PTAB

IPR2018-00922

Chevron Oronite Co LLC v. Infineum USA LP

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1. Case Identification

2. Patent Overview

  • Title: Lubricating Oil Composition
  • Brief Description: The ’685 patent describes lubricating oil compositions for internal combustion engines. The compositions comprise a base oil with a specified minimum viscosity index and maximum volatility, combined with an additive package including a calcium detergent, an oil-soluble molybdenum compound, an organic ashless nitrogen-free friction modifier, and a metal dihydrocarbyl dithiophosphate anti-wear agent. The patent asserts these compositions provide improved fuel economy, wear protection, and compatibility with engine seals.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6-8, 10-11, 13-15, and 18-20 are obvious over Toshikazu and Henderson.

  • Prior Art Relied Upon: Toshikazu (Japanese Application # JP1993/279686) and Henderson (a 1998 SAE Technical Paper).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Toshikazu, particularly its Example 16, disclosed a lubricating oil composition containing all the additive components required by independent claim 1: an overbased calcium sulfonate detergent, a molybdenum dithiocarbamate (MoDTC) compound, an organic nitrogen-free friction modifier (glycerides), and a zinc dithiophosphate (ZDDP) anti-wear agent. Toshikazu also taught that the composition was substantially free of ashless aminic friction modifiers. The only elements not explicitly disclosed in Toshikazu’s Example 16 were the base oil’s viscosity index of at least 95 and a Noack volatility of 15% or less. Henderson was alleged to supply these missing elements, teaching that emerging industry standards (ILSAC GF-3) were driving a shift to higher quality base oils (API Group II+ and III) with high viscosity indexes (>100) and low Noack volatility (<15%) to improve fuel economy and performance.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Henderson with the composition of Toshikazu's Example 16. Henderson explicitly linked the use of high viscosity index, low volatility base oils to the very benefits sought by lubricant formulators—improved fuel economy, oxidation stability, and deposit control. A POSITA would have been motivated to adopt these improved base oils, which were becoming an industry standard, into a known, effective additive package like that in Toshikazu to create a superior, state-of-the-art lubricant.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining improved base oils with a standard additive package was a well-known formulation strategy. Henderson confirmed that such base oils were compatible with typical additive packages and led to predictable performance improvements.

Ground 2: Claim 4 is obvious over Toshikazu, Henderson, and Schlicht.

  • Prior Art Relied Upon: Toshikazu (Japanese Application # JP1993/279686), Henderson (a 1998 SAE Technical Paper), and Schlicht (Patent 3,365,396).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1, adding Schlicht to teach the specific limitation of claim 4: an overbased calcium sulfonate with a total base number (TBN) between 150 and 450. While Toshikazu disclosed an overbased calcium sulfonate, it did not specify the TBN. Schlicht was cited for its specific disclosure of methods for preparing overbased calcium sulfonates with high TBNs (e.g., 193 to 311), squarely within the range claimed in the ’685 patent.
    • Motivation to Combine: Schlicht taught that its high-TBN sulfonates provided excellent detergency and were effective in preventing sludge buildup in combustion engines. A POSITA formulating the Toshikazu composition would have been motivated to select a detergent with a known, effective TBN for this purpose. Using an overbased calcium sulfonate from Schlicht was presented as a simple substitution of one known detergent for another to achieve a well-understood benefit.

Ground 3: Claims 9, 16, and 17 are obvious over Toshikazu, Henderson, and Walker.

  • Prior Art Relied Upon: Toshikazu (Japanese Application # JP1993/279686), Henderson (a 1998 SAE Technical Paper), and Walker (WO 99/60080).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon Ground 1 by adding Walker to teach the limitations of claims 9, 16, and 17. Claim 9 required a specific trinuclear molybdenum compound. Walker was cited for disclosing such trinuclear molybdenum compounds for use in lubricants. Claims 16 and 17 required the phosphorus content from the ZDDP to be limited to specific low levels (0.025-0.075 wt.% and 0.025-0.05 wt.%, respectively). Walker was cited for explicitly teaching the desirability of minimizing phosphorus to avoid poisoning catalytic converters and for disclosing lubricant examples with phosphorus content as low as 0.05%.
    • Motivation to Combine: A POSITA would combine Walker's teachings for two key reasons. First, Walker taught that its trinuclear molybdenum compounds were effective friction modifiers, making them a suitable substitute for the molybdenum compound in Toshikazu. Second, the motivation to reduce phosphorus was strong due to well-documented catalyst poisoning issues and emerging ILSAC GF-4 standards targeting lower phosphorus levels. Walker provided an explicit reason and a clear path to reduce the phosphorus in the Toshikazu formulation to the claimed levels while maintaining performance.
    • Expectation of Success: Walker’s own examples demonstrated that reducing phosphorus to 0.05% in a full lubricant formulation still resulted in good friction and wear performance, giving a POSITA a clear expectation of success.

  • Additional Grounds: Petitioner asserted parallel obviousness challenges in Grounds 4, 5, and 6. These grounds relied on the same combinations of prior art (Toshikazu/Henderson, Toshikazu/Henderson/Schlicht, and Toshikazu/Henderson/Walker, respectively) but were based on Example 2 of Toshikazu instead of Example 16.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should institute review and not exercise discretionary denial. The grounds presented were argued to differ substantially from those raised during prosecution, as the primary reference, Toshikazu, was not previously considered by the Examiner in the manner proposed. Petitioner also contended that the petition was not redundant with two concurrently filed petitions, as those petitions relied on different primary prior art and legal theories to address the claims. The use of different examples from Toshikazu (Example 16 vs. Example 2) across the various grounds was presented as a further reason for institution, allowing for robust analysis should the Patent Owner challenge the examples differently.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’685 patent as unpatentable.