PTAB

IPR2018-00923

Chevron Oronite Company LLC v. Infineum USA L.P.

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1. Case Identification

2. Patent Overview

  • Title: Lubricating Oil Composition
  • Brief Description: The ’685 patent describes a lubricating oil composition for internal combustion engines formulated to provide improved fuel economy, wear protection, and compatibility with fluoroelastomer engine seals. The composition comprises a specific base oil combined with an additive package including a calcium detergent, an organo-molybdenum compound, a nitrogen-free friction modifier, and a phosphorus-containing anti-wear agent, with the composition being substantially free of ashless aminic friction modifiers.

3. Grounds for Unpatentability

Ground 1: Obviousness over Waddoups, Walker, and Hertz - Claims 1-20 are obvious over Waddoups in view of Walker and Hertz.

  • Prior Art Relied Upon: Waddoups (Patent 6,074,993), Walker (International Publication No. WO 99/60080), and Hertz (SAE Technical Paper 930993).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the combination of references taught every limitation of the challenged claims. Waddoups was presented as the primary reference, disclosing the foundational lubricating oil composition. Petitioner asserted Waddoups taught a base oil meeting the claimed viscosity index (≥95) and Noack volatility (<15 wt. %) requirements. Waddoups also taught the key additive components required by independent claim 1: at least one calcium detergent, an oil-soluble molybdenum compound, an organic ashless nitrogen-free friction modifier (e.g., glycerol oleate), and a metal dihydrocarbyldithiophosphate anti-wear agent (specifically, zinc dihydrocarbyldithiophosphate, or ZDDP).

      Petitioner acknowledged that Waddoups’ exemplary formulations contained an aminic friction modifier and featured molybdenum and phosphorus concentrations that did not explicitly align with all dependent claims. To bridge these gaps, Petitioner argued a person of ordinary skill in the art (POSITA) would look to Walker and Hertz. Walker was cited for its teachings on optimizing lubricants for fuel economy and catalyst durability by using specific, lower concentrations of molybdenum (e.g., 50 to 350 ppm) and phosphorus (e.g., ≤0.08%, preferably ≤0.05%). Hertz was cited for its explicit teaching that nitrogen-containing compounds, including amines common in lubricants, were known to react with and degrade fluoroelastomer engine seals.

    • Motivation to Combine: The petition asserted that a POSITA would begin with the comprehensive formulation taught in Waddoups to achieve desirable fuel economy and wear protection. To address the well-known industry problems of catalyst poisoning from phosphorus and to further optimize fuel economy, a POSITA would be motivated to combine Waddoups with Walker's teachings. This would lead the POSITA to modify the Waddoups formulation by reducing the phosphorus and molybdenum concentrations to fall within Walker's preferred and effective ranges (e.g., ~240 ppm molybdenum and ≤0.05% phosphorus).

      Furthermore, after recognizing that the Waddoups example composition included an alkoxylated amine (an aminic friction modifier), a POSITA—guided by the explicit warnings in Hertz about amine-induced seal degradation—would be motivated to remove this problematic component. This modification would improve seal compatibility and render the final composition "substantially free of ashless aminic friction modifiers," as required by claim 1.

    • Expectation of Success: Petitioner argued a POSITA would have a clear and reasonable expectation of success in making this combination. Walker provided test data demonstrating that its proposed molybdenum and phosphorus levels were effective at reducing friction and wear. Hertz identified a known problem (seal degradation) with a known cause (amines) and a known solution (removal of the aminic component). Because Waddoups already disclosed suitable and effective nitrogen-free friction modifier alternatives (e.g., polyol esters), substituting the problematic aminic modifier would predictably improve seal compatibility without sacrificing performance. The overall combination was framed as a straightforward application of known solutions to solve well-understood problems in the art.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution of the IPR was proper and not precluded by the ’685 patent’s prosecution history. It was asserted that the proposed obviousness ground is substantially different from arguments considered by the Examiner. The Examiner never considered Waddoups in combination with Walker and Hertz; Waddoups was only considered for anticipation, and the key secondary references were never applied. Petitioner also contended that this petition is not redundant with other concurrently filed petitions, as they rely on different prior art and legal theories to challenge the claims.

5. Relief Requested

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