PTAB

DER2016-00001

Oren Technologies, LLC v. Eiden, III, Kenneth W.

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1. Case Identification

  • Challenged Application #: U.S. Application Serial No. 14/249,420 (Published as Application # 2014/0305769)
  • Filed: October 15, 2015
  • Petitioner(s): Oren Technologies, LLC; SandBox Enterprises, LLC; SandBox Logistics, LLC
  • Patent Owner(s): Kenneth W. Eiden et al. (Applicants)
  • Challenged Claims: 1-18

2. Patent Overview

  • Title: Intermodal Storage and Transportation Container
  • Brief Description: The ’420 application discloses systems for the storage, transportation, and discharge of fracking proppant. The technology centers on modular, intermodal containers with features like sloped walls for gravity-assisted discharge, slide gates, and top-loading doors, which can be integrated into a larger distribution system with a conveyor belt for delivery at a well site.

3. Grounds for Derivation Proceeding

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

  • Prior Conception by Petitioner: Petitioner argued that John Oren, a named inventor on Petitioner's U.S. Application Serial No. 14/882,973 (’973 application), conceived of the complete subject matter of the challenged claims well before the filing date of the Respondent’s ’420 application. This prior conception, dating back to mid-2011, is allegedly corroborated by numerous exhibits, including dated sketches, engineering drawings, and a series of Oren’s own prior patent filings that disclose the key features of the claimed proppant handling system. These features include a container with a support frame, a storage body with a sloped discharge section, a slide gate, and top-loading openings, as well as a distribution system with a base unit, conveyor belt, and discharge chutes. Petitioner contended that this evidence demonstrates conception of every limitation in the challenged claims no later than April 2013.

  • Communication to Respondent's Inventor: Petitioner asserted that John Oren communicated his complete conception to Timothy Stefan, a named inventor on the ’420 application, in May 2013. This communication allegedly occurred during the 2013 Proppants Summit in Houston, TX, and a subsequent personal tour of Petitioner’s SandBox facilities provided to Stefan. During these interactions, Oren allegedly showed Stefan physical embodiments of the proppant containers and distribution system, discussed specific design features such as an "elongated loading door," explained the operational processes, and answered detailed questions from Stefan. Petitioner argued this direct communication provided Stefan with knowledge of every element of the invention later claimed in the ’420 application.

  • Substantial Similarity of Inventions: Petitioner argued that the invention claimed in the ’420 application is the same or substantially the same as the invention conceived by Oren and communicated to Stefan. The petition provided a detailed claim correspondence chart mapping each of the 18 claims of the ’420 application to corresponding claims in Petitioner's ’973 application, asserting they are identical or substantially similar. Petitioner further argued that the claims of the ’420 application were either directly anticipated by the information communicated to Stefan or would have been obvious variations of it.

4. Key Claim Construction Positions

  • Petitioner proposed an explicit construction for one term and a general approach for all others.
  • clam shell gate: "a gate allowing material to pass through when opened and preventing material from passing through when closed."
  • For all other claim terms, Petitioner submitted that they should be given their broadest reasonable interpretation in light of the ’420 application’s specification.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner presented a critical argument regarding the Respondent's priority claim.
  • Lack of Provisional Support: Petitioner contended that the ’420 application is not entitled to the April 12, 2013 filing date of its provisional application. It argued that numerous features essential to the challenged claims—including the load door (claim 1), top hatch (claim 2), filler cone (claim 3), actuators (claims 7-10), and controller/user interface (claims 11-13, 17-18)—are not disclosed, supported, or enabled by the provisional application. Therefore, Petitioner argued the effective filing date of the ’420 application is its actual filing date of April 10, 2014, which is nearly a year after Oren’s communication of the conception to Stefan.

6. Relief Requested

  • Petitioner requested that the Board institute a derivation proceeding pursuant to 35 U.S.C. § 135 and grant relief including, but not limited to, cancellation of all claims of the ’420 application, the addition of the inventors named on the ’973 application to the ’420 application, and/or the removal of the currently named inventors from the ’420 application.