Proppant Express Investments LLC v. Oren Technologies LLC

1. Case Identification

• Case #: IPR2017-01917
• Patent #: 9,296,518
• Filed: August 7, 2017
• Petitioner(s): Proppant Express Investments, LLC; Proppant Express Solutions, LLC
• Patent Owner(s): Oren Technologies, LLC
• Challenged Claims: 1–3, 6, 8, 10, 13, and 15

2. Patent Overview

• Title: Stackable Containers for Proppant Storage and Dispensing
• Brief Description: The ’518 patent is directed to storage containers for particulate material, specifically proppant used in hydraulic fracturing. The invention describes a stackable, frameless, rectangular container with a hopper in its lower half, top and bottom hatches, and internal and external bracing to allow for transport, storage, and dispensing.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 10, 13, and 15 are obvious over Smith, in view of Krenek, Hedrick, and Claussen.

• Prior Art Relied Upon: Smith (Application # 2008/0226434), Krenek (Application # 2009/0078410), Hedrick (Patent 5,290,139), and Claussen (Application # 2011/0127178).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Smith taught the foundational elements of a stackable, intermodal container with compartments, a hopper, and top and bottom hatches suitable for particulate matter. However, Smith’s container was not specifically designed for high-density proppant and lacked certain reinforcing features. To supply these missing elements, Petitioner pointed to Hedrick, which taught the use of internal support braces to strengthen a hopper. For external hopper support, Petitioner cited Claussen, which disclosed a frame with support members extending from the bottom of the frame to the inclined surfaces of a container’s hopper. Finally, Petitioner argued that Krenek established the intended use, as it disclosed modular containers for storing proppant specifically for hydraulic fracturing operations.
  • Motivation to Combine: The primary motivation argued by Petitioner was the economic pressure created by the fracking boom, which led to a massive increase in demand for proppant. A person of ordinary skill in the art (POSITA) would have been motivated to adapt Smith's known intermodal container for the more demanding application of proppant transport. Because proppant is much denser than other particulate materials, a POSITA would have naturally sought to reinforce Smith's container to increase its payload capacity. Adding known internal bracing (from Hedrick) and external supports (from Claussen) were described as straightforward and predictable solutions to strengthen the container for this purpose.
  • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success. The combination involved applying well-understood strengthening techniques (internal and external bracing) to a standard intermodal container design to handle a heavier load. The result—a stronger container capable of holding more proppant—was a predictable outcome of combining these known elements.

Ground 2: Claim 8 is obvious over Smith, Krenek, Hedrick, and Claussen, in view of Racy.

• Prior Art Relied Upon: Smith (Application # 2008/0226434), Krenek (Application # 2009/0078410), Hedrick (Patent 5,290,139), Claussen (Application # 2011/0127178), and Racy (Patent 3,752,511).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claim 8, which added an "elongated spacer" for axially supporting an upper container. Petitioner argued that while Smith taught stackable containers with standard corner fittings, it did not explicitly disclose a coupling spacer. Racy was introduced to teach this element, as it disclosed a container coupler used to join and space stacked freight containers. Petitioner asserted that Racy’s coupler was an "elongated spacer" that works with the exact type of corner fittings disclosed in Smith.
  • Motivation to Combine: A POSITA would have been motivated to use a spacer like Racy's for several reasons. First, it would allow Smith's stacked containers to be interlocked, increasing stability and safety at a well site, which is a known benefit. Second, the spacer would create a gap between stacked containers, which would facilitate access for forklifts or ensure clearance for the operation of the bottom hatch of the upper container, another logical and practical improvement.
  • Expectation of Success: The combination was presented as obvious and predictable. A POSITA would expect that a standard container coupler (Racy) designed for standard corner fittings would successfully interlock containers equipped with those same fittings (Smith).

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) based on the same prior art combinations as Grounds 1 and 2, but proposed using an obvious one-compartment version of Smith's container instead of the two-compartment version. The motivation for this modification was to optimize the container's payload for road transport, which is often limited by gross vehicle weight restrictions, making a lighter, single-compartment container more efficient.

4. Key Claim Construction Positions

• "bottom" (claims 1-3, 6): Petitioner proposed this term be construed as its broadest reasonable interpretation, meaning "lower portion." This construction is significant because it allows the frame elements of the prior art Smith container (e.g., bottom rails and crossbars) to satisfy the "bottom" limitation of the challenged claims. Petitioner noted this is consistent with the Patent Owner's own proposed construction in related district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. While the Examiner had previously considered the Smith reference during the prosecution of a related application (the ’626 patent), Petitioner contended that it was presenting new arguments and "shedding a new light" on Smith. Specifically, Petitioner pointed out that the Examiner in the related case found that Smith did teach a bottom and a hatch, contrary to the reasons for allowance in the ’518 patent. This inconsistency, coupled with Petitioner's new combination arguments, was asserted to justify a fresh review of the art.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6, 8, 10, 13, and 15 of the ’518 patent as unpatentable.