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: Mobile Fuel Distribution Station
• Brief Description: The ’955 patent describes a mobile distribution station for distributing fuel or other fluids, particularly for use at hydraulic fracturing sites. The system comprises a container, such as a mobile trailer, that houses pumps, manifolds, reels, and hoses to deliver fluid to external equipment.

3. Grounds for Unpatentability

Ground 1: Claims 1, 11-12 are 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 discloses every element of the challenged independent claims. Van Vliet teaches a mobile fuel delivery system contained on a single trailer (the "container") for use in fracturing operations. It explicitly discloses pumps, first and second manifolds, a plurality of hose reels, hoses fed from the manifolds, valves, fluid level sensors associated with each hose/destination tank, and a controller. Petitioner asserted that Van Vliet's controller (56) is configured to receive signals from the fluid level sensors (54) to individually control the valves (58) and manage fluid flow to multiple pieces of equipment independently.
  • Motivation to Combine (for §103 grounds): To the extent any minor element was not explicitly disclosed, Petitioner contended it would have been an obvious design choice. For example, if the pumps were not considered "in the container," placing them there for a self-contained system would be obvious.
  • Expectation of Success (for §103 grounds): A person of ordinary skill in the art (POSITA) would have a high expectation of success as Van Vliet provides a complete system blueprint, and any modifications would be simple implementations of known engineering principles.

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: This ground built upon Van Vliet as the primary system and used Cable to teach specific spatial arrangements recited in the dependent claims. Specifically, Cable, which describes a mobile lubricating truck, was alleged to teach arranging hose reels on first and second opposed sides of the container (claim 2), providing an aisle walkway down the middle of the container between the reels (claim 3), and arranging the reels in upper and lower rows (claim 5). Petitioner also asserted that Cable taught fluidly connecting hoses through the reels via a conventional rotatable coupling, addressing a potential interpretation of claims 1[e] and 11[e].
  • Motivation to Combine (for §103 grounds): A POSITA would combine Cable's spatial arrangement with Van Vliet’s system to improve functionality and ergonomics. Van Vliet noted that component orientation is a matter of design choice and that valves should be readily accessible. Cable's use of a central aisle and opposed reel banks provides a clear, obvious solution for improving operator access for maintenance, repairs, and inspection within the trailer disclosed by Van Vliet.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because combining the known, advantageous spatial layout from Cable with the functionally similar system of Van Vliet involves applying established design principles to achieve the predictable result of a more organized and accessible system.

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 electronic register specification), and LCR II (a 2015 electronic register overview).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims adding a "register" to the system. Petitioner argued that while Van Vliet disclosed a complete delivery system with a controller, it did not explicitly teach a register for metering and invoicing. The LCR references describe a commercially available electronic register (the LectroCount LCR 600) that performs the exact functions required by the claims: measuring an amount of fluid from a pump (claim 6), communicating with a controller (claim 7), tracking the amount of fluid over a time interval (claim 8), triggering invoice generation (claim 9), and having a resolution of about 0.1 gallons (claim 10).
  • Motivation to Combine (for §103 grounds): A POSITA designing the system in Van Vliet would be motivated to incorporate a commercially available, off-the-shelf electronic register like the one in LCR to add valuable, convenient functionality for tracking fluid flow and billing. The LCR references explicitly marketed the register for this purpose and stated it could be used as a "slave to a host controller," making its integration with Van Vliet's controller straightforward and obvious.
  • Expectation of Success (for §103 grounds): Success would be expected because it involved integrating a standard commercial component into a larger system according to the manufacturer's instructions to achieve its intended, predictable function.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 13 is obvious over Van Vliet in view of DeFosse (Patent 8,360,152) for its teaching of arranging pumps in fluid series. Further grounds combined three references, such as Van Vliet in view of Cable and LCR I/II, arguing they render claims 6-10 and 14-20 obvious.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The petition was the first challenge to the ’955 patent, and the co-pending district court litigation was in its very early 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) would be improper. The petition relied on several prior art references (Cable, LCR I/II, DeFosse) that were never presented to or considered by the Examiner during prosecution. For the one reference that was before the Examiner, Van Vliet, Petitioner argued that it was presented in new combinations and that the Examiner likely failed to fully appreciate its teachings regarding the association of each fluid level sensor with a different hose, a point which required comparing multiple figures and text.

5. Relief Requested

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