composed of “Benzamine, N-phenyl-, reaction products
`with 2,4,4-trimethylpentene.” Ex. 2017, 2; 2018, 1. Mr. Styer testified
`during cross-examination that, to the extent a particular batch of Irganox L–
`57 is not composed of 100% alkylated diphenylamine, the remaining
`components in this product would be “other by-products” of the reaction,
`
`14
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`In view of Colclough’s express disclosure of using 0.4 wt % of
`Component G (which “is an alkylated diphenylamine antioxidant”) in
`combination with 1.0 wt.% of Component F (provided as a 30 wt.%
`solution), we find that Colclough expressly discloses the use of “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 % based on the total mass of the
`composition.” Ex. 1004 ¶¶ 43, 122. As noted above, Petitioner persuasively
`identifies where the remaining limitations of claim 1 are disclosed, either
`expressly or inherently, by Comparative Examples V and VI of Colclough.
`Pet. 27–29. Patent Owner does not dispute that these remaining limitations
`of claim 1 are disclosed in Colclough. Thus, we determine that Petitioner
`has demonstrated by a preponderance of the evidence that Colclough
`anticipates claim 1 of the ’274 patent.
`With respect to dependent claims 2–11, Petitioner identifies where
`Colclough discloses each limitation of these claims. Pet. 31–34. For
`example, Petitioner demonstrates that the lubricating compositions of
`Comparative Examples V and VI of Colclough: (1) contain 0.15 wt%
`magnesium (claims 2 and 3) (id. at 31 (citing Ex. 1007, 8, Table 1));
`(2) contain one or more nitrogen-containing dispersants that provide the
`composition with at least 0.073 wt % nitrogen (claims 4–7) (id. at 32 (citing
`Ex. 1007, 6:59–63, Table 1; Ex. 1004 ¶ 105 (Dr. Lam calculating the
`nitrogen content provided by the dispersants of Colclough))); (3) contain
`
`
`“which would, in themselves, be aminic antioxidants.” Ex. 2026, 70:24–
`71:19. As claim 1 of the ’274 patent allows any type of ash-free aminic
`antioxidant, this testimony is consistent with our finding that Colclough
`discloses a composition having 0.7 wt.% of the claimed antioxidants.
`
`15
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`antioxidant components that are ash-free (claim 8) (id. at 32–33 (citing
`Ex. 1007, 7:4–5)); and (4) have experimentally derived SASH levels of 0.89
`mass % (Example V) and 1.18 mass % (Example VI) that fall within the
`ranges of dependent claim 9 (Example V) and dependent claims 9–11
`(Example VI) (id. at 33–34 (citing Ex. 1006 ¶¶ 29, 46; Ex. 1004 ¶¶ 49–52)).
`Patent Owner does not address Petitioner’s arguments with respect to
`dependent claims 2–11 in its Patent Owner Response.
` Upon review of the arguments and evidence of record, we determine
`that Petitioner has demonstrated by a preponderance of the evidence that
`claims 2–11 are anticipated by Colclough.
`
`E. Obviousness of Claims 1–12 over Nicholson and ACEA 2004
`Petitioner contends the subject matter of claims 1–12 would have been
`obvious over the combined disclosures of Nicholson and ACEA 2004. Pet.
`34–45.
`
`1. Nicholson
`Nicholson discloses dispersants for use as additives in natural and
`synthetic lubricating oils “that have reduced reactivity towards
`fluoroelastomers coupled with effective dispersancy.” Ex. 1009, 2:1–4.
`Nicholson provides four illustrative examples. Id. at 12:12–13. Example IV
`of Nicholson is one of these illustrative examples and contains the following
`components (id. at 13:38–53):
`
`16
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`
`
`As shown in the figure above, Example IV contains components a) –
`e) and a “Base oil,” a “VI Improver,” and “Diluent oils.” Id. Component a)
`of Example IV is an “AG dispersant”; component b) is an oil-soluble ashless
`dispersant; component c) is a metal hydrocarbyl dithiophosphate; component
`d) is a 400 TBN overbased magnesium alkylbenzene sulfonate detergent;
`and component e) consists of one or more oxidation, foam, rust, corrosion,
`or friction inhibitors. Id. at 3:49–12:10, 12:36–38 (explaining that
`component e) in Example I is “a mixture of 0.8% tertiary butylated phenolic
`antioxidant, 0.2% aromatic amine antioxidant, 0.4% sulfurized olefin
`oxidation inhibitor, and less than 0.001% of silicon type foam inhibitor”),
`13:38–40 (explaining that component e) of Example IV is formulated “as in
`Example I”).
`Nicholson reports that lubricating compositions containing the
`disclosed dispersants “gave excellent results” and that “a 10W-40 lubricant
`of [the] invention exhibited excellent dispersancy and varnish control
`performance, as well as good wear performance.” Id. at 14:11–12, 15:1–3.
`
`2. ACEA 2004
`ACEA 2004, published by the European Automotive Manufacturers
`Association, “details the ACEA 2004 European Oil Sequences for Service-
`fill Oils for Gasoline engines, for Light Duty Diesel engines, for Gasoline &
`Diesel engines with after treatment devices and for Heavy Duty Diesel
`
`17
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`engines.” Ex. 1012, 1–2.15 ACEA 2004 instructs that its sequences
`“define[] the minimum quality level of a product” required “for presentation
`to ACEA members.” Id. at 13.
`With respect to “Heavy Duty Diesel engine oils” (class E), ACEA
`2004 indicates that the SASH limits in 2004 to achieve E6 and E7 quality
`were ≤ 1.0 and ≤ 2.0 % m/m, respectively, as measured by ASTM D874.
`Id.; see also id. at 4 (explaining the nomenclature used in ACEA 2004).
`ACEA 2004 explains that “E6 quality is strongly recommended for engines
`fitted with particulate filters and is designed for use in combination with low
`sulphur diesel fuel (max 50 ppm).” Id. at 6.
`
`3. Analysis
`a. Claim 1
`Petitioner persuasively demonstrates, and Patent Owner does not
`contest, that the lubricant of Nicholson’s Example IV contains a lubricating
`basestock of lubricating viscosity, an antioxidant component, and a detergent
`component, as recited in elements (a)–(c) of claim 1. Pet. 34–35 (citing Ex.
`1009, 12:36–38, 13:38–40, 13:42–52 (Table)). Petitioner also persuasively
`demonstrates that the lubricant of Nicholson Example IV contains aminic
`and/or sulfur-free antioxidants that, in combination, constitute 1.0 wt.% of
`the composition. Id. at 35 (citing Ex. 1009, 12:36–38 (noting component e)
`contains 0.8 wt.% tertiary butylated phenolic antioxidant and 0.2 wt.%
`aromatic amine antioxidant)).
`Petitioner concedes that Nicholson does not expressly indicate the
`wt.% of magnesium its 400 TBN overbased magnesium alkylbenzene
`
`
`15 Citations are to the page numbers in the lower left corner of the document.
`
`18
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`sulphonate detergent imparts, but Dr. Lam persuasively demonstrates that
`there is simply no way to formulate the 400 TBN magnesium alkylbenzene
`sulphonate detergent of Nicholson such that it would not provide the
`lubricating composition with greater than 0.05 mass % Mg, as recited in
`claim 1. Id. at 36–38; Ex. 1004 ¶ 64 (Dr. Lam testifying that “for a
`magnesium alkylbenzene sulfonate detergent to have 400 TBN, the
`detergent must contain a minimum of 8.66 wt.% magnesium,” which would
`provide the lubricating composition with a minimum of 0.197 wt.%
`magnesium). Patent Owner does not contest Dr. Lam’s testimony on this
`point.
`
`To determine the SASH content of Example IV of Nicholson, it is
`necessary to identify what type of 400 TBN magnesium sulfonate detergent
`one of ordinary skill in the art would have selected in seeking to reproduce
`the lubricant of Example IV of Nicholson. On this point, Dr. Lam testifies
`that “most commercially available 400 TBN magnesium sulfonate
`detergents are around 9 wt.% magnesium,” and that the highest percent
`magnesium value he had ever seen for such detergents was 9.4 wt.%. Ex.
`1004 ¶¶ 61–62, 72. Applying a practical range of between 8.66 wt.%
`magnesium (the lowest possible value of Mg in a 400 TBN detergent) and
`10 wt.% magnesium for the detergent (higher than any value Dr. Lam had
`seen), Dr. Lam calculates that the composition of Example IV of Nicholson
`has a SASH value between 1.17 wt.% and 1.23 wt.%— a range that falls
`within the “at least 0.6 mass % to not more than 2.0 mass %” range recited
`in claim 1. Pet. 37–39 (citing Ex. 1004 ¶¶ 58–62, 76); see also Ex. 1006
`¶ 76 (Dr. Styer experimentally determining that the SASH content of
`
`19
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`Example IV of Nicholson would be 1.12 mass % as measured by ASTM
`D874 if a conventional 400 TBN detergent with 9.2 wt.% Mg was used).
`As further support for selecting a “a conventional 400 TBN detergent”
`as the magnesium sulfonate detergent in Example IV of Nicholson,
`Petitioner argues that one of ordinary skill in the art would have selected
`such a detergent in view of the need to maintain the SASH values of the
`lubricants within at least the E7 range of the ACEA 2004 specification.
`Pet. 39 (citing Ex. 1004 ¶ 34–36, 123–125).
`Patent Owner contends Petitioner has not demonstrated sufficiently
`that one of ordinary skill in the art would have sought to combine the
`relevant disclosures of Nicholson and ACEA 2004 to arrive at the claimed
`lubricating compositions. PO Resp. 28–31. Patent Owner asserts that
`Nicholson is directed to “novel dispersant compositions” that are meant to
`be compatible with fluoroelastomer seals, whereas the ’274 patent is directed
`to lubricants with reduced bore polishing. Id. at 28–29. Patent Owner
`further asserts that, in contrast to the ’274 patent, Nicholson’s disclosure
`does not specifically direct one of ordinary skill in the art to use the claimed
`types of magnesium detergents or instruct that the amount of detergent
`employed should be higher than that of typical prior art compositions. Id. at
`29 (asserting that Nicholson allows “virtually any ‘metal-containing
`detergent’”). Patent Owner also argues that Nicholson does not direct one of
`ordinary skill in the art to the claimed types and amounts of antioxidants, or
`discuss the importance of sulfated ash content. Id. at 30 (asserting that
`Nicholson permits ash-forming antioxidants). According to Patent Owner,
`in view of the differences between the ’274 patent and Nicholson, “there is
`no reason why
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
