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

Case: 20-1333 Document: 57 Page: 1 Filed: 01/21/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INFINEUM USA L.P.,
Appellant
v.
CHEVRON ORONITE COMPANY LLC,
Appellee
DREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1333
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00922.
______________________
Decided: January 21, 2021
______________________
CHRISTOPHER STRATE, Gibbons P.C., Newark, NJ, for
appellant. Also represented by DAVID E. DE LORENZI,
Case: 20-1333 Document: 57 Page: 2 Filed: 01/21/2021
2 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
SAMUEL H. MEGERDITCHIAN.
NAVEEN MODI, Paul Hastings LLP, Washington, DC,
for appellee. Also represented by STEPHEN BLAKE
KINNAIRD, IGOR VICTOR TIMOFEYEV, MICHAEL WOLFE,
DANIEL ZEILBERGER; SCOTT FREDERICK PEACHMAN, New
York, NY.
DANIEL KAZHDAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by MARY L. KELLY, THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before O’MALLEY, TARANTO, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Infineum USA L.P. appeals from the final written de-
cision of the Patent Trial and Appeal Board holding
claims 1–20 of U.S. Patent No. 6,723,685 unpatentable un-
der 35 U.S.C. § 103. The ’685 patent claims cover lubricat-
ing oil compositions and their use in internal combustion
engines. Because substantial evidence supports the
Board’s determination of obviousness, we affirm.
BACKGROUND
Lubricating oil compositions for internal combustion
engines comprise a base oil (or mixture of base oils) of lu-
bricating viscosity and additives used to improve the per-
formance characteristics of the base oil. Base oils are
comprised of basestocks classified by the American Petro-
leum Institute (API) in Groups I–V. Additive components
are generally known by their structure and properties and
may be used to inhibit corrosion and to reduce engine wear,
oil consumption, and friction loss.
Industry standards, such as those set by the Interna-
tional Lubricant Standardization and Approval Committee
Case: 20-1333 Document: 57 Page: 3 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 3
(ILSAC), set requirements for certain properties, ingredi-
ents, and performance of base oils. The ILSAC
GF-3 standard, in effect as of the filing date of the ’685 pa-
tent, set a maximum engine oil volatility of 15%. 1 A higher
viscosity index (VI) 2 reduces base oil and finished oil vola-
tility. The base oil is the primary influence on a finished
engine oil’s volatility. High VI is a feature of premium,
high-quality base oils. Though the GF-3 standard does not
recite any particular VI threshold, it was understood that
commercially available base oils would need to have a VI of
at least 95 for the engine oil to comply with the maximum
Noack volatility requirement of 15%. See J.A. 1835, 1847
Fig. 1, 2285–86. At the time of the ’685 patent’s filing, the
industry was using base oils in Groups III and IV and cer-
tain base oils in Group II in developing engine oils that
would meet the GF-3 standard. See J.A. 566.
Traditionally, anti-wear additive components con-
tained phosphorous. The GF-3 standard set a limit on the
phosphorous content of engine oils. Seeking to reduce
phosphorous content in additive components, formulators
turned to solutions such as oil-soluble molybdenum com-
pounds and organic friction modifiers to control wear and
reduce friction.
The ’685 patent, titled “Lubricating Oil Composition,”
was filed on April 5, 2002, and sought “to find a lubricating
oil composition that provides improved fuel economy bene-
fit[,] demonstrates excellent wear protection
1 The GF-3 standard measures volatility using an in-
dustry-standard Noack volatility test, which measures the
evaporative loss of lubricant oil at a high temperature.
2 VI is a measure of base oil viscosity that indicates
an oil’s change in viscosity with variations in temperature.
A high-VI oil exhibits significantly lower changes in viscos-
ity over the temperature range of use than a low-VI oil.
Case: 20-1333 Document: 57 Page: 4 Filed: 01/21/2021
4 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
characteristics, is relatively low in cost, and is free of nitro-
gen-containing friction modifiers.” ’685 patent col. 1
ll. 63–67.
Claim 1 is the sole independent claim of the ’685 pa-
tent:
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;
d) at least one organic ashless nitrogen-free friction
modifier; and
e) at least one metal dihydrocarbyl dithiophos-
phate compound, wherein said composition is sub-
stantially 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 cal-
cium detergent, molybdenum in an amount of from
about 10 ppm to about 350 ppm from the molyb-
denum compound, and phosphorus from the metal
dihydrocarbyl dithiophosphate compound in an
amount up to about 0.1 wt. %.
Id. at col. 13 ll. 47–62.
Chevron Oronite Co. filed a petition for inter partes re-
view challenging all claims of the ’685 patent as obvious
Case: 20-1333 Document: 57 Page: 5 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 5
under 35 U.S.C. § 103 over primary reference Toshikazu 3
in view of Henderson. 4
Toshikazu is a published Japanese patent application
titled “Lubricating Oil Composition for Internal Combus-
tion Engines” that discloses formulations having “excellent
wear resistance and friction characteristics.” Toshikazu
¶ 55. Toshikazu’s Examples 1–19 are inventive lubricating
oil formulations, most of which contain varying amounts of
each of the additive components claimed in the ’685 patent.
Toshikazu Tables 1–2.
Henderson is a technical paper published in 1998 and
discusses the changing requirements for engine oils as of
that time. Henderson describes an industry shift toward
higher-viscosity, lower-volatility base oils and discusses
the then-upcoming GF-3 standard, its requirements, and
its expected performance improvements to engine oils.
Relevant to this appeal, the petition challenged
claims 1–4, 6–11, and 13–20 as obvious over Toshikazu Ex-
ample 16 in view of Henderson, and challenged
claims 1–20 as obvious over Toshikazu Example 2 in view
of Henderson. 5 Oronite supported its petition with a dec-
laration from its expert, Dr. Donald Smolenski, who has
significant experience in lubricating engine oil develop-
ment and testing.
3 Japanese Pub. Pat. App. No. JP H5-279686 A (pub-
lished Oct. 26, 1993). We cite to the same certified English-
language translation of Toshikazu relied on by the Board.
See J.A. 542–52.
4 H.E. Henderson, et al., Higher Quality Base Oils
for Tomorrow’s Engine Oil Performance Categories 1–10
(SAE Tech. Paper Series, No. 982582, 1998).
5 The obviousness grounds for claims 4, 9, 16, and 17
included additional references not relevant to the issues on
appeal. See J.A. 74–76.
Case: 20-1333 Document: 57 Page: 6 Filed: 01/21/2021
6 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
Infineum did not file a preliminary response to
Oronite’s petition, and the Board instituted review of all
challenged claims on all grounds. Infineum then filed a pa-
tent owner response supported by the declaration of its ex-
pert, Dr. Jai Bansal. In addition to responding to the
merits of Oronite’s petition, Infineum’s patent owner re-
sponse argued that Dr. Smolenski was not a person of or-
dinary skill in the art because he had not worked as a
formulator, and that the Board should disregard his testi-
mony in its entirety.
In reply, Oronite argued that Dr. Smolenski was a per-
son of ordinary skill, and it further supported its reply with
the declaration of a new expert, Dr. Syed Rizvi, who has
experience in engine oil formulation. The Board permitted
Infineum to file a sur-reply, in which Infineum responded
to Oronite’s reply arguments on the merits, in addition to
arguing that the Board should disregard Oronite’s reply
and Dr. Rizvi’s testimony in their entirety. The Board de-
nied Infineum’s request to file a motion to strike the reply
and Dr. Rizvi’s testimony, but permitted the parties to file
a joint chart identifying reply arguments and evidence that
Infineum considered improper.
Relevant to this appeal, the Board issued a final writ-
ten decision holding claims 1–4, 6–11, and 13–20 obvious
over Example 16 of Toshikazu in view of Henderson and
holding claims 1–20 obvious over Example 2 of Toshikazu
in view of Henderson. Chevron Oronite Co. v. Infineum
USA L.P., IPR2018-00922, 2019 WL 5806946, at *14–15,
*17–19, *21–23 (P.T.A.B. Nov. 6, 2019) (Decision).
Infineum appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4).
DISCUSSION
On appeal, Infineum argues that the Board improperly
relied on new theories and evidence raised for the first time
in Oronite’s reply, that substantial evidence does not
Case: 20-1333 Document: 57 Page: 7 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 7
support the Board’s decision, and that the decision runs
afoul of certain constitutional provisions. We address each
set of arguments in turn.
I
Infineum first asserts that the Board improperly relied
on certain new theories and evidence that Oronite raised
for the first time in its reply. We disagree.
“Whether the Board improperly relied on new argu-
ments is reviewed de novo.” Nike, Inc. v. Adidas AG,
955 F.3d 45, 50 (Fed. Cir. 2020) (citing In re IPR Licensing,
Inc., 942 F.3d 1363, 1369 (Fed. Cir. 2019)). The IPR provi-
sions of the America Invents Act (AIA) require that a peti-
tion identify, “with particularity, each claim challenged,
the grounds on which the challenge to each claim is based,
and the evidence that supports the grounds for the chal-
lenge to each claim.” 35 U.S.C. § 312(a)(3). The regula-
tions implementing the AIA further state that “[a] reply
may only respond to arguments raised in the corresponding
opposition, patent owner preliminary response, or patent
owner response.” 37 C.F.R. § 42.23(b); see also 35 U.S.C.
§ 316(a). Because an IPR must proceed “‘[i]n accordance
with’ or ‘in conformance to’ the petition,” SAS Inst., Inc.
v. Iancu, 138 S. Ct. 1348, 1356 (2018) (alteration in origi-
nal) (quoting Oxford English Dictionary (3d ed.,
Mar. 2016), www.oed.com/view/Entry/155073), it would
“not be proper for the Board to deviate from the grounds in
the petition and raise its own obviousness theory,” Sirona
Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d
1349, 1356 (Fed. Cir. 2018).
As inter partes review is a formal adjudication, the Ad-
ministrative Procedures Act (APA) also “imposes certain
procedural requirements on the agency.” Genzyme Thera-
peutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360,
1365–66 (Fed. Cir. 2016). For example, “[i]n interpreting
the APA’s notice provisions in the context of IPR proceed-
ings, we have cautioned that ‘an agency may not change
Case: 20-1333 Document: 57 Page: 8 Filed: 01/21/2021
8 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
theories in midstream without giving respondents reason-
able notice of the change and the opportunity to present
argument under the new theory.’” Nike, 955 F.3d at 52
(first quoting SAS Inst., Inc. v. ComplementSoft, LLC,
825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other
grounds, 138 S. Ct. 1348 (2018); and then citing Genzyme,
825 F.3d at 1366).
But the AIA and APA do not uniformly preclude the
introduction of new evidence after the petition is filed in an
IPR proceeding. See Anacor Pharms., Inc. v. Iancu,
889 F.3d 1372, 1380 (Fed. Cir. 2018) (“There is, however,
no blanket prohibition against the introduction of new evi-
dence during an inter partes review proceeding.”). Rather,
“the introduction of new evidence in the course of the trial
is to be expected in inter partes review trial proceedings
and, as long as the opposing party is given notice of the
evidence and an opportunity to respond to it, the introduc-
tion of such evidence is perfectly permissible.” Genzyme,
825 F.3d at 1366.
Infineum argues that the Board erred by relying on two
new theories raised for the first time in Oronite’s reply—
first, that a skilled artisan “would select Examples 2 or 16
because they are equal to all other examples,” and second,
“that other examples from Toshikazu did not perform bet-
ter than Examples 2 or 16.” Appellant’s Br. 28; see id.
at 30–31. Contrary to Infineum’s assertions, the Board did
not err in concluding that these arguments were proper re-
buttal arguments or in relying on them in its decision.
Oronite’s reply arguments that a skilled artisan would
have understood that “all of Toshikazu’s Examples 1–19
performed similarly” and “performed significantly better
than Toshikazu’s Comparative Examples 1–5,” J.A. 1451,
responded directly to Infineum’s contentions that a skilled
artisan would not have been motivated to select Exam-
ples 2 and 16, J.A. 773, would have considered examples
other than Examples 2 and 16 “more promising for further
development,” J.A. 792, and would have understood that
Case: 20-1333 Document: 57 Page: 9 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 9
Example 16 “did not perform as well . . . as Examples 3, 5
and 7,” J.A. 793.
To the extent Infineum argues that the Board imper-
missibly “change[d] theories in midstream” in violation of
the APA, we disagree. Genzyme, 825 F.3d at 1366. The
theory of unpatentability advanced in Oronite’s petition re-
mained the same throughout the proceedings. Oronite’s re-
ply maintained the petition’s position that each of the
challenged ’685 patent claims would have been obvious
over either Toshikazu Example 16 in view of Henderson or
Toshikazu Example 2 in view of Henderson. Compare
J.A. 146 (petition noting that obviousness Grounds 1–3,
covering claims 1–4, 6–11, and 13–20, “rely on Example 16
of Toshikazu,” and that obviousness Grounds 4–6, covering
claims 1–20, “rely on Example 2 of Toshikazu”), with
J.A. 1450 (reply arguing that “Examples 16 and 2 of Toshi-
kazu, in combination with Henderson, each renders the in-
dependent claims (and others) unpatentable as obvious”).
And the Board’s decision held each of the challenged claims
obvious on those same grounds. Decision, 2019 WL
5806946, at *14–15, *17–19 (relying on Example 16 of
Toshikazu to hold obvious claims 1–4, 6–11, and 13–20); id.
at *21–23 (relying on Example 2 of Toshikazu to hold obvi-
ous claims 1–20).
Infineum’s argument that the Board’s reliance on
Dr. Rizvi’s testimony was improper appears to be tied to its
assertions that the Board impermissibly relied on new the-
ories advanced for the first time in Oronite’s reply. 6 See,
6 Infineum’s opening brief also alleges that Oronite’s
“new theories” were supported by “thirty new pieces of ev-
idence,” Appellant’s Br. 28 (emphasis omitted), some of
which Infineum identifies in a footnote, id. at 28 n.1. The
same footnote acknowledges that “Infineum sought the
Board’s permission to move to strike the Reply, Dr. Rizvi’s
Declaration,” and certain exhibits submitted with the
Case: 20-1333 Document: 57 Page: 10 Filed: 01/21/2021
10 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
e.g., Appellant’s Br. 29; Reply Br. 12 (“Oronite admits that
it tried to introduce the theory as to why [a] POSITA would
select Examples 2 and 16 for the first time in its Reply, . . .
and does not deny that this new theory was only supported
by Dr. Rizvi’s reply declaration.”); accord J.A. 2634 (argu-
ing before the Board that portions of Dr. Rizvi’s testimony
subsequently relied on by the Board “[p]resent[] a new the-
ory regarding the interpretation of the data from Toshi-
kazu”).
Like the reply arguments Infineum identifies on ap-
peal, Dr. Rizvi’s testimony was a proper rebuttal to argu-
ments raised in Infineum’s patent owner response. For
example, Infineum takes issue with the Board’s reliance on
paragraphs 35–38 of Dr. Rizvi’s declaration. See Appel-
lant’s Br. 29; see also Decision, 2019 WL 5806946, at *12
(citing J.A. 2281–82 (Rizvi Dec. ¶¶ 35–38)). Para-
graphs 35–38 merely explain, based on the state of the art,
Dr. Rizvi’s statement in paragraph 34 (which Infineum did
not challenge as improper) that “[a] person of ordinary skill
in the art would not have found the differences between
coefficient of friction or wear values reported in Toshikazu
for Examples 1–19 to be important.” J.A. 2280. And
Dr. Rizvi’s assertion of unimportant differences responded
to Dr. Bansal’s assertion that a skilled artisan would “pur-
sue formulations based on Examples 3, 5, and 7 and not on
Example 16.” Id. (quoting J.A. 908). Further, the portions
of Dr. Rizvi’s declaration Infineum highlights on appeal
rely principally on record evidence, not new evidence. E.g.,
J.A. 2290–91, 2313–15. We discern no impropriety in the
challenged portions of Dr. Rizvi’s declaration.
Additionally, the Board’s reliance on Dr. Rizvi’s testi-
mony did not violate the APA because Infineum had ample
reply, and filed a motion to exclude certain reply exhibits.
Id. Infineum has not appealed the Board’s denials of its
motion to strike and motion to exclude.
Case: 20-1333 Document: 57 Page: 11 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 11
notice and opportunity to respond to Dr. Rizvi’s testimony.
The Board permitted Infineum to depose Dr. Rizvi after re-
ceiving his reply declaration, and then to file a sur-reply,
in addition to allowing the parties to file a joint chart iden-
tifying the reply arguments and evidence Infineum be-
lieved were improper. 7 Infineum availed itself of both of
these opportunities to respond. For example, Infineum’s
sur-reply argued that the Board should disregard Oronite’s
reply and Dr. Rizvi’s testimony in their entirety,
J.A. 2344–47, in addition to responding extensively to
Dr. Rizvi’s testimony on the merits, J.A. 2347–65. Accord-
ingly, the Board afforded Infineum the process it was due
under the APA.
We thus conclude that the Board did not err in consid-
ering Oronite’s reply arguments or Dr. Rizvi’s testimony.
II
Infineum also challenges several aspects of Board’s de-
cision as unsupported by substantial evidence. We find
none of Infineum’s challenges persuasive.
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and its
fact findings for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence
is “such relevant evidence as a reasonable mind might ac-
cept as adequate to support a conclusion.” OSI Pharms.,
LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019)
(quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938)). Obviousness is a question of law based on under-
lying findings of fact. Id. at 1382 (quoting In re Kubin,
561 F.3d 1351, 1355 (Fed. Cir. 2009)). “An obviousness
7 To the extent that Infineum contends that the
Board was categorically prohibited from relying on
Dr. Rizvi’s testimony, our precedent forecloses any such ar-
gument. See Anacor, 889 F.3d at 1380.
Case: 20-1333 Document: 57 Page: 12 Filed: 01/21/2021
12 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
determination requires finding that a person of ordinary
skill in the art would have been motivated to combine or
modify the teachings in the prior art and would have had a
reasonable expectation of success in doing so.” Id. (quoting
Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286,
1291 (Fed. Cir. 2018)). “Whether a person of ordinary skill
in the art would have been motivated to modify or combine
teachings in the prior art, and whether he would have had
a reasonable expectation of success, are questions of fact.”
Id. (quoting Regents of Univ. of Cal., 903 F.3d at 1291).
Infineum’s assertion that the Board erred in giving any
credit to Oronite’s “unqualified expert,” Dr. Smolenski,
lacks merit. It merely reprises the same argument Infi-
neum essentially raised before the Board—that Dr. Smo-
lenski’s testimony is not admissible because he is not
sufficiently qualified. Much like district court evidentiary
rulings, the Board’s evidentiary determinations, such as its
decision not to exclude Dr. Smolenski’s testimony, are re-
viewed for abuse of discretion. See Belden Inc. v. Berk-Tek
LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015) (citing Chen
v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir. 2003)); Sun-
dance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
1363 (Fed. Cir. 2006) (holding that the district court
abused its discretion in permitting a witness not qualified
as an expert in the pertinent art to testify as an expert re-
garding issues of noninfringement or invalidity); see also
Hologic, Inc. v. Minerva Surgical, Inc., 764 F. App’x 873,
881 n.8 (Fed. Cir. 2019) (“We find no abuse of discretion in
the Board’s determination that Dr. Mirabile had enough
knowledge and skill to testify about this topic.”). We also
“defer to the Board’s findings concerning the credibility of
expert witnesses.” Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (citing Velander v. Garner, 348 F.3d 1359,
1371 (Fed. Cir. 2003)); see also Shoes by Firebug LLC
v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 1372
(Fed. Cir. 2020) (“The Board was within its discretion to
weigh the credibility of expert testimony.” (citing Yorkey,
Case: 20-1333 Document: 57 Page: 13 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 13
601 F.3d at 1284)). Abuse of discretion occurs if the ruling:
“(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
based on an erroneous conclusion of law; (3) rests on clearly
erroneous fact findings; or (4) follows from a record that
contains no evidence on which the Board could rationally
base its decision.” Bouchard, 347 F.3d at 1307 (citing Ger-
ritsen v. Shirai, 979 F.2d 1524, 1529 (Fed. Cir. 1992)).
Here, Infineum does not challenge the Board’s deter-
mination, grounded in the ’685 patent specification and the
prior art of record, that “one of ordinary skill in the art
could have experience in either formulating an engine oil
or testing such oils in internal combustion engines.” Deci-
sion, 2019 WL 5806946, at *5. Rather, Infineum argues
that Dr. Smolenski’s “experience in a tangential aspect of
testing motor oils, did not qualify him to testify as to how
[a] POSITA would make or formulate a new motor oil.” Ap-
pellant’s Br. 45–46 (citation omitted). The Board reasona-
bly considered and rejected this argument when it
determined that “Dr. Smolenski has sufficient education
and experience of a specialized nature to assist the Board
in understanding the evidence of record.” Decision,
2019 WL 5806946, at *5; see Hologic, 764 F. App’x at 880
n.6 (applying abuse of discretion standard to the Board’s
rejection of a patent owner’s argument that an expert
lacked sufficient experience with the relevant technology
after finding no error in the Board’s determination of the
level of ordinary skill in the art). Infineum offers no basis
to contradict this conclusion, or to call into question the
Board’s statement that it accounted for “Dr. Smolenski’s
lack of benchtop formulating experience” in “determining
the weight to give his testimony.” Decision, 2019 WL
5806946, at *5. Accordingly, we discern no abuse of discre-
tion in the Board’s consideration of or reliance on Dr. Smo-
lenski’s testimony.
No more compelling is Infineum’s argument that the
Board’s decision is unsupported by substantial evidence be-
cause the Board relied on Dr. Smolenski’s “hindsight
Case: 20-1333 Document: 57 Page: 14 Filed: 01/21/2021
14 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
analysis” to select Examples 2 and 16 from Toshikazu,
when “other examples from Toshikazu performed better.”
Appellant’s Br. 41–42. We have rejected the notion that a
patent challenger seeking to demonstrate obviousness
must prove that a person of ordinary skill would have been
motivated to select one prior art disclosure over another.
Novartis Pharms. Corp. v. W.-Ward Pharms. Int’l Ltd.,
923 F.3d 1051, 1059 (Fed. Cir. 2019) (“It is thus improper
to require West-Ward to prove that a person of ordinary
skill would have selected everolimus over other prior art
treatment methods.”); see also In re Fulton, 391 F.3d 1195,
1200 (Fed. Cir. 2004) (“[O]ur case law does not require that
a particular combination must be the preferred, or the most
desirable, combination described in the prior art in order
to provide motivation for the current invention.”). In any
event, Infineum’s argument amounts to a disagreement
with how the Board weighed the evidence. The Board was
within its province to credit Dr. Rizvi’s testimony that “one
of ordinary skill in the art [would] have selected any of the
example lubricating oils of Toshikazu for further develop-
ment.” Decision, 2019 WL 5806946, at *12 (discussing
J.A. 2280–82 (Rizvi Dec. ¶¶ 33–38) and J.A. 174–76 (Smo-
lenski Dec. ¶¶ 44–47)). The Board reasonably credited
Dr. Rizvi’s explanation that “benchtop testing rigs, such as
the shell-type four ball test employed in Toshikazu, have a
certain amount of repeatability associated with their data,”
and that the variance in the coefficients of friction reported
in Toshikazu’s Examples 1–19 was within the repeatability
specified by the applicable American Society for Testing
and Materials standard. J.A. 2280–82; see Decision,
2019 WL 5806946, at *12.
Similarly unavailing is Infineum’s apparent assertion
that the Board’s decision is not supported by substantial
evidence because “[t]he overwhelming evidence . . . showed
that [a] POSITA would not presume that modifying addi-
tive components and base oils would necessarily work or
improve the performance of a formulation.” Appellant’s
Case: 20-1333 Document: 57 Page: 15 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 15
Br. 47. The Board reasonably relied on primary reference
Toshikazu’s express teachings to conclude that a skilled ar-
tisan “would have had a reasonable expectation of success
in using a synthetic base oil that imparts an overall viscos-
ity index of 95 or above to the lubricating composition of
Example 16 of Toshikazu.” Decision, 2019 WL 5806946,
at *8 (citations omitted); see id. (“Toshikazu expressly indi-
cates that ‘[t]here is no particular limitation on the base oil
used in the present invention, and it is possible to use var-
ious types of mineral oils, synthetic oils, and so on that are
known in the art.’” (alteration in original) (quoting Toshi-
kazu ¶ 12)); id. (“Toshikazu reports essentially identical re-
sults when the additive package of Example 16 is used with
a mineral base oil, a synthetic base oil, or a mineral oil/high
pressure hydrogenated base oil.” (citing Toshikazu Exam-
ples 3, 16, and 17)). The general need for routine compati-
bility testing of any modified formulation does not
undermine Toshikazu’s teachings that different base oils
could be used.
Moreover, contrary to Infineum’s contentions, the
Board’s rationale for holding claim 12 obvious is not inter-
nally inconsistent. Infineum identifies a purported contra-
diction between: (1) the Board’s conclusion that a skilled
artisan “would have found it obvious to increase the
amount of aliphatic acid glyceride,” an organic ashless ni-
trogen-free friction modifier, “in Example 2 to at least
‘about 0.25 wt. %’ in order to save on costs,” id. at *22 (cit-
ing J.A. 140); and (2) the Board’s finding with respect to
claim 1, from which claim 12 depends, that notwithstand-
ing that “mineral oils are cheaper than synthetic oils,” a
skilled artisan “would have sought to substitute the min-
eral oil of Example 2 with . . . a synthetic oil . . . in order to
comply with the GF-3 standard and to achieve the benefits
of higher quality oils discussed in Henderson,” id. at *20
(citing J.A. 127–28, 131–32). Appellant’s Br. 48–49. To the
extent that Infineum argues that the Board’s first finding
amounts to a conclusion that a skilled artisan would have
Case: 20-1333 Document: 57 Page: 16 Filed: 01/21/2021
16 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
settled for decreased performance to reduce costs, the
Board considered this argument and reasonably rejected it.
Decision, 2019 WL 5806946, at *22 (“Patent Owner’s argu-
ments based on an alleged decrease in performance from
such a change are not persuasive because we have found
that one of ordinary skill in the art would not have differ-
entiated the performance results reported for Exam-
ples 1–19 of Toshikazu.”).
Indeed, the Board credited the petition’s argument that
cost would motivate a skilled artisan to increase the
amount of aliphatic acid glyceride in Toshikazu’s Exam-
ple 2 in view of the fact that it was “less expensive than
other anti-wear compounds, including molybdenum,” id.
(citing J.A. 139–40 (petition)), and the fact that “other ex-
amples in Toshikazu indicate that the amount of organic
ashless nitrogen-free friction modifier may be increased
without significantly affecting the performance of the lu-
bricating compositions,” id. (first citing J.A. 139–40; and
then citing J.A. 1471–72 (reply)); see also Toshikazu Ta-
ble 1 (reflecting similar friction coefficients and wear track
diameters for Examples 2 and 4 notwithstanding differ-
ences in aliphatic acid glyceride content). It is reasonable
for a skilled artisan to be driven more by cost when effects
on performance are minor or nonexistent. The Board’s con-
clusion that claim 12 would have been obvious is supported
by substantial evidence.
Substantial evidence also supports the Board’s decision
to give “limited weight” to Infineum’s unexpected results
evidence with respect to fuel economy. Decision, 2019 WL
5806946, at *14. Infineum argued before the Board that
because a skilled artisan would have expected formulations
with large amounts of molybdenum to provide superior fuel
economy performance, the ’685 patent’s demonstration of
superior fuel economy test results for the claimed formula-
tions containing a low amount of molybdenum in combina-
tion with an organic ashless nitrogen-free friction modifier
provided “truly unexpected” results. Id. at *13 (quoting
Case: 20-1333 Document: 57 Page: 17 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 17
J.A. 825). Relying on Allergan, Inc. v. Sandoz Inc.,
726 F.3d 1286, 1293 (Fed. Cir. 2013), the Board concluded
that Infineum’s unexpected results evidence was not mean-
ingful in view of the fact that Toshikazu “provide[d] a
strong reason to use low levels of molybdenum in combina-
tion with an organic ashless nitrogen-free friction modi-
fier.” Decision, 2019 WL 5806946, at *14. Toshikazu
discloses “excellent wear resistance and friction character-
istics” of formulations containing low levels of molybdenum
in combination with an organic ashless nitrogen-free fric-
tion modifier. Toshikazu ¶ 55. Toshikazu’s formulations
containing combinations of these two additives “further im-
proved” the “wear resistance and the friction characteris-
tics” “in comparison with the cases where either one is
solely used.” Id. ¶ 24. Considering Infineum’s “evidence
that this same combination of additives also provides an
additional benefit with respect to fuel economy,” the Board
reasoned that it did “not alter the fact that the advantages
of the combination of low molybdenum and an organic ash-
less nitrogen-free friction modifier were known in the art.”
Decision, 2019 WL 5806946, at *14 (citing J.A. 1474).
Infineum does not meaningfully challenge this analy-
sis, offering only an unsupported argument that “there was
no evidence in this IPR that showed a clear motivation to
combine.” Appellant’s Br. 39. This assertion does not call
into question the Board’s amply supported finding that
Toshikazu taught advantages of the combination of low lev-
els of molybdenum and an organic ashless nitrogen-free
friction modifier independent of any improved fuel econ-
omy performance, or that Toshikazu would provide a
skilled artisan with “a strong reason to use” a formulation
with this combination. Decision, 2019 WL 5806946, at *14;
see Toshikazu ¶¶ 1, 9, 24, 55. Nor does Infineum meaning-
fully engage with the Board’s finding that a skilled artisan
would have a motivation, separate from increased fuel
economy, to combine Toshikazu and Henderson to meet the
then-applicable GF-3 industry standard. Decision,
Case: 20-1333 Document: 57 Page: 18 Filed: 01/21/2021
18 INFINEUM USA L.P. v. CHEVRON ORONITE CO.
2019 WL 5806946, at *9. Accordingly, substantial evidence
supports the Board’s decision finding that Infineum’s un-
expected results evidence did not outweigh the evidence of
obviousness in this case. See Allergan, 726 F.3d at 1293
(concluding that evidence that a particular combination
solved additional problems was insufficient to outweigh
other evidence of obviousness in view of a separate motiva-
tion to make the combination).
III
Finally, our precedent forecloses Infineum’s constitu-
tional challenges to the Board’s decision.
Infineum requests “vacatur and remand to the Board
with instructions to dismiss the IPR” because under Ar-
threx, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1329
(Fed. Cir. 2019), “the [Administrative Patent Judges
(APJs)] who presided over this IPR were unconstitutionally
appointed.” Appellant’s Br. 49. In Infineum’s view, the
remedy this court adopted in Arthrex did not cure the Ap-
pointments Clause violation, and “there is no permissible
interpretation of the statute.” Id. Infineum implicitly
acknowledges, however, that we must apply Arthrex, which
forecloses Infineum’s argument. Arthrex, 941 F.3d at 1337
(“This as-applied severance is the narrowest possible mod-
ification to the scheme Congress created and cures the con-
stitutional violation in the same manner as Free Enterprise
Fund [v. Public Co. Accounting Oversight Board, 561 U.S.
477 (2010)] and Intercollegiate [Broadcasting System, Inc.
v. Copyright Royalty Board, 684 F.3d 1332 (D.C. Cir.
2012)]. Title 5’s removal protections cannot be constitu-
tionally applied to APJs, so we sever that application of the
statute.”); see Appellant’s Br. 52 (“Infineum presents this
challenge in order to preserve its rights in the event that
these issues are resolved by the Supreme Court.”).
Our precedent also undermines Infineum’s alternative
argument that vacatur and remand to a new panel of Ad-
ministrative Patent Judges is warranted because the
Case: 20-1333 Document: 57 Page: 19 Filed: 01/21/2021
INFINEUM USA L.P. v. CHEVRON ORONITE CO. 19
Board issued its final written decision prior to issuance of
the mandate in Arthrex. See Appellant’s Br. 52–53; Cater-
pillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d
1342 (Fed. Cir. 2020). Infineum acknowledges that “in Cat-
erpillar[,] this [c]ourt found that where an inter partes re-
view argument occurred before the Arthrex opinion issued
and the inter partes review’s final written decision issued
post-Arthrex, the patent holder was not entitled to vacatur
and remand for a new hearing.” Reply Br. 26 (citing Cat-
erpillar, 957 F.3d at 1343). In Caterpillar, as here, the
Board’s final written decision issued before the mandate
issued in Arthrex. Applying Caterpillar and Arthrex to this
case, there is no Appointments Clause violation because
the Board’s final written decision issued after Arthrex was
decided. See Caterpillar, 957 F.3d at 1342–43; Arthrex,
941 F.3d at 1340.
Finally, our precedent also forecloses Infineum’s argu-
ment that the Board’s retroactive application of IPR pro-
ceedings to invalidate the ’685 patent claims violates the
Takings and Due Process Clauses of the U.S. Constitution.
See Appellant’s Br. 54–59. Infineum appears to
acknowledge as much, abandoning its Takings and Due
Process Clause arguments in its reply brief. In any event,
Celgene Corp. v. Peter held “that the retroactive application
of IPR proceedings to pre-AIA patents is not an unconsti-
tutional taking under the Fifth Amendment.” 931 F.3d
1342, 1362 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 132
(2020).
CONCLUSION
We have considered the parties’ remaining arguments
and do not find them persuasive. Accordingly, we affirm
the Board’s decision.
AFFIRMED