Permian Global Inc v. Fuel Automation Station LLC

1. Case Identification

• Case #: IPR2023-01238
• Patent #: 10,974,955
• Filed: August 7, 2023
• Petitioner(s): Permian Global Inc., and Manticore Fuels, LLC
• Patent Owner(s): Fuel Automation Station, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Distribution Station
• Brief Description: The ’955 patent describes a self-contained, mobile distribution station for fuel or other fluids, particularly for use at hydraulic fracturing sites. The system comprises pumps, manifolds, reels, and hoses housed within a container or mobile trailer to facilitate fluid distribution.

3. Grounds for Unpatentability

Ground 1: Claims 1, 11-12 are Anticipated and/or Obvious over Van Vliet

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Vliet, which discloses a fuel delivery system for fracturing operations contained on a single trailer, teaches every limitation of the challenged claims. Van Vliet allegedly discloses a container (trailer), pumps, first and second manifolds, a plurality of reels and associated hoses, valves situated between the manifolds and reels, fluid level sensors associated with each hose, and a controller configured to individually operate the valves in response to the sensors. Petitioner asserted that combining disclosures from different figures in Van Vliet shows that each fluid level sensor is associated with a different one of the hoses, a key limitation of the independent claims.
  • Motivation to Combine (for §103 grounds): To the extent any minor element is not explicitly disclosed (e.g., precise pump location inside the trailer), Petitioner argued it would have been an obvious design choice to place components within the trailer for a self-contained system, a motivation expressly contemplated by Van Vliet’s disclosure that spatial orientation is a matter of design choice.
  • Expectation of Success: A POSITA would have had a high expectation of success as the system in Van Vliet is described as a complete and operable fuel delivery system.

Ground 2: Claims 1-5 and 11-12 are obvious over Van Vliet in view of Cable

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988) and Cable (Patent 3,810,487).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while Van Vliet provides the primary system, Cable supplies the specific spatial arrangement of reels recited in the dependent claims. Cable, which discloses a mobile lubrication truck, teaches arranging hose reels on first and second opposed sides of the container (claim 2), providing an aisle walkway down the middle between the reels (claim 3), and arranging the reels in upper and lower rows (claim 5). Petitioner further contended that Cable discloses fluidly connecting hoses through the reels via conventional rotatable couplings (swivel joints), teaching a limitation that the Patent Owner may argue is required by the independent claims.
  • Motivation to Combine: A POSITA would combine Cable’s layout with Van Vliet’s system to improve functionality and accessibility. Van Vliet expressly states that valves should be readily accessible; incorporating Cable’s central aisle walkway would be a known and simple way to achieve this. Arranging reels on opposing sides, as taught by Cable, would also allow for easier deployment of hoses to equipment on both sides of the trailer, a scenario described in Van Vliet.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references describe analogous mobile fluid delivery systems. Incorporating Cable's well-known spatial configuration into Van Vliet’s system involved applying known design principles to achieve the predictable result of improved accessibility and operational efficiency.

Ground 3: Claims 6-10 and 14-20 are obvious over Van Vliet in view of LCR I and/or LCR II

• Prior Art Relied Upon: Van Vliet (Application # 2011/0197988), LCR I (a 2014 product specification for the LectroCount LCR 600), and LCR II (a 2015 product overview for electronic registers).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination renders obvious the claims requiring a "register." LCR I and LCR II describe a commercially available electronic register (the LCR 600) for fuel delivery systems. These references allegedly disclose a register configured to measure fluid from a pump (claim 6), communicate with a controller (claim 7), track fluid amount over a time interval (claim 8), trigger invoice generation (claim 9), and operate as an electronic register with a resolution of 0.1 gallons (claim 10).
  • Motivation to Combine: A POSITA designing the system of Van Vliet would have been motivated to incorporate a commercially available, off-the-shelf electronic register like the one described in LCR I/II. This would be a cost-effective and straightforward way to add the desirable functionality of displaying flow data, tracking usage, and generating invoices, improving upon Van Vliet’s basic control system.
  • Expectation of Success: Success would be expected, as it would merely involve connecting the LCR register to Van Vliet’s existing controller and components according to the manufacturer’s instructions. This constitutes the application of a known technology (electronic register) to a known system (mobile fuel delivery) to yield predictable results.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 13 is obvious over Van Vliet and DeFosse (for teaching pumps arranged in series) and that various claims are obvious over three-way combinations of the primary references (e.g., Van Vliet, Cable, and LCR I/II).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv is unwarranted. The parallel district court litigation was in its earliest stages, with no trial date set, no scheduling conference held, and no claim construction activities having occurred.
• Petitioner also argued that denial under §325(d) is improper. While Van Vliet was before the Examiner, the petition presents it in new combinations with Cable, LCR I/II, and DeFosse, which were not considered during prosecution. Petitioner asserted these new references are not cumulative and teach key limitations that the Examiner previously had to address. Furthermore, Petitioner argued the Examiner likely failed to fully appreciate the teachings of Van Vliet itself, particularly regarding the association of each fluid sensor with a different hose.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’955 patent as unpatentable.