Paper No. 74
`Trials@uspto.gov
`571-272-7822 Entered: November 2, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES, a GE COMPANY, LLC,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01901 (Patent 8,450,249 B2)
`Case IPR2016-01903 (Patent 8,426,498 B2)
` Case IPR2016-01905 (Patent 8,450,250 B2)1
`____________
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in all three
`cases. The parties are not authorized to use this style heading for subsequent
`papers without Board preapproval.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 2, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES, a GE COMPANY, LLC,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01901 (Patent 8,450,249 B2)
`Case IPR2016-01903 (Patent 8,426,498 B2)
` Case IPR2016-01905 (Patent 8,450,250 B2)1
`____________
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in all three
`cases. The parties are not authorized to use this style heading for subsequent
`papers without Board preapproval.
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`These three proceedings are on remand from the U.S. Court of
`Appeals for the Federal Circuit. On October 27, 2020, Patent Owner
`contacted the Board by email requesting a conference call to discuss the
`procedure to be followed on remand, about which the parties could not
`agree. Exhibit A.
`On October 30, 2020, Judges Kalan, Kaiser, and Ankenbrand held a
`conference call with counsel for the parties to discuss the parties’ requests.
`A court reporter engaged by Patent Owner was also on the call. Patent
`Owner agreed to file the reporter’s transcript as an exhibit promptly when it
`becomes available. The transcript will serve as a record of the parties’
`arguments regarding Petitioner’s request.
`
`Briefing on Remand
`Patent Owner requested 5 pages of concurrent briefing per side
`regarding the subject of the remand, namely, objective indicia arguments.
`Patent Owner indicated that no new evidence was necessary, and requested
`28 days to submit its brief. Petitioner disagreed that briefing was necessary.
`Having considered the parties’ positions, we authorize concurrent
`briefing by the parties. The parties’ briefs shall be no more than 5 pages
`each, limited to the objective indicia arguments identified on remand, and
`shall be filed by close of business on November 25, 2020. No additional
`evidence is authorized.
`Arthrex Issue
`Patent Owner requested 5 pages of briefing on a stay in view of the
`pending United States Supreme Court review of the Federal Circuit decision
`in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), to
`
`
`
`2
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`be filed within 14 days, with an opportunity for Petitioner to respond in 14
`days with its own 5-page brief. Petitioner disagreed that briefing was
`necessary or proper, arguing that Patent Owner waived the issue by not
`raising it in a timely manner. Patent Owner agreed that this issue was being
`raised for the first time during the conference call.
`In these cases, Patent Owner 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 Decisions.2
`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. 19-1838 (Fed. Cir. Oct. 18, 2019), ECF Nos.
`26, 27 (Patent Owner’s Opening Brief on appeal, which fails to raise any
`constitutionality or APA arguments on appeal) (also filed in Nos. 19-1839
`and 19-1840). Patent Owner cannot cure that forfeiture by raising this
`constitutional challenge for the first time in a telephonic request for briefing
`following remand.
`
`
`
`
`2 Patent Owner also failed to raise this constitutional challenge in its Patent
`Owner Response, Sur-Reply, or during the oral hearing in the case before
`remand. IPR2016-01901, Papers 18, 19 (Patent Owner Response);
`Papers 39, 40 (Sur-Reply); Papers 63, 64 (hearing transcripts) (similar
`papers filed in IPR2016-01903 and IPR2019-01905).
`
`
`
`3
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`Accordingly, it is:
`ORDERED that the following additional briefing, limited to the issue
`of objective indicia, is authorized:
`Patent Owner’s Brief limited to 5 pages, due no later than close of
`business on November 25, 2020;
`Petitioner’s Brief limited to 5 pages, due no later than close of
`business on November 25, 2020;
`FURTHER ORDERED that no new evidence may be submitted with
`the briefing; and
`FURTHER ORDERED that no further briefing is authorized.
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`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
`doug.mcclellan@weil.com
`elizabeth.weiswasser@weil.com
`melissa.hotze@weil.com
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`EXHIBIT A
`
`
`From: Hotze, Melissa <melissa.hotze@weil.com>
`Sent: Tuesday, October 27, 2020 1:56 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: LSPI BH FC <LSPI.BH.FC@weil.com>; BakerHughes249IPR
`<BakerHughes249IPR@mcandrews-ip.com>
`Subject: IPR2016-01901 IPR2016-01903 and IPR2016-01905 - Remand
`
`Your Honors,
`
`The Final Written Decisions in these cases were appealed to the Federal Circuit (Case
`No. 19-1838), which remanded the cases to the Board. The mandate issued on October
`14, 2020.
`
`As directed by SOP 9 (page 5), the parties have met and conferred by email concerning
`the procedure to be followed on remand.
`
`No agreement was reached.
`
`The parties are available for a telephone conference call with the panel on any of
`Wednesday, October 28, after 1:00 PM CDT, Friday, October 30 before 2:00 PM CTD,
`and all day Tuesday and Wednesday, November 3 and 4.
`
`Respectfully,
`
`Melissa Hotze
`
`
`
`
`
`Melissa Hotze
`
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002-2755
`melissa.hotze@weil.com
`+1 713 546 5033 Direct
`+1 713 224 9511 Fax
`
`
`The information contained in this email message is intended only for use of the individual or entity
`named above. If the reader of this message is not the intended recipient, or the employee or
`agent responsible to deliver it to the intended recipient, you are hereby notified that any
`dissemination, distribution or copying of this communication is strictly prohibited. If you have
`received this communication in error, please immediately notify us by email,
`postmaster@weil.com, and destroy the original message. Thank you.
`
`
`
`6
`
`
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