Paul Hastings’ IP Practice Secures Victory for Chevron in Patent Litigation Involving Lubricating Oils

February 03, 2021

Washington, D.C. – Paul Hastings LLP has secured a significant victory for its client Chevron Oronite Company,.LLC in a patent dispute against Infineum USA LP, over lubricating oil used in internal combustion engines, invalidating a patent asserted against Chevron. Partner and Global Vice Chair of the Intellectual Property practice, Naveen Modi led the Paul Hastings IP team in parallel district court litigation, at the Patent Trial and Appeal Board (PTAB), and in the appeal.

The U.S. Court of Appeals for the Federal Circuit affirmed a decision by the PTAB finding all of the claims of Infineum’s patent to be unpatentable. Among other things, the appeals court affirmed the PTAB’s finding that Infineum’s claimed oil composition was unpatentable as obvious. The court also rejected Infineum’s procedural and constitutional based claims.

The case arose when Infineum – a New Jersey-based joint venture of ExxonMobil and Shell – sued California-based Chevron Oronite in the U.S. District Court for the District of Delaware, arguing the company was manufacturing lubricating oil in violation of its patent (U.S. Patent No. 6,723,685). The Paul Hastings team convinced the district court to stay the suit pending a challenge to the validity of the patent by Chevron before the PTAB. The team then obtained a successful result at the PTAB, and on appeal.

The case is captioned Infineum USA L.P. v. Chevron Oronite Company LLC. The Paul Hastings team was led by Naveen Modi and included Stephen B. Kinnaird, Igor Timofeyev, Michael Wolfe, Daniel Zeilberger, and Scott Peachman.

The Paul Hastings IP Practice consistently receives industry praise, including the Patent Office group’s recognition as “Post-Grant Firm of the Year,” by IAM Magazine and Naveen Modi being named a Law360 “Intellectual Property MVP.”

At Paul Hastings, our purpose is clear — to help our clients and people navigate new paths to growth. With a strong presence throughout Asia, Europe, Latin America, and the U.S., Paul Hastings is recognized as one of the world’s most innovative global law firms.