Filed on behalf of Baker Hughes Holdings, LLC
`By:
`Herbert D. Hart III
`Peter J. Lish
`Ben J. Mahon
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: hhart@mcandrews-ip.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`BAKER HUGHES HOLDINGS, LLC
`(f/k/a BAKER HUGHES, A GE COMPANY LLC),
`Petitioner,
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.
`(f/k/a LUBRIZOL SPECIALTY PRODUCTS, INC.),
`Patent Owner.
`_____________
`Case IPR2016-01901
`Patent No. 8,450,249 B2
`_____________
`PETITIONER’S MOTION TO EXPUNGE
`
`
`
`
`
`
`
`
`By:
`Herbert D. Hart III
`Peter J. Lish
`Ben J. Mahon
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: hhart@mcandrews-ip.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`BAKER HUGHES HOLDINGS, LLC
`(f/k/a BAKER HUGHES, A GE COMPANY LLC),
`Petitioner,
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.
`(f/k/a LUBRIZOL SPECIALTY PRODUCTS, INC.),
`Patent Owner.
`_____________
`Case IPR2016-01901
`Patent No. 8,450,249 B2
`_____________
`PETITIONER’S MOTION TO EXPUNGE
`
`
`
`
`
`
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`
`I.
`
`Introduction
`In accordance with 37 C.F.R. § 42.56, Petitioner Baker Hughes Holdings,
`
`LLC, respectfully moves the Board to expunge the previously sealed versions of:
`
`Exhibits 1092, 1108, 2042, 2063, 2101, 2107 and 2154 and Papers 18, 30, 39, 45,
`
`47, 51, 53, 57, 63, 65, and 79.
`
`Counsel for Patent Owner has stated that Patent Owner takes no position on
`
`Baker Hughes’ Motion.
`
`The Federal Circuit affirmed the Board’s Decision on Remand (Paper 79), and
`
`it issued its mandate on June 5, 2023. (See IPR2016-00734 Papers 115 and 116).1
`
`Baker Hughes asks the Board to expunge a small number of the sealed documents
`
`in this case that contain trade secret information about Baker Hughes’ commercial
`
`product and the sealed Papers that cite them. That information remains highly
`
`confidential, and its public disclosure would cause serious business harm to Baker
`
`Hughes.
`
`II. Legal Standards
`Under the rules of practice before the Board, “[a]fter denial of a petition to
`
`institute a trial or after final judgment in a trial, a party may file a motion to expunge
`
`confidential information from the record.” 37 C.F.R. § 42.56. Under the rules,
`
`
`1 The Federal Circuit issued one opinion for all four related IPRs. These opinions
`do not appear to have been added to the record in this IPR.
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`“[c]onfidential information that is subject to a protective order ordinarily would
`
`become public 45 days after denial of a petition to institute a trial or 45 days after
`
`final judgment in a trial.” Consolidated Trial Practice Guide, November 2019 at 21-
`
`22. However, a party that wishes for its information to remain confidential can file
`
`a motion to expunge the information from the record before it becomes public. Id.
`
`(citing 37 C.F.R. § 42.56). “The rule encourages parties to redact sensitive
`
`information, where possible, rather than seeking to seal entire documents.” Id.
`
`The Board has previously explained that a party moving to expunge must
`
`show that: (i) “any information sought to be expunged constitutes confidential
`
`information” and (ii) the movant’s interest in expunging the information “outweighs
`
`the public’s interest in maintaining a complete and understandable file history.” RPX
`
`Corp. v. VirnetX Inc., IPR 2014-00171, Paper 62 at 3 (PTAB Sept. 9, 2014).
`
`The regulations identify confidential information as “a trade secret or other
`
`confidential research, development, or commercial information.” 37 C.F.R. §
`
`42.54(a)(7); see also Otter Products, LLC, v. Speculative Product Design, LLC,
`
`IPR2014-01464, 2015 WL 9899004, at *2-4 (PTAB Aug. 27, 2015) (finding it was
`
`appropriate to expunge select exhibits in support of redacted papers where public
`
`disclosure of the exhibits “would be commercially harmful”).
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`
`III. Documents Containing Baker Hughes Trade Secret Product
`Information Should Be Expunged
`Baker Hughes seeks to expunge Exhibits 1092, 1108, 2042, 2063, 2101,
`
`2107, and 2154. The confidentiality of Baker Hughes’ exhibits was established by
`
`the declaration of Baker Hughes employee Frank Niznik. Exhibit 1117. And the
`
`Board previously determined that good cause existed to seal these exhibits and
`
`granted the Parties’ Joint Motion to Seal. See Paper 69. Baker Hughes now seeks
`
`to expunge only seven of the twenty seven documents originally sealed, each of
`
`which contains trade secret information that remains highly confidential and that
`
`would cause serious business harm to Baker Hughes if disclosed to the public:
`
`• Exhibit 1108 is a Baker Hughes plant sheet with detailed manufacturing
`instructions for its FLO 91000 product. This information remains a
`highly confidential trade secret of Baker Hughes.
`
`• Exhibit 1092 is the reply declaration of Baker Hughes’ expert, Dr.
`Thomas Epps, in which Dr. Epps describes the composition and making
`of the FLO 91000 product. A redacted version of Exhibit 1092 is
`publicly available as Exhibit 1115.
`
`• Exhibit 2101 is an excerpt of Petitioner’s interrogatory responses from
`the parties’ ongoing district court litigation identifying the precise
`ingredients used to make Petitioner’s FLO ULTIMA 91000 DRA. That
`document is marked OUTSIDE COUNSEL ONLY under the district
`court’s protective order.
`
`• Exhibit 2402 and 2154 are cross-examination transcripts of Baker
`Hughes’ expert containing the highly confidential trade secret
`information discussed above. A redacted version of Exhibit 2042
`remains in the record as Exhibit 2044 and a redacted version of Exhibit
`2154 remains in the record as Exhibit 2155.
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`
`• Exhibit 2107 is an excerpt of the deposition of Baker Hughes’ employee
`Jim Macaluso
`in the parties’ district court litigation marked
`Confidential under the district court protective order. Exhibit 2107
`contains highly confidential trade secret information about Petitioner’s
`product testing and the identities of its customers.
`
`• Exhibit 2063 is an excerpt of Petitioner’s confidential Reply brief in the
`related IPR2016-00734 containing
`the confidential
`information
`described above. A redacted version of this document is available in the
`record of that IPR as Paper 59.
`
`None of the documents Baker Hughes seeks to have expunged are necessary
`
`for understanding the Board’s Final Written Decision.
`
`Exhibit 2107 was not cited in the Board’s Final Written Decision on Remand
`
`and is not necessary to understanding the Board’s ruling. See Ibg LLC v. Trading
`
`Techs. Int’l, Inc., CBM2015-00172, 2019 WL 5073607, at *1 (P.T.A.B. Oct. 9,
`
`2019) (“Our Final Written Decision did not rely upon Exhibits 2143–2151, 2154,
`
`and 2156–2158. Under these circumstances, Patent Owner's Motion to Expunge is
`
`granted.”).
`
`While some of the other exhibits were cited in the Board’s Final Written
`
`Decision, the information they contain was relevant only to disproving Patent
`
`Owner’s argument of copying. However, the record can be easily understood
`
`without reference to the composition or method of manufacture of the FLO 91000
`
`product. Baker Hughes provided pinpoint redactions to the Board’s Final Written
`
`Decision on Remand (Paper 82), and, importantly, the Federal Circuit’s opinion
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`affirming the Board’s Final Written Decision contains no citation to or reference to
`
`any of the five documents Baker Hughes seeks the Board to expunge. See IPR2016-
`
`00734 Paper 116. This allows for a substantial and understandable record to be
`
`maintained, which balances the public’s right to access the record and Baker
`
`Hughes’ interest in protecting its trade secrets. See Coal. For Affordable Drugs II
`
`LLC v. Cosmo Techs. Ltd., No. IPR2015-00988, 2017 WL 2469334, at *3-4,
`
`8(P.T.A.B. June 7, 2017).
`
`Baker Hughes also respectfully asks the Board to expunge the sealed versions
`
`of Papers 18, 30, 39, 45, 47, 51, 53, 57, 63, 65, and 79. Each of these Papers discuss
`
`the highly confidential trade secret information contained in the exhibits Baker
`
`Hughes seeks to expunge. They also contain information Patent Owner and a third
`
`party (FlowChem) have marked confidential. The Board previously determined that
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`good cause existed to seal these exhibits and granted the Motions to Seal. See Papers
`
`69, 81. Additionally, publicly-available redacted versions of the merits papers will
`
`remain in the public record (Papers 19, 31, 40, 46, 48, 52, 59, 64, 71, and 82). This
`
`balances the need for public access to the records while maintaining the
`
`confidentiality of Baker Hughes’ highly confidential trade secret information (as
`
`well as that of third party FlowChem).
`
`Petitioner, Patent Owner, and Flowchem all agree that the sealed documents
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`should be expunged.
`
`IV. CONCLUSION
`
`The Board has previously determined that all of the exhibits and papers that
`
`Baker Hughes seeks to expunge contain confidential information and ordered that
`
`they be maintained under seal. Redacted versions were provided where feasible,
`
`and sufficient information remains in the record for the public to understand the
`
`Board’s Decision on Remand. For the above reasons, Baker Hughes requests the
`
`Board expunge Exhibits 1092, 1108, 2042, 2063, 2101, 2107, and 2154 and Papers
`
`18, 30, 39, 45, 47, 51, 53, 57, 63, 65, and 79.
`
`
`
`Dated: August 28, 2023
`
`
`
`
`
`
`Respectfully submitted,
`
`/Herbert D. Hart III/
`Herbert D. Hart III
`Reg. No. 30,063
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Tel: (312) 775-8000
`Fax: (312) 775-8100
`hhart@mcandrews-ip.com
`
`Lead Counsel for Petitioner
`Baker Hughes Holdings, LLC
`
`
`
`
`
`
`
`
`
`Petitioner’s Motion to Expunge
`IPR2016-01901
`U.S. Patent No. 8,450,249
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the foregoing MOTION TO
`
`EXPUNGE was served on August 28, 2023, via email to counsel for Patent Owner
`
`and non-party Flowchem, LLC at the following:
`
`Elizabeth S. Weiswasser
`elizabeth.weiswasser@weil.com
`William Sutton Ansley
`sutton.ansley@weil.com
`attorneys for LiquidPower Specialty Products Inc.
`
`Eileen Hyde
`Eileen.Hyde@BakerBotts.com
`Katharine Burke
`Katharine.Burke@BakerBotts.com
`Steve Liquori
`Steven.Liquori@BakerBotts.com
`attorneys for FlowChem, LLC
`
`
`McANDREWS, HELD & MALLOY, LTD.
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: August 28, 2023
`
`
`
`
`
`/Herbert D. Hart III/
`Herbert D. Hart III
`Reg. No. 30,063
`
`
`
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