Case: 20-2001 Document: 139 Page: 1 Filed: 04/13/2023
NOTE: This disposition is nonprecedential.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
2 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.
Case: 20-2001 Document: 139 Page: 3 Filed: 04/13/2023
LIQUIDPOWER SPECIALTY PRODUCTS v. 3
BAKER HUGHES HOLDINGS
______________________
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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4 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
Case: 20-2001 Document: 139 Page: 5 Filed: 04/13/2023
LIQUIDPOWER SPECIALTY PRODUCTS v. 5
BAKER HUGHES HOLDINGS
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
Case: 20-2001 Document: 139 Page: 6 Filed: 04/13/2023
6 LIQUIDPOWER SPECIALTY PRODUCTS v.
BAKER HUGHES HOLDINGS
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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LIQUIDPOWER SPECIALTY PRODUCTS v. 7
BAKER HUGHES HOLDINGS
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