Trials@uspto.gov
`571.272.7822
`
`
` Paper 101
` Entered: September 29, 2023
`
`
`
`
`
`
`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.
`____________
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`____________
`
`
`
`Before KRISTINA M. KALAN and CHRISTOPHER M. KAISER,
`Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part Motions to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper 101
` Entered: September 29, 2023
`
`
`
`
`
`
`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.
`____________
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`____________
`
`
`
`Before KRISTINA M. KALAN and CHRISTOPHER M. KAISER,
`Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part Motions to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`
`INTRODUCTION
`I.
`On August 28, 2023, with our authorization, and pursuant to 37
`C.F.R. § 42.56, Baker Hughes Holdings, LLC (“Petitioner”) filed a motion
`seeking to expunge sealed Papers 18, 30, 39, 45, 47, 51, 53, 57, 63, 65,
`and 79, and sealed Exhibits 1092, 1108, 2042, 2063, 2101, 2107 and 2154.
`Paper 99 (“Pet. Mot.”). According to Petitioner, this Motion follows the
`Federal Circuit’s affirmance of the Board’s Decision on Remand (Paper 79),
`with its mandate issued on June 5, 2023. Pet. Mot. 1.
`On September 8, 2023, also with our authorization, LiquidPower
`Specialty Products, Inc. (“Patent Owner”) filed a motion seeking to expunge
`Papers 18, 27, 30, 32, 39, 45, 47, 51, 53, 57, 63, and 65, and Exhibits 1070,
`1072, 1074, 1075, 1083–1087, 1094, 1096–1100, 2050, 2062–2063, 2068,
`2069, 2072, 2073, 2080–2082, 2089, 2091, 2092, 2095, 2098, 2103–2105,
`2111, and 2113. Paper 100 (“PO Mot.”).
`“[A]fter final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” See 37 C.F.R. § 42.56.
`Throughout the proceeding, Petitioner and Patent Owner each filed
`several motions to seal documents. Papers 17, 25, 26, 35, 44, 48, 55, 56, 58,
`67, 80. After we issued a Final Decision denying all the motions (Paper 65,
`41–44), the parties filed a Joint Motion to Seal Papers 18, 27, 30, 32, 39, 45,
`47, 51, 53, 57, 63, and 65, and all or portions of Exhibits 1070, 1072, 1074–
`1078, 1083–1087, 1092, 1094, 1096–1100, 1108, 2042, 2050, 2053, 2062,
`2063, 2066–2073, 2076–2085, 2087, 2089–2092, 2094, 2095, 2098–2105,
`2107, 2111, 2113, and 2154. Paper 67, 4–52. We granted the motion.
`Paper 69. We noted that “the parties demonstrate that the information they
`seek to seal consists of trade secrets regarding the chemical structure,
`
`2
`
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`
`IPR2016-01901
`Patent 8,450,249 B2
`
`composition, and properties of Petitioner’s, Patent Owner’s, and
`Flowchem’s polymer products, as well as Petitioner’s and Flowchem’s
`confidential research and development information, confidential commercial
`information, and confidential competitive analyses.” Paper 69, 5. After we
`issued our Final Decision on Remand (Paper 79), the parties filed a Joint
`Motion to Seal that Decision (Paper 80), which we granted (Paper 81). A
`public version of the Final Decision on Remand is available as Paper 82.
`As of the date of this order, Papers 18, 27, 30, 32, 39, 45, 47, 51, 53,
`57, 63, 65, and 79, and Exhibits 10701, 1072, 1074–1078, 1083–1087, 1092,
`1094, 1096–1100, 1108, 2042, 2050, 2053, 2062, 2063, 2066–2073, 2076–
`2085, 2087, 2089–2095, 2098–2105, 2107, 2111–2113, 2154, and 2157
`remain sealed.2 For the reasons discussed below, the parties’ Motions to
`Expunge are granted-in-part.
`II. DISCUSSION
`A strong public policy exists for making open to the public all
`information filed in this administrative proceeding. Only “confidential
`information” is protected from disclosure. 35 U.S.C. § 316(a)(7) (“The
`Director shall prescribe regulations . . . providing for protective orders
`governing the exchange and submission of confidential information.”). The
`Consolidated Trial Practice Guide states:
`Confidential 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. There
`
`1 There is a redacted, public version of Exhibit 1070, and another,
`unredacted version under seal, both with the same exhibit numbers.
`2 Exhibits 2093 and 2112 remain sealed, but in the Joint Motion to Seal, the
`assertion was made that “LSPI will re-file those Exhibits publicly.”
`Paper 67, 14 n.1. At this time, we find no public version of these exhibits
`that have been filed by Patent Owner.
`
`3
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`IPR2016-01901
`Patent 8,450,249 B2
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`
`is an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`Consolidated Trial Practice Guide, 21–22 (Nov. 2019), available at
`http://www.uspto.gov/TrialPracticeGuideConsolidated. “The rules aim to
`strike a balance between the public’s interest in maintaining a complete and
`understandable file history and the parties’ interest in protecting truly
`sensitive information.” Id. at 19.
`A table summarizing the documents at issue is below:
`Papers both parties seek to have
`18, 30, 39, 45, 47, 51, 53, 57, 63,
`expunged
`65, and 79
`Additional Papers Patent Owner
`27 and 32
`seeks to have expunged
`Exhibits both parties seek to have
`expunged
`Additional Exhibits Petitioner seeks
`to have expunged, which were cited
`in the Final Decision on Remand
`Additional Exhibits Petitioner seeks
`to have expunged, which were not
`
`2063
`
`1092, 1108, 2042, 2101, and 2107
`
`
`2154
`
`4
`
`
`
`2050, 2068, 2069, 2072, 2073,
`2080–2082, 2091, 2092, and 2095
`
`1070, 1072, 1074, 1075, 1077,3
`1083–1087, 1094, 1096–1100,
`2062, 2063, 2089, 2094,4 2098,
`2103–2105, 2111, and 2113
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`
`cited in the Final Decision on
`Remand
`Additional Exhibits Patent Owner
`seeks to have expunged, which were
`cited in the Final Decision on
`Remand
`Additional Exhibits Patent Owner
`seeks to have expunged, which were
`not cited in the Final Decision on
`Remand
`
`Petitioner contends that the specifically designated Papers and
`Exhibits, which were filed under seal, “contain trade secret information
`about Baker Hughes’ commercial product,” and that the “information
`remains highly confidential, and its public disclosure would cause serious
`business harm to Baker Hughes.” Pet. Mot. § I.5 Additionally, Petitioner
`contends the “confidentiality of Baker Hughes’ exhibits was established by
`the declaration of Baker Hughes employee Frank Niznik.” Id. § III (citing
`Ex. 1117). “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
`
`
`3 Patent Owner describes this document at page 7 of its Motion, but does
`not include it in the list of exhibits to expunge. See PO Mot. 6. We take the
`omission as an inadvertent error.
`4 Patent Owner describes this document at page 12 of its Motion, but does
`not include it in the list of exhibits to expunge. See PO Mot. 6. We take the
`omission as an inadvertent error.
`5 Petitioner’s Motion does not include page numbers.
`
`5
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`IPR2016-01901
`Patent 8,450,249 B2
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`business harm to Baker Hughes if disclosed to the public.” Id. Petitioner
`notes that we already approved the sealing of the papers and exhibits at
`issue, for good cause. Id. (citing Paper 69). A thorough explanation of the
`nature of each document, and the reason the redacted information is
`confidential, is set forth in the Motions to Seal and cited Exhibit, and need
`not be repeated here. See id.; Ex. 1117, Papers 67, 80.
`Patent Owner contends “the confidential information that Patent
`Owner moves to expunge consists of highly sensitive, confidential business
`information and trade secrets of Patent Owner and Flowchem that the Board
`previously ordered be kept under seal.” PO Mot. 1. Patent Owner “requests
`the Board expunge certain sealed, confidential information from the record,”
`but “[i]f the Board denies in whole or in part Patent Owner’s Motion to
`Expunge, Patent Owner requests that any document(s) the Board previously
`ordered sealed but does not order expunged be kept confidential and separate
`from the files of the involved patent.” Id. A thorough explanation of the
`nature of each document, and the reason the redacted information is
`confidential, is set forth in Patent Owner’s Motion. See id. at 6–15.
`Because we agree with the statements by the parties, we are persuaded
`by the parties’ contentions that the information in the named documents
`should remain confidential.
`However, the redacted portions of the Papers under consideration here
`contain significant amounts of information that support to the outcome of
`our Decisions, particularly of the analysis of secondary considerations in
`determining the unpatentability of the claims. Therefore, we are reluctant to
`expunge such a significant amount of information.
`
`6
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`IPR2016-01901
`Patent 8,450,249 B2
`
`
`Thus, as to the Papers Petitioner and Patent Owner request we
`expunge, we deny the parties’ Motions. We decide, however, to maintain as
`confidential and under seal the unredacted versions of sealed Papers 18, 27,
`30, 32, 39, 45, 47, 51, 53, 57, 63, 65, and 79. This will protect confidential
`information without harming the interest in maintaining a complete and
`understandable file history. The redacted, publicly-available versions of the
`sealed Papers (Papers 19, 28, 31, 33, 40, 46, 49, 52, 54, 59, 64, 71, and 82)
`will also remain in the record for public access.
`As to the Exhibits Petitioner requests we expunge, we grant
`Petitioner’s motion to expunge sealed Exhibits 1092, 1108, 2042, 2063,
`2101, 2107 and 2154 as requested. As to the Exhibits Patent Owner requests
`we expunge, we grant Patent Owner’s motion to expunge sealed Exhibits
`1070, 1072, 1074, 1075, 1077, 1083–1087, 1094, 1096–1100, 2050, 2062,
`2063, 2068, 2069, 2072, 2073, 2080–2082, 2089, 2091, 2092, 2094, 2095,
`2098, 2103–2105, 2111, and 2113.
`
`
`
`7
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that sealed Papers 18, 27, 30, 32, 39, 45, 47, 51, 53, 57,
`63, 65, and 79 shall be maintained as confidential and under seal;
`ORDERED that the Motions to Expunge sealed Exhibits 1070, 1072,
`1074, 1075, 1077, 1083–1087, 1092, 1094, 1096–1100, 1108, 2042, 2050,
`2062, 2063, 2068, 2069, 2072, 2073, 2080–2082, 2089, 2091, 2092, 2094,
`2095, 2098, 2101, 2103–2105, 2107, 2111, 2113, and 2154 are granted.
`
`
`
`8
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`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`PETITIONER:
`
`Herbert Hart
`George Wheeler
`Peter Lish
`Ben J. Mahon
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`gwheeler@mcandrews-ip.com
`plish@mcandrews-ip.com
`bhahon@mcandrews-ip.com
`
`Jeffrey A. Andrews
`YETTER COLEMAN LLP
`jandrews@yettercoleman.com
`
`FOR PATENT OWNER:
`
`Elizabeth Weiswasser
`William Ansley
`WEIL GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`sutton.ansley@weil.com
`
`
`9
`
`
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