GF-3 Patent Dispute Finally Ends


Chevron Oronite achieved final victory this week in a long-running engine oil patent dispute with Infineum when the companies agreed to stop pursuing the case.

Monday’s filing with the United States District Court for the District of Delaware came four months after a federal appeals court upheld previous decisions invalidating an Infineum patent for engine oil formulation meeting the ILSAC GF-3 performance standard on grounds that it did not clear the bar of obviousness.

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Infineum, a chemical additive joint venture between ExxonMobil and Shell, obtained its patent, referred to as the ‘685 patent, in 2002, a year after the International Lubricant Standardization and Approval Committee introduced GF-3. The patented defined a formulation on five points: that the oil have a viscosity index of at least 95; and that it contain at least one calcium detergent, at least one soluble molybdenum compound, at least one organic ashless nitrogen-free friction modifier and at least one metal dihydrocarbyl dithiophosphate compound, whose content was prescribed in detail.

Oronite subsequently introduced a GF-3 formulation that Infineum claimed violated its patent. When Infineum sued for patent violation, Oronite petitioned to have the ‘685 patent invalidated on grounds that it did not go sufficiently beyond know-how that was already in the public domain.

A long chain of hearings ensued, culminating with a decision by the U.S. Patent Trial and Appeals Board granting Oronite’s petition. Infineum appealed to the U.S. Court of Appeals for the Federal Circuit, which in January of 2021 upheld the decision of the appeals board.

Infineum got new life five months later, however, when the U.S. Supreme Court ruled in a different case that the final authority given to the appeals board over such disputes was too large, given that board members are appointed by the president. To fix the problem, the court said the director of the Patent and Trademark Office should have the prerogative to review appeals board decisions.

The Court of Appeals therefore referred Infineum’s appeal to the patent office director but without relinquishing jurisdiction. The patent office director declined to review the appeals board decision, so the Court of Appeals did, and in August it affirmed that decision.

The stipulation for dismissal that Infineum and Oronite filed Monday was filed with prejudice, meaning that Infineum will no longer pursue the matter.

ILSAC declared GF-3 obsolete in 2004, meaning the organization stopped issuing licenses for oils that met its requirements, but the standard remained in use in countries around the world for years after.