Case: 20-2001 Document: 139 Page: 1 Filed: 04/13/2023
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`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC., FKA
`LUBRIZOL SPECIALTY PRODUCTS, INC.,
`Appellant
`
`v.
`
`BAKER HUGHES HOLDINGS, LLC, FKA BAKER
`HUGHES, A GE COMPANY, LLC,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2020-2001, 2022-1248
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`00734.
`
`
`-------------------------------------------------
`
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC., FKA
`LUBRIZOL SPECIALTY PRODUCTS, INC.,
`Appellant
`
`
`

`

`Case: 20-2001 Document: 139 Page: 2 Filed: 04/13/2023
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`2
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
` BAKER HUGHES HOLDINGS
`
`v.
`
`BAKER HUGHES HOLDINGS, LLC, FKA BAKER
`HUGHES, A GE COMPANY, LLC,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2021-2283, 2021-2284, 2021-2285, 2022-1152, 2022-1153,
`2022-1155
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`00734, IPR2016-01901, IPR2016-01903, IPR2016-01905.
`______________________
`
`Decided: April 13, 2023
`______________________
`
`EDWARD R. REINES, Weil, Gotshal & Manges LLP, Red-
`wood Shores, CA, argued for appellant. Also represented
`by ELIZABETH WEISWASSER, New York, NY; ZACHARY TRIPP,
`Washington, DC.
`
` PETER LISH, McAndrews, Held & Malloy, Ltd., Chicago,
`IL, argued for appellee. Also represented by HERBERT D.
`HART, III, BEN MAHON.
`
` DANIEL KAZHDAN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for interve-
`nor. Also represented by MARY L. KELLY, THOMAS W.
`KRAUSE, FARHEENA YASMEEN RASHEED.
`
`

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`Case: 20-2001 Document: 139 Page: 3 Filed: 04/13/2023
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
`BAKER HUGHES HOLDINGS
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`3
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` ______________________
`
`Before LOURIE, REYNA, and CHEN, Circuit Judges.
`LOURIE, Circuit Judge.
`LiquidPower Specialty Products Inc. (“LSPI”) appeals
`from two final written decisions on inter partes review by
`the United States Patent and Trademark Office Patent
`Trial and Appeal Board (“the Board”) holding that claims
`8–10 of U.S. Patent 8,022,118 (the “’118 patent”), claims
`1–5 of U.S. Patent 8,450,249 (the “’249 patent”), claim 3 of
`U.S. Patent 8,426,498 (the “’498 patent”), and claims 1–9
`of U.S. Patent 8,450,250 (the “’250 patent”) are unpatenta-
`ble as obvious. See Baker Hughes v. LiquidPower Specialty
`Prods. Inc., Case No. IPR2016-00734, Paper No. 93, J.A.
`1–31 (P.T.A.B. Nov. 14, 2019) (“’118 Patent Decision”);
`Baker Hughes v. LiquidPower Specialty Prods. Inc., Case
`Nos. IPR2016-01901, IPR2016-01903, IPR2016-01905, Pa-
`per No. 79, J.A. 8759–8790 (Apr. 30, 2021) (“’249 Patent, et
`al. Decision”). We consolidated these appeals for oral argu-
`ment and we decide both of them in this opinion. We af-
`firm.
`
`BACKGROUND
`The patents in suit are owned by LSPI and are directed
`to a drag reducing agent (“DRA”) that reduces friction, or
`drag, when heavy crude oils are transported through a
`pipeline. Heavy, asphaltenic crude (“HAC”) is typically dif-
`ficult to transport by pipeline due to drag, and historically,
`undesirable steps were taken to transport HAC such as
`adding diluents, heating the oils to reduce viscosity, or
`transporting the oils by rails or truck rather than pipeline.
`The claims at issue are method claims that recite introduc-
`ing a polymer having a heteroatom, i.e., an atom other than
`carbon or hydrogen, into a pipeline at a desired molecular
`weight and concentration to reduce the drag of the HAC.
`LSPI markets ExtremePower® products that embody the
`claimed methods.
`
`

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`Case: 20-2001 Document: 139 Page: 4 Filed: 04/13/2023
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`4
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
` BAKER HUGHES HOLDINGS
`
`These cases have been before us previously. Baker
`Hughes Holdings, LLC (“Baker Hughes”) petitioned for in-
`ter partes review, arguing that several claims of the patents
`in suit were unpatentable as obvious over various prior art
`references. In its original decisions, the Board held that all
`of the challenged claims would have been obvious over the
`asserted prior art. On appeal from the Board’s holding
`with respect to the ’118 patent, we found that substantial
`evidence supported the Board’s findings that (1) the prior
`art disclosed all claim limitations, and (2) that a person of
`ordinary skill would have been motivated to combine the
`prior art references with a reasonable expectation of suc-
`cess. See LiquidPower Specialty Prods. Inc. v. Baker
`Hughes, 749 F. App’x 965, 969 (Fed. Cir. 2018). However,
`we held that the Board erred by not considering the objec-
`tive indicia evidence, and we vacated and remanded the
`Board’s decision so that it could consider such evidence. Id.
`Similarly, on appeal from the Board’s holdings with respect
`to the ’249, ’498, and ’250 patents, we vacated and re-
`manded the Board’s decision in light of its failure to con-
`sider the objective indicia evidence. See LiquidPower
`Specialty Prods. Inc. v. Baker Hughes, 810 F. App’x 905,
`906–07 (Fed. Cir. 2020).
`On remand, the Board issued two final written deci-
`sions holding that the challenged claims were unpatenta-
`ble as obvious. In those decisions, the Board addressed
`LSPI’s objective indicia evidence and found it to be entitled
`to little weight. Specifically, the Board found that the evi-
`dence of long-felt need, failure of others, unexpected re-
`sults, industry praise, commercial success, copying, and
`acquiescence, when considered and weighed with the
`strong and substantial evidence of the factors favoring ob-
`viousness, supported a conclusion that the challenged
`claims would have been obvious.
`LSPI appealed the two Board decisions to this court.
`However, following the Supreme Court’s decision in United
`States v. Arthrex, Inc., we remanded the case for the limited
`
`

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`Case: 20-2001 Document: 139 Page: 5 Filed: 04/13/2023
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
`BAKER HUGHES HOLDINGS
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`5
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`purpose of allowing LSPI the opportunity to request direc-
`tor rehearing of the final written decision. 141 S. Ct. 1970
`(2021). LSPI then filed that request, and Andrew
`Hirshfeld, the Commissioner for Patents, performing the
`duties of the director, denied that request. LSPI then filed
`an additional notice of appeal. We have jurisdiction under
`28 U.S.C. §§ 1295(a)(4)(A).
`DISCUSSION
`We review the Board’s legal determinations de novo
`and its factual findings for substantial evidence. In re Van
`Os, 844 F.3d 1359, 1360 (Fed. Cir. 2017). Obviousness is a
`question of law based on underlying facts. Arctic Cat Inc.
`v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,
`1358 (Fed. Cir. 2017). The obviousness inquiry requires
`consideration of the four Graham factors: “(1) the scope and
`content of the prior art; (2) the differences between the
`claims and the prior art; (3) the level of ordinary skill in
`the art; and (4) objective considerations of nonobvious-
`ness.” Id. (citing Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966)). These are questions of fact. Id. Objective
`indicia include long-felt but unresolved need, failure of oth-
`ers, skepticism of experts, unexpected results, industry
`praise, commercial success, copying, and acquiescence. See
`Ruiz v. A.B. Chance Co., 234 F.3d 654, 660, 667–68 (Fed.
`Cir. 2000).
`LSPI argues that the Board misunderstood our man-
`date to preclude it from evaluating on remand, in light of
`the objective indicia evidence, whether there was a motiva-
`tion to combine the prior art with a reasonable expectation
`of success. LSPI further adds that our mandate did not set
`in stone the Board’s prior findings, but instead that we
`merely determined that substantial evidence existed to
`support those findings.
` LSPI also argues that the Board improperly disre-
`garded the evidence of skepticism, unexpected results, and
`long-felt need on the ground that although the evidence
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`Case: 20-2001 Document: 139 Page: 6 Filed: 04/13/2023
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`6
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
` BAKER HUGHES HOLDINGS
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`showed that LSPI’s invention worked better than the prior
`art, the patents in suit did not claim the degree of improve-
`ment. LSPI adds that the Board improperly discounted
`highly probative evidence of competitors’ failures because
`they occurred after ExtremePower was released to the pub-
`lic. LSPI further argues that the Board improperly disre-
`garded evidence of acquiescence, industry praise, and
`ExtremePower’s commercial success. Lastly, LSPI argues
`that the Board improperly applied what it refers to as a
`“knockdown” approach where it weighed the objective indi-
`cia against its erroneous prima facie factual findings relat-
`ing to the other three Graham factors.
`Baker Hughes responds that the Board’s findings were
`supported by substantial evidence and that it did not im-
`properly apply any “knockdown” approach. Baker Hughes
`further argues that the Board properly considered LSPI’s
`objective indicia evidence before concluding that the evi-
`dence was unpersuasive.
`We agree with Baker Hughes. The Board found, after
`a thorough review of all the evidence, that the objective in-
`dicia evidence, when weighed with the substantial evi-
`dence from the other three Graham factors, supported a
`conclusion that the challenged claims would have been ob-
`vious. Moreover, our remand was clearly limited to weigh-
`ing the objective indicia evidence; it was not an opportunity
`for LSPI to reargue all aspects of the obviousness inquiry.
`The Board found there was no long-felt need, and no
`failure of others. It accorded little weight to the alleged
`commercial success, and it found that the stipulated in-
`junction against an industry competitor may have been en-
`tered into principally to avoid further litigation rather than
`out of respect for the validity of the patents. Other asser-
`tions of objective indicia were not given persuasive weight
`in the obviousness analysis.
`The Board’s analysis was proper and its factual find-
`ings concerning objective indicia and application of the
`
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`Case: 20-2001 Document: 139 Page: 7 Filed: 04/13/2023
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`LIQUIDPOWER SPECIALTY PRODUCTS v.
`BAKER HUGHES HOLDINGS
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`7
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`other three Graham factors were supported by substantial
`evidence. The Board’s obviousness analysis of the prior
`art’s disclosures and motivation to combine the prior art
`with a reasonable expectation of success was consistent
`with its previous analysis that we found supported by sub-
`stantial evidence. The Board further complied with our in-
`structions on remand to consider the objective indicia
`evidence and whether that evidence impacted the obvious-
`ness of the asserted claims. See ’118 Patent Decision at 29
`(“Having considered the parties’ arguments and evidence,
`we evaluate all of the evidence together to make a final de-
`termination of obviousness.”); ’249 Patent, et al. Decision at
`8788 (“[W]e determine that the evidence of long-felt need,
`failure of others, unexpected results, industry praise, com-
`mercial success, copying, and acquiescence, when consid-
`ered and weighed with the strong and substantial evidence
`as to the other three Graham factors, supports a conclusion
`that [the challenged claims] would have been obvious.”).
`The Board’s findings were supported by substantial evi-
`dence. Thus, we affirm the Board’s holding that the as-
`serted claims in the patents in suit would have been
`obvious over the prior art.
`CONCLUSION
`We have considered LSPI’s remaining arguments but
`find them unpersuasive. For the foregoing reasons, the de-
`cision of the Board is affirmed.
`AFFIRMED
`
`