Chevron Oronite Co LLC v. Infineum USA LP

1. Case Identification

• Case #: IPR2018-00924
• Patent #: 6,723,685
• Filed: April 16, 2018
• Petitioner(s): Chevron Oronite Company LLC
• Patent Owner(s): Infineum USA L.P.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Lubricating Oil Compositions
• Brief Description: The ’685 patent discloses lubricating oil compositions for internal combustion engines. The compositions comprise a specific combination of a base oil with a defined viscosity index and volatility, and an additive package including a calcium detergent, an oil-soluble molybdenum compound, an organic ashless nitrogen-free friction modifier, and a metal dihydrocarbyl dithiophosphate compound, intended to improve fuel economy and wear protection.

3. Grounds for Unpatentability

Ground 1: Anticipation by Abraham - Claims 1-4, 6-8, 10-11, and 13-20 are anticipated by Abraham under 35 U.S.C. § 102(e).

• Prior Art Relied Upon: Abraham (Patent 6,777,378).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the exemplary ILSAC GF-4 compositions in Abraham explicitly teach every limitation of the challenged claims. Abraham's examples allegedly disclose a composition using a Group II base oil and a viscosity modifier formulated to a 5W-30 grade, which a POSITA would understand has a viscosity index well above 95 and a Noack volatility below 15 wt. %. Petitioner asserted that Abraham’s additive package explicitly includes each required component: an overbased calcium sulfonate detergent (with TBN values of 300 and 400, meeting claim 4); an oil-soluble molybdenum dithiocarbamate (meeting claims 6-8); glycerol monooleate, which is an ester and an organic ashless nitrogen-free friction modifier (meeting claims 13-14); and zinc dialkyl dithiophosphate (meeting claim 11). The composition is also substantially free of ashless aminic friction modifiers. Petitioner further argued that the concentrations of calcium (calculated to be 0.10 wt. %), molybdenum (250 ppm), and phosphorus (explicitly 0.05 wt. %) disclosed in Abraham’s examples fall squarely within the ranges recited in independent claim 1 and dependent claims 15-17.

Ground 2: Obviousness over Abraham and Walker - Claims 5 and 9 are obvious over Abraham in view of Walker.

• Prior Art Relied Upon: Abraham (Patent 6,777,378) and Walker (WO 99/60080).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on claim 5, which recites a molybdenum range of 30-200 ppm, and claim 9, which requires a trinuclear molybdenum compound. Petitioner contended that Abraham's disclosure of 250 ppm molybdenum is close to this range. Walker was cited as teaching a preferred molybdenum range of 50-350 ppm, which substantially overlaps the range in claim 5 and establishes a prima facie case of obviousness. For claim 9, Petitioner argued that while Abraham discloses a molybdenum dialkyldithiocarbamate, Walker explicitly teaches the use of trinuclear molybdenum compounds, providing a general formula for them as effective friction modifiers in similar lubricating oils.
  • Motivation to Combine: A POSITA would be motivated to modify Abraham's formulation to reduce costs. Petitioner, citing admissions from the ’685 patent’s prosecution history, asserted that oil-soluble molybdenum compounds are expensive relative to other additives. Walker provided a known, effective range for reducing molybdenum content, making it an obvious path for optimization. For claim 9, a POSITA would have been motivated to substitute Abraham’s molybdenum compound with the known trinuclear variant taught by Walker, as both were recognized as effective friction modifiers, and using known alternative structures was a common practice.
  • Expectation of Success: Given Walker's clear guidance on preferred molybdenum concentration ranges and specific trinuclear structures for improving fuel economy in low-phosphorus lubricants, a POSITA would have had a high expectation of success in making these modifications to Abraham's base composition without undue experimentation.

Ground 3: Obviousness over Abraham and/or Moon - Claim 12 is obvious over Abraham alone and/or in view of Moon.

• Prior Art Relied Upon: Abraham (Patent 6,777,378) and Moon (a 1995 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 12 requires the organic ashless nitrogen-free friction modifier to be present in an amount of 0.25 to 2.0 wt. %. Abraham's Example 1 discloses this modifier, glycerol monooleate (GMO), at 0.20 wt. %, falling just below the claimed range. The Moon article investigated lubricant formulations with Group III base oil and an additive package similar to the challenged claims, directly comparing the effectiveness of GMO and a molybdenum-based friction modifier (MoDTC).
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to slightly increase the amount of GMO in Abraham’s formulation as part of routine optimization to find the best balance of performance and cost. More specifically, Moon provided a strong technical motivation by teaching that GMO is more effective at reducing the coefficient of friction than MoDTC, especially at higher temperatures. A POSITA seeking to improve fuel economy or reduce costs by lowering the amount of expensive molybdenum would have been directly motivated by Moon to increase the concentration of the less expensive and more effective GMO.
  • Expectation of Success: Because Moon demonstrated the superior friction-reducing properties of GMO in a very similar lubricating oil environment (Group III base oil, ZDDP, calcium sulfonate), a POSITA would reasonably expect that slightly increasing the GMO concentration from 0.20 wt.% into the claimed range in Abraham's formulation would lead to a predictable improvement in frictional properties.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 6,723,685 as unpatentable.