Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper: 33
`Date: November 6, 2019
`
`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.
`
`
`IPR2018-00922
`Patent 6,723,685 B2
`
`
`
`
`
`
`
`
`
`
`Before JON B. TORNQUIST, MICHELLE N. ANKENBRAND, and
`JULIA HEANEY, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
`
`INTRODUCTION
`I.
`Chevron Oronite Company LLC (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–20 of
`U.S. Patent No. 6,723,685 B2 (Ex. 1001, “the ’685 patent”). Infineum USA
`L.P. (“Patent Owner”) did not file a Preliminary Response to the Petition.
`Upon consideration of the Petition and the evidence of record, we
`determined that Petitioner demonstrated a reasonable likelihood that it would
`prevail with respect to at least one claim of the ’685 patent. Paper 6, 20
`(“Dec.”). Thus, consistent with the Supreme Court’s decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018), and USPTO
`Guidance,1 we instituted review of all challenged claims on all challenged
`grounds.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 13, “PO Resp.”), Petitioner filed a Reply (Paper 16, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 22, “Sur-reply”).
`In support of their respective positions, Petitioner relies on the testimony of
`Dr. Donald J. Smolenski (Ex. 1002) and Dr. Syed Q. A. Rizvi (Ex. 1055),
`and Patent Owner relies on the testimony of Dr. Jai Bansal (Ex. 2003).
`An oral hearing was held on August 30, 2019, and a transcript of the
`hearing is included in the record (Paper 32, “Tr.”).
`
`
`1 In accordance with USPTO Guidance, “if the PTAB institutes a trial, the
`PTAB will institute on all challenges raised in the petition.” See USPTO,
`Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018)
`(available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).
`
`2
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
` Related Proceedings
`The parties identify Infineum USA LP v. Chevron Oronite Company
`LLC, Case No. 1-18-cv-00323 (D. Del.), as a related matter. Pet. 2;
`Paper 4, 1. The ’685 patent was also the subject of IPR2018-00923
`(institution denied) and IPR2018-00924 (institution denied). Paper 4, 1;
`Pet. 2.
`
` The ’685 Patent
`The ’685 patent is directed to lubricating oil compositions that
`“exhibit simultaneously improved low temperature valve train wear
`performance, excellent compatibility with fluoroelastomer materials
`commonly used for seals in modern internal combustion engines, and
`improved fuel economy properties.” Ex. 1001, 1:4–9.
`The ’685 patent explains that lubricating oil compositions for
`combustion engines typically contain a base oil of lubricating viscosity, as
`well as various additives used “to improve detergency, to reduce engine
`wear, to provide stability against heat and oxidation, to reduce oil
`consumption, to inhibit corrosion, to act as a dispersant, and to reduce
`friction loss.” Id. at 1:12–19. The ’685 patent further explains that “[s]ome
`additives provide multiple benefits, such as dispersant-viscosity modifiers,”
`whereas other additives improve one characteristic of the lubricating oil
`while adversely affecting one or more other characteristics. Id. at 1:19–22.
`The ’685 patent discloses that when “small amounts of one or more
`oil soluble molybdenum compounds,” an ashless, organic, nitrogen-free
`friction modifier, zinc dihydrocarbyl dithiophosphate (ZDDP), and a
`calcium detergent are added to a base oil having a viscosity of at least 95 and
`
`3
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
`a Noack volatility2 of less than 15%, a low-cost lubricating composition with
`improved fuel economy, excellent wear protection, and reduced adverse
`effects on fluoroelastomer seals is provided. Id. at 2:1–8, 2:47–55.
`
` Illustrative Claim
`Petitioner challenges claims 1–20 of the ’685 patent. Independent
`claim 1 is illustrative of the challenged claims and is reproduced below:
`
`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 about 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
`phosphorus from the metal dihydrocarbyl dithiophosphate
`compound in an amount up to about 0.1 wt. %.
`Ex. 1001, 13:47–63.
` Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–20 of
`the ’685 patent on the following grounds (Pet. 3–4):
`
`
`2 Noack volatility measures the evaporative loss of lubricant oil at high
`temperature. Ex. 1001, 2:52–54; Ex. 1002 ¶ 23. A lower Noack volatility is
`associated with a less volatile oil. Ex. 1002 ¶ 23.
`
`4
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
`Claim(s)
`Challenged
`1–3, 6–8, 10, 11, 13–
`15, 18–20
`
`4
`
`9, 16, 17
`
`1–3, 5–8, 10–15, 18–
`20
`
`4
`
`9, 16, 17
`
`35 U.S.C. § References
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Toshikazu3, Henderson4
`
`Toshikazu, Henderson, Schlicht5
`
`Toshikazu, Henderson, Walker6
`
`Toshikazu, Henderson
`
`Toshikazu, Henderson, Schlicht
`
`Toshikazu, Henderson, Walker
`
`II. ANALYSIS
`
` Claim Construction
`In this inter partes review, claim terms are construed according to
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2017);7 Cuozzo Speed
`
`
`3 Japanese Patent Application Publication No. JP H5-279686 A, published
`Oct. 26, 1993 (Ex. 1005). Exhibit 1005 contains the English-language
`translation of Toshikazu, the Japanese language version of this reference,
`and a declaration attesting to the accuracy of the translation. Our citations
`are to the English-language translation.
`4 H.E. Henderson, et al., Higher Quality Base Oils for Tomorrow’s Engine
`Oil Performance Categories, SAE Technical Paper Series 982582, 1–13
`(1998) (Ex. 1006).
`5 US 3,365,396, issued Jan. 23, 1968 (Ex. 1011).
`6 WO 99/60080, published Nov. 25, 1999 (Ex. 1007).
`7 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (codified as
`amended at 37 C.F.R. § 42.100(b) (2019)).
`
`5
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). In determining the broadest
`reasonable construction, we presume that claim terms carry their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that
`differs from its ordinary meaning; however, any special definitions must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Claims 18–20
`
`Claims 18–20 recite:
`18. A method for improving the fuel economy and fuel
`economy retention properties of an internal combustion engine,
`which comprises: (1) adding to said engine the lubricating oil
`composition of claim 1; and (2) operating said engine.
`19. A method for improving the anti-wear protection of an
`internal combustion engine comprising the steps of: (1) adding
`a lubricating oil composition of claim 1; and (2) operating the
`engine.
`20. A method for improving the compatibility between a
`lubricating oil composition and the seals of an internal
`combustion engine comprising the steps of: (1) adding to said
`engine a lubricating oil composition of claim 1; and
`(2) operating the engine.
`Ex. 1001, 14:52–65. As shown above, claims 18–20 each include a
`preamble that identifies the purpose or intended result of the claimed
`invention and two method steps requiring (1) the addition of the lubricating
`oil composition of claim 1 to an engine and (2) operating the engine. Id.
`The parties dispute whether the preambles of claims 18–20 are limiting.
`Pet. 35–40; Pet. Reply 13; Sur-reply 12–13.
`
`6
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`

`

`IPR2018-00922
`Patent 6,723,685 B2
`“In general, a preamble limits the invention if it recites essential
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`the claims. Conversely, a preamble is not limiting ‘where a patentee defines
`a structurally complete invention in the claim body and uses the preamble
`only to state a purpose or intended use for the invention.’” Catalina Mkt’g
`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
`(internal citations omitted) (quoting Pitney Bowes, Inc. v. Hewlett-Packard
`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), and Rowe v. Dror, 112 F.3d 473,
`478 (Fed. Cir. 1997)). A preamble is also generally not limiting when
`“deletion of the preamble phrase does not affect the structure or steps of the
`claimed invention.” Id. at 809.
`
`Here, the preambles of claims 18–20 are statements of purpose or
`intended result and deletion of these preamble phrases would not affect the
`steps set forth in claims 18–20. This suggests the preambles are not limiting.
`
`Patent Owner contends a finding that the preambles are limiting is
`“necessitated” by the doctrine of claim differentiation. Sur-reply 12–13.
`In support of this position, Patent Owner quotes from Tandon Corp. v. U.S.
`International Trade Commission, 831 F.2d 1017, 1023 (Fed. Cir. 1987),
`which states:
`There is presumed to be a difference in meaning and
`scope when different words or phrases are used in separate
`claims. To the extent that the absence of such difference in
`meaning and scope would make a claim superfluous, the
`doctrine of claim differentiation states the presumption that the
`difference between claims is significant.
`Although the doctrine of claim differentiation “creates a presumption
`that each claim in a patent has a different scope,” “it is not a ‘hard and fast’
`rule of construction.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,
`
`7
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`

`

`IPR2018-00922
`Patent 6,723,685 B2
`246 F.3d 1368, 1375 (Fed. Cir. 2001); Seachange Int’l, Inc. v. C-COR Inc.,
`413 F.3d 1361, 1368–69 (Fed. Cir. 2005). Thus, where the preambles of
`multiple claims provide only a statement of purpose or intended result, and
`do not result in a manipulative difference in the steps of the methods, the
`doctrine of claim differentiation, without more,8 does not require a finding
`that the preambles are limiting. Bristol-Meyers Squibb, 246 F.3d at 1375–
`1376. This is true even if the result is multiple claims having identical
`scope. Id. at 1376 (finding that independent claims 1 and 5 and independent
`claims 2 and 8 of the involved patent were of identical scope); see also
`Tandon, 831 F.2d at 1023 (noting that “practice has long recognized that
`‘claims may be multiplied . . . to define the metes and bounds of the
`invention in a variety of different ways,’” and “two claims which read
`differently can cover the same subject matter”) (quoting Bourns, Inc. v.
`United States, 537 F.2d 486, 492 (Ct. Cl. 1976)). Thus, we find that the
`preambles of claims 18–20, which set forth the intended result of the method
`steps, are not limiting.
`
`
`8 Neither party cites to or relies on the written description or prosecution
`history of the ’685 patent to support its proposed construction. See Allergan
`Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1374–75 (Fed. Cir. 2019)
`(determining that statements of purpose or intended result were limiting
`where they were relied upon during prosecution to support the patentability
`of the claims). Moreover, although the preambles of each claim identify the
`subject of the method as an “internal combustion engine” and the body of
`each claim refers back to this engine (“said engine” or “the engine”), this is
`no different than the claims at issue in Bristol-Meyers Squibb that were
`found to be non-limiting, which identified the subject of the method (“a
`patient” or “a cancer patient”) in the preamble and then referred back to this
`subject in the body of the claims (“said patient”). Bristol-Meyers Squibb,
`246 F.3d at 1371–72.
`
`8
`
`

`

`IPR2018-00922
`Patent 6,723,685 B2
` Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
` Level of Ordinary Skill in the Art and Dr. Smolenski’s Testimony
`The parties dispute the proper level of ordinary skill in the art and
`whether Dr. Smolenski’s testimony should be relied upon in this proceeding.
`
`1. Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art
`would have had an undergraduate degree in a relevant field
`(e.g., Mechanical Engineering, Materials Science Engineering,
`Chemical Engineering, or Chemistry) with three to five years of
`experience with formulating and/or testing engine lubricating
`oil compositions or a graduate degree in a relevant field with
`one to three years of experience with formulating and/or testing
`engine lubricating oil compositions.
`Pet. 13 (citing Ex. 1002 ¶ 17).
`Patent Owner does not set forth a definition of a person of ordinary
`skill in the art, but Dr. Bansal testifies that
`
`9
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`

`

`IPR2018-00922
`Patent 6,723,685 B2
`a person of ordinary skill in the art would have a B.S. degree in
`Chemistry, Chemical Engineering or an equivalent field as well
`as at least 5 years of experience directly formulating engine
`lubricating oil compositions or a graduate degree in Chemistry,
`Chemical Engineering or an equivalent field as well as at least
`3 years of experience directly formulating engine lubricating oil
`compositions.
`Ex. 2003 ¶ 19.
`
`As shown above, both parties generally agree on the amount and type
`of education, as well as the amount of experience, that would have been
`possessed by one of ordinary skill in the art, and agree that an individual
`with experience in directly formulating engine lubricating oil compositions
`may be one of ordinary skill in the art. Ex. 1002 ¶ 17; Ex. 2003 ¶ 19. The
`parties’ dispute centers around whether an individual with experience in the
`testing of engine oils may also qualify as one of ordinary skill in the art.
`PO Resp. 3–5; Pet. Reply 25–27.
`
`Dr. Bansal testifies that, “[i]n view of the ’685 Patent, the
`specification and prosecution history, a deep understanding and hands-on
`experience formulating engine lubricant oil is . . . a pre-requisite” to be a
`person of ordinary skill in the art. Ex. 2003 ¶ 23. Dr. Bansal further testifies
`that in the engine oil additive industry a “formulation scientist,” or
`“formulator,” “must possess extensive knowledge of the additive
`components, inter-component interactions, and additive interactions with the
`common materials of construction in the engine.” Id. ¶ 20. Dr. Bansal
`contends additive companies closely guard this knowledge, which is not
`available from public sources. Id. According to Dr. Bansal, in his “long
`experience in the additive industry” he has “not come across a single case
`
`10
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`

`

`IPR2018-00922
`Patent 6,723,685 B2
`where an individual with zero hands-on formulation experience has been
`tasked with important formulation decision making.” Id. ¶ 21.
`
`Dr. Rizvi, testifying in support of Petitioner, agrees with
`Dr. Smolenski’s assertion that a person with experience in the testing of
`engine oils may qualify as one of ordinary skill in the art. Ex. 1055 ¶ 24.
`Dr. Rizvi further testifies that direct experience formulating an engine oil is
`not a prerequisite to appreciate that one could combine well-known additive
`components to achieve the advantages disclosed in the prior art, and notes
`that he has “interacted with dozens of individuals who understand the
`intricacies involved in formulating engine oils even though they may not
`have directly formulated an engine oil.” Id. ¶ 22.
`
`The ’685 patent claims are directed to both a lubricating oil
`composition and a method of using this lubricating oil composition to
`improve certain qualities of an internal combustion engine. Ex. 1001,
`13:47–63, 14:52–65. The ’685 patent specification discloses engine oil
`additives, formulations of additives in a base oil, and test results for these
`formulations. Id. at 10:42–13:45 (concluding that the disclosed test results
`demonstrate unexpected results), Tables 1–5. Similar to the ’685 patent, the
`prior art of record discloses both engine oil formulations and testing results
`for the disclosed compositions. See Ex. 1005 ¶ 9, Tables 1, 2 (providing
`formulation information and testing results for Examples 1–19 and
`Comparative Examples 1–5). In view of these disclosures, we agree with
`Petitioner 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.
`Thus, we adopt Petitioner’s definition of a person of ordinary skill in the art
`as more accurately depicting the level of education and experience of one of
`
`11
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`

`IPR2018-00922
`Patent 6,723,685 B2
`ordinary skill in the art, as reflected in the prior art of record and the ’685
`patent.9
`
`2. Dr. Smolenski’s Testimony
`Patent Owner contends Dr. Smolenski is not a person of ordinary skill
`in the art and this “automatically impugns his Declaration.” PO Resp. 4–5.
`We are not persuaded by this argument. First, it is undisputed that
`Dr. Smolenski is one of ordinary skill in the art under the definition we
`adopt. Tr. 73:16–18. Second, there is no requirement that an expert’s
`education and experience perfectly match that of one of ordinary skill in the
`art in order to provide testimony. SEB S.A. v. Montgomery Ward & Co., 594
`F.3d 1360, 1373 (Fed. Cir. 2010); Sundance, Inc. v. DeMonte Fabricating
`Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). An expert must instead have
`sufficient knowledge, skill, training, experience or education of a
`“specialized” nature to assist the trier of fact in understanding the evidence
`of record. SEB, 594 F.3d at 1373.
`On this record, we are persuaded that Dr. Smolenski has sufficient
`education and experience of a specialized nature to assist the Board in
`understanding the evidence of record. Ex. 1003 (Dr. Smolenski’s CV);
`Ex. 2005, 141:4–143:8 (Dr. Smolenski testifying that despite the fact that he
`has never worked as a formulator, he has had “extensive exposure to engine
`oil formulations” and has a “broad understanding of how engine oil
`
`
`9 We have adopted the lower level of skill in the art Petitioner has advocated.
`To the extent a higher level of skill in the art were applicable, we note that
`“[a] less sophisticated level of skill generally favors a determination of
`nonobviousness, and thus the patentee, while a higher level of skill favors
`the reverse.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314,
`1324 (Fed. Cir. 2011).
`
`12
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`

`IPR2018-00922
`Patent 6,723,685 B2
`formulations affected results”), 292:2–13 (Dr. Smolenski testifying that he
`has evaluated hundreds of engine oil formulations and their performance
`data during his career). Thus, we will consider his testimony in this
`proceeding.
`Although we decline to exclude or ignore Dr. Smolenski’s testimony
`as a whole, we recognize that Dr. Smolenski lacks significant experience in
`benchtop formulation of engine oils. PO Resp. 4; Ex. 2005, 140:22–141:12
`(“No, I don’t indicate that I’m an expert formulator.”). Accordingly, where
`relevant, we take Dr. Smolenski’s lack of benchtop formulating experience
`into account when determining the weight to give his testimony, especially
`where Dr. Rizvi did not confirm this testimony10 in his declaration and
`Dr. Bansal did not confirm this testimony during his cross-examination.
`
` Obviousness of Claims 1–3, 6–8, 10, 11, 13–15, and 18–20 over
`Toshikazu (Example 16) and Henderson
`Petitioner contends the subject matter of claims 1–3, 6–8, 10, 11, 13–
`15, and 18–20 would have been obvious over the combined disclosures of
`Toshikazu (Example 16) and Henderson. Pet. 18–40.
`
`1. Toshikazu
`Toshikazu discloses lubricating oils for internal combustion engines
`that have “excellent wear resistance and friction characteristics.” Ex. 1005,
`Abstract, ¶ 1. Toshikazu explains that anti-wear agents, such as zinc
`dithiophosphate (ZnDTP) and zinc dithiocarbamate (ZnDTC), prevent wear
`
`
`10 There is no dispute that Dr. Rizvi is one of ordinary skill in the art under
`either party’s definition, and Dr. Rizvi testifies that the opinions set forth in
`his declaration would be the same under either party’s definition of one of
`ordinary skill in the art. Ex. 1055 ¶ 24.
`
`13
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`

`IPR2018-00922
`Patent 6,723,685 B2
`by creating protective films on metal surfaces. Id. ¶ 6. When anti-wear and
`friction reducing agents are used together in a lubricating composition,
`however, the function of both components may be inhibited due to
`competitive adsorption at metal surfaces. Id. In addition, ZnDTP and
`ZnDTC may interact with certain detergent/dispersant additives, further
`impairing their wear resistance. Id. ¶ 7. In view of these interactions,
`Toshikazu reports that it had not previously been possible to achieve
`satisfactory wear resistance, friction reduction, cleaning, and dispersion
`using ZnDTP or ZnDTC in combination with known lubricant additives. Id.
`¶ 8.
`
`Toshikazu reports that the above limitations can be overcome
`by using the combination of an organic molybdenum compound
`and an aliphatic acid ester as a friction reducing agent, by using
`calcium or magnesium sulfonate, or calcium or magnesium
`phenate, as a metal detergent, by using benzylamine, alkenyl
`succinimides, or boron derivatives of alkenyl succinimides, as
`[an] ashless detergent/dispersant, and by using ZnDTP or
`ZnDTC as an antiwear additive.
`Id. ¶ 10.
`Tables 1 and 2 of Toshikazu are reproduced below:
`
`
`
`14
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`IPR2018-00922
`Patent 6,723,685 B2
`
`
`
`Tables 1 and 2 provide the compositions of the nineteen Example lubricants
`and five Comparative Example lubricants of Toshikazu. As shown in Tables
`1 and 2 above, the lubricants of Examples 2 and 16 each contain MoDTC
`(an organic molybdenum compound), an aliphatic acid glyceride friction
`reducing agent, an overbased calcium sulfonate detergent, a boron-based
`alkenyl succinimide ashless detergent/dispersant, an sec-C3-6-ZnDTP anti-
`wear additive, and a base oil comprised of either mineral oil (Example 2) or
`synthetic oil (Example 16). Id. at Tables 1, 2; see also id. ¶¶ 49–51
`(identifying the specific type of additives used in the Example lubricants).
`
`2. Henderson
`Henderson discusses the changing requirements in the art for engine
`oils. Ex. 1006, Abstract. Henderson reports that previous improvements in
`engine oils had focused on additive technology, but “with the current shift in
`automotive oil requirements, the need for improved base oils to complement
`
`15
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`

`IPR2018-00922
`Patent 6,723,685 B2
`the additives has led to significant refinery investments.” Id. at 1.11
`Henderson reports that one of the improvements in the art was a shift toward
`higher quality base oils with viscosity indices of 100 and above and Noack
`volatility levels of less than 15%. Id. at 1–2 (“However, this change is
`considered minor compared to the proposed 15% maximum Noack limit as a
`secondary mandatory volatility specification.”).
`By using higher quality base oils, Henderson reports that an oil with
`enhanced features may be obtained. Id. at 4. These enhanced features
`include “improved fuel economy and retention, oxidation stability, lower
`volatility for improved oil consumption control, high temperature deposit
`control and exceptional low temperature pumpability.” Id.
`
`3. Analysis—Independent Claim 1
`Petitioner persuasively demonstrates that the lubricating composition
`of Example 16 of Toshikazu contains an oil of lubricating viscosity, at least
`one calcium detergent (overbased calcium sulfonate), at least one oil soluble
`molybdenum compound (MoDTC), at least one organic ashless nitrogen-free
`friction modifier (aliphatic acid glyceride), and at least one metal
`dihydrocarbyl dithiophosphate compound (sec-C3-6ZnDTP). Pet. 19–24;
`Ex. 1005 ¶¶ 20–23, 49–51, Table 2. Petitioner also persuasively
`demonstrates that the composition of Example 16 is substantially free of
`ashless aminic friction modifiers. Pet. 24.
`With respect to the amounts of the recited additive components,
`Petitioner persuasively demonstrates that the composition of Example 16
`contains between 300 to 320 ppm of molybdenum and has a phosphorus
`
`11 We refer to the original page numbers of Henderson, as opposed to the
`page numbers added in the lower left corner by Petitioner.
`
`16
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`

`

`IPR2018-00922
`Patent 6,723,685 B2
`content from the metal dihydrocarbyl dithiophosphate compound
`(sec-C3-6ZnDTP) that is between 0.09 and 0.12 wt. %, a range that overlaps
`the claimed range of “up to about 0.1 wt. %.” Id. at 28–29 (quoting In re
`Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
`overlapping ranges, we and our predecessor court have consistently held that
`even a slight overlap in range establishes a prima facie case of
`obviousness.”)).
`Although Toshikazu reports that Example 16 contains 0.72 wt. %
`overbased calcium sulfonate detergent, it does not report the total amount of
`calcium imparted by this detergent. Petitioner argues, however, that typical
`overbased calcium sulfonate detergents in the art had a calcium content
`between 11 and 16%, and calculates that the use of these typical detergents
`in Example 16 of Toshikazu would result in a calcium content from the
`calcium detergent that is between 0.08 and 0.12%, a range that the claimed
`range of 0.05 to 0.6 wt. % fully encompasses. Id. at 27–28.
`Toshikazu also does not report the viscosity index or Noack volatility
`of its synthetic base oil, but Petitioner contends one of ordinary skill in the
`art would have ensured that the base oil of Example 16 had a viscosity index
`above 95 and a Noack volatility below 15%, in view of Henderson’s
`disclosure that the industry was rapidly shifting toward such oils due to their
`improved performance and in order to meet the then-applicable GF-3
`standard. Id. at 20–21, 25–27 (citing Ex. 1006, 1–2, 4, 5, 8, Table 5).
`In its response, Patent Owner disputes (1) whether one of ordinary
`skill in the art would have selected a base oil with a viscosity index above 95
`for use in Example 16 of Toshikazu; (2) whether one of ordinary skill in the
`art would have selected a base oil with a Noack volatility less than 15% for
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`IPR2018-00922
`Patent 6,723,685 B2
`use in Example 16 of Toshikazu; (3) whether one of ordinary skill in the art
`would have selected an overbased calcium sulfonate detergent for use in
`Example 16 of Toshikazu that would provide a calcium content between
`0.05 to 0.6 wt. %; and (4) whether one of ordinary skill in the art would have
`selected the lubricant of Example 16 of Toshikazu for further development
`and modification. PO Resp. 5–9, 24–35. Patent Owner also asserts that
`unexpected results reported in the ’685 patent for the claimed composition
`support a finding of nonobviousness. Id. at 8–9, 55–58. We address these
`points below.
`
`a. “an oil of lubricating viscosity having a viscosity
`index of at least 95”
`The base oil of Example 16 is composed of 80 wt. % poly-α-olefins
`and 20 wt. % diisodecyl adipate (a diester). Pet. 19; Ex. 1005 ¶ 49; Ex. 1002
`¶ 60. Petitioner presents uncontested testimony that the predominant
`viscosity grades for synthetic base stocks in engine oils were 4 and 6
`centistoke (“cSt”). Pet. 20 (citing Ex. 1009, 449; Ex. 1002 ¶ 61); see also
`Ex. 1005 ¶ 12 (Toshikazu disclosing that the base oil preferably has a
`kinematic viscosity within the range of 3 to 20 cSt). At a viscosity grade of
`4 cSt, PAO-4 (poly-α-olefin) has a viscosity index of 123, polyol ester has a
`viscosity index of 130, and dibasic acid ester (i.e., a diester) has a viscosity
`index of 161. Pet. 20 (citing Ex. 1009, 450, Fig. 4). At a viscosity grade of
`6 cSt, PAO-6 has a viscosity index of 135, polyol ester has a viscosity index
`of 114, and a diester has a viscosity index of 145. Id. (citing Ex. 1009, 450,
`Fig. 5). Applying these values to the lubricating oil of Example 16,
`Petitioner contends one of ordinary skill in the art would have understood
`that this lubricating oil had a viscosity index above 95. Id. (citing Ex. 1002
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`¶ 62 (Dr. Smolenski testifying that the mixture of two synthetic base oils
`having a viscosity index above 95 would result in a combined base oil with a
`viscosity index above 95)).
`To the extent one of ordinary skill in the art would have had any
`question regarding the viscosity index of Example 16, Petitioner contends
`they would have sought to achieve a viscosity index above 95 in view of
`Henderson’s disclosure that base oils having a viscosity index of 100 or
`above provided several improved features, including “improved fuel
`economy and retention, oxidation stability, lower volatility for improved oil
`consumption control, high temperature deposit control, and exceptional low
`temperature pumpability.” Id. at 20–21 (citing Ex. 1006, 1–2, 4).
`Patent Owner contends one of ordinary skill in the art would not have
`simply presumed that the PAO of Example 16 was either 4 cSt or 6 cSt, or
`that the viscosity index of Example 16 is greater than 95. PO Resp. 28.
`Patent Owner further contends that one of ordinary skill in the art would not
`have had a reasonable expectation of success in using a base oil with a
`viscosity index exceeding 95 in Example 16 due to Henderson’s and
`Lakes’12 disclosures that additive packages used with one type of oil may
`not be compatible with, and may not necessarily give the same performance
`in, another type of base oil. Id. at 29–30 (citing Ex. 2003 ¶ 102; Ex. 1006, 2;
`Ex. 1009, 17).
`Upon review of the parties’ arguments and evidence as a whole, we
`find that Toshikazu’s synthetic oil composed of 80 wt. % poly-α-olefins and
`20% diisodecyl adipate (a diester) could have been formulated to have a
`
`
`12 Stephen C. Lakes, Automotive Crankcase Oils, Marcel Dekker, Inc.
`(1999) (Ex. 1009, “Lakes”).
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`viscosity index of 100 or greater simply by using the predominant viscosity
`grades for PAOs known in the art. Pet. 19–20; Ex. 1055 ¶¶ 42–44 (noting
`that diisodecyl adipate has a viscosity index of 136) (citing Ex. 1038, 145
`(Table 1)). We further find that one of ordinary skill in the art would have
`sought to achieve this viscosity index in view of Henderson’s d