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

1. Case Identification

• 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 Composition
• Brief Description: The ’685 patent discloses lubricating oil compositions for internal combustion engines designed to provide improved fuel economy, wear protection, and compatibility with fluoroelastomer engine seals. The compositions comprise an oil of lubricating viscosity with a specified viscosity index (≥95) and Noack volatility (≤15 wt. %), 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.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 6-8, 10-11, and 13-20 under 35 U.S.C. §102

• Prior Art Relied Upon: Abraham (Patent 6,777,378).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Abraham disclosed each element of the challenged claims. Specifically, Examples 1-3 of Abraham described ILSAC GF-4 lubricating oil compositions that inherently meet the limitations of independent claim 1.
    • The compositions in Abraham were 5W-30 grade, used a Group II base oil, and were designed to meet ILSAC GF-4 standards, which Petitioner asserted would be understood by a Person of Ordinary Skill in the Art (POSITA) to require a viscosity index of at least 95 and a Noack volatility of 15 wt. % or less.
    • Abraham explicitly disclosed the required additives: overbased calcium sulfonate detergents (meeting the TBN range of claim 4), an oil-soluble molybdenum dithiocarbamate (a type of organo-molybdenum compound), glycerol monooleate (an organic ashless nitrogen-free ester friction modifier), and zinc dialkyl dithiophosphate (a metal dihydrocarbyl dithiophosphate).
    • Petitioner contended that the concentration ranges for calcium, molybdenum, and phosphorus recited in the claims were also met. Abraham’s examples contained 250 ppm of molybdenum (within the 10-350 ppm range of claim 1) and 0.05 wt. % phosphorus (within the ranges of claims 15-17).
    • The method claims (18-20) were argued to be anticipated because Abraham disclosed the compositions for use in internal combustion engines to achieve improved fuel economy, anti-wear protection, and seal compatibility, which are the intended results of the claimed methods.
  • Key Aspects: The core of this ground was that Abraham’s disclosed examples of next-generation (ILSAC GF-4) motor oils inherently contained every feature of the ’685 patent's composition, rendering the claims anticipated.

Ground 2: Obviousness of Claims 5 and 9 under 35 U.S.C. §103

• Prior Art Relied Upon: Abraham (Patent 6,777,378) and Walker (WO 99/60080).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims reciting specific molybdenum characteristics. Claim 5 requires a molybdenum concentration of 30-200 ppm, and claim 9 requires a trinuclear molybdenum compound. Petitioner argued that Abraham disclosed a composition with 250 ppm molybdenum, slightly above the claimed range. Walker taught that preferred compositions for fuel economy contain 50-350 ppm of molybdenum. For claim 9, Walker explicitly disclosed the use of trinuclear molybdenum compounds to improve fuel economy and wear resistance in low-phosphorus lubricants.
  • Motivation to Combine: A POSITA would have been motivated to modify Abraham's formulation based on Walker's teachings to optimize performance and cost. Walker's disclosure of a preferred 50-350 ppm molybdenum range would have motivated a POSITA to reduce the 250 ppm level in Abraham to a level within the claimed 30-200 ppm range, as this was a known effective range. A POSITA would also have been motivated to substitute Abraham’s molybdenum compound with the trinuclear molybdenum compound taught by Walker to achieve the known benefits of that specific structure.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because lubricant formulation was a predictable art involving the routine optimization of known components. Walker expressly taught that its preferred molybdenum concentration range provided fuel economy benefits, ensuring success in achieving a functional lubricant.

Ground 3: Obviousness of Claim 12 under 35 U.S.C. §103

• Prior Art Relied Upon: Abraham (Patent 6,777,378) alone or in view of Moon (a 1995 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 12, which requires the organic ashless nitrogen-free friction modifier to be present in an amount of 0.25 wt. % to 2.0 wt. %. Abraham’s Example 1 disclosed this modifier (glycerol monooleate, or GMO) at 0.20 wt. %, just below the claimed range. Moon investigated the effects of different friction modifiers, including GMO, in fully-formulated Group III base oil compositions.
  • Motivation to Combine: Petitioner argued that a POSITA would have been motivated to increase the amount of GMO in Abraham’s formulation for two reasons. First, as a matter of routine optimization, a POSITA would have adjusted the concentration of a known friction modifier to find the optimal performance level, and a small increase from 0.20 wt. % into the claimed range would be an obvious modification. Second, Moon taught that GMO was more effective at reducing friction than molybdenum-based modifiers (MoDTC). A POSITA would therefore have been motivated to increase the amount of the more effective and less expensive GMO modifier taught by Abraham, guided by Moon's teachings.
  • Expectation of Success: Success was expected because increasing the concentration of a known friction modifier would predictably lead to a further reduction in friction, a well-understood principle in the art.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution was proper because the grounds presented were substantially different from those considered during the original prosecution. The primary reference, Abraham, and the secondary reference, Moon, were not previously considered by the Examiner.
• Petitioner also noted that it was filing two other concurrent IPR petitions against the ’685 patent but asserted they were not redundant. It was argued that each petition addressed the claims in a different way (e.g., using an anticipatory reference under §102(e) in this petition versus obviousness grounds based on §102(b) art in others), justifying institution of all three.

5. Relief Requested

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