N OTE : This disposition is nonprecedential.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 Stat es Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018

- 00922.

______________________
Decided : January 2 1 , 2021

______________________
C HRISTOPHER S TRATE , Gibbons P.C., Newark, NJ, for appellant. Also represented by D AVID E. D E L ORENZI , Case: 20-1333 Document: 57 Page: 1 Filed: 01/21/20212 INFINEUM USA L

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S AMUEL H. M EGERDITCHIAN

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N AVEEN M ODI , Paul Hastings LLP, Washington, DC, for appellee. Also represented by S TEPHEN B LAKE K INNAIRD , I GOR V ICTOR T IMOFEYEV , M ICHAEL W OLFE , D ANIEL Z EILBERGER ; S COTT F REDERICK P EACHMAN , New York, NY

.

D ANIEL K AZHDAN , Office of the Solicitor, United StatesPatent and Trademark Office, Alexandria, VA, for intervenor. Also represented by M ARY L. K ELLY , T HOMAS W. K RAUSE , F ARHEENA Y ASMEEN R ASHEED

.

______________________
Before O’M ALLEY , T ARANTO , and S TOLL , Circuit Judges

. S TOLL , 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.

B ACKGROUND 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 classi fied by the American Petroleum Institute (API) in Groups I

– V. A dditive 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 standard s, such as those set by the International Lubricant Standardization and Approval Committee Case: 20-1333 Document: 57 Page: 2 Filed: 01/21/2021INFINEUM USA L

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(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 p atent, 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 certai n base oils in Group I I 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 lubricatingoil composition that provides improved fuel economy benefit [,] demonstrates excellent wear protection

1 The GF

- 3 standard measures v olatility 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. Case: 20-1333 Document: 57 Page: 3 Filed: 01/21/20214 INFINEUM USA L

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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 calc ium 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 ami nic 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 fromabout 10 ppm to about 350 ppm from the molybdenum compound, and phosphorus from the m etal 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 Case: 20-1333 Document: 57 Page: 4 Filed: 01/21/2021INFINEUM USA L

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under 35 U.S.C. § 103 over primary reference Toshikazu 3 in view of Henderson

. 4
Toshikazu is a published Japanese patent applicationtitled “Lubricating Oil Composition for Internal Combustion Engines” that disc loses 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 d escribes an industry shift toward higher

- viscosity, lower

- volatility base oils and discusses the the n

- upcoming GF

- 3 standard , its requirements, and its expected performance improvements to engine oils

. Relevant to this appeal, t he petit ion 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 exper t, Dr. Donald Smolenski, who hassignificant experience in lubricating engine oil development and testing.

3 Japanese Pub. Pat

. App

. No. JP H5

- 279686 A (published O ct. 26, 1993 ). We cite to the same certified English

language translation of Tos hikazu 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

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Infineum did not file a preliminary response to Oronite’s petition , and t he Board instituted review of all challenged claims on all grounds. Infin eum then filed a patent owner response supported by the declaration of its expert, Dr. Jai Bansal. In addition to responding to themerits 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 aformulator, 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 ha s experience in engine oil formulation. The Board permitted Infineum to file a sur

- reply, in which Infineum responded to Oronit e ’ 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 argument s and evidence that Infineum considered improper.
Relevant to this appeal, t he Board issued a final written decision holding claims 1

– 4, 6

– 11, and 13

– 20 obvious over Example 16 of Tosh ikazu 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 *1 4

– 1 5, *17

– 19, *21

– 23 (P.T.A.B. Nov. 6, 2019) ( Decision )

. Infine um appeals . We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4).

D ISCUSSION 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: 6 Filed: 01/21/2021INFINEUM USA L

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support the Board’s decision, and that the decision runs afoul of certain constitutional provisions. We ad dress 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 i s 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 particula rity, 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 (2 0 18) (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. 201 8)

.As inter partes review is a formal adjudication, the Administrative Procedures Act (APA) also “ imposes c ertain procedural requirements on the agency. ” Genzyme Therapeutic Prods

. Ltd. v. Biomarin Pharm

. Inc. , 825 F.3d 1360, 136 5

– 6 6 (Fed. Cir. 2016)

. For example, “ [i] n interpretingthe APA’s notice provisions in the context of IPR proceedings, we have cautioned that ‘ an agency may not change Case: 20-1333 Document: 57 Page: 7 Filed: 01/21/20218 INFINEUM USA L

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theories in midstream without giving respondents reasonable notice of the change and the opportunity to present argument under th e 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 unif ormly preclude the introduction of new evidence after the petition is filed in an IPR proceeding. See Anacor Pharm s ., Inc. v. Iancu

, 889 F.3d 1372, 138 0 (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 revi ew trial proceedings and, as long as the opposing party is given notice of theevidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible .” Genzyme

, 825 F.3d at 1366.

Infineum argu es 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 contention s that a skilledartisan would not have been motivated to select Examples 2 and 16, J.A. 773, would have consider ed 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: 8 Filed: 01/21/2021INFINEUM USA L

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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

. T he 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
, cover ing claims 1

– 4, 6

– 11, and 13

– 20, “rely on Example 16 of Toshikazu

, ” and that obviousness Grounds 4

– 6
, cover ing 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 th os e 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 appear s to be tied to itsassertions 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

w hich 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 D eclaration,” and certain exhibits submitted with the Case: 20-1333 Document: 57 Page: 9 Filed: 01/21/202110 INFINEUM USA L

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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

s ubsequently 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 f riction 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

. ” I d. ( quoting J.A. 908). Further, t he 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

– 1 5

. 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. Case: 20-1333 Document: 57 Page: 10 Filed: 01/21/2021INFINEUM USA L

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notice and opportunity to respond to Dr. Rizvi’s testimony. The Board permitted Infineum to depo se 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. Ri zvi’s testimony on the merits, J.A. 2347

– 65. Accordingly, the Board afforded Infineum the process it was due under the APA

. W e thus conclude that the Board did not err in considering Oronite’s reply arguments or D r. Rizvi’s testimony.

II

Infineum also cha llenges 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 find ings for substantial evidence, In re Gartside

, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidenceis “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” OSI Pharm s ., 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 ob viousness

7 To the extent that Infineum contends that the Board was categorically prohibited from relying on Dr. Rizvi’s t estimony, our precedent forecloses any such argument. See Anacor , 889 F.3d at 138 0

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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 exclu de Dr. Smolenski’s testimony, are reviewed for abuse of discretion

. See Belden Inc. v. Berk

- Tek LLC

, 805 F.3d 1064, 1078 (Fed. Cir. 20 15 ) (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 qualifiedas an expert in the pertinent art to testify as an expert regarding issues of noninfringement or invalidity) ; see also Hologic, In c. 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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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 m ake or formulate a new motor oil.” Appellant’s Br. 4 5

– 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 B oard 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 theBoard’s decision is unsupported by substantial evidence because the Board relied on Dr. Smolenski’s “hindsight Case: 20-1333 Document: 57 Page: 13 Filed: 01/21/202114 INFINEUM USA L

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analysis” to select Examples 2 and 16 from Toshikazu, when “other examp les 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 o ver an other

. Novartis Pharm s . Corp. v. W.

- Ward Pharm s . 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 metho ds.”) ; 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 c urrent invention. ”)

. In any event, Infineum’s argument amounts to a disagreement with how the Board weighed the evidence . T he 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. 228 0

– 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 To sh ikazu’s Examples 1

– 19 was within the repeatability specified by the applicable A merican S ociety for T esting and M aterials standard. J.A. 2280

– 8 2 ; see Decis ion

, 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

. . . showedthat [a] POSITA would not presume that modifying additive components and base oils would necessarily work or improve the performance of a formulation.” Appellant’s Case: 20-1333 Document: 57 Page: 14 Filed: 01/21/2021INFINEUM USA L

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Br. 47. The Board reasonably relied on primary reference Toshikazu’s express teac hing s to conclude that a skilled artisan “would have had a reasonable expectation of successin 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 oilused in the present invention, and it is possible to use various types of mineral oils, synthetic oils, and so on that ar e 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 hy drogenated 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, c ontrary to Infineum’s contentions, t he Board’s rationale for holding claim 12 obvious is not internally inconsistent . Infineum identifies a purported contradiction betwee n: (1) the Board’s conclusion that a skilled artisan “would have found it obvious to increase theamount 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

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settled for decre ased 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 chang e are not persuasive because we have foundthat one of ordinary skill in the art would not have differentiated the performance results reported for Examples 1

– 19 of Toshikazu.”).
Indeed, t he Board credited the petition’s argument that cost would motivat e a skilled artisan to increase theamount 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 “o ther examples in Toshikazu indicate that the amount of organic ashless nitrogen

- free friction modifier may be increasedwithout 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 trackdiameters for Examples 2 and 4 notwithstanding differences in aliphatic acid glyceride content ). I t 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 i s 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

econ omy performance, the ’685 patent’s demonstration ofsuperior 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” res ults. Id. at *13 (quoting Case: 20-1333 Document: 57 Page: 16 Filed: 01/21/2021INFINEUM USA L

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J.A. 825)

. Relying on Allergan, Inc. v. Sandoz Inc.

, 726 F.3d 1286, 1293 (Fed. Cir. 2013), the Board concludedthat Infineum’s unexpected results evidence was not meaningful in view of the fact that Toshikazu “provide[d] a
stron g reason to use low levels of molybdenum in combination with an organic ashless nitrogen

- free friction modifier

. ” Decision , 2019 WL 5806946, at *14

. Toshikazu disclose s “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 thes e 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 advantagesof 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 doe s 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 *1 4 ;

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 indu stry standard

. Decision

, Case: 20-1333 Document: 57 Page: 17 Filed: 01/21/202118 INFINEUM USA L

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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 129 3 ( 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. C ir. 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 “the re 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 modific ation to the scheme Congress created and cures the constitutional violation in the same manner as Free Enterprise Fund [ v. Public Co. A c counting 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 e vent 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 A dministrative P atent J udges is warranted because the Case: 20-1333 Document: 57 Page: 18 Filed: 01/21/2021INFINEUM USA L

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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]our t 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 134 2

– 4 3; Arthrex

, 941 F.3d at 1340

.Finally, our precedent also forecloses Infineum’s argument that the Board’s retroactive application of IPR proceedings to invalida te the ’685 patent claims violates the Takings and Due Process C lauses of the U.S. Constitution. See Appellant’s Br. 54

– 5 9

. Infineum appears to acknowledge as much, abandoning its Takings and Due Process C lause 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 takin g under the Fifth Amendment.” 931 F.3d 1342, 1362 (Fed. Cir. 2019), cert. denied , 141 S. Ct. 132 (2020).

C ONCLUSION We have considered the parties’ remaining arguments and do not find them persuasive. Accordingly

, we affirm the Board’s decision.

AFFIRMED Case: 20-1333 Document: 57 Page: 19 Filed: 01/21/2021