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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 8
`Entered: October 27, 2017
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`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01321
`Patent 8,076,274 B2
`
`I. INTRODUCTION
`
`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 (Paper 6,
`
`“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting
`
`an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that
`
`an inter partes review may not be instituted “unless the Director
`
`determines . . . there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
`
`After considering the Petition and the Preliminary Response, we
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`determine that Petitioner has demonstrated a reasonable likelihood of
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`prevailing with respect to challenged claims 1–13 of the ’274 patent.
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`Accordingly, we institute inter partes review with respect to those claims.
`
`A. 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.
`
`B. The ’274 Patent
`
`The ’274 patent discloses a lubricating oil composition for use in
`
`diesel engines. Ex. 1001, 1:6–8. The ’274 patent explains that combustion
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`of fuel in diesel engines “leads to the formation of acidic moieties which can
`
`have detrimental effects,” such as increased corrosion of engine parts. Id. at
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`2
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`
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`IPR2017-01321
`Patent 8,076,274 B2
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`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 usually 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
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`lubricant-containing grooves in the bore wall, which limits the ability of the
`
`grooves to retain lubricant and potentially leads to increased wear and
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`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 %. Id. at 4:1–22.
`
`3
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`
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`IPR2017-01321
`Patent 8,076,274 B2
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`C. Illustrative Claims
`
`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
`
`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.
`
`D. The Asserted Grounds of Unpatentability
`
`Petitioner contends claims 1–13 of the ’274 patent are unpatentable
`
`based on the following grounds (Pet. 18):1
`
`
`1 Petitioner also relies on a declaration from Dr. William Y. Lam (Ex. 1004).
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`4
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`IPR2017-01321
`Patent 8,076,274 B2
`
`Reference(s)
`
`Colclough2
`
`Basis
`
`Claims Challenged
`
`§ 102
`
`1–11
`
`Nicholson3 and ACEA 20044
`
`§ 103
`
`1–12
`
`Fetterman5 and Arrowsmith6
`
`§ 103
`
`1–12
`
`Colclough and Arrowsmith
`
`Nicholson, ACEA 2004, and
`Arrowsmith
`
`§ 103
`
`§ 103
`
`13
`
`13
`
`
`
`Petitioner contends that each recited reference is prior art to the ’274
`
`patent under 35 U.S.C. § 102(b). Pet. 17–18. Patent Owner does not
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`dispute, at this stage of the proceeding, the prior art status of the recited
`
`references.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`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); Cuozzo Speed Techs.,
`
`
`2 EP Patent Publication No. 0 280 579 A2, published Aug. 31, 1988
`(Ex. 1007).
`3 EP Patent Publication No. 0 663 436 A1, published July 19, 1995
`(Ex. 1009).
`4 ACEA European Oil Sequences, Service Fill Oils for Gasoline Engines,
`Light Duty Diesel Engines, Engines with After Treatment Devices & Heavy
`Duty Diesel Engines, EUR. AUTOMOBILE MANUFACTURERS ASS’N (2004)
`(Ex. 1012).
`5 EP Patent Publication No. 0 311 318 A1, published Apr. 12, 1989
`(Ex. 1010).
`6 U.S. Patent Publication No. 2004/0127371 A1, published July 1, 2004
`(Ex. 1020).
`
`5
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`IPR2017-01321
`Patent 8,076,274 B2
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`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
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`broadest reasonable interpretation standard).
`
`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
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`not, at this stage of the proceeding, address Petitioner’s proposed
`
`constructions or identify any other claim terms it contends require
`
`construction.
`
`Upon review of Petitioner’s and Patent Owner’s arguments and
`
`supporting evidence, we determine that no claim terms require express
`
`construction for purposes of this decision. See 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. Anticipation 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
`
`requirements,” but do not require “large amounts and/or expensive forms of
`
`antioxidant.” Id. at 2:56–58.
`
`6
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`IPR2017-01321
`Patent 8,076,274 B2
`
`Comparative Examples I–VI and Examples 1 and 2 are disclosed in
`
`Colclough. Id. at 6–7, Table 1. Additives A–H and J–M are utilized in one
`
`or more of these examples, and are described 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 sulphur7
`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.
`
`J is an orthoborate ester made from ethoxyethanol comprising 5 to 6
`wt % of boron.
`
`
`7 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.
`
`7
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`IPR2017-01321
`Patent 8,076,274 B2
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`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.
`
`Id. at 6:59–7:13.
`
`
`
`According to Table 1 of Colclough, Comparative Examples V and VI
`
`contain the following additives:
`
`Additive
`A
`B
`C
`D
`E
`F
`G
`H
`J
`
`2. Analysis
`
`Example V
`8.5 wt%
`3.0 wt%
`1.6 wt%
`-
`-
`1.0 wt%
`0.4 wt%
`1.5 wt%
`1.0 wt%
`
`Example VI
`8.5 wt%
`3.0 wt%
`1.6 wt%
`1.0 wt%
`0.3 wt%
`1.0 wt%
`0.4 wt%
`1.5 wt%
`
`
`Petitioner contends the lubricants of Comparative Examples V and VI
`
`of Colclough disclose every limitation of claim 1, including a lubricating
`
`basestock, antioxidants, and a magnesium sulfonate detergent having a TBN
`
`of 400 and contributing 0.15 wt% Mg to the total mass of the composition.
`
`Pet. 26–31 (citing Ex. 1004 ¶¶ 49–53; Ex. 1007, Table 1). Petitioner further
`
`contends that experiments overseen by Mr. Jeremy Styer establish that the
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`lubricants of Comparative Examples V and VI have a sulfated ash (SASH)
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`8
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`IPR2017-01321
`Patent 8,076,274 B2
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`content of 0.89 wt% and 1.18 wt%, respectively.8 Id. at 28–29 (citing
`
`Ex. 1006 ¶¶ 29, 46). Petitioner calculates that the antioxidants of
`
`components F and G in Comparative Examples V and VI “are present at a
`
`combined 0.7 wt%.” Id. at 27–28 (citing Ex. 1004 ¶ 43). 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
`
`%.” Ex. 1004 ¶ 43.
`
`Patent Owner asserts that Colclough does not anticipate claim 1 of the
`
`’274 patent because, contrary to Petitioner’s and Dr. Lam’s assumptions,
`
`Components F and G are not necessarily comprised of 100% active
`
`ingredient. Prelim. Resp. 22–23. In support of this argument, Patent Owner
`
`notes that Component G is reported to be commercially available as Irganox
`
`L-57 and the Material Safety Data Sheet for this product indicates that it
`
`contains between 60.0 and 100.0% alkylated diphenylamine antioxidant. Id.
`
`at 23 (citing Ex. 2014, 1). Patent Owner also presents evidence that one
`
`commercial source of component F contains only 98% of the recited
`
`phenolic compound. Id. (citing Ex. 2015).
`
`Adjusting Dr. Lam’s calculations to account for the lower levels of
`
`active ingredients identified in Exhibits 2014 and 2015, Patent Owner
`
`calculates that the combined wt% of antioxidant utilized in comparative
`
`Examples V and VI could be anywhere from to 0.53 to 0.7 wt%. Id. And,
`
`because this range allows for wt% values that are not “at least 0.6 mass %”
`
`
`8 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.
`
`9
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`IPR2017-01321
`Patent 8,076,274 B2
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`Patent Owner asserts that Coclough cannot anticipate claim 1.9 Id. at 23–24
`
`(citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed.
`
`Cir. 2003)).
`
`On this record, we are not persuaded by Patent Owner’s arguments.
`
`First, Exhibits 2014 and 2015 indicate that they were prepared or printed in
`
`2009 and 2017, respectively, whereas Colclough was published in 1988.
`
`Compare Ex. 2014, 1 (“Date / Revised: 01-29-2009”) and Ex. 2015, 1
`
`(indicating a printing date of 7/24/2017), with Ex. 1007 at [43] (date of
`
`publication 31.08.88). Patent Owner does not explain why these later
`
`published references accurately represent the wt% of the antioxidant present
`
`in components F and G of Colclough. Second, to the extent it was
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`understood in the art that Components F and G could contain a range of
`
`active ingredients, it is not evident why one of ordinary skill in the art would
`
`not have presumed Colclough used 100% active ingredient, especially when
`
`Colclough explicitly identifies components containing less than 100% active
`
`ingredient. See Ex. 1007, 6 (identifying component A as “comprising an oil
`
`solution containing 21% of a multifunctional ethylene-propylene copolymer
`
`and containing 0.29 wt % N”), 7 (identifying component H as “a 50 wt% oil
`
`solution of a zinc diamyl dithiocarbamate containing 6 wt% of zinc and 12
`
`wt% sulphur”); see also Ex. 1001, 6:34–44 (the ’274 patent noting that, for
`
`purposes of the disclosed comparisons, the concentration of Irganox L67 and
`
`Irganox L135 in weight % “is based on 100% active ingredient material”).
`
`
`9 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
`¶ 102 n.4.
`
`10
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`IPR2017-01321
`Patent 8,076,274 B2
`
`On this record, Petitioner identifies sufficiently where Colclough
`
`expressly or inherently discloses every limitation of claim 1. Thus,
`
`Petitioner has demonstrated a reasonable likelihood that claim 1 is
`
`anticipated by Colclough.
`
`With respect to dependent claims 2–11, Petitioner also identifies
`
`where Colclough discloses the limitations of these claims. Pet. 31–34.
`
`Patent Owner does not address Petitioner’s arguments with respect to these
`
`claims in the Preliminary Response. Thus, on this record, we determine that
`
`Petitioner has demonstrated a reasonable likelihood that claims 2–11 are
`
`anticipated by Colclough.
`
`C. Obviousness of Claim 13 over Colclough and Arrowsmith
`
`Petitioner contends the subject matter of claim 13 would have been
`
`obvious over the combination of Colclough and Arrowsmith. Pet. 55–57.
`
`1. Arrowsmith
`
`Arrowsmith discloses a lubricating oil for use in low-sulphur diesel
`
`engines. Ex. 1020 ¶¶ 3, 8. Arrowsmith explains that environmental
`
`concerns, as well as future oil specification requirements, have dictated that
`
`the overall sulphur content of lubricants be reduced. Id. ¶¶ 3, 65. And,
`
`because “[s]ulphur is contributed both by the base oil and certain lubricant
`
`additives,” Arrowsmith instructs that salicylate detergents, which are
`
`“sulphur-free,” are favored “over phenate and sulfonate detergents.” Id.
`
`¶ 66.
`
`2. Analysis
`
`Petitioner asserts that Colclough’s comparative Examples V and VI
`
`disclose every element of claim 13, except the use of a salicylate detergent.
`
`Pet. 55–56. Petitioner contends, however, that one of ordinary skill in the art
`
`11
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`IPR2017-01321
`Patent 8,076,274 B2
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`“would have been strongly motivated” to use the salicylate detergent of
`
`Arrowsmith in the lubricating compositions of Colclough, because both
`
`references disclose the use of salicylate detergents and Arrowsmith instructs
`
`that the use of sulfur-free salicylate detergents is preferred. Id. at 56.
`
`Patent Owner contends that claim 13 would not have been obvious
`
`over Colclough and Arrowsmith because these references do not teach or
`
`suggest every limitation of claim 1. Prelim. Resp. 21–24.10
`
`The lubricants set forth in comparative Examples V and VI of
`
`Colclough are identified as having failed certain test parameters. In
`
`particular, Colclough indicates that Comparative Example V failed the
`
`“Viscosity inc.” test and Comparative Example VI failed both the “max.
`
`wear” and “ave. wear” tests. Ex. 1007, Table 2; see also id. at Ex. 1007,
`
`7:26–28 (“Comparative Example V shows that in the absence of copper
`
`antioxidant performance was inadequate even with conventional amounts of
`
`other known antioxidants.”). Although this has no bearing on the question
`
`of anticipation discussed above, it is relevant to whether one of ordinary skill
`
`in the art would have selected the disclosed lubricants for modification. See
`
`Celeritas Techs., Ltd. v. Rockwell Int’l, Corp., 150 F.3d 1354, 1361 (Fed.
`
`Cir. 1998) (“A reference is no less anticipatory if, after disclosing the
`
`invention, the reference then disparages it.”); Unigene Labs., Inc. v. Apotex,
`
`Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (“Thus, the claimed invention is
`
`not obvious if a person of ordinary skill would not select and combine the
`
`
`10 Patent Owner asserts that Colclough “cannot render claim 12 obvious.”
`Prelim. Resp. 24. The only obviousness ground asserted by Petitioner based
`on Colclough, however, is directed to claim 13. Thus, we interpret Patent
`Owner’s arguments to be directed to that claim.
`
`12
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`IPR2017-01321
`Patent 8,076,274 B2
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`prior art references to reach the claimed composition or formulation.”)
`
`(emphasis added).
`
`Here, Petitioner provides no explanation as to why one of ordinary
`
`skill in the art, observing that the lubricants of Comparative Examples V and
`
`VI failed at least one engine test, would have selected these compounds for
`
`further modification. Nor has Petitioner explained sufficiently why one of
`
`ordinary skill in the art would have expected the addition of a salicylate
`
`detergent in the lubricants of Comparative Examples V and VI to overcome
`
`the deficiencies noted for these compositions. Thus, on this record,
`
`Petitioner has not demonstrated a reasonable likelihood that the subject
`
`matter of claim 13 would have been obvious over Colclough and
`
`Arrowsmith.
`
`D. Obviousness of Claims 1–12 over Nicholson and ACEA 2004
`
`Petitioner contends the subject matter of claims 1–12 would have been
`
`obvious over 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. Ex. 1009, 2:1–4. Example IV of Nicholson contains the
`
`following components:
`
`
`
`13
`
`
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`IPR2017-01321
`Patent 8,076,274 B2
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`Component a is an “AG dispersant”; component b is an oil-soluble ashless
`
`dispersant; component c is a metal hydrocarbyl dithiophosphate; component
`
`d is a metal-containing detergent; and component e consists of one or more
`
`oxidation, foam, rust, corrosion, or friction inhibitors. Id. at 3:49–12:10.
`
`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
`
`engines.” Ex. 1012, 1–2.11 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—Claim 1
`
`Petitioner contends the lubricant of Example IV of Nicholson contains
`
`a lubricating base stock, an antioxidant component, and an overbased
`
`magnesium sulphonate detergent. Pet. 34. Petitioner further contends that
`
`the antioxidants of Nicholson are aminic and sulfur-free and constitute, in
`
`
`11 Citations are to the page numbers in the lower left corner of the document.
`
`14
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`IPR2017-01321
`Patent 8,076,274 B2
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`combination, 1.0 wt% of the composition. Id. at 35 (citing Ex. 1009, 12:36–
`
`38). Petitioner concedes that Nicholson does not expressly indicate the wt%
`
`of magnesium imparted by the detergent, or the overall SASH content for
`
`the lubricant, but asserts that one of ordinary skill in the art would have
`
`selected a 400 TBN magnesium sulfonate detergent having at least 8.6 wt%
`
`Mg, which would necessarily result in a total magnesium content above 0.05
`
`mass %, and experimental evidence demonstrates that Example IV has a
`
`SASH content of 1.12 mass %. Id. at 34, 36 (citing Ex. 1006 ¶¶ 57–60;
`
`Ex. 1004 ¶¶ 72, 123–125).
`
` Petitioner also contends that one of ordinary skill in the art,
`
`presented with both Nicholson and ACEA 2004, would have sought to
`
`maintain the SASH content of Example IV’s lubricant at no greater than 1.0
`
`or 2.0 mass % in order to meet the requirements of the E6 and E7
`
`specifications of ACEA 2004. Id. at 39 (citing Ex. 1012, 6, 13). And, to
`
`accomplish this goal, Petitioner contends that one of ordinary skill in the art
`
`would have needed to simply select “a conventional 400 TBN detergent (9.2
`
`wt% Mg),” which would produce a lubricating composition that both
`
`complies with ACEA 2004’s requirements and falls within the Mg and
`
`SASH ranges set forth in claim 1. Id.
`
`Patent Owner contends the challenge based on Nicholson and ACEA
`
`2004 fails because Petitioner has not identified any claim limitation that is
`
`alleged to be missing from Nicholson, such that one of ordinary skill in the
`
`art would have sought to look to the teachings of ACEA 2004. Prelim.
`
`Resp. 25–27. And, according to Patent Owner, although Petitioner was free
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`to set forth an anticipation ground based on Nicholson, it did not do so. Id.
`
`at 27.
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`Patent 8,076,274 B2
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`As Patent Owner notes, Petitioner presents evidence that Nicholson
`
`discloses, either expressly or inherently, every limitation of the challenged
`
`claims. Prelim. Resp. 26–27. Regardless, Petitioner also provides an
`
`explanation, based on the ACEA 2004 standards and the practical limits on
`
`the use of Mg detergents, as to why one of ordinary skill in the art would
`
`have sought to control the magnesium metal and SASH content of Example
`
`IV of Nicholson to within the claimed ranges. Pet. 36–37, 39. We do not
`
`consider this approach—providing evidence that all claim limitations are
`
`expressly or necessarily present in a reference, but choosing to rely only
`
`upon obviousness—to be impermissible, as long as Petitioner provides
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`sufficient articulated reasoning supported by factual underpinnings to
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`explain why one of ordinary skill in the art would have combined the prior
`
`art references to arrive at the proposed composition.
`
`On that point, Patent Owner argues that 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 compounds. Prelim. Resp. 28–31.
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`According to Patent Owner, Petitioner’s obviousness arguments “are
`
`premised entirely on a single example of Nicholson” and fail “to take into
`
`account the remainder of the reference’s disclosure.” Id. at 29. For
`
`example, Patent Owner contends that, in contrast to the detailed disclosures
`
`of the ’274 patent, Nicholson’s disclosures are “generic and non-specific”
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`and fail to contemplate the importance of ash-free aminic and/or sulfur-free
`
`phenolic antioxidants, the importance of maintaining SASH levels between
`
`0.6 and 2.0%, and the importance of using detergent levels at rates higher
`
`than that of typical prior art compositions. Id. at 29–30. Likewise,
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`Patent 8,076,274 B2
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`according to Patent Owner, ACEA 2004 discloses no examples of
`
`lubricating compositions and “does not express a preference for magnesium
`
`detergents, provide a range of acceptable magnesium amounts, or require the
`
`use of any particular type of antioxidant.” Id. at 31
`
`Nicholson identifies a lubricant composition for “heavy duty diesel
`
`engine service” that “gave excellent results.” Ex. 1009, 1:1–4, 15:1–3.
`
`Moreover, industry guidelines for heavy duty diesel engines issued after
`
`Nicholson was filed (i.e., those in ACEA 2004) limit SASH levels to less
`
`than or equal to either 1.0 (E6) or 2.0 (E7). Pet. 38–39 (citing Ex. 1012, 6,
`
`13; Ex. 1004 ¶¶ 34–36, 123–125). Dr. Lam testifies that these industry
`
`standards, although not binding upon lubricant manufacturers, would have
`
`driven one of ordinary skill in the art “to formulate the oil lubricating
`
`composition of Nicholson with the recited SASH and Mg values,” and that
`
`in so doing a composition that meets each and every limitation of claim 1 of
`
`the ’274 patent would have been obtained. Ex. 1004 ¶ 125. On this record,
`
`Petitioner’s arguments and supporting evidence are sufficient to demonstrate
`
`a reasonable likelihood that the subject matter of claim 1 would have been
`
`obvious over Nicholson and ACEA 2004.
`
`As noted by Patent Owner, Nicholson does not expressly contemplate
`
`that the type and amount of additives used in Example IV would permit an
`
`increase in magnesium content without a corresponding increase in bore
`
`polishing. The prior art need not, however, “address the exact problem that
`
`the patentee sought to resolve,” as long as an obvious combination of prior
`
`art elements would result in the claimed composition. See Tyco Healthcare
`
`Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014)
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`(“[A]ny need or problem known in the relevant field of endeavor at the time
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`17
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`Patent 8,076,274 B2
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`of invention can provide a reason to combine.”). Thus, on this record, Patent
`
`Owner’s arguments are not persuasive.
`
`Based on the foregoing, Petitioner has demonstrated a reasonable
`
`likelihood that the subject matter of claim 1 would have been obvious over
`
`Nicholson and ACEA 2004.
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`4. Analysis—claim 3
`
`Claim 3 depends from claim 1 and further requires a magnesium level
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`that “is at least 0.06 mass up to 0.15 % mass based on the total mass of the
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`composition.” Ex. 1001, 10:7–9. As noted above, Petitioner argues that one
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`of ordinary skill in the art, seeking to achieve ACEA 2004’s SASH limit for
`
`E6, would have sought to reduce the SASH content of Nicholson to below
`
`1.0. Pet. 39, 41 (citing Ex. 1012, 6, 13). In so doing, Petitioner asserts that
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`an ordinary artisan would look to reduce the level of “the highest ash
`
`producing additive, which is the detergent.” Id. at 41 (citing Ex. 1004 ¶ 38).
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`And, according to Petitioner, in order to achieve a SASH content of under
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`1.0 mass % (0.975 mass %) in Nicholson, the amount of magnesium
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`detergent used in Example IV of Nicholson would need to be reduced to
`
`0.15 wt%, i.e., within the 0.06 to 0.15 mass % requirement of claim 3. Id.
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`(citing Ex. 1004 ¶¶ 38, 66).
`
`Patent Owner contends one of ordinary skill in the art would not seek
`
`to modify the SASH value for the lubricant of Example IV to less than 1.0,
`
`because this lubricant already complies with the requirements for the E7
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`category of ACEA 2004. Prelim. Resp. 33–34. Patent Owner further argues
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`that, even if an ordinary artisan would have sought to meet the E6
`
`specifications, Petitioner does not explain sufficiently why a person of
`
`ordinary skill in the art would have modified the magnesium detergent—as
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`IPR2017-01321
`Patent 8,076,274 B2
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`opposed to any of the other metal containing compounds in Example IV—to
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`achieve the desired result. Id. at 34. Finally, Patent Owner asserts that the
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`magnesium detergent is “necessary to neutralize acidic species,” and there is
`
`no indication whether one of ordinary skill in the art would have had a
`
`reasonable expectation of success in reducing the amount of magnesium
`
`detergent in Example IV of Nicholson and still sufficiently neutralize acidic
`
`species. Id. at 34–35.
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`Petitioner’s assertion that one of ordinary skill in the art would have
`
`sought to achieve E6 quality for Nicholson’s diesel engine lubricant for
`
`“vehicles having an after-treatment device,” finds support in the record.
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`Pet. 39, 41; Ex. 1012, 6 (“E6 quality is strongly recommended for engines
`
`fitted with particulate filters.”). With respect to the particular SASH-
`
`producing additive that would have been modified to reduce the SASH
`
`content of Example IV, Petitioner asserts that an ordinary artisan would have
`
`sought to modify the level of magnesium detergent in Example IV, as
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`opposed to other possible additives, because the detergent is the highest ash
`
`producing additive. Pet. 41 (citing Ex. 1004 ¶ 38). Again, evidence of
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`record supports Petitioner’s arguments. See, e.g., Ex. 1004 ¶ 114 (providing
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`the SASH contribution of each component of Example IV).
`
`The question of whether magnesium could be reduced to 0.15 wt%
`
`and still sufficiently naturalize acidic species is not without some merit. The
`
`background of the ’274 patent, however, provides at least two examples of
`
`prior art lubricating oils for diesel engines that utilized magnesium-
`
`containing detergents at a level less than 0.15 wt% Mg. See Ex. 1001, 2:14
`
`(using 0.102 wt% Mg), 2:24-27 (using a calcium or magnesium sulfonate
`
`detergent with no more than 0.05 magnesium). Thus, on this record, the
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`IPR2017-01321
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`question of whether the presence of acidic species would have given an
`
`ordinary artisan pause before lowering magnesium levels to 0.15 wt% is a
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`factual dispute better resolved upon review of a fully developed trial record.
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`In view of the foregoing, Petitioner has demonstrated a reasonable
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`likelihood that the subject matter of claim 3 would have been obvious over
`
`Nicholson and ACEA 2004.
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`5. Claims 6 and 7
`
`Claim 6 depends from claim 1 and further requires one or more
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`“dispersant(s)” that provide the lubricating composition with a “nitrogen
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`content” of “at least 0.07 mass %.” Ex. 1001, 10:14–16. Claim 7 depends
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`from claim 6 and further requires a nitrogen content “from 0.07 to 0.25 mass
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`%.” Id. at 10:17–19.
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`Petitioner asserts that components a) and b) of Nicholson’s Example
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`IV have a nitrogen content of 1.90 wt% and, therefore, the “total nitrogen
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`provided by the nitrogen-containing dispersants of Example IV is 0.08
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`wt.%.” Pet. 42 (citing Ex. 1
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