Grit Energy Solutions, LLC v. Oren Techs., LLC

• Decision Date: 30 April 2020
• Docket Number: 2019-1063
• Citation: 957 F.3d 1309
• Parties: GRIT ENERGY SOLUTIONS, LLC, Appellant v. OREN TECHNOLOGIES, LLC, Appellee
• Court: U.S. Court of Appeals — Federal Circuit

957 F.3d 1309

GRIT ENERGY SOLUTIONS, LLC, Appellant

v.OREN TECHNOLOGIES, LLC, Appellee

2019-1063

United States Court of Appeals, Federal Circuit.

Decided: April 30, 2020

Peter B. Siegal, Norton Rose Fulbright US LLP, Washington, DC, argued for appellant. Also represented by Jonathan S. Franklin; Stephanie DeBrow, Mark T. Garrett, Austin, TX; Charles Bruce Walker, Jr., Houston, TX.

Jason M. Wilcox, Kirkland & Ellis LLP, Washington, DC, argued for appellee. Also represented by John C. O'Quinn, Calvin Alexander Shank; Gianni Cutri, Eugene Goryunov, Meredith Zinanni, Chicago, IL.

Before Prost, Chief Judge, Newman and Wallach, Circuit Judges.

Opinion concurring in part and dissenting in part filed by Circuit Judge Newman.

Prost, Chief Judge.

Grit Energy Solutions, LLC ("Grit Energy") appeals the decision of the Patent Trial and Appeal Board ("Board") in an inter partes review of claims 1-7 of U.S. Patent No. 8,585,341 ("the ’341 patent"), in which the Board found that Grit Energy had not met its burden of showing that the challenged claims were unpatentable as obvious. Grit Energy appealed. For the reasons below, we vacate and remand for further proceedings.

BACKGROUND

I

The ’341 patent covers a system for storing and discharging proppant—a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing. As shown in figure 7 of the ’341 patent, which is reproduced below, the proppant

discharge system includes container 10 positioned on top of support structure 60.

Figures 1 and 3 below represent perspective and cross-sectional views of container 10, respectively. Container 10includes inlet 28 for receiving proppant and outlet 36 through which proppant can be discharged. Gate 44 can be actuated to cover or uncover outlet 36, thereby preventing or permitting the discharge of proppant. Pin 48 protrudes from gate 44.

Figure 5 below depicts support structure 60. Support structure 60 includes actuator 78 with receptacle 76. Pin 48 fits inside receptacle 76 such that actuator 78 actuates the gate 44. When gate 44 is opened, proppant is discharged from outlet 36 to hopper 84 of support structure 60. Hopper 84 includes metering gate 90 for metering proppant onto conveyor 86.

Independent claim 1 is illustrative for purposes of this appeal and recites as follows:

1. A proppant discharge system comprising:

a container having a bottom and a pair of sidewalls and a pair of end walls and a top, said container having an inlet formed at or adjacent to said top, said container having an outlet formed at set bottom, said container having a gate slidably affixed at said outlet so as to be horizontally movable between a first position covering said outlet and a second position opening said outlet, said gate having a pin fixedly affixed thereto, said pin extending outwardly of said gate; and

a support structure having a top surface and an actuator, said container being removably positioned on said top surface of said support structure, said actuator having a receptacle , said actuator for moving said receptacle horizontally adjacent said top surface of said support structure, said pin of said gate engageable with said receptacle when said container is positioned on said top surface of said support structure, said actuator for moving said gate from said first position to said second position.

’341 patent claim 1 (emphases added). Relevant to this appeal, claim 1 requires (a) the container to have a gate with a pin fixedly affixed thereto, and (b) the support structure to have an actuator with a receptacle (hereinafter "the ’341 configuration").

II

Two prior art references are relevant to this appeal: U.S. Patent No. 7,252,309 ("Eng Soon") and French Patent Application No. 2,640,598 ("Constantin").

A

Eng Soon relates to containerized handling of bulk materials. As shown in figure 10 below, Eng Soon discloses supply containers 10 that can be removably stacked and supported on top of stock containers 104’. As shown in figure 1a below, the base of each supply container 10 includes a base plate 20 that can slide open to permit material to discharge from the supply container 10 to the respective stock container 104’ below. Stock containers 104’ can each include an actuator. "[A] projection at the moving end of the actuator engages with a catch on the lower side of [the respective] base plate [20]" to couple the movement of base plate 20 with the actuator. Eng Soon col. 5 ll. 18-25.

It is undisputed that Eng Soon does not disclose the ’341 configuration. According to Grit Energy, Eng Soon discloses the opposite of the ’341 configuration, i.e., Grit Energy contends that Eng Soon discloses the container’s gate having the receptacle and the support structure’s actuator having the pin (hereinafter "the opposite of the ’341 configuration").

Constantin relates to a system for storing and transporting "powdery or granular products" from one container to another. J.A. 172.¹ Constantin discloses a mobile container that can be removably positioned on top of, and supported by, a fixed container. Both containers have an "orifice[ ] used for transferring’ product "from one container to another" and a shutter device for opening and closing their respective orifices. Id. The shutter devices include "means ensuring their mechanical connection when the orifices are placed facing each other so that the opening and closing maneuvers of one [shutter device] ensure[s] the simultaneous opening and closing of the other." J.A. 173.

Constantin "illustrates" its purported invention by way of a "non-limiting example," which is depicted in relevant part in figures 1 and 3 below. Id. In this example, fixed container 1 includes shutter device 3 with shutter blade 8 and actuator 4. Mobile container 7 includes shutter device 5 with shutter blade 9. As shown in figure 3, shutter blade 8 includes stud 15 that fits inside orifice 16 of shutter blade 9 so that actuator 4 actuates shutter blades 8 and 9 as a single unit.

It is undisputed that Constantin’s non-limiting example, standing alone, discloses the opposite of the ’341 configuration. More specifically, Constantin’s example includes an actuator having the pin (Constantin’s "actuating device" 4 having "stud" 15) and a gate having the receptacle (Constantin’s "shutter blade" 9 with "orifice" 16).

In addition to this non-limiting example, claim 5 of Constantin provides that "the means for mechanical connection of the shutters are constituted by at least one stud (15) provided on one of the shutter blades (8) that lodges in a corresponding orifice (16) of the blade of the other shutter." J.A. 177. As discussed in more detail below, the parties dispute whether Constantin’s claim 5 discloses the ’341 configuration.

III

Before the inter partes review leading to this appeal began, Oren Technologies, LLC ("Oren") sued Grit Energy for infringing one or more claims of the ’341 patent. Several months after the case began, Grit Energy transferred ownership of all the products accused of infringement in that action. Later, in January 2017, Oren and Grit Energy jointly stipulated to dismissal "without prejudice [of] all claims and counterclaims related to" the ’341 patent. J.A. 2740 (emphasis added); see also J.A. 2741-43. Also in January 2017, Grit Energy filed a petition requesting inter partes review of claims 1-7 of the ’341 patent. Grit Energy Sols., LLC v. Oren Techs., LLC , No. IPR2017-00768, Paper 2, 2017 WL 3252754 (P.T.A.B. Jan. 26, 2017) (" Petition ") . The Board instituted inter partes review and ultimately determined that Grit Energy had not met its burden of showing that any of the challenged claims were unpatentable.

In relevant part, Grit Energy argued that claims 1-7 would have been obvious over Eng Soon and Constantin, either alone or in further view of additional prior art. The Board found that Grit Energy had not met its burden of proving that the challenged claims were unpatentable, reasoning that neither Eng Soon nor Constantin disclosed the ’341 configuration. With respect to Eng Soon, the Board relied on Grit Energy’s concession that Eng Soon disclosed, at most, a pin and receptacle in the opposite of the ’341 configuration.

With respect to Constantin, the Board highlighted Grit Energy’s concession that the embodiment Constantin depicted in figure 3 discloses only the pin and receptacle in the opposite of the ’341 configuration. The Board disagreed with Grit Energy that claim 5 of Constantin disclosed the ’341 configuration. Relying on the reference numerals included in Constantin’s claim 5 in conjunction with Constantin’s figure 3 to which the reference numerals refer, the Board equated claim 5’s statement of "at least one stud (15) provided on one of the shutter blades (8)" as disclosing only "stud 15 provided on shutter blade 8, which is attached to its actuator ." Grit Energy , No. IPR2017-00768, Paper 27, at 17, 2018 WL 3004632 (P.T.A.B. June 13, 2018) (" Final Written Decision "); see also id. ("[C]laim 5 recites, ‘at least one stud (15) provided on one of the shutter blades (8) that lodges in a corresponding orifice (16) of the blade of the other shutter.’ In other words, Constantin’s claim 5 discloses stud 15 provided on shutter blade 8 , which is attached to its actuator ."); id. ("Constantin’s Figure 3, which we reproduce below, further illustrates the structure disclosed in claim 5."). For these reasons, the Board determined that Constantin’s claim 5 also discloses the pin and receptacle only in the opposite of the ’341 configuration. Id.

Grit Energy argued that a skilled artisan would interpret Constantin’s statement in claim 5 that the stud is "provided on one of the shutter blades" and the orifice is provided on "the blade of the other shutter" as disclosing just that, i.e., that the stud and orifice can each be on either shutter blade. Grit Energy argued that, even though the claims include reference numerals to a figure depicting the stud and orifice in only the...