DCT
1:18-cv-00323
Infineum USA LP v. Chevron Oronite Co LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Infineum USA L.P. (Delaware)
- Defendant: Chevron Oronite Company LLC (Delaware)
- Plaintiff’s Counsel: GIBBONS P.C.
- Case Identification: 1:18-cv-00323, D. Del., 05/01/2018
- Venue Allegations: Venue is asserted based on the defendant being a Delaware limited liability company.
- Core Dispute: Plaintiff alleges that Defendant’s lubricating oil additive packages, when combined with base oils as instructed, infringe a patent related to specific lubricating oil compositions.
- Technical Context: The technology concerns chemical formulations for motor oil designed to simultaneously improve fuel economy, reduce engine wear, and maintain compatibility with engine seals.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement in June 2017. Subsequent to the filing of this action, an Inter Partes Review (IPR) was instituted against the patent-in-suit (IPR2018-00922). This proceeding resulted in a certificate issued on March 15, 2023, cancelling all claims (1-20) of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2002-04-05 | '685 Patent Priority Date (Filing Date) |
| 2004-04-20 | '685 Patent Issue Date |
| 2010 | ILSAC GF-5 Requirements Introduced |
| 2012 | Alleged Infringement Start Date |
| 2017-06 | Plaintiff Notifies Defendant of Alleged Infringement |
| 2018-04-16 | Inter Partes Review (IPR2018-00922) Filed |
| 2018-05-01 | Amended Complaint Filing Date |
| 2023-03-15 | IPR Certificate Issued Cancelling All Claims of '685 Patent |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,723,685, "Lubricating Oil Composition," issued April 20, 2004.
U.S. Patent No. 6,723,685 - "Lubricating Oil Composition"
The Invention Explained
- Problem Addressed: The patent describes a need for engine lubricants that provide improved fuel economy and wear protection without causing the degradation of engine seals made from fluoroelastomer materials like Viton™ ('685 Patent, col. 1:58-62). Certain prior art additives, particularly nitrogen-containing friction modifiers, were suspected of contributing to such degradation over time ('685 Patent, col. 1:62-65).
- The Patented Solution: The invention is a specific lubricating oil formulation that combines an oil-soluble molybdenum compound with an "organic, nitrogen-free, ashless friction modifier" ('685 Patent, col. 2:25-27). This combination, along with a calcium detergent and a ZDDP anti-wear agent, is described as providing the desired fuel economy and wear benefits while avoiding the seal compatibility issues associated with nitrogen-containing additives ('685 Patent, col. 2:1-9).
- Technical Importance: The formulation sought to address a trade-off in engine oil chemistry: achieving high performance in fuel efficiency and wear protection while ensuring long-term material compatibility within modern internal combustion engines ('685 Patent, col. 1:11-28).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('Compl. ¶13, ¶32).
- The essential elements of Claim 1 are a lubricating oil composition comprising:
- an oil of lubricating viscosity with a viscosity index of at least 95;
- at least one calcium detergent;
- at least one oil soluble molybdenum compound;
- at least one organic ashless nitrogen-free friction modifier;
- at least one metal dihydrocarbyl dithiophosphate compound;
- wherein the composition is "substantially free of ashless aminic friction modifiers" and meets specific quantitative limits on Noack volatility, calcium content, molybdenum content, and phosphorus content.
- The complaint focuses its allegations on claim 1 but notes that Defendant's actions constitute infringement of "one or more claims" of the '685 patent ('Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are lubricating motor oils formed by combining Defendant’s "Oronite Additive Product(s)" with base oils ('Compl. ¶33). The complaint identifies Pennzoil SAE 5W-30, Pennzoil Gold SAE 5W-30, and AC Delco 5W-30 as examples of infringing oils made with Defendant's products ('Compl. ¶31, ¶35).
Functionality and Market Context
- The complaint alleges that Defendant formulates and sells additive packages to major "Motor Oil Companies" like Shell, Chevron, and Exxon Mobil ('Compl. ¶15, ¶34). These packages are designed to be combined with base oil to create a final lubricant that satisfies industry specifications, such as the ILSAC GF-5 standard ('Compl. ¶18). The complaint alleges that Defendant competes for and wins contracts to supply these additive packages for use in commercially available motor oils ('Compl. ¶21, ¶30). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’685 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) an oil of lubricating viscosity having a viscosity index of at least 95 | The base oil supplied to Defendant by Motor Oil Companies has a viscosity index of at least 95. | ¶23 | col. 8:49-51 |
| b) at least one calcium detergent | Defendant's additive packages contain detergents, including a calcium detergent. | ¶24 | col. 7:65-8:2 |
| c) at least one oil soluble molybdenum compound | Defendant's packages contain friction modifiers, including molybdenum-containing compounds. | ¶24 | col. 3:35-42 |
| d) at least one organic ashless nitrogen-free friction modifier | Defendant's packages contain friction modifiers such as glycerol monooleate. | ¶24 | col. 7:16-24 |
| e) at least one metal dihydrocarbyl dithiophosphate compound | Defendant's packages contain anti-wear agents such as Zinc Dialkyldithiophosphates. | ¶24 | col. 8:12-19 |
| wherein said composition is substantially free of ashless aminic friction modifiers | The lubricating motor oils made by Defendant are alleged to be substantially free of ashless aminic friction modifiers. | ¶28 | col. 8:55-57 |
| has a Noack volatility of about 15 wt. % or less | The oils have a Noack volatility of about 15 wt. % or less, a requirement of the ILSAC GF-5 standard. | ¶19, ¶28 | col. 8:57-58 |
| from about 0.05 to 0.6 wt. % calcium... | The oils contain about 0.05 to 0.6 wt. % calcium from the calcium detergent. | ¶28 | col. 8:58-60 |
| molybdenum in an amount of from about 10 ppm to about 350 ppm... | The oils contain from about 10 ppm to about 350 ppm molybdenum. | ¶28 | col. 8:60-63 |
| phosphorus from the metal dihydrocarbyl dithiophosphate compound in an amount up to about 0.1 wt. % | The oils contain up to about 0.1 wt. % phosphorus, a requirement of the ILSAC GF-5 standard. | ¶19, ¶28 | col. 8:63-65 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the accused oils are "substantially free of ashless aminic friction modifiers" but also notes that Defendant's packages contain "dispersants (such as succinimides)" ('Compl. ¶24, ¶28). Succinimides are typically nitrogen-containing compounds. This raises the question of whether the presence of succinimide dispersants violates the negative limitation, or if their primary function as a dispersant places them outside the claim's definition of a "friction modifier."
- Technical Questions: A footnote in the complaint anticipates a defense that the accused products are not substantially free of ashless aminic friction modifiers, suggesting this is a known point of technical disagreement ('Compl. p. 6, fn. 1). The central technical question will be the precise chemical identity and function of all components in Defendant's additive packages.
V. Key Claim Terms for Construction
- The Term: "substantially free of ashless aminic friction modifiers"
- Context and Importance: This negative limitation is critical for distinguishing the claimed invention from prior art that used nitrogen-containing additives, which the patent sought to avoid due to seal compatibility issues. The infringement analysis may turn on whether the accused products, which allegedly contain nitrogen-based succinimide dispersants, meet this "substantially free" requirement. Practitioners may focus on this term because its definition will determine whether the presence of any nitrogen-containing compound, regardless of its primary designated function, places a product outside the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader interpretation (i.e., allowing for trace amounts or certain types of nitrogen compounds) might point to the term "substantially." The patent does not set a zero-tolerance standard, which could suggest that the limitation applies only to compounds added as friction modifiers in amounts that would affect seal performance, as described in the background ('685 Patent, col. 1:58-65).
- Evidence for a Narrower Interpretation: A party arguing for a narrower interpretation (i.e., a near-total absence) would emphasize the patent's explicit exclusion of "oil-soluble alkoxylated mono- and di-amines" and "ethoxylated amines" ('685 Patent, col. 7:25-30). This focus on creating a "nitrogen-free" friction modifier package ('685 Patent, col. 2:25-27) could support an argument that the presence of any "ashless aminic" compound, including multi-functional ones like dispersants, violates the limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is alleged based on Defendant instructing its customers (motor oil companies) to combine the additive packages with base oil in a manner that creates the final infringing composition ('Compl. ¶33, ¶49). Contributory infringement is alleged on the basis that the additive packages are a material component of the invention, are especially made for this infringing use, and are not a staple article of commerce suitable for substantial non-infringing use ('Compl. ¶43-45, ¶50).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the '685 patent and its infringement "since at least 2012," and on direct notice provided by Plaintiff in June 2017, prior to the suit being filed ('Compl. ¶36, ¶37, ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the procedural history that has occurred since the complaint was filed, the primary questions for this case have shifted from claim interpretation to legal finality.
- A core issue will be one of "legal finality": With all claims of the '685 patent having been cancelled in a final, unappealed Inter Partes Review decision, the central question is what legal basis, if any, remains for Plaintiff's infringement action to proceed.
- A related question is one of "retroactive effect": Can Plaintiff recover damages for infringement that allegedly occurred prior to the IPR certificate date, even though the patent claims are now legally void? Established case law generally holds that once claims are cancelled, they are treated as if they never existed, which poses a significant barrier to the continuation of this lawsuit.
- Had the patent survived, a key question would have been one of "definitional scope": Would the term "substantially free of ashless aminic friction modifiers" be construed to exclude compositions containing nitrogen-based succinimide dispersants, or is that term limited to compounds added specifically for their friction-modifying properties?