Permian Global Inc v. Fuel Automation Station LLC

1. Case Identification

• Case #: IPR2023-01236
• Patent #: 10,815,118
• Filed: August 7, 2023
• Petitioner(s): Permian Global Inc., and Manticore Fuels, LLC
• Patent Owner(s): Fuel Automation Station, LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: Mobile Distribution Station with Multiple Hoses and Reels
• Brief Description: The ’118 patent describes a mobile distribution station for distributing fuel or other fluids at a hydraulic fracturing site. The system uses a pump, manifolds, reels, and hoses located on a mobile trailer to deliver fluids, with a controller to manage flow based on sensor readings.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3 over Van Vliet in view of Coxreels

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988) and Coxreels (a 2014 product webpage).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Vliet, which discloses a mobile fuel delivery system for fracturing sites, teaches nearly all limitations of independent claim 1. Van Vliet shows a mobile trailer with pumps, manifolds, reels, hoses, valves, fluid level sensors, and a controller. The key limitation that Petitioner contended was the basis for the patent's allowance—a "flow passage... running through a respective one of the reels"—is explicitly disclosed by Coxreels. Coxreels describes a commercially available hose reel with a built-in "external fluid path" including a swivel inlet and an outlet riser, demonstrating that fluid passes through the reel structure itself.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) designing the system in Van Vliet would be motivated to use commercially available, cost-effective components. Petitioner asserted that the Coxreels product was a well-known, readily available hose reel marketed for and used in the same fuel delivery industry, making it an obvious choice for implementation in Van Vliet's system.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining the Coxreels reel with the Van Vliet system would involve the simple and predictable integration of a standard, off-the-shelf component into a larger system for its intended purpose.

Ground 2: Obviousness of Claims 4-18 over Van Vliet in view of Shoap

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988) and Shoap (Patent 7,819,345).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring "sensor communication lines" routed through the hoses. Petitioner contended that while Van Vliet discloses using either "wired or wireless" communication between its sensors and controller, it does not detail the routing for a wired option. Shoap remedies this by teaching a "wired fluid conduit" (hose) specifically designed for both fluid and electrical distribution. Shoap’s hose includes communication wires routed within a space between an inner tube and an outer sleeve that circumscribes the tube, directly teaching the limitations of claims 4, 5, 10, and 14-18.
  • Motivation to Combine: A POSITA implementing the "wired" communication option described in Van Vliet would seek to avoid clutter and protect the wiring. Shoap’s integrated wired hose design provides a compact, safe, and convenient solution for routing communication lines, making it an advantageous and obvious choice to incorporate into the Van Vliet system.
  • Expectation of Success: Success would be expected, as the combination involves using a known type of wired hose (from Shoap) to accomplish a function (wired communication) already contemplated by the primary reference (Van Vliet).

Ground 3: Obviousness of Claims 12-13 over Van Vliet in view of Shoap and Hosecraft

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988), Shoap (Patent 7,819,345), and Hosecraft (a 2013 product webpage).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted dependent claims 12 and 13, which add limitations for "bands securing the sleeve on the tube" and the bands being "steel." The combination of Van Vliet and Shoap provides the base system with a hose having a tube and an outer sleeve. Hosecraft, a commercial supplier of hose accessories, explicitly discloses various clamps for securing hoses, including a "BAND CLAMP" made of "high carbon coated steel or stainless steel."
  • Motivation to Combine: A POSITA implementing the tube-and-sleeve hose from Shoap would recognize the practical necessity of securing the sleeve to the tube to prevent it from sliding. It would be an obvious design choice to use a standard, commercially available clamping mechanism. Hosecraft's steel band clamps were readily available and designed for this exact purpose in the hose industry.
  • Expectation of Success: The expectation of success would be very high, as using a standard band clamp to secure a hose sleeve is a simple, routine, and predictable mechanical step.

• Additional Grounds: Petitioner asserted that claims 1-3 are anticipated by or obvious over Van Vliet alone. Petitioner also asserted that claims 4-9 and 15-18 are obvious over the three-way combination of Van Vliet, Coxreels, and Shoap.

4. Arguments Regarding Discretionary Denial

• Fintiv (§314(a)): Petitioner argued that discretionary denial under Fintiv is inappropriate. They contended that the parallel district court litigation is in its earliest stages, with no trial date, scheduling conference, or claim construction activities having occurred. Petitioner asserted that the merits of the petition are compelling and outweigh any potential inefficiencies of parallel proceedings.
• Advanced Bionics (§325(d)): Petitioner argued that denial under §325(d) is also unwarranted. Although Van Vliet was before the examiner during prosecution, the secondary references (Coxreels, Shoap, and Hosecraft) were not. Petitioner asserted these references are not cumulative because they teach the specific limitations the examiner relied upon for allowance. Furthermore, Petitioner argued that the examiner likely failed to appreciate the full scope of Van Vliet’s disclosure regarding flow passages running through the reels, and that the new evidence and expert declaration presented in the petition demonstrate the Office erred in allowing the claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’118 patent as unpatentable.