Case: 20-1333 Document: 75 Page: 1 Filed: 08/08/2022
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`INFINEUM USA L.P.,
`Appellant
`
`v.
`
`CHEVRON ORONITE COMPANY LLC,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2020-1333
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`00922.
`
`______________________
`
`Decided: August 8, 2022
`______________________
`
`CHRISTOPHER STRATE, Gibbons P.C., Newark, NJ, for
`appellant. Also represented by DAVID E. DE LORENZI,
`SAMUEL H. MEGERDITCHIAN.
`
`
`

`

`Case: 20-1333 Document: 75 Page: 2 Filed: 08/08/2022
`
`2
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
` NAVEEN MODI, Paul Hastings LLP, Washington, DC,
`for appellee.
` Also represented by STEPHEN BLAKE
`KINNAIRD, IGOR VICTOR TIMOFEYEV, DANIEL ZEILBERGER;
`SCOTT FREDERICK PEACHMAN, New York, NY.
`
` DANIEL KAZHDAN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for interve-
`nor. Also represented by MARY L. KELLY, THOMAS W.
`KRAUSE, FARHEENA YASMEEN RASHEED.
`______________________
`
`Before TARANTO and STOLL, Circuit Judges.*
`STOLL, Circuit Judge.
`Infineum USA L.P. appeals from the final written de-
`cision of the Patent Trial and Appeal Board holding
`claims 1–20 of U.S. Patent No. 6,723,685 unpatentable un-
`der 35 U.S.C. § 103. The ’685 patent claims cover lubricat-
`ing oil compositions and their use in internal combustion
`engines.
`Besides raising challenges to the merits of the Board’s
`decision, Infineum presents a challenge under the Appoint-
`ments Clause of the Constitution, Art. II, § 2. Following
`the Supreme Court’s decision in United States v. Arthrex,
`Inc., 141 S. Ct. 1970 (2021), we remanded this matter,
`while retaining jurisdiction, to give the Director of the U.S.
`Patent and Trademark Office the opportunity to consider
`reviewing the Board decision. The Director declined, and
`Infineum has not challenged the Director’s denial of re-
`view.
` We therefore proceed to address Infineum’s
`
`
`* Circuit Judge O’Malley, who served on the merits
`panel in this case, retired on March 11, 2022. Judges Ta-
`ranto and Stoll have acted as a quorum with respect to this
`opinion. See 28 U.S.C. § 46(d); see also Yovino v. Rizo,
`139 S. Ct. 706, 709 (2019).
`
`

`

`Case: 20-1333 Document: 75 Page: 3 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`3
`
`challenges to the merits of the Board decision. Because
`substantial evidence supports the Board’s determination of
`obviousness, we affirm.
`BACKGROUND
`Lubricating oil compositions for internal combustion
`engines comprise a base oil (or mixture of base oils) of lu-
`bricating viscosity and additives used to improve the per-
`formance characteristics of the base oil. Base oils are
`comprised of basestocks classified by the American Petro-
`leum Institute (API) in Groups I–V. Additive components
`are generally known by their structure and properties and
`may be used to inhibit corrosion and to reduce engine wear,
`oil consumption, and friction loss.
`Industry standards, such as those set by the Interna-
`tional Lubricant Standardization and Approval Committee
`(ILSAC), set requirements for certain properties, ingredi-
`ents, and performance of base oils.
` The ILSAC
`GF-3 standard, in effect as of the filing date of the ’685 pa-
`tent, set a maximum engine oil volatility of 15%.1 A higher
`viscosity index (VI)2 reduces base oil and finished oil vola-
`tility. The base oil is the primary influence on a finished
`engine oil’s volatility. High VI is a feature of premium,
`high-quality base oils. Though the GF-3 standard does not
`recite any particular VI threshold, it was understood that
`commercially available base oils would need to have a VI of
`at least 95 for the engine oil to comply with the maximum
`Noack volatility requirement of 15%. See J.A. 1835, 1847
`
`
`1 The GF-3 standard measures volatility using an in-
`dustry-standard Noack volatility test, which measures the
`evaporative loss of lubricant oil at a high temperature.
`2 VI is a measure of base oil viscosity that indicates
`an oil’s change in viscosity with variations in temperature.
`A high-VI oil exhibits significantly lower changes in viscos-
`ity over the temperature range of use than a low-VI oil.
`
`

`

`Case: 20-1333 Document: 75 Page: 4 Filed: 08/08/2022
`
`4
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`Fig. 1, 2285–86. At the time of the ’685 patent’s filing, the
`industry was using base oils in Groups III and IV and cer-
`tain base oils in Group II in developing engine oils that
`would meet the GF-3 standard. See J.A. 566.
`Traditionally, anti-wear additive components con-
`tained phosphorous. The GF-3 standard set a limit on the
`phosphorous content of engine oils. Seeking to reduce
`phosphorous content in additive components, formulators
`turned to solutions such as oil-soluble molybdenum com-
`pounds and organic friction modifiers to control wear and
`reduce friction.
`The ’685 patent, titled “Lubricating Oil Composition,”
`was filed on April 5, 2002, and sought “to find a lubricating
`oil composition that provides improved fuel economy bene-
`fit[,] demonstrates excellent wear protection characteris-
`tics, is relatively low in cost, and is free of nitrogen-
`containing friction modifiers.” ’685 patent col. 1 ll. 63–67.
`Claim 1 is the sole independent claim of the ’685 pa-
`tent:
`1. A lubricating oil composition comprising:
`a) an oil of lubricating viscosity having a
`viscosity index of at least 95;
`b) at least one calcium detergent;
`c) at least one oil soluble molybdenum com-
`pound;
`d) at least one organic ashless nitrogen-
`free friction modifier; and
`e) at least one metal dihydrocarbyl dithio-
`phosphate compound, wherein said compo-
`sition is substantially free of ashless
`aminic friction modifiers, has a Noack vol-
`atility of about 15 wt. % or less, from about
`0.05 to 0.6 wt. % calcium from the calcium
`
`

`

`Case: 20-1333 Document: 75 Page: 5 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`5
`
`detergent, molybdenum in an amount of
`from about 10 ppm to about 350 ppm from
`the molybdenum compound, and phospho-
`rus from the metal dihydrocarbyl dithio-
`phosphate compound in an amount up to
`about 0.1 wt. %.
`Id. at col. 13 ll. 47–62.
`Chevron Oronite Co. filed a petition for inter partes re-
`view challenging all claims of the ’685 patent as obvious
`under 35 U.S.C. § 103 over primary reference Toshikazu3
`in view of Henderson.4
`Toshikazu is a published Japanese patent application
`titled “Lubricating Oil Composition for Internal Combus-
`tion Engines” that discloses formulations having “excellent
`wear resistance and friction characteristics.” Toshikazu
`¶ 55. Toshikazu’s Examples 1–19 are inventive lubricating
`oil formulations, most of which contain varying amounts of
`each of the additive components claimed in the ’685 patent.
`Toshikazu Tables 1–2.
`Henderson is a technical paper published in 1998 and
`discusses the changing requirements for engine oils as of
`that time. Henderson describes an industry shift toward
`higher-viscosity, lower-volatility base oils and discusses
`the then-upcoming GF-3 standard, its requirements, and
`its expected performance improvements to engine oils.
`
`
`3 Japanese Pub. Pat. App. No. JP H5-279686 A (pub-
`lished Oct. 26, 1993). We cite to the same certified English-
`language translation of Toshikazu relied on by the Board.
`See J.A. 542–52.
`4 H.E. Henderson, et al., Higher Quality Base Oils
`for Tomorrow’s Engine Oil Performance Categories 1–10
`(SAE Tech. Paper Series, No. 982582, 1998).
`
`

`

`Case: 20-1333 Document: 75 Page: 6 Filed: 08/08/2022
`
`6
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`Relevant to this appeal, the petition challenged
`claims 1–4, 6–11, and 13–20 as obvious over Toshikazu Ex-
`ample 16
`in view of Henderson, and challenged
`claims 1–20 as obvious over Toshikazu Example 2 in view
`of Henderson.5 Oronite supported its petition with a dec-
`laration from its expert, Dr. Donald Smolenski, who has
`significant experience in lubricating engine oil develop-
`ment and testing.
`Infineum did not file a preliminary response to
`Oronite’s petition, and the Board instituted review of all
`challenged claims on all grounds. Infineum then filed a pa-
`tent owner response supported by the declaration of its ex-
`pert, Dr. Jai Bansal. In addition to responding to the
`merits of Oronite’s petition, Infineum’s patent owner re-
`sponse argued that Dr. Smolenski was not a person of or-
`dinary skill in the art because he had not worked as a
`formulator, and that the Board should disregard his testi-
`mony in its entirety.
`In reply, Oronite argued that Dr. Smolenski was a per-
`son of ordinary skill, and it further supported its reply with
`the declaration of a new expert, Dr. Syed Rizvi, who has
`experience in engine oil formulation. The Board permitted
`Infineum to file a sur-reply, in which Infineum responded
`to Oronite’s reply arguments on the merits, in addition to
`arguing that the Board should disregard Oronite’s reply
`and Dr. Rizvi’s testimony in their entirety. The Board de-
`nied Infineum’s request to file a motion to strike the reply
`and Dr. Rizvi’s testimony, but permitted the parties to file
`a joint chart identifying reply arguments and evidence that
`Infineum considered improper.
`
`
`5 The obviousness grounds for claims 4, 9, 16, and 17
`included additional references not relevant to the issues on
`appeal. See J.A. 74–76.
`
`

`

`Case: 20-1333 Document: 75 Page: 7 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`7
`
`Relevant to this appeal, the Board issued a final writ-
`ten decision holding claims 1–4, 6–11, and 13–20 obvious
`over Example 16 of Toshikazu in view of Henderson and
`holding claims 1–20 obvious over Example 2 of Toshikazu
`in view of Henderson. Chevron Oronite Co. v. Infineum
`USA L.P., IPR2018-00922, 2019 WL 5806946, at *14–15,
`*17–19, *21–23 (P.T.A.B. Nov. 6, 2019) (Decision).
`Infineum appeals. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(4).
`
`DISCUSSION
`On appeal, Infineum argues that the Board improperly
`relied on new theories and evidence raised for the first time
`in Oronite’s reply, that substantial evidence does not sup-
`port the Board’s decision, and that the decision runs afoul
`of certain constitutional provisions. We address each set of
`arguments in turn.
`
`I
`Infineum first asserts that the Board improperly relied
`on certain new theories and evidence that Oronite raised
`for the first time in its reply. We disagree.
`“Whether the Board improperly relied on new argu-
`ments is reviewed de novo.” Nike, Inc. v. Adidas AG,
`955 F.3d 45, 50 (Fed. Cir. 2020) (citing In re IPR Licensing,
`Inc., 942 F.3d 1363, 1369 (Fed. Cir. 2019)). The IPR provi-
`sions of the America Invents Act (AIA) require that a peti-
`tion identify, “with particularity, each claim challenged,
`the grounds on which the challenge to each claim is based,
`and the evidence that supports the grounds for the chal-
`lenge to each claim.” 35 U.S.C. § 312(a)(3). The regula-
`tions implementing the AIA further state that “[a] reply
`may only respond to arguments raised in the corresponding
`opposition, patent owner preliminary response, or patent
`owner response.” 37 C.F.R. § 42.23(b); see also 35 U.S.C.
`§ 316(a). Because an IPR must proceed “‘[i]n accordance
`with’ or ‘in conformance to’ the petition,” SAS Inst., Inc.
`
`

`

`Case: 20-1333 Document: 75 Page: 8 Filed: 08/08/2022
`
`8
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`v. Iancu, 138 S. Ct. 1348, 1356 (2018) (alteration in origi-
`nal)
`(quoting Oxford English Dictionary
`(3d ed.,
`Mar. 2016), www.oed.com/view/Entry/155073), it would
`“not be proper for the Board to deviate from the grounds in
`the petition and raise its own obviousness theory,” Sirona
`Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d
`1349, 1356 (Fed. Cir. 2018).
`As inter partes review is a formal adjudication, the Ad-
`ministrative Procedures Act (APA) also “imposes certain
`procedural requirements on the agency.” Genzyme Thera-
`peutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360,
`1365–66 (Fed. Cir. 2016). For example, “[i]n interpreting
`the APA’s notice provisions in the context of IPR proceed-
`ings, we have cautioned that ‘an agency may not change
`theories in midstream without giving respondents reason-
`able notice of the change and the opportunity to present
`argument under the new theory.’” Nike, 955 F.3d at 52
`(first quoting SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other
`grounds, 138 S. Ct. 1348 (2018); and then citing Genzyme,
`825 F.3d at 1366).
`But the AIA and APA do not uniformly preclude the
`introduction of new evidence after the petition is filed in an
`IPR proceeding. See Anacor Pharms., Inc. v. Iancu,
`889 F.3d 1372, 1380 (Fed. Cir. 2018) (“There is, however,
`no blanket prohibition against the introduction of new evi-
`dence during an inter partes review proceeding.”). Rather,
`where there is no change of theory, we have said, “the in-
`troduction of new evidence in the course of the trial is to be
`expected in inter partes review trial proceedings and, as
`long as the opposing party is given notice of the evidence
`and an opportunity to respond to it, the introduction of
`such evidence is perfectly permissible.” Genzyme, 825 F.3d
`at 1366.
`Infineum argues that the Board erred by relying on two
`new theories raised for the first time in Oronite’s reply—
`
`

`

`Case: 20-1333 Document: 75 Page: 9 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`9
`
`first, that a skilled artisan “would select Examples 2 or 16
`because they are equal to all other examples,” and second,
`“that other examples from Toshikazu did not perform bet-
`ter than Examples 2 or 16.” Appellant’s Br. 28; see id.
`at 30–31. Contrary to Infineum’s assertions, the Board did
`not err in concluding that these arguments were proper re-
`buttal arguments or in relying on them in its decision.
`Oronite’s reply arguments that a skilled artisan would
`have understood that “all of Toshikazu’s Examples 1–19
`performed similarly” and “performed significantly better
`than Toshikazu’s Comparative Examples 1–5,” J.A. 1451,
`responded directly to Infineum’s contentions that a skilled
`artisan would not have been motivated to select Exam-
`ples 2 and 16, J.A. 773, would have considered examples
`other than Examples 2 and 16 “more promising for further
`development,” J.A. 792, and would have understood that
`Example 16 “did not perform as well . . . as Examples 3, 5
`and 7,” J.A. 793.
`To the extent Infineum argues that the Board imper-
`missibly “change[d] theories in midstream” in violation of
`the APA, we disagree. Genzyme, 825 F.3d at 1366. The
`theory of unpatentability advanced in Oronite’s petition re-
`mained the same throughout the proceedings. Oronite’s re-
`ply maintained the petition’s position that each of the
`challenged ’685 patent claims would have been obvious
`over either Toshikazu Example 16 in view of Henderson or
`Toshikazu Example 2 in view of Henderson. Compare
`J.A. 146 (petition noting that obviousness Grounds 1–3,
`covering claims 1–4, 6–11, and 13–20, “rely on Example 16
`of Toshikazu,” and that obviousness Grounds 4–6, covering
`claims 1–20, “rely on Example 2 of Toshikazu”), with
`J.A. 1450 (reply arguing that “Examples 16 and 2 of Toshi-
`kazu, in combination with Henderson, each renders the in-
`dependent claims (and others) unpatentable as obvious”).
`And the Board’s decision held each of the challenged claims
`obvious on those same grounds. Decision, 2019 WL
`5806946, at *14–15, *17–19 (relying on Example 16 of
`
`

`

`Case: 20-1333 Document: 75 Page: 10 Filed: 08/08/2022
`
`10
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`Toshikazu to hold obvious claims 1–4, 6–11, and 13–20); id.
`at *21–23 (relying on Example 2 of Toshikazu to hold obvi-
`ous claims 1–20).
`Infineum’s argument that the Board’s reliance on
`Dr. Rizvi’s testimony was improper appears to be tied to its
`assertions that the Board impermissibly relied on new the-
`ories advanced for the first time in Oronite’s reply.6 See,
`e.g., Appellant’s Br. 29; Reply Br. 12 (“Oronite admits that
`it tried to introduce the theory as to why [a] POSITA would
`select Examples 2 and 16 for the first time in its Reply, . . .
`and does not deny that this new theory was only supported
`by Dr. Rizvi’s reply declaration.”); accord J.A. 2634 (argu-
`ing before the Board that portions of Dr. Rizvi’s testimony
`subsequently relied on by the Board “[p]resent[] a new the-
`ory regarding the interpretation of the data from Toshi-
`kazu”).
`Like the reply arguments Infineum identifies on ap-
`peal, Dr. Rizvi’s testimony was a proper rebuttal to argu-
`ments raised in Infineum’s patent owner response. For
`example, Infineum takes issue with the Board’s reliance on
`paragraphs 35–38 of Dr. Rizvi’s declaration. See Appel-
`lant’s Br. 29; see also Decision, 2019 WL 5806946, at *12
`(citing J.A. 2281–82 (Rizvi Dec. ¶¶ 35–38)).
` Para-
`graphs 35–38 merely explain, based on the state of the art,
`Dr. Rizvi’s statement in paragraph 34 (which Infineum did
`
`Infineum’s opening brief also alleges that Oronite’s
`6
`“new theories” were supported by “thirty new pieces of ev-
`idence,” Appellant’s Br. 28 (emphasis omitted), some of
`which Infineum identifies in a footnote, id. at 28 n.1. The
`same footnote acknowledges that “Infineum sought the
`Board’s permission to move to strike the Reply, Dr. Rizvi’s
`Declaration,” and certain exhibits submitted with the re-
`ply, and filed a motion to exclude certain reply exhibits. Id.
`Infineum has not appealed the Board’s denials of its motion
`to strike and motion to exclude.
`
`

`

`Case: 20-1333 Document: 75 Page: 11 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`11
`
`not challenge as improper) that “[a] person of ordinary skill
`in the art would not have found the differences between
`coefficient of friction or wear values reported in Toshikazu
`for Examples 1–19 to be important.” J.A. 2280. And
`Dr. Rizvi’s assertion of unimportant differences responded
`to Dr. Bansal’s assertion that a skilled artisan would “pur-
`sue formulations based on Examples 3, 5, and 7 and not on
`Example 16.” Id. (quoting J.A. 908). Further, the portions
`of Dr. Rizvi’s declaration Infineum highlights on appeal
`rely principally on record evidence, not new evidence. E.g.,
`J.A. 2290–91, 2313–15. We discern no impropriety in the
`challenged portions of Dr. Rizvi’s declaration.
`Additionally, the Board’s reliance on Dr. Rizvi’s testi-
`mony did not violate the APA because Infineum had ample
`notice and opportunity to respond to Dr. Rizvi’s testimony.
`The Board permitted Infineum to depose Dr. Rizvi after re-
`ceiving his reply declaration, and then to file a sur-reply,
`in addition to allowing the parties to file a joint chart iden-
`tifying the reply arguments and evidence Infineum be-
`lieved were improper.7 Infineum availed itself of both of
`these opportunities to respond. For example, Infineum’s
`sur-reply argued that the Board should disregard Oronite’s
`reply and Dr. Rizvi’s testimony
`in their entirety,
`J.A. 2344–47, in addition to responding extensively to
`Dr. Rizvi’s testimony on the merits, J.A. 2347–65. Accord-
`ingly, the Board afforded Infineum the process it was due
`under the APA.
`We thus conclude that the Board did not err in consid-
`ering Oronite’s reply arguments or Dr. Rizvi’s testimony.
`
`
`7 To the extent that Infineum contends that the
`Board was categorically prohibited from relying on
`Dr. Rizvi’s testimony, our precedent forecloses any such ar-
`gument. See Anacor, 889 F.3d at 1380.
`
`

`

`Case: 20-1333 Document: 75 Page: 12 Filed: 08/08/2022
`
`12
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`II
`Infineum also challenges several aspects of Board’s de-
`cision as unsupported by substantial evidence. We find
`none of Infineum’s challenges persuasive.
`We review the Board’s legal determinations de novo,
`In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and its
`fact findings for substantial evidence, In re Gartside,
`203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence
`is “such relevant evidence as a reasonable mind might ac-
`cept as adequate to support a conclusion.” OSI Pharms.,
`LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019)
`(quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
`(1938)). Obviousness is a question of law based on under-
`lying findings of fact. Id. at 1382 (quoting In re Kubin,
`561 F.3d 1351, 1355 (Fed. Cir. 2009)). “An obviousness de-
`termination requires finding that a person of ordinary skill
`in the art would have been motivated to combine or modify
`the teachings in the prior art and would have had a reason-
`able expectation of success in doing so.” Id. (quoting Re-
`gents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286,
`1291 (Fed. Cir. 2018)). “Whether a person of ordinary skill
`in the art would have been motivated to modify or combine
`teachings in the prior art, and whether he would have had
`a reasonable expectation of success, are questions of fact.”
`Id. (quoting Regents of Univ. of Cal., 903 F.3d at 1291).
`Infineum’s assertion that the Board erred in giving any
`credit to Oronite’s “unqualified expert,” Dr. Smolenski,
`lacks merit. It merely reprises the same argument Infi-
`neum essentially raised before the Board—that Dr. Smo-
`lenski’s testimony is not admissible because he is not
`sufficiently qualified. Much like district court evidentiary
`rulings, the Board’s evidentiary determinations, such as its
`decision not to exclude Dr. Smolenski’s testimony, are re-
`viewed for abuse of discretion. See Belden Inc. v. Berk-Tek
`LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015) (citing Chen
`v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir. 2003));
`
`

`

`Case: 20-1333 Document: 75 Page: 13 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`13
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`1356, 1363 (Fed. Cir. 2006) (holding that the district court
`abused its discretion in permitting a witness not qualified
`as an expert in the pertinent art to testify as an expert re-
`garding issues of noninfringement or invalidity); see also
`Hologic, Inc. v. Minerva Surgical, Inc., 764 F. App’x 873,
`881 n.8 (Fed. Cir. 2019) (“We find no abuse of discretion in
`the Board’s determination that Dr. Mirabile had enough
`knowledge and skill to testify about this topic.”). We also
`“defer to the Board’s findings concerning the credibility of
`expert witnesses.” Yorkey v. Diab, 601 F.3d 1279, 1284
`(Fed. Cir. 2010) (citing Velander v. Garner, 348 F.3d 1359,
`1371 (Fed. Cir. 2003)); see also Shoes by Firebug LLC
`v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1372
`(Fed. Cir. 2020) (“The Board was within its discretion to
`weigh the credibility of expert testimony.” (citing Yorkey,
`601 F.3d at 1284)). Abuse of discretion occurs if the ruling:
`“(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
`based on an erroneous conclusion of law; (3) rests on clearly
`erroneous fact findings; or (4) follows from a record that
`contains no evidence on which the Board could rationally
`base its decision.” Bouchard, 347 F.3d at 1307 (citing Ger-
`ritsen v. Shirai, 979 F.2d 1524, 1529 (Fed. Cir. 1992)).
`Here, Infineum does not challenge the Board’s deter-
`mination, grounded in the ’685 patent specification and the
`prior art of record, that “one of ordinary skill in the art
`could have experience in either formulating an engine oil
`or testing such oils in internal combustion engines.” Deci-
`sion, 2019 WL 5806946, at *5. Rather, Infineum argues
`that Dr. Smolenski’s “experience in a tangential aspect of
`testing motor oils, did not qualify him to testify as to how
`[a] POSITA would make or formulate a new motor oil.” Ap-
`pellant’s Br. 45–46 (citation omitted). The Board reasona-
`bly considered and rejected this argument when it
`determined that “Dr. Smolenski has sufficient education
`and experience of a specialized nature to assist the Board
`in understanding the evidence of record.” Decision,
`
`

`

`Case: 20-1333 Document: 75 Page: 14 Filed: 08/08/2022
`
`14
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`2019 WL 5806946, at *5; see Hologic, 764 F. App’x at 880
`n.6 (applying abuse of discretion standard to the Board’s
`rejection of a patent owner’s argument that an expert
`lacked sufficient experience with the relevant technology
`after finding no error in the Board’s determination of the
`level of ordinary skill in the art). Infineum offers no basis
`to contradict this conclusion, or to call into question the
`Board’s statement that it accounted for “Dr. Smolenski’s
`lack of benchtop formulating experience” in “determining
`the weight to give his testimony.” Decision, 2019 WL
`5806946, at *5. Accordingly, we discern no abuse of discre-
`tion in the Board’s consideration of or reliance on Dr. Smo-
`lenski’s testimony.
`No more compelling is Infineum’s argument that the
`Board’s decision is unsupported by substantial evidence be-
`cause the Board relied on Dr. Smolenski’s “hindsight anal-
`ysis” to select Examples 2 and 16 from Toshikazu, when
`“other examples from Toshikazu performed better.” Appel-
`lant’s Br. 41–42. We have rejected the notion that a patent
`challenger seeking to demonstrate obviousness must prove
`that a person of ordinary skill would have been motivated
`to select one prior art disclosure over another. Novartis
`Pharms. Corp. v. W.-Ward Pharms. Int’l Ltd., 923 F.3d
`1051, 1059 (Fed. Cir. 2019) (“It is thus improper to require
`West-Ward to prove that a person of ordinary skill would
`have selected everolimus over other prior art treatment
`methods.”); see also In re Fulton, 391 F.3d 1195, 1200
`(Fed. Cir. 2004) (“[O]ur case law does not require that a
`particular combination must be the preferred, or the most
`desirable, combination described in the prior art in order
`to provide motivation for the current invention.”). In any
`event, Infineum’s argument amounts to a disagreement
`with how the Board weighed the evidence. The Board was
`within its province to credit Dr. Rizvi’s testimony that “one
`of ordinary skill in the art [would] have selected any of the
`example lubricating oils of Toshikazu for further develop-
`ment.” Decision, 2019 WL 5806946, at *12 (discussing
`
`

`

`Case: 20-1333 Document: 75 Page: 15 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`15
`
`J.A. 2280–82 (Rizvi Dec. ¶¶ 33–38) and J.A. 174–76 (Smo-
`lenski Dec. ¶¶ 44–47)). The Board reasonably credited
`Dr. Rizvi’s explanation that “benchtop testing rigs, such as
`the shell-type four ball test employed in Toshikazu, have a
`certain amount of repeatability associated with their data,”
`and that the variance in the coefficients of friction reported
`in Toshikazu’s Examples 1–19 was within the repeatability
`specified by the applicable American Society for Testing
`and Materials standard. J.A. 2280–82; see Decision,
`2019 WL 5806946, at *12.
`Similarly unavailing is Infineum’s apparent assertion
`that the Board’s decision is not supported by substantial
`evidence because “[t]he overwhelming evidence . . . showed
`that [a] POSITA would not presume that modifying addi-
`tive components and base oils would necessarily work or
`improve the performance of a formulation.” Appellant’s
`Br. 47. The Board reasonably relied on primary reference
`Toshikazu’s express teachings to conclude that a skilled ar-
`tisan “would have had a reasonable expectation of success
`in using a synthetic base oil that imparts an overall viscos-
`ity index of 95 or above to the lubricating composition of
`Example 16 of Toshikazu.” Decision, 2019 WL 5806946,
`at *8 (citations omitted); see id. (“Toshikazu expressly indi-
`cates that ‘[t]here is no particular limitation on the base oil
`used in the present invention, and it is possible to use var-
`ious types of mineral oils, synthetic oils, and so on that are
`known in the art.’” (alteration in original) (quoting Toshi-
`kazu ¶ 12)); id. (“Toshikazu reports essentially identical re-
`sults when the additive package of Example 16 is used with
`a mineral base oil, a synthetic base oil, or a mineral oil/high
`pressure hydrogenated base oil.” (citing Toshikazu Exam-
`ples 3, 16, and 17)). The general need for routine compati-
`bility testing of any modified formulation does not
`undermine Toshikazu’s teachings that different base oils
`could be used.
`Moreover, contrary to Infineum’s contentions, the
`Board’s rationale for holding claim 12 obvious is not
`
`

`

`Case: 20-1333 Document: 75 Page: 16 Filed: 08/08/2022
`
`16
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`internally inconsistent. Infineum identifies a purported
`contradiction between: (1) the Board’s conclusion that a
`skilled artisan “would have found it obvious to increase the
`amount of aliphatic acid glyceride,” an organic ashless ni-
`trogen-free friction modifier, “in Example 2 to at least
`‘about 0.25 wt. %’ in order to save on costs,” id. at *22 (cit-
`ing J.A. 140); and (2) the Board’s finding with respect to
`claim 1, from which claim 12 depends, that notwithstand-
`ing that “mineral oils are cheaper than synthetic oils,” a
`skilled artisan “would have sought to substitute the min-
`eral oil of Example 2 with . . . a synthetic oil . . . in order to
`comply with the GF-3 standard and to achieve the benefits
`of higher quality oils discussed in Henderson,” id. at *20
`(citing J.A. 127–28, 131–32). Appellant’s Br. 48–49. To the
`extent that Infineum argues that the Board’s first finding
`amounts to a conclusion that a skilled artisan would have
`settled for decreased performance to reduce costs, the
`Board considered this argument and reasonably rejected it.
`Decision, 2019 WL 5806946, at *22 (“Patent Owner’s argu-
`ments based on an alleged decrease in performance from
`such a change are not persuasive because we have found
`that one of ordinary skill in the art would not have differ-
`entiated the performance results reported for Exam-
`ples 1–19 of Toshikazu.”).
`Indeed, the Board credited the petition’s argument that
`cost would motivate a skilled artisan to increase the
`amount of aliphatic acid glyceride in Toshikazu’s Exam-
`ple 2 in view of the fact that it was “less expensive than
`other anti-wear compounds, including molybdenum,” id.
`(citing J.A. 139–40 (petition)), and the fact that “other ex-
`amples in Toshikazu indicate that the amount of organic
`ashless nitrogen-free friction modifier may be increased
`without significantly affecting the performance of the lu-
`bricating compositions,” id. (first citing J.A. 139–40; and
`then citing J.A. 1471–72 (reply)); see also Toshikazu Ta-
`ble 1 (reflecting similar friction coefficients and wear track
`diameters
`for Examples 2 and 4 notwithstanding
`
`

`

`Case: 20-1333 Document: 75 Page: 17 Filed: 08/08/2022
`
`INFINEUM USA L.P. v. CHEVRON ORONITE COMPANY LLC
`
`17
`
`differences in aliphatic acid glyceride content). It is rea-
`sonable for a skilled artisan to be driven more by cost when
`effects on performance are minor or nonexistent. The
`Board’s conclusion that claim 12 would have been obvious
`is supported by substantial evidence.
`Substantial evidence also supports the Board’s decision
`to give “limited weight” to Infineum’s unexpected results
`evidence with respect to fuel economy. Decision, 2019 WL
`5806946, at *14. Infineum argued before the Board that
`because a skilled artisan would have expected formulations
`with large amounts of molybdenum to provide superior fuel
`economy performance, the ’685 patent’s demonstration of
`superior fuel economy test results for the claimed formula-
`tions containing a low amount of molybdenum in combina-
`tion with an organic ashless nitrogen-free friction modifier
`provided “truly unexpected” results. Id. at *13 (quoting
`J.A. 825). Relying on Allergan, Inc. v. Sandoz Inc.,
`726 F.3d 1286, 1293 (Fed. Cir. 2013), the Board concluded
`that Infineum’s unexpected results evi