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

Trials@uspto.gov 	Paper 9
Tel: 571-272-7822 	Entered: November 7, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
CHEVRON ORONITE COMPANY LLC,
Petitioner,
v.
INFINEUM USA L.P.,
Patent Owner.
Case IPR2018-00923
Patent 6,723,685 B2
Before JON B. TORNQUIST, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.
TORNQUIST, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

IPR2018-00923
Patent 6,723,685 B2
2
I. 	INTRODUCTION
Chevron Oronite Company LLC (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1–20 of U.S.
Patent No. 6,723,685 B2 (Ex. 1001, “the ’685 patent”). Infineum USA L.P.
(“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6,
“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314. For the reasons discussed below, we deny the
Petition and do not institute an inter partes review.
A. Related Proceedings
The parties identify Infineum USA LP v. Chevron Oronite Company
LLC, Case No. 1-18-cv-00323 (D. Del) as a related matter. Pet. 2;
Paper 4, 1. The parties also note that the ’685 patent is at issue in
IPR2018-00922 and IPR2018-00924. Paper 4, 1; Pet. 2.
B. The ’685 Patent
The ’685 patent is directed to lubricating oil compositions that
“exhibit simultaneously improved low temperature valve train wear
performance, excellent compatibility with fluoroelastomer materials
commonly used for seals in modern internal combustion engines, and
improved fuel economy properties.” Ex. 1001, 1:4–9.
The ’685 patent explains that lubricating oil compositions for
combustion engines typically contain a base oil of lubricating viscosity, as
well as various additives used “to improve detergency, to reduce engine
wear, to provide stability against heat and oxidation, to reduce oil
consumption, to inhibit corrosion, to act as a dispersant, and to reduce
friction loss.” Id. at 1:12–19. The ’685 patent further explains that “[s]ome

IPR2018-00923
Patent 6,723,685 B2
3
additives provide multiple benefits, such as dispersant-viscosity modifiers,”
whereas other additives improve one characteristic of the lubricating oil
while adversely affecting one or more other characteristics. Id. at 1:19–22.
Thus, according to the ’685 patent, “to provide lubricating oil having
optimal overall performance, it is necessary to characterize and understand
all the effects” of available additives and “carefully balance the additive
content of the lubricant.” Id. at 1:23–26.
The ’685 patent discloses that when “small amounts of one or more
oil soluble molybdenum compounds,” an ashless, organic, nitrogen-free
friction modifier, zinc dihydrocarbyl dithiophosphate (ZDDP), and a
calcium detergent are added to a base oil having a viscosity of at least 95 and
a Noack volatility 1 of less than 15%, a low-cost lubricating composition with
improved fuel economy, excellent wear protection, and reduced adverse
effects on fluoroelastomer seals is provided. Id. at 2:1–8, 2:47–55.
C. Illustrative Claim
Petitioner challenges claims 1–20 of the ’685 patent. Independent
claim 1 is illustrative of the challenged claims and is reproduced below:
1. A lubricating oil composition comprising:
a) an oil of lubricating viscosity having a viscosity index of at
least 95;
b) at least one calcium detergent;
c) at least one oil soluble molybdenum compound;
1 Noack volatility measures the evaporative loss of lubricant oil at high
temperature. Ex. 1001, 2:53–55; Ex. 1002 ¶ 23. A lower Noack volatility is
associated with a less volatile oil. Ex. 1002 ¶ 23.

IPR2018-00923
Patent 6,723,685 B2
4
d) at least one organic ashless nitrogen-free friction modifier;
and
e) at least one metal dihydrocarbyl dithiophosphate compound,
wherein said composition is substantially free of ashless aminic
friction modifiers, has a Noack volatility of about 15 wt. % or
less, from about 0.05 to 0.6 wt. % calcium from the calcium
detergent, molybdenum in an amount of from about 10 ppm to
about 350 ppm from the molybdenum compound, and
phosphorus from the metal dihydrocarbyl dithiophosphate
compound in an amount up to about 0.1 wt. %.
Ex. 1001, 13:47–63.
D. The Asserted Ground of Unpatentability
Petitioner contends claims 1–20 of the ’685 patent would have been
obvious over the combined disclosures of Waddoups, 2 Walker, 3 and Hertz. 4
Pet. 3–4, 19–59. In support of its obviousness arguments, Petitioner relies
upon the declaration testimony of Donald J. Smolenski, Ph.D. (Ex. 1002).
II. 	ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
(2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
(upholding the use of the broadest reasonable interpretation standard).
Claim 1 requires that the lubricating composition comprise “at least
one calcium detergent” and contain “from about 0.05 to 0.6 wt. % calcium
2 US 6,074,993, issued June 13, 2000 (Ex. 1005).
3 WO 99/60080, published November 25, 1999 (Ex. 1007).
4 Daniel L. Hertz, Jr., Elastomers in Automotive Fuels, Oils & Fluids at
High Temperatures, SAE Technical Paper Series 930993, 1–4 (1993)
(Ex. 1008).

IPR2018-00923
Patent 6,723,685 B2
5
from the calcium detergent.” Ex. 1001, 13:50, 13:57–58. Petitioner does
not expressly construe these claim terms, but its arguments assume that
when more than one calcium detergent is used in the lubricating
composition, it is only necessary to show that one calcium detergent
provides the composition with “from about 0.05 to 0.6 wt. % calcium.”
Pet. 27–28. We disagree.
The term “at least one calcium detergent” in claim 1 encompasses the
use of multiple calcium detergents. The subsequent use of the term “the” in
the phrase “from about 0.05 to 0.6 wt. % calcium from the calcium
detergent” does not change this plural meaning. 	See Baldwin Graphic Sys.,
Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“The subsequent
use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same
claim term does not change the general plural rule, but simply reinvokes the
non-singular meaning.”). Thus, on its face, claim 1 requires that the calcium
from all the calcium detergents be considered when determining the level of
calcium imparted by “the calcium detergent.” The specification of the
’685 patent is consistent with this understanding, disclosing that “[i]n the
present invention, one or more calcium-based detergents are used in an
amount introducing from about 0.05 to about 0.6 wt. % calcium into the
composition.” Ex. 1001, 7:66–8:1.
In view of the foregoing, we construe claim 1 of the ’685 patent to
require that the calcium provided by all the calcium detergents be “from
about 0.05 to 0.6 wt. %.”

IPR2018-00923
Patent 6,723,685 B2
6
B. Asserted Obviousness in view of Waddoups, Walker, and Hertz
Petitioner contends the subject matter of claims 1–20 would have been
obvious over the combined disclosures of Waddoups, Walker, and Hertz.
Pet. 19–59.
1. Waddoups
Waddoups discloses lubricating oil compositions that “exhibit
improvements in fuel economy properties and excellent wet clutch friction
performance when used as a universal oil.” Ex. 1005, 1:5–9. According to
Waddoups, fuel economy properties can be improved by “using two
different types of molybdenum additives in combination with an organic
friction modifier, a calcium or magnesium overbased detergent and a zinc
dihydrocarbyl dithiophosphate.” Id. at 1:24–28. The base oil in this
composition “preferably should have a viscosity index of at least 95,
preferably at least 100,” and the organic friction modifiers are preferably
“amides of polyamines.” Id. at 2:35–37, 8:33–34.
Waddoups discloses eight oils that were evaluated for coefficient of
friction properties. Id. at 12:25–26, Table 1. The contents of these eight oils
are shown in Table 1, which is reproduced below:

IPR2018-00923
Patent 6,723,685 B2
7
As shown in Table 1, Oils 1 and 3 of Waddoups both contain 1.5 wt. %
overbased calcium sulfonate and 0.8 wt. % neutral calcium phenate and
sulfonate. Id.
2. Walker
Walker discloses lubricating compositions containing “a lubricating
base stock, a dispersant, a metal dihydrocarbyl dithiophosphate, and either a
copper-containing compound or a molybdenum-containing compound.”
Ex. 1007, 2:12–15. 5 Walker reports that these compositions contain “at
5 We refer to the original page numbers of Walker, not the page numbers
Petitioner added.

IPR2018-00923
Patent 6,723,685 B2
8
most 0.1 % by weight of phosphorous” and preferably at most 0.05 wt. %
phosphorous. Id. at 2:15–16, 2:26–29.
When a molybdenum compound is present, Walker reports that it is
used at a level of 50 to 350 ppm, and especially about 250 ppm. Id.
at 10:31–11:2. Examples of molybdenum compounds that may be used in
Walker include “molybdenum salts of inorganic and organic acids” and
molybdenum compounds that “comprise a trinuclear molybdenum core.” Id.
at 11:7–8, 12:1–3.
3. Hertz
Hertz discusses the use of elastomers in automobiles and various
degradation mechanisms that may impair these products. Ex. 1008, 1. 6
With respect to engine lubricants, Hertz reports that “[t]he prime source of
attack on elastomers are the various antioxidants added, typically a primary-
secondary combination of zinc dithropropionate (ZnDTP) and nonylated
diphenylamine (base).” Id. at 2. According to Hertz, the amine component
of these compounds can not only crosslink a standard acrylonitrile-butadiene
elastomer but also dehydrofluorinate any vinylidene fluoride containing
fluoropolymer. Id.
4. Analysis
As noted above, claim 1 requires that the total calcium imparted by
the “at least one calcium detergent” is “from about 0.05 to 0.6 wt. %.”
Ex. 1001, 13:50, 13:57–58. Petitioner asserts that Waddoups discloses this
limitation “in at least two ways.” Pet. 27.
6 We refer to the original page numbers of Hertz, not the page numbers
Petitioner added.

IPR2018-00923
Patent 6,723,685 B2
9
First, Petitioner asserts Waddoups discloses that “the amount of
overbased calcium or magnesium detergents used can vary broadly, but
typically will be from about 0.5 to about 5 wt. %, based on the total weight
of the composition.” Id. (quoting Ex. 1005, 4:41–44). Second, Petitioner
calculates that the 1.5 wt. % overbased calcium sulfonate detergent in Oils 1
and 3 of Waddoups would provide the lubricating composition with
0.18 wt. % calcium, which falls within the claimed range of 0.05 to 0.6
wt. %. 	Id. at 27–28 (citing Ex. 1005, Table 1; Ex. 1002 ¶¶ 71–72).
We are not persuaded by these arguments. First, Petitioner does not
adequately explain why Waddoups’ disclosure of using about 0.5 to
about 5 wt. % of overbased calcium or magnesium detergents would have
motivated one of ordinary skill in the art to maintain the total calcium
imparted by all the detergents in the composition within the range of “about
0.05 to 0.6 wt. %,” as recited in claim 1. Second, Petitioner’s calculations
with respect to Oils 1 and 3 of Waddoups fail to consider the neutral calcium
phenate and sulfonate detergents in these compositions. Id.; see Ex. 1005,
9:61–65, 10:5–9 (identifying neutral calcium phenates and sulfonates as
detergents). Given these deficiencies, Petitioner has not demonstrated
sufficiently that the calcium imparted by the calcium detergents in Oils 1
and 3 of Waddoups is “from about 0.05 to 0.6 wt. %,” or that one of
ordinary skill in the art would have been motivated to maintain the total
calcium imparted by all the calcium detergents in the lubricants within this
range. 	See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016) (“In an IPR, the petitioner has the burden from the outset to show with
particularity why the patent it challenges is unpatentable.”) (citing 35 U.S.C.

IPR2018-00923
Patent 6,723,685 B2
10
§ 312 (a)(3)). Thus, Petitioner has not demonstrated a reasonable likelihood
of prevailing with respect to independent claim 1 of the ’685 patent.
Claims 2 and 5–17 are composition claims that depend directly or
indirectly from claim 1. Ex. 1001, 13:64–67, 14:6–51. Claims 18–20 are
method claims that require the use of the lubricating oil of claim 1 in an
internal combustion engine. 	Id. at 14:52–65. Petitioner’s arguments and
evidence with respect to these claims do not cure the deficiencies noted
above with respect to claim 1. Accordingly, Petitioner has not demonstrated
a reasonable likelihood of prevailing with respect to claims 2 and 5–20.
Claim 3 depends from claim 1 and further requires that “said calcium
detergent is an overbased calcium sulfonate.” Id. at 14:1–2. Claim 4
depends from claim 3 and further requires that “said overbased calcium
sulfonate has a total base number of between about 150 to 450.” Id. at 14:3–
5. On this record, dependent claims 3 and 4 can reasonably be read to limit
the “at least one calcium detergent” of claim 1 to “an overbased calcium
sulfonate” (claim 3) having “a total base number between about 150 to 450”
(claim 4). As discussed above, Petitioner adequately demonstrates that
Oils 1 and 3 of Waddoups contain 0.18 wt. % calcium from the 300 TBN
overbased calcium sulfonate detergent. Pet. 27–28 (citing Ex. 1005,
Table 1; Ex. 1002 ¶¶ 71–72).
Even when a petitioner demonstrates a reasonable likelihood of
prevailing with respect to one or more claims, however, institution of review
remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018);
Harmonic, 815 F.3d at 1367 (“First of all, the PTO is permitted, but never
compelled, to institute an IPR proceeding.”). Office guidance issued June 5,
2018, explains that the Board may consider the number of claims and

IPR2018-00923
Patent 6,723,685 B2
11
grounds that meet the reasonable likelihood standard when deciding whether
to institute inter partes review under 35 U.S.C. § 314(a). SAS Q&As, part D,
Effect of SAS on future challenges that could be denied for statutory reasons
(June 5, 2018). 7 Here, Petitioner demonstrates, at most, a reasonable
likelihood of prevailing with respect to two dependent claims out of a total
of twenty challenged claims. On this record, instituting a trial with respect
to all twenty claims based on evidence and arguments directed to dependent
claims 3 and 4 is not an efficient use of the Board’s time and resources.
Thus, we do not institute an inter partes review.
III. 	ORDER
It is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied
and no inter partes review is instituted.
7 Available at:
https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf.

IPR2018-00923
Patent 6,723,685 B2
12
PETITIONER:
Naveen Modi
Scott Peachman
Daniel Zeilberger
Michael Wolfe
PAUL HASTINGS, LLP
PH-Oronite-Infineum-IPR@paulhastings.com
PATENT OWNER:
Christopher Strate
Kulsoom Hasan
cstrate@gibbonslaw.com
khasan@gibbonslaw.com