UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CHEVRON ORONITE COMPANY LLC,
`Petitioner,
`v.
`INFINEUM USA L.P.,
`Patent Owner.
`____________
`Case IPR2018-00922
`Patent 6,723,685
`____________
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CHEVRON ORONITE COMPANY LLC,
`Petitioner,
`v.
`INFINEUM USA L.P.,
`Patent Owner.
`____________
`Case IPR2018-00922
`Patent 6,723,685
`____________
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`BACKGROUND AND THE IPR PROCEEDING ........................................ 1
`A.
`The ‘685 Patent .................................................................................... 1
`B.
`The IPR Proceeding ............................................................................. 3
`1.
`The Petition ................................................................................ 3
`2.
`The Board’s Decision ................................................................ 5
`The FWD Improperly Relied Upon A Theory and Evidence Submitted
`On Reply to Fill In a Gap. .............................................................................. 6
`The Board Failed to Properly Credit Infineum’s Unrebutted Evidence
`of Unexpected Results and Find the ‘685 Patent Not Invalid for
`Obviousness ................................................................................................. 11
`The Board Improperly Relied Upon An Unqualified Expert. ...................... 14
`CONCLUSION ............................................................................................ 15
`
`IV.
`V.
`
`II.
`
`III.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2018-00923
`Patent 6,723,685
`
` Page(s)
`
`Cases
`10X Genomics v. Univ. of Chicago,
`IPR2015-01157, Paper 51 (Nov. 15, 2016) ......................................................... 6
`33Across, Inc. v. LeftsnRights, Inc.,
`IPR2018-01480, Paper 54 (Feb. 7, 2020) .......................................................... 13
`Baxter Healthcare Corp. v. Millenium Biologix,
`IPR2013-00582, Paper 32 (Oct. 13, 2014) .................................................... 7, 11
`Caterpillar v. Wirtgen Am.,
`IPR2017-02188, Paper 71 (July 15, 2019) .......................................................... 8
`Colas Sols. v. Blacklidge Emulsions,
`IPR2016-01032, Paper 40 (Nov. 2, 2017) ........................................................... 6
`Corning Inc. v. DSM IP Assets B.V.,
`IPR2013-00052, Paper 88 (May 1, 2014) ........................................................... 7
`Dexcom v. Waveform Tech.,
`IPR2016-01679, Paper 53 (Feb. 28, 2018) .......................................................... 7
`EIS GmbH v. Novoluto GmbH,
`IPR2019-01302, Paper 50 (June 14, 2021) ....................................................... 15
`GoPro, Inc. v. Contour IP Holding,
`IPR2015-01080, Paper 90 (July 31, 2019) ........................................................ 11
`In-Depth Geophysical, Inc. v. ConocoPhillips,
`IPR2019-00850, Paper 56 (Sept. 3, 2020) ........................................................... 9
`Interconnect Plan. Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) ........................................................................... 9
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ......................................................................... 10
`
`ii
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................. 9
`Kingston Tech. Co. v. SPEX Techs. Inc.,
`IPR2017-01021, Paper 39 (Oct. 1, 2018) ............................................................ 6
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ......................................................................... 12
`Merck Sharp & Dohme v. Microspherix,
`IPR2018-00393, Paper 43 (July 8, 2019) .......................................................... 13
`Nestle Purina Petcare v. Oil-Dri Corp.,
`IPR2015-00737, Paper 37 (June 20, 2016) ......................................................... 8
`Orexo AB v. Actavis Elizabeth LLC,
`903 F.3d 1265 (Fed. Cir. 2018) ........................................................................... 8
`Palo Alto Networks Inc. v. Finjan,
`IPR2016-00151, Paper 51 (Mar. 22, 2017) ......................................................... 8
`Pfizer, Inc. v. Genentec, Inc.,
`IPR2017-01923, Paper 110 (Apr. 2, 2019) .................................................... 9, 13
`Proppant Express Invs., LLC v. Oren Techs., LLC,
`IPR20018-00733, Paper 95 (Nov. 18, 2021) ..................................................... 13
`In re Rouffet,
`149 F.3d 1350 (1998) .......................................................................................... 9
`Sirius XM Radio Inc. v. Fraunhofer-Gesellschaft,
`IPR2018-00690, Paper 63 (July 23, 2020) .......................................................... 7
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ......................................................................... 15
`Uniroyal, Inc. v. Rudkin-Wiley Corp.,
`837 F.2d 1044 (Fed. Cir. 1988) ........................................................................... 9
`United Patents v. Sound View Innovations,
`IPR2018-00599, Paper 50 (Sept. 9, 2019) ........................................................... 9
`
`iii
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`United States v. Arthrex, Inc.,
`141 S. Ct. 1970 (2021) ........................................................................................ 1
`In re Vaidyanathan,
`381 F. App’x 985 (Fed. Cir. 2010) ...................................................................... 9
`Wangs All. Corp. v. Koninklijke Philips,
`IPR2015-01290, Paper 63 (Nov. 23, 2016) ......................................................... 6
`
`iv
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`PRELIMINARY STATEMENT
`Patent Owner Infineum USA L.P. (“Infineum”) requests Director review of
`
`the Board’s Final Written Decision (“FWD”). As explained in the Interim Rules
`
`following United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), “[t]he Director’s
`
`review may address any issue, including issues of fact and issues of law, and will be
`
`de novo.” Arthrex Q&A A1. Decisions may warrant review for, inter alia, material
`
`errors of fact or law, matters the Board misapprehended or overlooked, novel issues
`
`of law or policy, and inconsistencies with Office procedures, guidance, or decisions.
`
`See Arthrex Q&A D2.
`
`The Director should review the Board’s FWD because the Board departed
`
`from the PTAB’s established rules and precedent in order to conclude that U.S.
`
`Patent 6,723,685 (“the ‘685 patent”) is obvious based on: 1) a theory and evidence
`
`submitted on Reply to fill in a gap in the prima facie case presented in the Petition;
`
`2) improperly disregarding Infineum’s unrebutted evidence of unexpected results;
`
`and 3) crediting and relying upon the Petition’s testifying expert who only had
`
`indirect experience with making lubricating engine oils.
`
`I.
`
`BACKGROUND AND THE IPR PROCEEDING
`
`A.
`
`The ‘685 Patent
`
`The ’685 patent is directed to a lubricating oil composition for use in
`
`combustion engines. (Ex. 1001.) Claim 1 of the ’685 patent describes:
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`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 compound;
`d) at least one organic ashless nitrogen-free friction modifier; and
`e) at least one metal dihydrocarbyl dithiophosphate compound,
`wherein, said composition is substantially free of ashless aminic
`friction modifiers, has a Noack volatility of at least 15 wt. % or less,
`from about 0.05 to 0.6 wt. % calcium from the calcium detergent,
`molybdenum in an amount of from about 10 ppm to about 350 ppm
`from the molybdenum compound, and phosphorous from the metal
`dihydrocarbyl dithiophosphate compound in an amount up to about
`0.1 wt. %.
`
`(Id. at 13:45-62.)
`
`The inventors of the ’685 patent discovered an engine oil formulation that
`
`could meet the rigorous ILSAC standards and improve fuel economy in a manner
`
`that was contrary to industry trends and expectations of POSITA. (See id. at 1:1-
`
`2:10.) Specifically, the inventors found that their formulation provided a superior
`
`improvement to fuel economy pursuant to Stage 1 of the ASTM Sequence VIB Fuel
`
`Economy Test (“Sequence VIB”) when compared to the established high
`
`molybdenum based formulations. (Ex. 2003, ¶¶ 267-68.) As Dr. Bansal, Infineum’s
`
`expert, testified, these findings were “unexpected” in view of comparable industry
`
`2
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`standard coefficient of friction tests and showed that the claimed formulation
`
`provided “a significant improvement.” (Id. at ¶¶ 268, 271.) As explained by Dr.
`
`Bansal, the ’685 patent shows that the invention exhibited an improved performance
`
`under boundary friction conditions that was significant and would not have been
`
`expected by POSITA. (Id. at ¶ 271.) Neither Dr. Smolenski nor Dr. Rizvi, Petitioner
`
`Chevron Oronite Company LLC’s (“Chevron”) experts, addressed or disputed these
`
`observations from Dr. Bansal. Indeed, Dr. Rizvi acknowledged that he was not
`
`familiar with the Stage 1 Sequence VIB test. (Ex. 2011, 179:19-21 (“I do not know
`
`what the Sequence VIB screener is. That’s a test I’m not aware of.”).)
`
`B.
`
`The IPR Proceeding
`1.
`The Petition
`The primary reference relied upon in the Petition is Toshikazu, a Japanese
`
`patent application that was filed in 1992. (Pet. 14-15; see also Ex. 1005
`
`(Toshikazu).) The Petition presented two theories of obviousness – a POSITA
`
`would modify Examples 2 or 16 from Toshikazu based on the teachings of
`
`Henderson and arrive at the ‘685 patent invention. (Pet. 67.)
`
`The problem with the Petition is that it never articulated a reason why
`
`POSITA would begin by selecting either Example 2 or 16. (See id. at 19; see also
`
`id. at 47-48.) When this omission was brought to Dr. Smolenski’s attention on cross-
`
`examination, he explained that those examples were only selected to map on to claim
`
`3
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`1 of the ’685 patent. (Ex. 2005, 210:2-6 (“Q. Why example 16? . . . A. Again,
`
`because we could use it to map it to the ‘685 patent”); id. at 216:16-17 (“we’re
`
`looking for [a] formulation that basically teaches what is claimed in the ’685”); id.
`
`at 249:21-25 (“what we’re using Toshikazu for is to map other elements of ‘685”).)
`
`Moreover, Dr. Smolenski acknowledged that Examples, 3, 5 and 7 from Toshikazu
`
`actually performed better than Examples 2 and 16. (See id. at 216:5-10.)
`
`The Petition also suffered from a number of additional critical defects. The
`
`Petition, disregarding the clear caution of the Henderson and Lakes references,
`
`hypothesized that POSITA would simply swap out the base oil used in either
`
`Toshikazu example for another base oil. (Compare Pet. 21, 49, with Ex. 1006, 4
`
`(Henderson); Ex. 1009, 17 (Lakes).) However, the Petition presented no evidence
`
`or testing showing that if the modification were made, the formulation would
`
`necessarily have characteristics recited in the claim.
`
`The Petition also asserted that Examples 2 and 16 of Toshikazu inherently
`
`comprised “from about 0.05 to 0.6 wt. % calcium from the calcium detergent.” (Pet.
`
`27-29 (discussing Example 16); id. at 54 (discussing Example 2).) However,
`
`Toshikazu never disclosed the Total Base Number (“TBN”) or pedigree of the
`
`calcium sulfonate used in either example and the Petition improperly assumed that
`
`calcium sulfonate used in Toshikazu was the same as the ‘685 patent, Woodle or
`
`4
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`Schlicht references. (Ex. 2005, 286:7-10; Pet. 27-28.) The Petition failed to note
`
`that Woodle disclosed that TBN for calcium sulfonate could be wide ranging from
`
`“at least about 20 and up to 500 and higher.” (Ex. 1012, 2:10-11.) The Petition
`
`further cherry picked the amount of organic ashless nitrogen-free friction modifier
`
`from Example 4, and applied that value to Example 2. (Pet. 60-61.)
`
`As to unexpected results, Dr. Smolenski tried to criticize those results on the
`
`grounds: 1) that the fuel economy improvements reported in Table 4 of the ’685
`
`patent were “well below the target percentages of 0.6%, 1.1% and 1.7%” for a
`
`complete Sequence VIB test; and 2) that POSITA “would have also had concerns …
`
`[that] only Stage 1 results from Sequence VIB screener are reported in the ’685
`
`patent.” (Ex. 1002, ¶¶ 235-36.)
`
`However, Dr. Bansal explained that these criticisms were misplaced because
`
`the results of a Stage 1 test would not be compared to the targets of the complete
`
`Sequence VIB. (Ex. 2003, ¶ 271.) Also, when the objective is to analyze boundary
`
`friction conditions, POSITA would focus on Stage 1 and not the remaining stages.
`
`(Id. at ¶ 272.) Notably, neither Dr. Smolenski nor Dr. Rizvi disputed or responded
`
`to this aspect of Dr. Bansal’s testimony.
`
`The Board’s Decision
`2.
`The Board’s FWD concluded that claims 1-20 of the ’685 patent were
`
`5
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`unpatentable as obvious. The Board recognized that critical information was absent
`
`from Toshikazu: 1) Toshikazu did not disclose the total amount of calcium in any of
`
`the formulations, (see FWD, 24); 2) Toshikazu did not disclose the viscosity index
`
`of the base oil, (id. at 17); and 3) Toshikazu did not disclose the Noack volatility of
`
`the overall formulation. (Id.) But, based on the theory and evidence advanced by
`
`the Petitioner on Reply, the Board concluded that POSITA would select all examples
`
`from Toshikazu, including Examples 2 and 16, for further modification because their
`
`performance was equivalent. (Id. at 47-48.) The Board then concluded that POSITA
`
`would modify Examples 2 and 16 to arrive at the invention of the ‘685 patent and
`
`disregarded the unrebutted evidence of unexpected results. (Id.)
`
`II.
`
`The FWD Improperly Relied Upon A Theory and Evidence Submitted
`On Reply to Fill In a Gap.
`The PTAB’s rule is clear: “a reply or sur-reply that raises a new issue or
`
`belatedly presents evidence may not be considered.” Consolidated Trial Practice
`
`Guide (Nov. 2019) at 74. This applies specifically to “new evidence necessary to
`
`make out a prima facie case…” Id.
`
`PTAB panels have faithfully adhered to this rule. See, e.g., 10X Genomics v.
`
`Univ. of Chicago, IPR2015-01157, Paper 51 at 14-15 (Nov. 15, 2016); Wangs All.
`
`Corp. v. Koninklijke Philips, IPR2015-01290, Paper 63 at 25 (Nov. 23, 2016); Colas
`
`Sols. v. Blacklidge Emulsions, IPR2016-01032, Paper 40 at 26 (Nov. 2, 2017);
`
`6
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`Kingston Tech. Co. v. SPEX Techs. Inc., IPR2017-01021, Paper 39 at 33 (Oct. 1,
`
`2018).
`
`While petitioners are entitled to submit argument and evidence in reply to
`
`arguments raised in the patent owner’s response, they are not entitled to use the reply
`
`as a backdoor to cure a deficiency with the prima facie case presented in the petition.
`
`Dexcom v. Waveform Tech., IPR2016-01679, Paper 53 at 49-50 (Feb. 28, 2018)
`
`(excluding exhibits and reply argument that were submitted by the Petitioner “to fill
`
`a gap in its prima facie case in view Patent Owner’s argument”); Corning Inc. v.
`
`DSM IP Assets B.V., IPR2013-00052, Paper 88 at 12-13 (May 1, 2014) (declining to
`
`consider reply evidence “necessary to make its case for unpatentability” that was
`
`submitted in response to Patent Owner’s criticism of the petition); Sirius XM Radio
`
`Inc. v. Fraunhofer-Gesellschaft, IPR2018-00690, Paper 63 at 15 (July 23, 2020)
`
`(“Petitioner may not now remedy its defective Petition by submitting new evidence
`
`and argument that it could have presented earlier.”); Baxter Healthcare Corp. v.
`
`Millenium Biologix, IPR2013-00582, Paper 32 at 6 (Oct. 13, 2014) (that
`
`“Petitioner’s newly submitted evidence might have been stimulated by Patent
`
`Owner’s Response to the Petition” does not justify submitting new evidence to
`
`support the invalidity argument.).
`
`“To consider the argument would unfairly prejudice Patent Owner
`
`7
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`who, after having argued there is a significant gap in Petitioner’s
`
`case, would be left without an opportunity to respond substantively
`
`to the new arguments and support its rebuttal with additional
`
`evidence, if necessary.”
`
`Palo Alto Networks Inc. v. Finjan, IPR2016-00151, Paper 51 at 22 (Mar. 22, 2017);
`
`Caterpillar v. Wirtgen Am., IPR2017-02188, Paper 71 at 29-30, (July 15, 2019)
`
`(declining to consider merits of Petitioner’s reply argument and noting that “Patent
`
`Owner has not had a fair and meaningful opportunity to address Petitioner’s new
`
`theory”); Nestle Purina Petcare v. Oil-Dri Corp., IPR2015-00737, Paper 37 at 24
`
`(June 20, 2016) (noting that “[t]he Sur-Reply allowed Patent Owner a brief
`
`opportunity to present responsive arguments, but not to serve responsive evidence”
`
`and that “would be unfair to Patent Owner” to consider new reply arguments and
`
`evidence).
`
`In this matter, the Board departed from this rule and the PTAB’s precedent.
`
`It is undisputed that the Petition did not articulate a reason why POSITA would have
`
`selected Examples 2 or 16 from Toshikazu for further development. As noted above,
`
`Dr. Smolenski testified that the only reason for selecting Examples 2 or 16 was to
`
`map Toshikazu to the claims of the ‘685 patent, which is improper hindsight bias.
`
`(See Ex. 2005, 210:2-6, 216:16-17, 247:21-25.) Dr. Smolenski also acknowledged
`
`8
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`that other examples from Toshikazu performed better. (Id. at 216:5-10.)
`
`The Petition’s failure to articulate a reason as to why POSITA would have
`
`selected Examples 2 or 16 from all of the other Toshikazu examples meant that the
`
`Petition failed to establish a prima facie case of obviousness. Orexo AB v. Actavis
`
`Elizabeth LLC, 903 F.3d 1265, 1271 (Fed. Cir. 2018) (A party must show “that a
`
`person of ordinary skill would have selected and combined and modified the subject
`
`matter of the references in the manner of the claimed invention, with a reasonable
`
`expectation of success.” (emphasis added)); In re Vaidyanathan, 381 F. App’x 985,
`
`993 (Fed. Cir. 2010) (non-precedential) (“KSR . . . did not remove the need to anchor
`
`the analysis in explanation of how a person of ordinary skill would select and apply
`
`the teachings of the references.”); In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006)
`
`(It is necessary to “explain the reasons one of ordinary skill in the art would have
`
`been motivated to select the references and to combine them to render the claimed
`
`invention obvious.” (quoting In re Rouffet, 149 F.3d 1350, 1357-59 (1998))); United
`
`Patents v. Sound View Innovations, IPR2018-00599, Paper 50 at 24 (Sept. 9, 2019)
`
`(“A determination of obviousness cannot be reached where the record lacks
`
`‘explanation as to how or why the references would be combined to produce the
`
`claimed invention’”); Pfizer, Inc. v. Genentec, Inc., IPR2017-01923, Paper 110 at
`
`31 (Apr. 2, 2019) (finding non-obviousness in view of Petitioner’s failure “to explain
`
`9
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`why”); In-Depth Geophysical, Inc. v. ConocoPhillips, IPR2019-00850, Paper 56 at
`
`31 (Sept. 3, 2020) (failure to articulate “the reasons why”). Hindsight bias is not
`
`enough. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988)
`
`(quoting Interconnect Plan. Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985))
`
`(“‘there must be some reason for the combination other than the hindsight gleaned
`
`from the invention itself.’”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d
`
`1327, 1351 (Fed. Cir. 2014) (rejecting reliance on the patent as a “roadmap”).
`
`On Reply, Petitioner sought to cure this defect with a new theory that POSITA
`
`would select Examples 2 or 16 because they are equal to all other examples and a
`
`new analysis of the Toshikazu data claiming that other examples from Toshikazu
`
`did not perform better than Examples 2 or 16. (Pet.’s Reply 2-4.) This new theory
`
`was accompanied by a new expert, Dr. Rizvi, and a new sixty page declaration, (Ex.
`
`1055), as well as thirty new pieces of evidence. (See Ex. 1023-1052, 1054.)
`
`The Board rejected Infineum’s request to strike this belated argument and
`
`evidence and relied upon it to conclude that the ‘685 patent claims were obvious.
`
`(FWD, 28-29.) Specifically, the Board stated “we credit the testimony of Dr. Rizvi
`
`that one of ordinary skill in the art would not have differentiated the results reported
`
`for Examples 1-19 of Toshikazu.” (Id.) Without citation to the Petition or
`
`supporting evidence, the Board concluded that Toshikazu provided “ample reason”
`
`10
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`to have selected any of the examples. (Id. at 29.) Citing the Reply, the Board stated
`
`that “we agree with Petitioner that there was still a reason one of ordinary skill in the
`
`art would have selected any of Examples 1-19 for further development; namely those
`
`example lubricants all provided excellent results and outperformed each of the
`
`Comparative Examples.” (Id. at 29-30 (citing Pet. Reply 1-2 (citing Ex. 1005 ¶¶ 52-
`
`53, Tables 1, 2; Ex. 1053, 171:9-25)).) Noticeably absent from this analysis by the
`
`Board: an identification of where this argument was made in the Petition or Dr.
`
`Smolenski’s declaration.
`
`Thus, the Board improperly permitted the Petitioner to advance a new
`
`argument and evidence that was intended to fill in a gap in the Petition. See GoPro,
`
`Inc. v. Contour IP Holding, IPR2015-01080, Paper 90 at 41 (July 31, 2019)
`
`(excluding from consideration new Reply arguments and declaration interpreting
`
`reference presented in the petition); Baxter Healthcare, IPR2013-00583, Paper 32 at
`
`5 (excluding experimental evidence presented on reply to support an inherent
`
`anticipation argument). It is clear that the Board could not have found that the ‘685
`
`patent was invalid as obvious based on the theories and evidence presented in the
`
`Petition alone. Consequently, Director review is warranted.
`
`III. The Board Failed to Properly Credit Infineum’s Unrebutted Evidence of
`Unexpected Results and Find the ‘685 Patent Not Invalid for Obviousness
`The formulation of the ‘685 patent provided “significant” and “unexpected”
`
`11
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`improvement under boundary friction conditions. (See Ex. 2003, ¶¶ 268, 271.) This
`
`evidence was not disputed by Oronite or its experts.
`
`Nevertheless the Board disregarded this unrebutted testimony because
`
`Infineum “provides no comparison of fuel economy improvement between the
`
`claimed lubricating compositions and the lubricating composition of Example 16 of
`
`Toshikazu.” (FWD, 32.) However, Oronite did not raise this argument in the
`
`Petition or the Reply and neither Dr. Smolenski nor Dr. Rizvi claimed that the data
`
`presented in the ’685 patent failed to compare the invention to the closest prior art.
`
`The Board’s rationale was outside the scope of any argument raised by Oronite and
`
`not supported by any of the evidence submitted in the IPR. In re Magnum Oil Tools
`
`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[T]he Board must base its decision
`
`on arguments that were advanced by a party, and to which the opposing party was
`
`given a chance to respond.”).
`
`The Board’s conclusion that Infineum should have compared its invention to
`
`Toshikazu is particularly troubling given that the undisputed evidence shows that
`
`the information in Toshikazu was incomplete. In fact, the Board agreed that
`
`Toshikazu did not disclose all relevant information regarding its formulations. (See
`
`FWD, 17 (Toshikazu “does not report the total amount of calcium imparted by this
`
`detergent” and “does not report the viscosity index or Noack volatility of its
`
`12
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`synthetic base oil.”); see also id. at 24 (“We agree with Patent Owner that it is
`
`impossible to determine, based on the information provided in Toshikazu, the
`
`calcium content provided by the overbased calcium sulfonate detergent of Example
`
`16.”).) Consequently, the Board could not expect Infineum to provide test data that
`
`compared the ’685 patent to Toshikazu.
`
`The Board also stated that it gave “limited weight” to Infineum’s unexpected
`
`improved fuel economy results. (Id. at 33.) However, there was no claim by the
`
`Petitioner or its witnesses that this generic statement of “excellent results”
`
`outweighed the significant and unexpected nature of the inventors’ discovery. (See
`
`generally Pet.; Exhibit 1002; Exhibit 1055; Pet. Reply.) In allocating “limited
`
`weight” to this evidence, the Board deviated from the standard established by the
`
`PTAB in IPR proceedings that unrebutted testimony and evidence is to be credited
`
`by the panel. See, e.g., Pfizer, Inc., IPR2017-01923 Paper 110 at 30-31 (crediting
`
`unrebutted expert testimony); Merck Sharp & Dohme v. Microspherix, IPR2018-
`
`00393, Paper 43 at 32 (July 8, 2019) (balancing unrebutted evidence in favor of
`
`Patent Owner); 33Across, Inc. v. LeftsnRights, Inc., IPR2018-01480, Paper 54 at 46
`
`(Feb. 7, 2020) (crediting unrebutted testimony). When the panel fails to give proper
`
`weight to the patent owner’s evidence of unexpected results, the Director has granted
`
`review and vacated the panel’s final written decision. See Proppant Express Invs.,
`
`13
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`LLC v. Oren Techs., LLC, IPR20018-00733, Paper 95 at 2-3 (Nov. 18, 2021). In
`
`short, since Infineum’s unexpected results were not disputed, the Board did not
`
`properly weigh the evidence, which is inconsistent with other panel’s treatment of
`
`such evidence. As a result, Infineum respectfully submits that Director review is
`
`warranted.
`
`IV. The Board Improperly Relied Upon An Unqualified Expert.
`
`The Board also erred in giving credit to and relying upon Dr. Smolenski’s
`
`analysis regarding POSITA formulating or modifying an engine oil to arrive at the
`
`invention of the ‘685 patent. The foundation of Dr. Smolenski’s analysis and the
`
`Petition was that an engine oil formulator would select Examples 2 or 16 for
`
`development and then modify those examples in numerous manners to read on the
`
`claims. While Dr. Smolenski was experienced in testing engine oils, (Ex. 2005,
`
`47:12-15), Dr. Smolenski was not an engine oil formulator. (Id. at 127:20-21.) He
`
`had never formulated an engine oil. (Id. at 50:5-10.) He had never modified an
`
`engine oil formulation. (Id. at 59:13-19.) He worked for GM, which did not
`
`formulate engine oils. (Id. at 55:25-56:4.) He relied upon third party formulation
`
`companies, such as Infineum, to formulate the engine oils. (Id. at 56:5-14.) Dr.
`
`Smolenski’s experience was establishing performance specifications and then
`
`relying on engine oil formulators to figure out a formulation. (Id. at 50:11-15.)
`
`14
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`The problem is apparent. Dr. Smolenksi, whose analysis and testimony
`
`served as the foundation for the Petition’s obviousness theory, was testifying about
`
`something that he had no experience doing. Oronite’s case-in-chief relied entirely
`
`on the opinion and analysis of an unqualified expert.
`
`It is recognized that it is improper to rely upon testimony of an expert that
`
`lacks the relevant experience. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550
`
`F.3d 1356, 1364 (Fed. Cir. 2008). Indeed when confronted with two witnesses, one
`
`with direct experience and the other with indirect experience, PTAB panels credit
`
`the testimony of the witness with direct experience. See EIS GmbH v. Novoluto
`
`GmbH, IPR2019-01302, Paper 50 at 63-64 (June 14, 2021). Consequently, the
`
`Board erred by relying upon and crediting Dr. Smolenski’s testimony, which further
`
`warrants review by the Director.
`
`V.
`
`CONCLUSION
`For the foregoing reasons, review of the Board’s FWD should be granted.
`
`Date: March 18, 2022
`
`
`
`Respectfully submitted,
`/Christopher H. Strate/
`Christopher H. Strate, Reg. No. 57,376
`GIBBONS P.C.
`Tel: 973-596-4500
`cstrate@gibbonslaw.com
`Counsel for Patent Owner
`Infineum USA L.P.
`
`15
`
`
`
`Case IPR2018-00923
`Patent 6,723,685
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the above documents was served on March 18, 2022,
`
`by filing this document through the Patent Trial and Appeal Board End to End
`
`system
`
`as well
`
`as
`
`delivering
`
`a
`
`copy
`
`by
`
`electronic mail
`
`to
`
`Director_PTABDecision_Review@USPTO.gov and on the following counsel of
`
`record:
`
`Naveen Modi
`Scott Peachman
`Daniel Zeilberger
`Michael Wolfe
`Paul Hastings LLP
`875 15th Street. N.W.
`Tel.:202-551-1700
`Fax: 202-551-1705
`Email: PH-Oronite-Infineum-IPR@paulhastings.com
`
`Dated: March 18, 2022
`
`/Christopher H. Strate/
`Christopher H. Strate
`
`16
`
`
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
