NOTE: This disposition is nonprecedential.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,

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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 intervenor. 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 decision of the Patent Trial and Appeal Board holding 

claims 1–20 of U.S. Patent No. 6,723,685 unpatentable under 35 U.S.C. § 103. The ’685 patent claims cover lubricating 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 lubricating viscosity and additives used to improve the performance characteristics of the base oil. Base oils are 

comprised of basestocks classified by the American Petroleum 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 International Lubricant Standardization and Approval Committee 

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INFINEUM USA L.P. v. CHEVRON ORONITE CO. 3

(ILSAC), set requirements for certain properties, ingredients, and performance of base oils. The ILSAC 

GF-3 standard, in effect as of the filing date of the ’685 patent, set a maximum engine oil volatility of 15%.1 A higher

viscosity index (VI)2 reduces base oil and finished oil volatility. 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 certain 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 contained 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 compounds 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 benefit[,] demonstrates excellent wear protection 

1 The GF-3 standard measures volatility using an industry-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 viscosity over the temperature range of use than a low-VI oil.

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4 INFINEUM USA L.P. v. CHEVRON ORONITE CO.

characteristics, is relatively low in cost, and is free of nitrogen-containing friction modifiers.” ’685 patent col. 1 

ll. 63–67. 

Claim 1 is the sole independent claim of the ’685 patent:

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 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. %.

Id. at col. 13 ll. 47–62.

Chevron Oronite Co. filed a petition for inter partes review challenging all claims of the ’685 patent as obvious

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INFINEUM USA L.P. v. CHEVRON ORONITE CO. 5

under 35 U.S.C. § 103 over primary reference Toshikazu3

in view of Henderson.4 

Toshikazu is a published Japanese patent application 

titled “Lubricating Oil Composition for Internal Combustion 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 Example 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 declaration from its expert, Dr. Donald Smolenski, who has 

significant experience in lubricating engine oil development and testing. 

3 Japanese Pub. Pat. App. No. JP H5-279686 A (published Oct. 26, 1993). We cite to the same certified Englishlanguage 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.

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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 patent owner response supported by the declaration of its expert, Dr. Jai Bansal. In addition to responding to the 

merits of Oronite’s petition, Infineum’s patent owner response argued that Dr. Smolenski was not a person of ordinary skill in the art because he had not worked as a 

formulator, and that the Board should disregard his testimony in its entirety. 

In reply, Oronite argued that Dr. Smolenski was a person 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 denied 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 written 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 

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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 arguments 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 provisions of the America Invents Act (AIA) require that a petition 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 challenge to each claim.” 35 U.S.C. § 312(a)(3). The regulations 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 original) (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 Administrative Procedures Act (APA) also “imposes certain 

procedural requirements on the agency.” Genzyme Therapeutic 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 proceedings, we have cautioned that ‘an agency may not change 

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8 INFINEUM USA L.P. v. CHEVRON ORONITE CO.

theories in midstream without giving respondents reasonable 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 evidence 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 introduction 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 better 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 rebuttal 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 Examples 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 

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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 impermissibly “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 remained the same throughout the proceedings. Oronite’s reply 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 Toshikazu, in combination with Henderson, each renders the independent 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 obvious 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 theories 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 evidence,” 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 

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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 (arguing before the Board that portions of Dr. Rizvi’s testimony 

subsequently relied on by the Board “[p]resent[] a new theory regarding the interpretation of the data from Toshikazu”). 

Like the reply arguments Infineum identifies on appeal, Dr. Rizvi’s testimony was a proper rebuttal to arguments 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 Appellant’s Br. 29; see also Decision, 2019 WL 5806946, at *12

(citing J.A. 2281–82 (Rizvi Dec. ¶¶ 35–38)). Paragraphs 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 “pursue 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 testimony 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. 

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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 receiving his reply declaration, and then to file a sur-reply, 

in addition to allowing the parties to file a joint chart identifying the reply arguments and evidence Infineum believed 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. Accordingly, the Board afforded Infineum the process it was due 

under the APA.

We thus conclude that the Board did not err in considering Oronite’s reply arguments or Dr. Rizvi’s testimony.

II

Infineum also challenges several aspects of Board’s decision 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 accept 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 underlying 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 argument. See Anacor, 889 F.3d at 1380.

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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 Infineum essentially raised before the Board—that Dr. Smolenski’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 reviewed 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)); Sundance, 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 regarding 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, 

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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 Gerritsen v. Shirai, 979 F.2d 1524, 1529 (Fed. Cir. 1992)).

Here, Infineum does not challenge the Board’s determination, 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.” Decision, 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.” Appellant’s Br. 45–46 (citation omitted). The Board reasonably 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 discretion in the Board’s consideration of or reliance on Dr. Smolenski’s testimony.

No more compelling is Infineum’s argument that the 

Board’s decision is unsupported by substantial evidence because the Board relied on Dr. Smolenski’s “hindsight 

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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 development.” Decision, 2019 WL 5806946, at *12 (discussing 

J.A. 2280–82 (Rizvi Dec. ¶¶ 33–38) and J.A. 174–76 (Smolenski 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 additive components and base oils would necessarily work or 

improve the performance of a formulation.” Appellant’s 

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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 artisan “would have had a reasonable expectation of success 

in using a synthetic base oil that imparts an overall viscosity 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 indicates that ‘[t]here is no particular limitation on the base oil 

used in the present invention, and it is possible to use various types of mineral oils, synthetic oils, and so on that are 

known in the art.’” (alteration in original) (quoting Toshikazu ¶ 12)); id. (“Toshikazu reports essentially identical results 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 Examples 3, 16, and 17)). The general need for routine compatibility 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 internally inconsistent. Infineum identifies a purported contradiction 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 nitrogen-free friction modifier, “in Example 2 to at least 

‘about 0.25 wt. %’ in order to save on costs,” id. at *22 (citing J.A. 140); and (2) the Board’s finding with respect to 

claim 1, from which claim 12 depends, that notwithstanding that “mineral oils are cheaper than synthetic oils,” a 

skilled artisan “would have sought to substitute the mineral 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 

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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 arguments 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 differentiated the performance results reported for Examples 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 Example 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 examples in Toshikazu indicate that the amount of organic 

ashless nitrogen-free friction modifier may be increased 

without significantly affecting the performance of the lubricating compositions,” id. (first citing J.A. 139–40; and 

then citing J.A. 1471–72 (reply)); see also Toshikazu Table 1 (reflecting similar friction coefficients and wear track 

diameters for Examples 2 and 4 notwithstanding differences 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 conclusion 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 formulations containing a low amount of molybdenum in combination with an organic ashless nitrogen-free friction modifier 

provided “truly unexpected” results. Id. at *13 (quoting 

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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 meaningful in view of the fact that Toshikazu “provide[d] a 

strong reason to use low levels of molybdenum in combination with an organic ashless nitrogen-free friction modifier.” Decision, 2019 WL 5806946, at *14. Toshikazu 

discloses “excellent wear resistance and friction characteristics” of formulations containing low levels of molybdenum 

in combination with an organic ashless nitrogen-free friction modifier. Toshikazu ¶ 55. Toshikazu’s formulations

containing combinations of these two additives “further improved” the “wear resistance and the friction characteristics” “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 ashless 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 analysis, 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 levels of molybdenum and an organic ashless nitrogen-free 

friction modifier independent of any improved fuel economy 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 meaningfully 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, 

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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 unexpected 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 motivation to make the combination).

III

Finally, our precedent forecloses Infineum’s constitutional challenges to the Board’s decision.

Infineum requests “vacatur and remand to the Board 

with instructions to dismiss the IPR” because under Arthrex, 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 Appointments 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 modification to the scheme Congress created and cures the constitutional 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 constitutionally 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 Administrative Patent Judges is warranted because the 

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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; Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 

1342 (Fed. Cir. 2020). Infineum acknowledges that “in Caterpillar[,] this [c]ourt found that where an inter partes review 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 Caterpillar, 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 argument that the Board’s retroactive application of IPR proceedings 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 unconstitutional 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

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