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

Informative decision only: persuasive authority, not binding precedent. Even when a petitioner shows a reasonable likelihood of prevailing on one or more claims, institution under 35 U.S.C. § 314(a) remains discretionary, and the Board may deny institution where the petitioner meets the reasonable likelihood standard for only a small number of the challenged claims (here, two dependent claims of twenty). Instituting trial on all challenged claims on that basis is not an efficient use of the Board's time and resources. No prior Board precedential or informative decision is named in the text; the Board relies on Office guidance issued June 5, 2018 (SAS Q&As, part D), which says the Board may consider the number of claims and grounds that meet the reasonable likelihood standard in deciding whether to institute. For petitioners, a petition that is strong on only a few dependent claims, with a deficient showing on the independent claim and the rest, risks outright denial of the whole petition, not partial institution. For patent owners, a preliminary response can stress how few claims or grounds meet the standard and invoke discretion under § 314(a). The Board cited SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018), and Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), for the point that the PTO is permitted, but never compelled, to institute. LEGAL TEST OR STANDARD: The Board first asked whether the petitioner demonstrated a reasonable likelihood of prevailing on the challenged claims, with the petitioner bearing the burden from the outset to show with particularity why the patent is unpatentable. Then, even if that showing is made for some claims, institution remains discretionary under 35 U.S.C. § 314(a), and the Board may consider the number of claims and grounds that meet the reasonable likelihood standard. The text states no numbered factors or numeric threshold. TRIGGERING FACTS: Petitioner challenged claims 1-20 of the '685 patent on one obviousness ground (Waddoups, Walker, Hertz). The Board construed claim 1 to require that calcium from all calcium detergents total about 0.05 to 0.6 wt. %. Petitioner failed to show that for claim 1 and for claims 2 and 5-20, because it did not explain the motivation to keep total calcium in range and ignored the neutral calcium phenate and sulfonate detergents in Waddoups Oils 1 and 3. Petitioner showed a likelihood only as to dependent claims 3 and 4, which can be read to limit the detergent to an overbased calcium sulfonate. That left two of twenty claims. KEY QUOTE: "On this record, instituting a trial with respect to all twenty claims based on evidence and arguments directed to dependent claims 3 and 4 is not an efficient use of the Board's time and resources." (Paper 9, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Office guidance, SAS Q&As, part D, Effect of SAS on future challenges that could be denied for statutory reasons (June 5, 2018), and cites SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018), and Harmonic, 815 F.3d at 1367. PRACTICE TIP: Petitioners should make sure the petition shows a reasonable likelihood for a substantial share of the challenged claims, especially the independent claims, and should address every element under the correct claim construction. A petition that succeeds only for a few dependent claims risks discretionary denial of the whole petition. Patent owners should point out in the preliminary response how few claims meet the standard.