`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`CHEVRON ORONITE COMPANY LLC
`Petitioner
`
`v.
`
`INFINEUM USA L.P.
`Patent Owner
`
`
`
`
`U.S. Patent No. 6,723,685
`
`
`
`
`
`
`DECLARATION OF DONALD J. SMOLENSKI, PH.D.
`IN SUPPORT OF PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 6,723,685
`
`
`
`
`
`
`
`
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`
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`ORONITE EXHIBIT 1002
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`Page 1 of 84
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`Declaration Of Donald J. Smolenski, Ph.D.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS .................. 1 
`II. 
`III.  MATERIALS REVIEWED ............................................................................ 4 
`IV.  PERSON OF ORDINARY SKILL IN THE ART .......................................... 5 
`BACKGROUND OF LUBRICATING OIL TECHNOLOGY, THE
`V. 
`’685 PATENT AND PROSECUTION HISTORY, AND THE PRIOR
`ART ................................................................................................................. 6 
`A. 
`Lubricating Oil Compositions as of the Relevant Timeframe .............. 6 
`1. 
`Industry Standard’s Setting Organizations ................................. 6 
`2. 
`Base Oils ..................................................................................... 8 
`3. 
`Lubricating Oil Additives ......................................................... 10 
`B.  Overview of the ’685 Patent ................................................................ 12 
`1. 
`Base Oil of Lubricating Oil Viscosity ...................................... 13 
`2. 
`Lubricating Oil Additives ......................................................... 13 
`C.  Overview of the ’685 Patent Prosecution History .............................. 18 
`D. 
`Abraham .............................................................................................. 20 
`E.  Walker.................................................................................................. 22 
`F.  Moon .................................................................................................... 24 
`VI.  THE PRIOR ART TAUGHT OR SUGGESTED THE CLAIMED
`LUBRICATING OIL COMPOSITIONS AND METHODS IN THE
`’685 PATENT ................................................................................................ 25 
`Abraham Disclosed all of the Elements of Claims 1-4, 6-8, 10-
`A. 
`11, and 13-20 of the ’685 Patent ......................................................... 25 
`1. 
`Claim 1 ...................................................................................... 25 
`2. 
`Claim 2 ...................................................................................... 42 
`3. 
`Claim 3 ...................................................................................... 43 
`4. 
`Claim 4 ...................................................................................... 43 
`5. 
`Claims 6, 7, and 8...................................................................... 44 
`6. 
`Claim 10 .................................................................................... 50 
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`B. 
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`Declaration Of Donald J. Smolenski, Ph.D.
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`Claim 11 .................................................................................... 52 
`7. 
`Claims 13 and 14....................................................................... 54 
`8. 
`Claims 15, 16, and 17 ............................................................... 55 
`9. 
`10.  Claim 18 .................................................................................... 59 
`11.  Claim 19 .................................................................................... 62 
`12.  Claim 20 .................................................................................... 65 
`Abraham and Walker Taught or Suggested all of the Elements
`of Claims 5 and 9 ................................................................................. 68 
`1. 
`Claim 5 ...................................................................................... 68 
`2. 
`Claim 9 ...................................................................................... 70 
`Abraham Alone and/or in Combination With Moon Taught or
`Suggested all of the Elements of Claim 12 ......................................... 72 
`1. 
`Claim 12 .................................................................................... 72 
`VII.  CLAIM 1-20 DO NOT DEMONSTRATE UNEXPECTED
`RESULTS ...................................................................................................... 79 
`VIII.  CONCLUSION .............................................................................................. 81 
`
`
`C. 
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`ii
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`Declaration Of Donald J. Smolenski, Ph.D.
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`I, Donald J. Smolenski, declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by counsel for the Petitioner as an independent
`
`expert consultant in this proceeding before the United States Patent and Trademark
`
`Office, which I understand involves U.S. Patent No. 6,723,685 (“the ’685 patent”)
`
`(Ex. 1001.)1
`
`2.
`
`I am being compensated at my normal consulting rate of $200 per
`
`hour for my work.
`
`3. My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this or
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`any other proceeding. I have no other interest in this proceeding.
`
`4.
`
`I have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’685 Patent. My opinions are set
`
`forth below.
`
`II.
`
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS
`5.
`I am an independent consultant. All of my opinions stated in this
`
`declaration are based on my own personal knowledge and professional judgment.
`
`
`1 Where appropriate, I refer to exhibits that I understand to be attached to the
`
`petition for inter partes review of the ’685 patent.
`
`1
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`Declaration Of Donald J. Smolenski, Ph.D.
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`In forming my opinions, I have relied on my knowledge and experience in the
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`development and testing of lubricating oil compositions for automotive
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`applications.
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`6.
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`I am over 18 years of age and, if called upon to do so, I would be
`
`competent to testify as to the matters set forth herein. I understand that a copy of
`
`my current curriculum vitae (Ex. 1003), which details my education and
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`professional and academic experience, is being submitted in this proceeding. The
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`following provides an overview of some of my experience that is relevant to the
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`matters set forth in this declaration.
`
`7.
`
`I have significant experience and familiarity with lubricating engine
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`oil development and testing. Prior to becoming an independent consultant, I was
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`the OEM Liaison Manager for Evonik Oil Additives USA, Inc. from 2012 until
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`2017. My responsibilities at Evonik included interacting with major OEMs in the
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`fuels and lubricants industry and managing fuel economy projects.
`
`8.
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`Prior to Evonik I worked at General Motors Company from 1980 to
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`2012. At General Motors I spent numerous years at the GM Research Fuels and
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`Lubricants Department where I investigated topics such as engine oil testing and
`
`lubricant development. While at General Motors I drafted, revised, and presented
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`the first global engine oil standard (GF-1) for the progenitor of the International
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`Lubricant Standardization and Approval Committee (“ILSAC”). Also while at
`
`2
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`Declaration Of Donald J. Smolenski, Ph.D.
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`General Motors I developed, along with Stephen Bergin, the ASTM Sequence IIIE
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`Engine Oil Oxidation and Wear Test. I was also responsible for development,
`
`testing, and production of the engine oil life monitor, which is now standard on
`
`almost all GM North America vehicles.
`
`9.
`
`I have been a member of many learned societies, including the Society
`
`of Automotive Engineers (SAE), the American Society for Testing and Materials
`
`(ASTM), the Society of Tribologists and Lubrication Engineers (STLE), and the
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`Engineering Society of Detroit (ESD). I have also held various titles in learned
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`societies. From 2016 to 2017, I have served as the Chair of the SAE Fuels and
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`Lubricants Committee. From 1993 to 1994 I served as the President of the ESD,
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`for which I was previously a member of the Board of Directors from 1989-1995.
`
`10.
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`I was awarded a B.S. in Chemistry, and an M.S.E. and Ph.D., both in
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`Chemical Engineering, from Wayne State University in Detroit, Michigan.
`
`11.
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`I have received various awards from General Motors, the SAE, the
`
`ESD, and Wayne State University College of Engineering throughout my career.
`
`In 2008, I was made a SAE Fellow. In 2013, I was inducted into the Wayne State
`
`University College of Engineering Hall of Fame.
`
`12.
`
`I am not an attorney and offer no legal opinions, but in the course of
`
`my work, I have had experience studying and analyzing patents and patent claims
`
`3
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`from the perspective of a person of ordinary skill in the art (which I define in
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`Declaration Of Donald J. Smolenski, Ph.D.
`
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`Section IV below).
`
`III. MATERIALS REVIEWED
`13. The opinions in this Declaration are based on the documents I
`
`reviewed, my knowledge and experience, and professional judgment. In forming
`
`my opinions expressed in this Declaration, I have reviewed the documents and
`
`other materials referred to herein.2
`
`14. My opinions have been guided by my understanding of how one of
`
`ordinary skill in the art would have understood the claims and the specification of
`
`the ’685 patent at the time of the alleged invention, which I have been asked to
`
`initially consider as of the 2002 timeframe (including April 5, 2002, the filing date
`
`of U.S. Application No. 10/117,679 (“the ’679 application”), which issued as the
`
`’685 patent and is the earliest filing date to which the ’685 patent claims priority).
`
`My opinions reflect how one of ordinary skill in the art would have understood the
`
`’685 patent, the prior art to that patent, and the state of the art at the time of the
`
`alleged invention.
`
`
`2 I understand that the documents and materials I reviewed and refer to herein are
`
`being submitted as exhibits attached to the petition for Inter Partes Review of the
`
`’685 patent.
`
`4
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`Declaration Of Donald J. Smolenski, Ph.D.
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`15. Based on my review of the materials in view of my experience and
`
`expertise, it is my opinion that the references identified below taught a lubricating
`
`oil composition with all of the elements recited in claims 1-20 of the ’685 patent,
`
`as I discuss in detail below.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`16.
`I have been asked to assume that the relevant timeframe for the
`
`alleged inventions of the ’685 patent is 2002, including the time period up to and
`
`including April 5, 2002, the filing date of the earliest application (the ’679
`
`application) to which the ’685 patent claims priority (referred to herein as “the
`
`relevant timeframe”). I applied that understanding in my analysis.
`
`17.
`
`I am familiar with the level of ordinary skill in the art with respect to
`
`the technology disclosed and claimed in the ’685 patent during the relevant
`
`timeframe. Based on my review of the ’685 patent, the technology, the educational
`
`level and experience of active workers in the field, the types of problems faced by
`
`professionals in the field, the solutions found to those problems, the sophistication
`
`of the technology in the field, and drawing on my own experience, I believe one of
`
`ordinary skill in the art would have had an undergraduate degree in a relevant field
`
`(e.g., Mechanical Engineering, Materials Science Engineering, Chemical
`
`Engineering, or Chemistry) with three to five years of experience with formulating
`
`and/or testing engine lubricating oil compositions or a graduate degree in a
`
`5
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`Declaration Of Donald J. Smolenski, Ph.D.
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`relevant field with one to three years of experience with formulating and/or testing
`
`engine lubricating oil compositions. All of my opinions in this declaration are
`
`from the perspective of one of ordinary skill in the art as I have defined it here.
`
`My opinions expressed in this declaration would be the same if this definition was
`
`altered to some extent to account for a slightly greater or lesser level of skill in the
`
`art, at least because of the clear prior art disclosures discussed herein.
`
`V. BACKGROUND OF LUBRICATING OIL TECHNOLOGY, THE ’685
`PATENT AND PROSECUTION HISTORY, AND THE PRIOR ART
`A. Lubricating Oil Compositions as of the Relevant Timeframe
`18. As of the relevant timeframe, it was well known to those of ordinary
`
`skill in the art that lubricating oil compositions typically contained a base oil (also
`
`referred to in the field as a base stock) to which various additive ingredients were
`
`added. (Ex. 1006, 1; Ex. 1009, 441-42.) Certain properties of the base oil, such as
`
`viscosity index (“VI”) and Noack volatility, were often dictated by standards set by
`
`industry groups. The inclusion and concentration of lubricating oil additives in
`
`lubricating oil compositions, including detergents, friction modifiers, and antiwear
`
`agents, also followed standard industry practices.
`
`1.
`Industry Standard’s Setting Organizations
`19. As an initial matter, as of the relevant timeframe and continuing
`
`today, certain properties, ingredients, and performance of lubricating oil
`
`compositions on the market typically fall within certain standards set by industry
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`Declaration Of Donald J. Smolenski, Ph.D.
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`groups in the automotive engineering and chemical fields. These industry
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`organizations include the Society of Automotive Engineers (“SAE”), the
`
`International Lubricant Standardization and Approval Committee (“ILSAC”), the
`
`American Petroleum Institute (“API”), and the American Society for Testing and
`
`Materials (“ASTM”).
`
`20. Periodically standards-setting organizations implement and update
`
`certain standards for lubricating oil compositions used in, for example, passenger
`
`automobiles and heavy duty engine oils. These industry standards ensure that
`
`lubricating oil performance meets the requirements of evolving engine designs and
`
`performance conditions. Of particular importance here are the ILSAC GF-3 and
`
`ILSAC GF-4 performance standards. As discussed below, work on both the
`
`ILSAC GF-3 and ILSAC GF-4 performance standards began prior to the relevant
`
`timeframe. As lubricating oil suppliers prepared to meet the ILSAC GF-3
`
`standards prior to their implementation in 2000,3 the changes to these standards
`
`and the implication of these changes were documented in industry publications.
`
`(Ex. 1006.) The proposed ILSAC GF-4 performance standards were also known
`
`
`3 The ILSAC GF-3 performance standards were finalized on October 12, 2000 and
`
`implemented shortly thereafter. (Ex. 1016.)
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`before the relevant timeframe and scheduled for implementation in April 2003.4
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`(Ex. 1014, 1.) The pressure within the industry to commercialize lubricating oils
`
`to meet the upcoming ILSAC GF-4 performance standards was documented. (Id.)
`
`21. As discussed further below, the claims of the ’685 patent recite
`
`viscosity requirements, Noack volatility values, and phosphorus content limits that
`
`were required by the ILSAC GF-3 performance standards. (Ex. 1016, 594-597.)
`
`The claims of the ’685 patent also recite limitations on the amount of phosphorus
`
`content and improvements in fuel economy and fuel economy retention properties
`
`that were expected to be required by the ILSAC GF-4 performance standards. (Ex.
`
`1014, 1.)
`
`2.
`Base Oils
`22. The type of base oil used in a lubricating oil composition was
`
`understood to have been the most significant factor that determined the viscosity
`
`and volatility of the overall lubricating oil composition. (Ex. 1006, 1-2; Ex. 1009,
`
`442, 451.) One of ordinary skill in the art understood that one measure of base oil
`
`viscosity, VI, measured the change of oil viscosity with variations in temperature.
`
`
`4 It was believed at the relevant timeframe that the ILSAC GF-4 performance
`
`standards would be implemented in April 2003 (Ex. 1014, 1), however they were
`
`actually finalized on June 1, 2004 and implemented shortly thereafter. (Ex. 1017.)
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`Declaration Of Donald J. Smolenski, Ph.D.
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`(Ex. 1009, 449-50). High VI base oil exhibited significantly lower changes in
`
`viscosity over the temperature range of use, whereas lower VI base oils exhibited
`
`greater variations in viscosity as temperature changes. (Ex. 1009, 449-50.)
`
`23. A person of ordinary skill in the art understood that one measure of a
`
`base oil’s volatility was the Noack volatility test (also known as the ASTM D5800
`
`test). (Ex. 1006, 2.) The Noack volatility test measured the evaporative loss of
`
`lubricant oil at high temperature according to an industry procedure. A lower
`
`Noack volatility was associated with a less volatile oil (i.e., less oil will evaporate.)
`
`One of ordinary skill in the art understood that “[s]ince additive components are
`
`usually volatility neutral, the primary influence on engine oil volatility is from the
`
`base oil.” (Id.) Typically, the relationship between lubricating oil viscosity and
`
`volatility was such that the higher the VI the lower the Noack volatility, i.e., high
`
`viscosity base oils are typically less volatile.
`
`24. The proposed ILSAC GF-3 performance requirements called for oils
`
`with increased VI values and reduced Noack volatility compared to prior
`
`standards. (Id.) Thus, during the relevant timeframe, the state of the art in the
`
`lubricating oil field was such that “[a]ll new North American investments have
`
`been designed towards producing API Group II and Group III base oils since their
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`qualities provide the key features in meeting tomorrow’s automotive oil needs.”
`
`(Id.)
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`Declaration Of Donald J. Smolenski, Ph.D.
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`25. API Group II+ oils had viscosity indexes of 100-120 and API Group
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`III base oils had viscosity indexes of greater than 120. (Id.) The ILSAC GF-3
`
`performance requirements also included a mandatory Noack volatility maximum
`
`requirement of 15%. (Id. at 2, 10, Figure 1 (showing the ILSAC GF-3 maximum
`
`Noack volatility of 15%).) API Group II+ and API Group III base oils typically
`
`had Noack volatility below the proposed 15% Noack volatility limit. (Id. at 8,
`
`Table 4 (showing API Group III Base Oils with Noack evaporative losses of 10.94
`
`%, 11.32%, and 11.94% ); 9, Table 8 (showing an API Group II+ Base Oil with
`
`Noack evaporative losses of 13.4%).)
`
`3.
`Lubricating Oil Additives
`26. As of 2002, additives were commonly added to lubricating oil
`
`compositions to improve lubricating performance and reduce engine wear. In
`
`formulating a lubricating oil composition, one of ordinary skill in the art would add
`
`detergents, friction modifiers (both metal-based and organic), and antiwear and
`
`antioxidant agents to the composition. Specifically, calcium detergents,
`
`molybdenum-based friction modifiers, ashless organic nitrogen-free friction
`
`modifiers, and phosphorus antiwear agents were all commonly used additives long
`
`before the relevant timeframe.
`
`27. Although additives generally improved engine performance and wear,
`
`certain additives were known to cause damage to engine components over time.
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`Declaration Of Donald J. Smolenski, Ph.D.
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`One of ordinary skill in the art would have known to balance the need for good
`
`lubrication and low engine wear with potential damage caused by additives to
`
`other engine components.
`
`28. For example, it was important for “engine oil to be fully compatible
`
`with the automobile’s catalytic systems.” (Ex. 1010, 708.) Phosphorus in antiwear
`
`and antioxidant agents (e.g., zinc dialkyldithiophosphate), however, was “viewed
`
`as a catalyst poison,” so it was known that “its reduction [in concentration] may
`
`prove helpful in maintaining catalyst durability.” (Id.) As part of the upcoming
`
`ILSAC GF-4 performance standards, the ILSAC by the relevant timeframe had
`
`identified a “primary GF-4 need” of reducing “the effects of poising of catalyst and
`
`emission system components to meet 2004 model year emissions limits.” (Ex.
`
`1014, 1). Also discussed was a “chemical limit on phosphorus – an additive
`
`known to poison catalysts – by reducing it from GF-3’s level of 0.10 percent mass
`
`to between 0.05 percent and 0.08 percent.” (Id.) As of April 2002, “work [was]
`
`underway in earnest on the next upgrade of passenger car motor oils” and the
`
`“pressure to commercialize a new engine oil in sync with the 2004 tightening of
`
`emissions limits [was] inexorable.” (Ex. 1014, 1.)
`
`29. Nitrogen-containing compounds in engine oils, such as amines, were
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`known to react with elastomer seals in automotive engines. (Ex. 1008, 2.) To
`
`prevent seal damage caused by lubricating oil exposure, one of ordinary skill in the
`
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`Declaration Of Donald J. Smolenski, Ph.D.
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`art would have minimized the amount of, or eliminated entirely, nitrogen-
`
`containing additives, such as nitrogen-containing friction modifiers. (Id.)
`
`B. Overview of the ’685 Patent
`30. The ’685 patent discloses and claims a general “lubricating oil
`
`composition.” (Ex. 1001, Title Page.) In particular, the ’685 patent discloses and
`
`claims lubricating oil compositions that contain a base oil to which several
`
`common lubricating oil additives have been added. (See, e.g., id. at 1:15-26, 2:14-
`
`29.) Independent claim 1 recites:
`
`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 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. %.
`
`12
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`Declaration Of Donald J. Smolenski, Ph.D.
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`1.
`Base Oil of Lubricating Oil Viscosity
`31. The ’685 patent often refers to the base oil as an “oil of lubricating
`
`viscosity.” (Id. at 1:12-13.) The ’685 patent explains that “[l]ubricating oil
`
`compositions used to lubricate internal combustion engines contain base oil of
`
`lubricating viscosity, or a mixture of such oils, and additives used to improve the
`
`performance characteristics of the oil.” (Id. at 1:11-14.) The ’685 patent states
`
`that the base oil can be “Group I, Group II, or Group III base stocks or base oil
`
`blends of the aforementioned base stocks provided that the viscosity of the base oil
`
`or base oil blend is at least 95 and allows for the formulation of a lubricating oil
`
`composition having a Noack volatility, measured by determining the evaporative
`
`loss in mass percent of an oil after 1 hour at 250° C. according to the procedure of
`
`ASTM D5880,5 of less than 15%.” (Id. at 2:46-54.)
`
`2.
`Lubricating Oil Additives
`In addition to the base oil, the lubricating oil compositions of the ’685
`
`32.
`
`patent also contain several common additives, which according to the ’685 patent
`
`improve engine performance, including reduced friction, antiwear effects, and
`
`better fuel economy. (See, e.g., id. at 1:15-26, 2:14-29.) As the ’685 patent
`
`
`5 The ’685 patent incorrectly refers to the test for Noack volatility as ASTM
`
`D5880. The correct test for Noack Volatility is ASTM D5800. (Ex. 1016, 596.)
`
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`explains, these additives and their functions were known as of the relevant
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`Declaration Of Donald J. Smolenski, Ph.D.
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`
`timeframe.
`
`a)
`
`Calcium Detergents
`
`33. The ’685 patent states that “[m]etal-containing or ash-forming
`
`detergents function both as detergents to reduce or remove deposits and as acid
`
`neutralizers or rust inhibitors, thereby reducing wear and corrosion and extending
`
`engine life.” (Id. at 7:35-38.) The ’685 patent states that “[k]nown detergents
`
`include oil-based neutral or overbased sulfonates . . . of a metal, particularly . . .
`
`calcium.” (Id. at 7:53-58.) The ’685 patent states that oil soluble organo-
`
`molybdenum compounds have “friction modifying and/or anti-wear properties in
`
`lubricating oil compositions.” (Id. at 3:37-38; see also id. at 1:30-44.) The ’685
`
`patent states that organic ashless nitrogen-free friction modifiers were also known
`
`to reduce friction when added to lubricating oil compositions. (Id. at 6:61-7:6.)
`
`The ’685 patent states that metal dihydrocarbyl dithiophosphates, particularly zinc
`
`dihydrocarbyl dithiophosphates, were known antiwear agents for lubricating oil
`
`compositions. (Id. at 8:13-18.)
`
`34. The ’685 patent also discloses and claims certain concentration ranges
`
`for these additives, but contains no indication that any specific concentration range
`
`provides any lubricant performance advantages. The ’685 patent discloses “a
`
`calcium detergent in an amount introducing from about 0.05 to about 0.6 wt. %
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`calcium into the composition” (Id. at 2:20-21, Abstract, 7:66-8:2), and all of the
`
`recited examples containing 0.19 wt. % calcium. (Id. at 10:45-11:10 (Table 1),
`
`11:36-67 (Table 3).)
`
`b) Molybdenum Compounds
`
`35. For molybdenum compounds, the ’685 patent recites preferred ranges
`
`of “10 ppm to 350 ppm” and “from about 30 ppm to about 200 ppm” of
`
`molybdenum. (Id. at 6:40-46.) Notably, the upper concentration limit of 350 ppm
`
`is shared with prior art disclosures disclosed by the specification. (See, e.g., id. at
`
`1:42-44 (“To provide antiwear effects, molybdenum compounds are generally
`
`added in amounts introducing from about 350 ppm up to 2,000 ppm of
`
`molybdenum into the oil.”); id. at 1:49-56 (stating that U.S. Patent No. 6,300,291
`
`disclosed a “lubricating oil composition [in which t]he molybdenum compound
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`was used in an amount providing the formulated lubricant with up to 350 ppm of
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`molybdenum.”).) The ’685 patent asserts that oil-soluble organo-molybdenum
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`compounds were known to have “friction modifying and/or anti-wear properties in
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`lubricating oil compositions” (id. at 3:37-38; see also id. at 1:30-44.) The ’685
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`patent only includes tests for fuel economy and coefficient of friction for
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`lubricating oil compositions containing one amount of molybdenum in the
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`preferred range, 170 ppm molybdenum. (Id. at 11:38-13:35, Tables 3-5.) The
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`’685 patent contains no indication that the preferred concentration ranges of “10
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`Declaration Of Donald J. Smolenski, Ph.D.
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`ppm to 350 ppm” and “about 30 ppm to about 200 ppm” have performance
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`advantages that are not observed in compositions containing molybdenum
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`concentrations outside of those ranges.
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`c) Organic Ashless Nitrogen-Free Friction
`Modifiers
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`36. Regarding the organic ashless nitrogen-free friction modifier
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`concentration, the ’685 patent states “[t]ypically to provide the desired effect, the
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`organic ashless nitrogen-free friction modifier is added in an amount from about
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`0.25 wt. % to about 2.0 wt. % (AI), based on the total weight of the lubricating oil
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`composition.” (Id. at 7:17-21.) The ’685 patent asserts that organic ashless
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`nitrogen-free friction modifiers were also known to reduce friction when added to
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`lubricating oil compositions.6 (Id. at 6:61-7:6.)
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`37. The ’685 patent contains no suggestion that lubricating oil
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`compositions containing the organic ashless nitrogen-free friction modifier in
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`6 The ’685 patent states that nitrogen-free friction modifiers were desirable over
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`nitrogen containing (e.g., aminic) friction modifiers, because “[m]odern internal
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`combustion engines include numerous gaskets and other seals formed of
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`fluoroelastomer materials, such as VitonTM. Nitrogen-containing additives are
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`suspected of, over time, contributing to the deterioration of such materials.” (Ex.
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`1001, 1:59-61.)
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`concentration range of 0.25 to 2.0 wt. % exhibit advantageous properties that are
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`not observed for concentrations outside of this range. The ’685 patent examples
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`that include an ashless nitrogen-free friction modifier, Oils 3, 7, and 9, all contain 1
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`wt. % glycerol monooleate. (Id. at 10:45-11:10 (Table 1), 11:36-67 (Table 3).)
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`The comparative examples either contain 1.0 wt. % of the aminic ashless friction
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`modifier, ETA (Id. at 10:45-11:10 (Table 1, Oil 4)) or no organic friction modifier
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`at all. (Id. at 10:45-11:10 (Table 1, Oils 1 and 2), 11:36-67 (Table 3, Oils 5, 6, and
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`8).)
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`38. The ’685 patent specification states that “the organic ashless nitrogen-
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`free friction modifier may be added to the molybdenum-containing lubricating oil
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`composition in an amount sufficient to obtain a retained fuel economy
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`improvement of at least 1.7% for an SAE 5W-20 lubricant, 1.1% for a 5W-30
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`lubricant, and 0.6% for a 10W-30 lubricant as measured at 96 hours (Phase II
`
`performance) in the ASTM Sequence VIB Fuel Economy Test.” (Id. at 7:10-17.)
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`But it is not possible to ascertain whether the claimed composition of the ’685
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`patent meets this standard, because the ’685 patent does not disclose any fuel
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`economy test data with SAE 5W-20, 5W-30, or 10W-30 lubricant oil
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`compositions. (Id. at 11:40-42.) In Sequence VIB screener results for 0W-20
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`grade lubricating oil compositions, however, ’685 patent example Oils 7 and 9,
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`which both contain 1 wt. % glycerol monooleate, exhibited percent fuel economy
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`improvements versus baseline calibration oil of only 0.113 % and 0.262 %
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`respectively (id. at 12:20-13:2 (Table 4)), well below 0.6 %, 1.1 %, and 1.7%. (Id.
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`at 7:10-17.)
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`d) Metal Dihydrocarbyl Dithiophosphate
`Compound
`
`39.
`
` The ’685 patent discloses metal dihydrocarbyl dithiophosphate
`
`compounds, such as zinc dihydrocarbyl dithiophosphate, as antiwear additives.
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`(See, e.g., id. at 8:12-18.) The ’685 patent provides for limiting the amount of
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`phosphorus introduced from the metal dihydrocarbyl dithiophosphate in the
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`composition to “no more than 0.1 wt. %.” (Id. at 8:59-61.) In the examples, Oils
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`5-8 contain a phosphorus concentration of 0.09 wt. %, (id. at Table 3 (Oils 5-8),)
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`and Oil 9 contains 0.045 wt. % phosphorus. (Id. at Table 9 (Oil 9).)
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`C. Overview of the ’685 Patent Prosecution History
`40. The ’679 application, which ultimately issued as the ’685 patent, was
`
`filed on April 5, 2002. During prosecution of the ’679 application, the Examiner
`
`initially rejected all pending claims as rendered obvious by Waddoups. (Ex. 1004,
`
`66-67.) The Examiner also rejected all pending claims as rendered obvious by
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`U.S. Patent No. 6,444,624 to Walker et al. (“Walker ’624”). (Ex. 1004, 67-68.)
`
`41. Following these rejections, Applicants amended pending claim 1 to
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`recite that the claimed composition “is substantially free of ashless aminic friction
`
`modifiers” and added an upper limit of 350 ppm for the molybdenum
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`concentration. (Ex. 1004, 74, 77.) After making these amendments, Applicants
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`argued that Waddoups did not limit the amount of molybdenum to amounts up to
`
`about 350 ppm and that Waddoups “prefers the precise aminic friction modifiers
`
`expressly excluded by the present claims.” (Ex. 1004, 77.) Applicants argued that
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`Walker ’624 “does not expressly teach that limiting the amount of molybdenum
`
`compound to, for example, an amount providing less than 350 ppm of
`
`molybdenum will have any improved effect comp