PTAB

IPR2018-01232

Arrows Up LLC v. Oren Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods of storing and moving proppant at location adjacent rail line
  • Brief Description: The ’815 patent discloses methods for storing and transporting hydraulic fracturing proppant (e.g., sand) using a system of separate, stackable containers. The invention aims to provide a mobile, scalable, and flexible alternative to traditional fixed storage silos by facilitating the transfer of proppant from railcars to well sites.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mintz and ISO Standards - Claims 1, 3, 5-8, 10-12, 15-19 are obvious over Mintz in view of the ISO Standards.

  • Prior Art Relied Upon: Mintz (Patent 8,915,691) and various International Organization for Standardization publications, including ISO 1496, ISO 6346, and ISO 15416 (collectively "ISO Standards").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mintz discloses the core method of the ’815 patent. Mintz teaches using modified standard ISO intermodal containers to transport proppant from a supplier to a well site, addressing the same logistical problems of demurrage and inefficient transfer. Mintz discloses containers with structural reinforcements, top input ports for loading, and a bottom discharge port with a sliding gate valve for unloading. It further describes offloading these containers from railcars for temporary storage or transport to a rig. Petitioner contended that any features of the challenged claims not explicitly detailed in Mintz are supplied by the well-known ISO Standards that govern such containers. Specifically, ISO 1496 teaches that ISO containers are stackable and can optionally include forklift pockets. ISO 6346 and ISO 15416 teach using unique codes and bar codes for tracking containers and their contents, satisfying limitations in dependent claims 5 and 16.
    • Motivation to Combine: A POSITA would combine Mintz’s teachings with the ISO Standards because Mintz explicitly discloses modifying a "standard ISO intermodal container." It would have been obvious to apply the very standards governing such containers to implement features that provide known logistical benefits. For example, a POSITA seeking efficient storage would implement the stacking capability mandated by ISO 1496, and one seeking efficient handling would incorporate the optional forklift pockets from the same standard. The desire for "Improved Tracking" mentioned by Mintz would directly motivate using standard tracking methods like bar codes (ISO 15416).
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining a standard ISO container with features defined and governed by its own controlling standards (e.g., stacking, forklift handling, bar-code tracking) involves applying known technologies for their intended, predictable purposes.

Ground 2: Obviousness over Sheesley and ISO Standards - Claims 1-5, 7-18 are obvious over Sheesley in view of the ISO Standards.

  • Prior Art Relied Upon: Sheesley (Application # 2013/0206415) and the ISO Standards.

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Sheesley, like Mintz, discloses the fundamental logistics claimed in the ’815 patent. Sheesley teaches modifying standard cargo containers to transport granular proppant from a source to a frac site to improve supply chain efficiency. It explicitly discloses that these containers can be transported by rail, off-loaded onto trailers, stacked in a storage area or at the frac site, and moved with a "Rough Terrain Cargo Handler." The Sheesley container includes an upper hatch for loading and a lower hatch for unloading, as well as internal structural supports. Petitioner argued that the ISO Standards again supply the conventional features for handling and tracking. The ability to use a forklift (claim 10) is a well-known option for ISO containers (ISO 1496), and tracking proppant amount and mesh size with bar codes (claims 5, 7, 16, 17) is a straightforward application of tracking standards (ISO 6346, ISO 15416).
    • Motivation to Combine: A POSITA would combine Sheesley's system with the ISO Standards because Sheesley’s invention is based on modifying "standard cargo containers." To implement Sheesley’s goal of creating an efficient, intermodal transport system, a POSITA would naturally incorporate standard, widely-adopted ISO features that facilitate container movement and tracking. Using forklift pockets (ISO 1496) is an optimal method for the container handling Sheesley describes, and using bar codes (ISO 15416) is a standard method for the inventory management Sheesley's system enables.
    • Expectation of Success: Success would be reasonably expected because the combination merely applies conventional, standardized logistics tools (forklift pockets, bar codes) to a standard cargo container to achieve their well-understood benefits in a logistics system like the one described by Sheesley.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Mintz alone and Sheesley alone, arguing the primary references inherently taught or suggested all claimed limitations without recourse to the ISO standards.

4. Key Claim Construction Positions

  • "desired location": Petitioner argued this term should be construed broadly as any location, consistent with its lack of a specific definition in the patent and its use during prosecution. This construction allows prior art showing proppant storage at a rail spur, a storage yard, or a well site to meet the limitation.
  • "adjacent": Petitioner proposed this term be construed to mean "nearby," which is consistent with the patent’s description of a hatch being "adjacent to a conveyer." This broad construction prevents a narrow reading that would require components to be touching.
  • "a flow gate positioned adjacent the outlet to control flow": Petitioner argued this phrase should be construed to mean a gate with an open and a closed position that controls proppant flow, a functional interpretation covering conventional valves like those in the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’815 patent as unpatentable under 35 U.S.C. §103.