Proppant Express Investments LLC v. Oren Technologies LLC

1. Case Identification

• Case #: IPR2017-01918
• Patent #: 9,403,626
• Filed: August 7, 2017
• Petitioner(s): Proppant Express Investments, LLC; Proppant Express Solutions, LLC
• Patent Owner(s): Oren Technologies, LLC
• Challenged Claims: 1-7, 9, 10, 12-20

2. Patent Overview

• Title: Storage Container and Container Assembly
• Brief Description: The ’626 patent is directed to container assemblies suitable for the transport, storage, and dispensing of proppants used in hydraulic fracturing operations. The invention describes stackable containers with features for storing and discharging large volumes of material.

3. Grounds for Unpatentability

Ground 1: Obviousness over Smith, Krenek/Uhryn, Hedrick, and Racy - Claims 7, 9, 10, and 12 are obvious over Smith in view of Krenek/Uhryn, Hedrick, and Racy.

• Prior Art Relied Upon: Smith (Application # 2008/0226434), Krenek (Application # 2009/0078410), Uhryn (Application # 2013/0022441), Hedrick (Patent 5,290,139), and Racy (Patent 3,752,511).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smith taught the primary claimed system: a stackable, intermodal container with multiple compartments, each having a top opening, a bottom hopper, and a discharge outlet. Krenek and Uhryn provided the context of using such mobile containers for storing and transporting proppant at a wellsite. Hedrick taught adding internal bracing structures to a hopper to increase its strength and carrying capacity, meeting the "plurality of structural supports" limitation. Racy disclosed container couplers that act as spacers for interlocking stacked containers, meeting the "one or more spacers" limitation.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), facing the booming demand for proppant in the fracking industry, would combine these references to create an efficient and robust proppant logistics system. The motivation was to adapt Smith’s general-purpose container for the specific, high-stress application of handling heavy proppant by increasing its payload with Hedrick’s known bracing techniques. Furthermore, a POSITA would use Racy’s couplers to ensure safe and stable stacking and create necessary clearance between containers, a known practice for intermodal transport.
  • Expectation of Success: A POSITA would have a high expectation of success as the combination involved applying conventional strengthening (Hedrick) and stacking (Racy) technologies to a standard intermodal container (Smith) for a known application (transporting proppant, as taught by Krenek/Uhryn).

Ground 2: Obviousness over Smith, Krenek/Uhryn, Hedrick, and Claussen - Claims 4-6 and 18-20 are obvious over Smith in view of Krenek/Uhryn, Hedrick, and Claussen.

• Prior Art Relied Upon: Smith (Application # 2008/0226434), Krenek (Application # 2009/0078410), Uhryn (Application # 2013/0022441), Hedrick (Patent 5,290,139), and Claussen (Application # 2011/0127178).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the same base combination as Ground 1 but introduced Claussen to teach external support members. Petitioner contended that a POSITA would modify Smith's container by adding both internal braces (from Hedrick) and external supports for the hopper (from Claussen). Claussen taught a bulk material storage apparatus with a frame that includes external support members extending from the frame to the container’s hopper, providing structural reinforcement.
  • Motivation to Combine: The motivation was to further strengthen Smith’s container, specifically the unsupported hopper portion, to reliably handle large, heavy loads of proppant. A POSITA would look to known methods of reinforcing hoppers and find Claussen’s external support members to be a straightforward solution. This would increase the payload and structural integrity of the container, which was a primary design consideration for proppant handling.
  • Expectation of Success: Adding external supports as taught by Claussen to Smith's container was a predictable modification that would have an expected outcome of increased hopper strength.

• Additional Grounds: Petitioner asserted numerous other obviousness grounds based on different permutations of the primary references. These grounds challenged the remaining claims (e.g., 1-3, 13-17) and relied on the same core logic: starting with Smith’s container and adding known features for proppant handling (Krenek/Uhryn), structural reinforcement (Hedrick, Claussen), or stacking logistics (Racy).

4. Key Claim Construction Positions

• "bottom" (all claims): Petitioner proposed the construction "lower portion." Petitioner argued that while the specification used more specific terms like "bottom hatch" or "bottom wall," the broader term "bottom" as used in the claims was not intended to be limited to a specific plane or feature. This construction allowed Petitioner to map features located anywhere in the lower part of the prior art containers, such as bottom frame rails and hopper outlets, to the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) was inappropriate. While the primary reference, Smith, was considered by the examiner during prosecution, Petitioner’s grounds relied on secondary references—notably Hedrick and Claussen—that were not before the examiner. Petitioner contended that these new references taught the critical strengthening features that were key to the obviousness combinations, presenting a substantially new question of patentability.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-7, 9, 10, and 12-20 of Patent 9,403,626 as unpatentable under 35 U.S.C. §103.