IPR2016-00734 (P.T.A.B. May. 11, 2020)

Lubrizol Specialty Products, Inc.

Patent Trials and Appeals BoardMay 11, 2020

IPR2016-00734 (P.T.A.B. May. 11, 2020)

Trials@uspto.gov Paper No. 100 571-272-7822 Entered: May 11, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ BAKER HUGHES, a GE COMPANY, LLC (f/k/a BAKER HUGHES INCORPORATED), Petitioner, v. LIQUIDPOWER SPECIALTY PRODUCTS INC. (f/k/a LUBRIZOL SPECIALTY PRODUCTS, INC.), Patent Owner. ____________ IPR2016-00734 Patent 8,022,118 B2 ____________ Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION Denying Patent Owner’s Request for Rehearing of Decision on Remand 37 C.F.R § 42.71(d) IPR2016-00734 Patent 8,022,118 B2 2 I. INTRODUCTION On November 14, 2019, we entered a Decision on Remand (Paper 93, “Remand Decision” or “Dec.”) in the above-referenced case. On December 16, 2019, Patent Owner LiquidPower Specialty Products Inc. (“LSPI”) filed a request for rehearing. Paper 97 (“Rehearing Request” or “Req.”). LSPI requests that the Board dismiss the case or stay the case pending the United States Court of Appeals for the Federal Circuit’s resolution of the petitions for en banc review in Arthrex, Inc. v. Smith & Nephew, Inc., 94 F.3d 1320 (Fed. Cir. 2019). Req. 1–2. Alternatively, LSPI requests that the Board transfer the case to a new panel to re-evaluate the parties’ briefing on remand. Id. at 2–3. II. STANDARD OF REVIEW The party requesting rehearing has the burden to show that the Board should modify its decision. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. III. DISCUSSION LSPI argues that we should stay this case pending the Federal Circuit’s resolution of the petitions for en banc review in Arthrex. Req. 4, 7–8. This argument is moot, however, because the Federal Circuit denied en banc review in Arthrex on March 23, 2020. Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760 (Fed. Cir. 2020). LSPI also argues that we should dismiss this case because the remedy the Federal Circuit applied in Arthrex violates the Administrative Procedure Act (“APA”) and is insufficient to remedy the Appointments Clause IPR2016-00734 Patent 8,022,118 B2 3 violation. Req. 4–7. Alternatively, LSPI argues that “the Board should transfer this case to a new panel of constitutionally appointed APJs [Administrative Patent Judges] to ‘hear the inter partes review anew on remand.’” Id. at 8. Specifically, LSPI asserts that we were unconstitutionally appointed principal officers when we issued the Final Written Decision in this case on October 2, 2017, and, therefore, remained unconstitutionally appointed when we issued the Remand Decision on November 14, 2019. Id. at 9–10. LSPI, however, forfeited any challenges to the panel’s constitutionality by failing to raise those challenges in its opening brief to the Federal Circuit in its appeal of our Final Written Decision.1 Customedia Techs., LLC v. Dish Network Corp., 941 F.3d 1173, 1174 (Fed. Cir. 2019) (“Our law is well established that arguments not raised in the opening brief are waived) (citations and internal quotation marks omitted); Vivint, Inc. v. Alarm.com Inc., No. 19-2438 (Fed. Cir. Jan. 16, 2020), ECF No. 29 (nonprecedential); see LiquidPower Specialty Prods. Inc. v. Baker Hughes, A GE Co., LLC, No. 18-1141, ECF No. 29 (LSPI’s Opening Brief on appeal, which fails to raise any constitutionality or APA arguments on appeal). 1 Indeed, LSPI failed to raise any constitutional challenge in its Patent Owner Response, Sur-reply, or during the oral hearing in the case before remand. Paper 47 (Response); Paper 70 (Sur-reply); Papers 76, 77 (hearing transcripts). LSPI also did not raise any constitutional challenge before the Federal Circuit on appeal of our Final Written Decision, either in its briefing or during oral argument. See LiquidPower Specialty Prods., Inc. v. Baker Hughes, A GE Co., LLC, No. 18-1141, ECF Nos. 29, 39; Oral Argument, available at http://oralarguments.cafc.uscourts.gov/mp3/2018-1141.mp3. And LSPI did not raise any constitutional challenge in the additional briefing we ordered on remand. Paper 87. IPR2016-00734 Patent 8,022,118 B2 4 LSPI cannot cure that forfeiture by raising constitutional challenges for the first time in its request for rehearing of our decision on remand. IV. ORDER It is ORDERED that LSPI’s Request for Rehearing is denied. IPR2016-00734 Patent 8,022,118 B2 5 For PETITIONER: Herbert Hart George Wheeler Peter Lish Aaron Barkoff McANDREWS, HELD & MALLOY, LTD. hhart@mcandrews-ip.com gwheeler@mcandrews-ip.com plish@mcandrews-ip.com abarkoff@mcandrews-ip.com For PATENT OWNER: Doug McClellan Elizabeth Weiswasser Melissa Hotze WEIL GOTSHAL & MANGES LLP melissa.hotze@weil.com doug.mcclellan@weil.com elizabeth.weiswasser@weil.com