PTAB

DER2016-00001

Oren Technologies LLC v. Eiden III Kenneth W

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Intermodal Storage and Transportation Container
  • Brief Description: The ’420 application discloses a system for storing and transporting fracking proppant, such as sand, in modular containers. It also describes a corresponding distribution system for delivering the proppant from the containers to a blender at a well site via a conveyor belt.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 were derived from an invention conceived by Petitioner's inventor under 35 U.S.C. § 135.

  • Key Evidence Relied Upon: Oren Affidavit (Ex. 1045), Joshua Oren Affidavit (Ex. 1046), Petitioner’s prior patent filings including Patent 8,827,118 and Patent 8,585,341, engineering drawings (Ex. 1021, 1023), and materials from the 2013 Proppants Summit (Ex. 1031, 1034).
  • Core Argument for this Ground:
    • Prior Conception: Petitioner argued that its inventor, John Oren, conceived of the complete subject matter of the challenged claims well before the applicants of the ’420 application. The conception allegedly began as early as mid-2011 and was corroborated by dated sketches, engineering drawings, and a series of Petitioner's own patent applications filed throughout 2012, which disclosed the core features of the claimed invention. These features included a container with a support frame, a storage body with a sloped discharge section, a slide gate for controlling proppant flow, specific loading openings, and a base unit with a conveyor system for distribution.
    • Communication of Conception: Petitioner contended that John Oren directly communicated this complete conception to Timothy Stefan, a named inventor on the ’420 application, in May 2013. This communication allegedly took place during the 2013 Proppants Summit in Houston, Texas, and an accompanying tour of Petitioner’s SandBox facilities. During the tour, Stefan allegedly viewed Petitioner's patented and patent-pending modular storage units, was shown materials related to the technology, and discussed specific features with Oren, including an "elongated loading door" on a 10-foot container.
    • Mapping to Claims: Petitioner asserted that this communication in May 2013 conveyed each and every limitation of the claims later filed in the ’420 application in April 2014. It was argued that the Respondent’s inventors derived the entire invention from this communication and filed the ’420 application without authorization from Oren. The petition presented extensive claim charts mapping elements of the challenged claims to evidence of Oren's prior conception and the information allegedly communicated to Stefan.

4. Key Claim Construction Positions

  • Petitioner submitted that, with one exception, all claim terms of the ’420 application should be given their broadest reasonable interpretation in light of the specification.
  • clam shell gate: Proposed as "a gate allowing material to pass through when opened and preventing material from passing through when closed."

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the ’420 application is not entitled to the priority date of its provisional application (filed April 12, 2013) because the provisional allegedly fails to disclose or support numerous key features recited in the challenged claims.
  • Petitioner listed multiple elements, such as the "load door," "hatch," "actuator," and "controller," as being absent from the provisional application. This alleged lack of support was used to argue that the conception of these features must have occurred after the provisional filing date, which aligns with the May 2013 date of the alleged communication from Oren to Stefan.

6. Relief Requested

  • Petitioner requested institution of a derivation proceeding and a determination that the inventors of the ’420 application derived the claimed invention from Petitioner's inventor. The requested relief included cancellation of all claims of the ’420 application, addition of the named inventors on Petitioner's ’973 application to the ’420 application, and/or removal of the presently-named inventors from the ’420 application.