IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Inventor: John Oren
`
`Confirmation N0.: 6777
`
`Serial N0.: 14/882,973
`
`Examiner: Not yet assigned
`
`Filing Date: October 14, 2015
`
`Art Unit:
`
`Not yet assigned
`
`For: PROPPANT DISCHARGE
`AND STORAGE SYSTEM
`
`
`
`
`
`PETITION TO INSTITUTE DERIVATION PROCEEDING
`
`PURSUANT TO 35 USC § 135
`
`Mail Stop Patent Board
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`Dear Patent and Trial Appeal Board:
`
`This is a Petition to Institute a Derivation Proceeding (“Petition”) under 35
`
`USC § 135 with respect to claims 1—18 in the following pending US. Patent
`
`Application:
`
`Applicants: Kenneth W. Eiden et a1.
`Serial N0.: 14/249,420 (“the ‘420 Application” or “Respondent’s
`Application”)
`Filing Date: April 10, 2014
`Priority Claim: US. Provisional Patent Application 61/811,493, filed
`April 12, 2013 (the ‘493 Provisional”)
`Title: Intermodal Storage and Transportation Container
`Confirmation N0.: 1 175
`
`Examiner: Deuble, Mark A-
`Art Unit: 3651
`
`“DE - 0746861000008 - 968533 V1
`
`

`

`Pursuant to 35 U.S_C. § 135 and 37 CFR § 42 et seq, Petitioner respectfully
`
`submits that this Petition should be granted and a derivation proceeding should be
`
`instituted based on the following: (1)
`
`this petition is timely filed, within one (1)
`
`year of first publication of the ‘420 Application; (2) Petitioner has standing by
`
`virtue of being the named Applicant on US. Patent Application Number
`
`14/882,973 (“the ‘973 Application”),
`
`filed October 14, 2015;
`
`(3)
`
`the ‘420
`
`Application published with 18 claims that are identical or substantially similar to
`
`claims in the ‘973 Application; (4) those 18 claims relate to invention(s) that were
`
`conceived by one or more inventors named on the ‘973 Application prior to a
`
`priority date to which each of the claims in the “420 Application is legally entitled,
`
`and that conception was communicated, directly or indirectly,
`
`to one or more
`
`inventors named on the ‘420 Application, including unauthorized access to the
`
`conception being provided to one or more inventors named on the ‘420
`
`Application, resulting in direct or indirect communication of the conception; (5) by
`
`virtue of the disclosure, the inventions of those 18 claims in the ‘420 Application
`
`were derived from the inventor(s) named on the “973 Application; and (6) by the
`
`papers submitted herewith, this Petition is supported by substantial, corroborated
`
`evidence that supports a determination of derivation and institution of a derivation
`
`proceeding.
`
`“DE - 074686I000008 - 968533 v1
`
`

`

`TABLE OF CONTENTS
`
`A.
`
`Real Party in Interest .................................................................... 5
`
`B.
`
`Lead and Backup Counsel ............................................................ 5
`
`C
`
`Related Petitions ........................................................................... 6
`
`D.
`
`Standing ........................................................................................ 6
`
`E.
`
`Timeliness of Petition ................................................................... 6
`
`F.
`
`Relief Requested ........................................................................... 7
`
`G.
`
`Correspondence between Claims of the ‘420 Application
`
`and Claims of the ‘973 Application.............................................. 7
`
`H.
`
`Construction of the Claims at Issue .............................................. 8
`
`I.
`
`J.
`
`Introduction ................................................................................... 16
`
`Prior Conception of the Claimed Subject Matter and
`
`Communication of that Conception to an Inventor of
`
`the ‘420 Application ..................................................................... 17
`
`a.
`
`Statement of Facts: Prior Conception of the Claimed
`
`Subject Matter .................................................................... 17
`
`b.
`
`Substantial Evidence of Prior Conception Has Been
`
`Presented ............................................................................ 22
`
`0.
`
`Statement of Facts: Communication of Conceived
`
`“DE - D?4686F000008 - 968533 V1
`
`

`

`Subject Matter ................................................................... 28
`
`d.
`
`Substantial Evidence of Communication Has Been
`
`Presented ............................................................................ 30
`
`e.
`
`Substantial Evidence of Derivation Has Been
`
`Presented ............................................................................ 38
`
`K.
`
`The ‘420 Application was Filed without Authorization ............... 42
`
`L.
`
`Fee — 37 CFR § 42-404 ................................................................. 43
`
`M.
`
`Conclusion .................................................................................... 43
`
`APPENDIX OF EXHIBITS ................................................................. 44
`
`Certificate of Service .............................................................................. 49
`
`“DE - D?4686F000008 - 968533 V1
`
`4
`
`

`

`A.
`
`Real Parg in Interest
`
`The real parties in interest for purposes of this Derivation Petition are Oren
`
`Technologies, LLC (hereinafter “Oren” or “Petitioner”), a business organized
`
`under the laws of Texas and owner of the ‘973 Application; SandBox Enterprises,
`
`LLC (hereinafter “SandBox Enterprises”), a business organized under the laws of
`
`Texas and a licensee of the ‘973 Application; and SandBox Logistics, LLC
`
`(hereinafter “SandBox”), a business organized under the laws of Texas, a wholly—
`
`owned subsidiary of SandBox Enterprises, and a sublicensee of the ‘973
`
`Application.
`
`B.
`
`Lead and Backup Counsel
`
`The lead counsel for Petitioner is:
`
`Jeffrey S. Whittle
`Registration No. 36,382
`HOGAN LOVELLS US LLP
`
`700 Louisiana Street, Suite 4300
`
`Houston, TX 77002
`Tel: (713) 632—1405
`Fax: (800) 632-1401
`jeffrey.whittle@hoganlovells_com
`
`The backup counsel for Petitioner is:
`
`Jason D. Lohr
`
`Registration No. 48,163
`HOGAN LOVELLS US LLP
`
`3 Embarcadero Center, Suite 1500
`San Francisco, CA 94111
`Tel:
`(415) 374-2339
`
`“DE - DT46861000008 - 968533 V1
`
`

`

`Fax: (415) 374—2499
`jason.lohr@hoganlovells.com
`
`A Power of Attorney appointing these attorneys, using Customer Number
`
`132858, with which both lead and backup counsel are hereby identified as being
`
`associated per § 1.32, was included with the ‘973 Application as filed, and a copy
`
`of the Power of Attorney has been submitted to the Board as a PDF file.
`
`Please address all correspondence to the lead counsel indicated above.
`
`Petitioner consents to electronic service by email at the email addresses
`
`provided above.
`
`C.
`
`Related Petitions
`
`There are no related petitions at
`
`this
`
`time. This
`
`response will be
`
`supplemented in the event related petitions are subsequently filed.
`
`D.
`
`Standing
`
`Pursuant to 37 CFR 42.402, “[a]n applicant for patent may file a petition to
`
`institute a derivation proceeding in the Office.” Petitioner is the Applicant for the
`
`‘973 Application and the owner by Assignment of the entire right, title, and interest
`
`in all inventions disclosed in the “973 Application. The Assignment was filed with
`
`the USPTO at the time the ‘973 Application was filed and was submitted for
`
`recordation with the USPTO.
`
`E.
`
`Timeliness of Petition
`
`“DE - DT4686I000008 - 968533 V1
`
`6
`
`

`

`The ‘420 Application (attached hereto as Exhibit 1011 and referred to herein
`
`as “the ‘420 Application”) was filed on April 10, 2014 and claims a priority date of
`
`April 12, 2013, on which US Provisional Patent Application No. 61/811,493 was
`
`filed. As discussed further herein, Petitioner does not concede that any of the 18
`
`claims of the ‘420 Application are entitled to the April 12, 2013 priority date. The
`
`‘420 Application was first published as U.S. Publication No. 2014/0305769 on
`
`October 16, 2014. This Derivation Petition was first filed with the USPTO,
`
`meeting all statutory requirements, on October 15, 2015;
`
`thus,
`
`this Derivation
`
`Petition was timely filed within one (1) year of the date of first publication of the
`
`‘420 Application.
`
`F.
`
`Relief Reguested
`
`Petitioner hereby requests any and all relief available under 35 U.S.C. § 135
`
`and 37 CFR § 42 et seq, including but not limited to: cancellation of all claims of
`
`the ‘420 Application derived from Petitioner, addition of the named inventors on
`
`the ‘973 Application to the ‘420 Application, and/or removal of such presently-
`
`named inventors from the ‘420 Application, as deemed appropriate by the Board.
`
`G.
`
`Correspondence between Claims of the ‘420 Application and Claims of
`
`the ‘973 Application
`
`“DE - DT4686I000008 - 968533 V1
`
`

`

`The following table shows the correspondence between claims of the ‘420
`
`Application and claims of the ‘973 Application. All corresponding claims are
`
`either identical or substantially similar.
`
`Published Claims of the ‘420 Corresponding Claims of the
`A lication
`‘973 A n ulication
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`H.
`
`Construction of the Claims at Issue
`
`In accordance with 37 CFR § 42.405(b)(3)(ii), Petitioner submits that,
`
`except where otherwise indicated in this petition, all claim terms of the ‘420
`
`Application are to be construed with the broadest reasonable interpretation in light
`
`of the specification of the ‘420 Application.
`
`“DE - D?4686I000008 - 968533 V1
`
`

`

`In the claim chart below, Petitioner has indicated where support for the
`
`terms of each of the ‘420 Application claims may be found within the ‘420
`
`Application. None of the claims at
`
`issue include any language that clearly, or
`
`implicitly,
`
`invokes 35 U.S.C. § 112(f) or Pre—AIA 35 U.S.C.
`
`§ 112, Sixth
`
`Paragraph, thus making the plain meaning appropriate. Each of claims 1-18 should
`
`be given the broadest reasonable interpretation in light of the ‘420 Application.
`
`The following are proposed constructions of select claim terms:
`
`clam shell gate: a gate allowing material to pass through when opened and
`
`preventing material from passing through when closed. See Exhibit 10]], 1] [0044]
`
`(“a gate 102”) and Exhibit 1015, fl [0076] (metering gate 90).
`
`‘37 CFR § 42.405(b)(3)(ii) requires that, for each of the Respondent's claims
`
`to the derived invention,
`
`the Petition must
`
`identify how the claim is to be
`
`construed. 37 CFR § 42.405(a)(2)(i)
`
`requires the Petition to show that
`
`the
`
`Petitioner has at least one claim that is the same or substantially the same as the
`
`respondent's claimed invention. The following claim chart satisfies both these
`
`requirements.
`
`Published Claims of the
`
`Claim Construction
`
`‘420 Application
`
`Identification
`
`Claims of the ‘973
`
`Application that are the
`same or substantially the
`same as Published Claims
`
`of the ‘420 A - lication
`
`”1'0 ant such as sand,
` carrying a fracking
` l6 ofFIGS. l, 2;
`
`l. A container for
`
`‘420 Application, element
`
`l. A container for
`
`carrying a fracking
`OH) 0 ant such as sand,
`
`ara rah 0002
`
`“DE - D?4686I000008 - 968533 V1
`
`

`

`
`
`
`
` com risin :
`
`com risin :
`
`‘420 Application, element
`a support frame;
`44 of FIG. 3; paragraphs
`a support frame;
`
`[0033-0034]
`
`a storage body mounted
`within the support frame
`and having an open
`interior to receive a
`
`supply of the fracking
`
`proppant;
`a discharge section
`formed as part of the
`storage body in the
`support frame, the
`discharge section being
`formed from a pair of
`sloped end walls and a
`pair of sloped sidewalls
`that converge at a
`dischar e o a enin _;
`
`‘420 Application, element
`42 of FIG. 3; paragraphs
`[0033], [0036]
`
`‘420 Application,
`elements 70, 72, 74 of
`FIGS. 7, 8; paragraph
`[0039]
`
`a storage body mounted
`within the support frame
`and having an open
`interior to receive a
`
`supply of the fracking
`
`proppant;
`a discharge section
`formed as part of the
`storage body in the
`support frame, the
`discharge section being
`formed from a pair of
`sloped end walls and a
`pair of sloped sidewalls
`that converge at a
`dischar e o enin_;
`
` one or more openings
` ‘420 Application,
`
`
`a slide gate positioned
`a slide gate positioned
`beneath the discharge
`‘420 Application, element
`beneath the discharge
`76 of FIGS. 3, 4;
`opening and selectively
`opening and selectively
`movable between an open
`paragraph [004]]
`movable between an open
`
`and a closed position; and a closed position;
`a load door mounted to a
`
`top wall of the storage
`body and movable
`between a closed position
`to cover a loading
`opening in the storage
`body and an open position
`to provide access to the
`loadin_ oenin_; and
`
`a central opening formed
`in the load door, wherein
`fracking proppant can be
`loaded into the open
`interior of the storage
`bod throu h the central
`
`elements 56, 58 of FIGS.
`3, 5; paragraph [0036]
`
`‘420 Application, element
`64 of FIG. 4; paragraph
`[0037]
`
`forming one or more
`passages into the open
`interior of the container,
`the one or more openings
`being positioned
`proximate a top wall of
`the storage body; and
`
`at least one cover
`
`selectively moveable
`between open and closed
`positions to block access
`to the one or more
`
`“DE - 0?4686I000008 - 968533 V1
`
`10
`
`

`

`
`
`opening when the load
`door is in the closed
`
`position.
`2. The container of claim
`
`2. The container of claim
`
`1, wherein the at least one
`cover comprises an
`elongated load door, a
`hatch, or a combination
`selectively cover the
`
`thereof.
`central opening.
`3. The container of claim
`
`1 further comprising a top
`hatch mounted to the load
`
`door and movable to
`
`2 further comprising a
`filler cone mounted to the
`
`load door and movable
`
`‘420 Application, element
`66 of FIGS. 3, 4;
`paragraph [0038]
`
`‘420 Application, element
`68 of FIGS. 3, 4;
`paragraph [0038]
`
`into alignment with the
`central opening when the
`top hatch member is
`positioned away from the
`
`central opening.
`4. The container of claim
`
`3. The container of claim
`
`1 comprising a guide lip
`directing the fracking
`proppant into the open
`interior via the one or
`
`more openings.
`
`4. The container of claim
`
` 5. The container of claim
`
` ‘420 Application, FIG. 2;
`
`1 wherein the discharge
`‘420 Application, plain
`1 wherein the discharge
`opening is smaller than
`and ordinary meaning
`opening is smaller than
`
`the central opening.
`the central opening-
`5. The container of claim
`
`4 wherein the discharge
`opening is located such
`that the discharge opening
`of a first container is
`
`aligned with the central
`opening of a second
`container when the first
`
`container is stacked above
`
`the second container.
`
`6. The container of claim
`
`1 wherein the sloped end
`walls each are positioned
`at an angle of
`approximately 35°
`relative to horizontal and
`
`the sloped sidewalls each
`ositioned at an an le
`
`paragraph [0043]
`
`‘420 Application,
`
`“DE - OT4686I000008 - 968533 V1
`
`ll
`
`paragraph [0039]
`
`4 wherein the discharge
`opening is located such
`that the discharge opening
`of a first container is
`
`aligned with the central
`opening of a second
`container when the first
`
`container is stacked above
`
`the second container.
`
`6. The container of claim
`
`1 wherein the sloped end
`walls each are positioned
`at an angle of
`approximately 35°
`relative to horizontal and
`
`the sloped sidewalls each
`ositioned at an an le
`
`

`

`
`
`of approximately 430
`relative to horizontal-
`
`of approximately 43°
`relative to horizontal.
`
`7. A distribution system
`for delivering a fracking
`proppant, such as sand, to
`a blender at a well site,
`comnrisin_:
`
`a base unit having a pair
`of spaced support rails
`each extending from a
`first end to a second end,
`the base unit including a
`plurality of mounting
`locations;
`
`at least one container
`
`supported on the base unit
`at each of the mounting
`locations, wherein each
`container includes a
`
`‘420 Application, element
`14 of FIG. 1; paragraphs
`[0002], [0028—0030]
`
`‘420 Application, element
`26, element 92, element
`
`94 of FIG. 9; paragraph
`[0044]
`
`‘420 Application, element
`16, element 42 of FIGS.
`2, 9; paragraph [0044]
`
`7. A distribution system
`for delivering a fracking
`proppant, such as sand, to
`a blender at a well site,
`com rnisin_:
`
`a base unit having a pair
`of spaced support rails
`each extending from a
`first end to a second end,
`the base unit including a
`plurality of mounting
`locations;
`
`at least one container
`
`supported on the base unit
`at each of the mounting
`locations, wherein each
`container includes a
`
`storage body for holding a
`storage body for holding a
`supply of the fracking
`supply of the fracking
`proppant and having a
`proppant and having a
`
`discharge opening;
`discharge opening;
`a conveyor belt supported
`beneath the pair of
`support rails and
`extending from the first
`end to the second end;
`
` a conveyor belt supported
` ‘420 Application, element
`
`
`112 of FIG. 10; paragraph
`[0046]
`
`a plurality of support
`rollers mounted beneath
`
`the support rails to
`sun nort the conve or belt;
`
`a discharge chute located
`in each of the mounting
`locations and aligned with
`the discharge opening of
`one of the storage
`containers when the
`
`storage containers are
`sun norted on the base
`
`‘420 Application, element
`122 of FIG. 11; paragraph
`[0052]
`
`‘420 Application, element
`40 of FIG. 9; paragraph
`[0044]
`
`“DE - 0?4686I000008 - 968533 V1
`
`12
`
`beneath the pair of
`support rails and
`extending from the first
`end to the second end;
`
`a plurality of support
`rollers mounted beneath
`
`the support rails to
`sun nort the conve or belt;
`
`a discharge chute located
`in each of the mounting
`locations and aligned with
`the discharge opening of
`one of the storage
`containers when the
`
`storage containers are
`sun norted on the base
`
`

`

`
`
`unit; and
`
`unit; and
`
`an actuator coupled to
`each of the discharge
`chutes to control the
`
`amount of fracking
`proppant delivered from
`the container onto the
`
`conve or belt.
`
`8. The distribution system
`of claim 7 wherein each
`
`discharge chute includes
`an actuator operable to
`control the amount of
`
`‘420 Application, element
`104 of FIGS. 9, 10;
`paragraphs [0046]—[0047]
`
`‘420 Application,
`paragraph [0047]
`
`an actuator coupled to
`each of the discharge
`chutes to control the
`
`amount of fracking
`proppant delivered from
`the container onto the
`
`conve or belt-
`
`8. The distribution system
`of claim 7 wherein each
`
`discharge chute includes
`an actuator operable to
`control the amount of
`
`fracking proppant
`fracking proppant
`delivered from the storage
`delivered from the storage
`
`container.
`container.
`
` 9. The distribution system
` ‘420 Application, element
`
`
`9. The distribution system
`of claim 8 wherein the
`
`discharge chute includes a
`clam shell gate coupled to
`the actuator, wherein the
`clam shell gate is movable
`relative to the discharge
`chute to control the
`
`amount of fracking
`proppant dispensed onto
`the conve or belt.
`
`10. The distribution
`
`system of claim 9 wherein
`the actuator is a hydraulic
`cylinder coupled to the
`clam shell ate.
`
`11. The distribution
`
`system of claim 8 further
`comprising a controller
`coupled to each of the
`actuators such that the
`
`controller controls the
`
`of claim 8 wherein the
`
`discharge chute includes a
`slide gate coupled to the
`actuator, wherein the slide
`gate is movable relative to
`the discharge chute to
`control the amount of
`
`fracking proppant
`dispensed onto the
`conve or belt-
`
`10. The distribution
`
`system of claim 9 wherein
`the actuator is a hydraulic
`cylinder coupled to the
`clam shell ate.
`
`1 1. The distribution
`
`system of claim 8 further
`comprising a controller
`coupled to each of the
`actuators such that the
`
`controller controls the
`
`102 ofFIG. 10;
`paragraphs [0046]—[0047]
`
`‘420 Application,
`paragraph [0046]
`
`‘420 Application, element
`114 of FIG. 16; paragraph
`[0048]
`
`discharge of the fracking
`OH) 0 0 ant onto the
`
`discharge of the fracking
`”I'O ant onto the
`
`“DE - OT46861000008 - 968533 V1
`
`13
`
`

`

`
`
`conveyor belt at each of
`the mountin locations.
`
`12. The distribution
`
`conveyor belt at each of
`the mountin locations.
`
`12. The distribution
`
`‘420 Application, element
`114 of FIG. 16; paragraph
`[0050]
`
`‘420 Application,
`paragraphs [0048], [0050]
`
`system of claim 11 fithher
`comprising a user
`interface device in
`
`communication with the
`
`controller.
`
`13. The distribution
`
`system of claim 12
`wherein the user interface
`
`device is in wireless
`
`communication with the
`
`controller.
`
`14. The distribution
`
`system of claim 11 fiirther
`comprising a user
`interface device in
`
`communication with the
`
`controller.
`
`13. The distribution
`
`system of claim 12
`wherein the user interface
`
`device is in wireless
`
`communication with the
`
`controller.
`
`14. The distribution
`
`system of claim 7 wherein
`each of the containers
`
` 16. A base unit for
` ‘420 Application,
`
`
`system of claim 7 wherein
`each of the containers
`
`includes a respective
`container slide gate
`includes a slide gate
`positioned beneath the
`positioned beneath the
`discharge opening,
`discharge opening,
`wherein each respective
`wherein each slide gate is
`container slide gate is
`selectively movable
`selectively movable
`between an open position
`between an open position
`and a closed position to
`and a closed position to
`selectively control the
`selectively control the
`discharge of the fracking
`discharge of the fracking
`proppant from the
`container.
`proppant from the
`container.
`
`‘420 Application, element
`'76 of FIGS. 3, 4;
`
`paragraph [004]]
`
`15. The distribution
`
`15. The distribution
`
`system of claim 14
`wherein the respective
`system of claim 14
`container slide gates are
`wherein the slide gate is
`independently operable
`independently operable
`from respective discharge
`from the discharge chute.
`chutes.
`
`‘420 Application,
`paragraphs [0040], [0046]
`
`16. A base unit for
`
`supporting a plurality of
`containers each includin
`
`elements 16 and 26 of
`
`FIG. 2; ara rah 0031
`
`supporting a plurality of
`containers each includin
`
`“DE - OT4686I000008 - 968533 V1
`
`14
`
`

`

`
`
`a supply of a tracking
`a supply of a tracking
`proppant, such as sand,
`proppant, such as sand,
`
`the base unit comprising:
`the base unit comprising:
`a pair of spaced support
`a pair of spaced support
`rails extending from a
`rails extending from a
`first end to a second end,
`first end to a second end,
`wherein the base unit
`wherein the base unit
`
`‘420 Application, element
`26, element 92, element
`94 of FIG. 9; paragraph
`[0044]
`
`defines a plurality of
`defines a plurality of
`mounting locations that
`mounting locations that
`each receive one or more
`each receive one or more
`
`of the containers;
`of the containers;
`
`a conveyor belt supported
`a conveyor belt supported
`beneath the pair of
`‘420 Application, element
`beneath the pair of
`support rails and
`112 of FIG- 10; paragraph
`support rails and
`extending from the first
`[0046]
`extending from the first
`
`end to the second end;
`end to the second end;
`
` ‘420 Application, element
`
`‘420 Application, element
`122 of FIG- 11; paragraph
`[0052]
`
`‘420 Application, element
`40 of FIG. 9; paragraph
`[0044]
`
`a plurality of support
`rollers mounted beneath
`
`the support rails to
`support an upper run of
`the conve or belt;
`
`a discharge chute located
`in each of the mounting
`locations, wherein the
`
`a clam shell gate
`positioned at each of the
`discharge chutes and
`selectively movable
`between an open position
`and a closed osition; and
`
`an actuator coupled to
`each of the clam shell
`
`gates to control the
`position of the clam shell
`ate relative to the
`
` a slide gate positioned at
`
`a plurality of support
`rollers mounted beneath
`
`the support rails to
`support an upper run of
`the conve or belt;
`
`a discharge chute located
`in each of the mounting
`locations, wherein the
`
`
`
`discharge chute is aligned
`discharge chute is aligned
`with a discharge opening
`with a discharge opening
`of the storage container
`of the storage container
`mounted at the mounting
`mounted at the mounting
`
`location;
`location;
`
`102 ofFIG- 10;
`paragraphs [0046]—[0047]
`
`‘420 Application, element
`104 of FIGS. 9, 10;
`paragraphs [0046]-[0047]
`
`each of the discharge
`chutes and selectively
`movable between an open
`position and a closed
`nosition; and
`
`an actuator coupled to
`each of the slide gates to
`control the position of the
`slide gates relative to the
`dischar e chute.
`
`“DE - 0?46861000008 - 968533 v1
`
`15
`
`

`

`
`
`dischar_e chute.
`
`17. The base unit of claim
`
`16 further comprising a
`controller coupled to each
`of the actuators such that
`
`the controller controls the
`
`‘420 Application, element
`114 of FIG. 16; paragraph
`[0048]
`
`17. The base unit of claim
`
`16 further comprising a
`controller coupled to each
`of the actuators such that
`
`the controller controls the
`
`position of each of the
`position of each of the
`slide gates through
`clam shell gates through
`
`operation of the actuators.
`operation of the actuators.
`18. The base unit of claim
`
` ‘420 Application,paragraphs [0048], [0050] 18. The base unit of claim
`
`
`
`17 further comprising a
`user interface device in
`
`communication with the
`
`controller.
`
`17 further comprising a
`user interface device in
`
`communication with the
`
`controller.
`
`I.
`
`Introduction
`
`Petitioner seeks relief from the unauthorized derivation of Petitioner’s prior
`
`conception by Respondent. As shown below, Petitioner conceived of the subject
`
`matter of the claims of the ‘420 Application well before Respondent filed any
`
`application directed to the concepts conceived by Petitioner. This prior conception
`
`is corroborated by numerous Exhibits attached hereto. Petitioner directly
`
`communicated his conception to Timothy Stefan, a named inventor on the ‘420
`
`Application, and Stefan took this knowledge communicated by Petitioner and
`
`without authorization used it to file the ‘420 application, the claims of which are
`
`directed to Petitioner’s prior conception-
`
`As shown herein, Petitioner has satisfied 37 CFR § 42.405(a)(2)(i) by
`
`showing that the Petitioner has at least one claim that is the same or substantially
`
`“DE - DT4686I000008 - 968533 V1
`
`16
`
`

`

`the same as the respondent's claimed invention; Petitioner has satisfied 37 CFR §
`
`42.405(a)(2)(ii) by showing that the Petitioner has at least one claim that is the
`
`same or substantially the same as the invention disclosed to the respondent; and,
`
`Petitioner has satisfied 37 CFR § 42.405(b)(3)(i) by showing that, for each of the
`
`respondent's claims to the derived invention, why the claimed invention is the same
`
`or substantially the same as the invention disclosed to the respondent.
`
`Therefore, Petitioner respectfully requests that the Petition be granted and
`
`the derivation proceeding be instituted so that appropriate relief may be granted.
`
`J.
`
`Prior Conception of the Claimed Subject Matter and Communication of
`
`that Conception to an Inventor of the ‘420 Application
`
`a. Statement of Facts: Prior Conception of the Claimed Subject Matter
`
`John Oren (hereinafter, “Oren”), a named inventor on the ‘973 application,
`
`is a co-founder of Oren Technologies, SandBox Enterprises, and SandBox
`
`Logistics.
`
`(Ex- 1045,
`
`fl 3) (hereinafter, “Oren Affidavit”). Oren,
`
`through his
`
`companies, has been involved in the business of providing fracking proppant
`
`storage, transportation, and discharge systems for several years, at least back to
`
`201 l. (Oren Affidavit, 11 4-5). SandBox is a transportation and logistics company,
`
`providing fracking proppant in self-contained, modular storage containers to oil
`
`and gas service companies, among others, for use in hydraulic fracking,
`
`for
`
`example associated with exploration and production of oil and gas fields (Oren
`
`“DE - D?4686I000008 - 968533 V1
`
`1'?
`
`

`

`Affidavit, 11 4). SandBox provides full—service delivery, storage, and discharge of
`
`fracking proppant at well sites for blending and subsequent injection into oil and
`
`gas formations (Id.).
`
`Prior to modular
`
`fracking storage, Oren operated PSI Frac Logistics
`
`(hereinafter, “PSI”) to supply fracking proppant to well sites utilizing pneumatic
`
`storage containers (Oren Affidavit, 1] 5). Oren noticed the inefficiencies associated
`
`with traditional pneumatic storage and delivery, and thereafter turned his attention
`
`to developing a modular system (Id).
`
`Oren began conceiving of features for modular fracking proppant storage,
`
`transportation, and discharge systems at least as early as the middle of 201 1. (Id.)_
`
`For example, Oren prepared sketches of aspects of his ideas in approximately the
`
`middle of 2011. (Oren Affidavit, 11 6, Ex. 1025, Ex. 1026). These conceptions,
`
`corroborated by the sketches, include at least the features of (a) a support frame;
`
`(b) a storage body mounted within the support frame having an open interior to
`
`receive a supply of the fracking proppant; (c) a discharge section formed as part of
`
`the storage body in the support frame, the discharge section being formed from a
`
`pair of sloped end walls
`
`that converge at a discharge opening; ((1) a slide gate
`
`positioned beneath the discharge opening and selectively movable between an
`
`open and a closed position; (e) one or more openings formng one or more
`
`passages into the open interior of the container, the one or more openings being
`
`“DE - D?4686!000008 - 968533 V1
`
`18
`
`

`

`positioned proximate a top wall of the storage body; (f) a discharge opening
`
`located such that the discharge opening of a first container is aligned with the
`
`loading opening of a second container when the first container is stacked above the
`
`second container; and (g) a conveyor system for receiving proppant discharged
`
`from all of the stacked containers through the bottom container. (Oren Affidavit, 11
`
`6, Ex. 1025, Ex. 1026).
`
`Oren had engineering drawings prepared by Chris Green and Frank Adamek
`
`some time between September 3, 201 l and October 3, 201 l. (Oren Affidavit, 'fl 7,
`
`Ex. 1023). These drawings reflect the ideas embodied in those early conceptual
`
`sketches, and additionally provide clarifications regarding the prior conception,
`
`such as clearly indicating that a discharge section was formed from a pair of sloped
`
`end walls and a pair of sloped sidewalls that converge at a discharge opening, and
`
`that the end walls and sidewalls may be formed at varying angles. (Id) Moreover,
`
`Oren prepared calculations and conceived of potential staging options for the
`
`storage system in October 201 1 (Ex. 1024).
`
`Subsequently, over a period of several months, Oren continued to refine and
`
`develop his ideas, eventually fully conceiving of, and reducing to practice, various
`
`embodiments of a modular system, for example based on a twenty foot equivalent
`
`(TEU) container. (Oren Affidavit, 1] 8). This is corroborated by US. Patent
`
`“DE - D?4686F000008 - 968533 V1
`
`19
`
`

`

`Number 8,827,118 (“the ‘1 18 patent”), filed on December 21, 2011 and issued on
`
`September 9, 2014, with an Inventor’s Declaration from Oren. (Id, Ex. 1013).
`
`Oren continued to conceive of additional
`
`features and refine existing
`
`features of the TEU container system; for example, after meetings with potential
`
`customers and partners describing their need for transporting multiple proppant
`
`containers on traditional roadways without incurring additional charges for weight
`
`overages or requiring escorts. (Oren Affidavit,
`
`11 9-10). After evaluation of
`
`regulatory requirements and testing various prototypes, on or about February 19,
`
`2012, Oren and SandBox co-founder Joshua Oren conceived of features of a
`
`smaller container (the “IO—foot container”) that could meet long—felt customer
`
`needs. (Oren Affidavit, 1] 9).
`
`Oren and J. Oren enlisted the services of Bill Aiken (hereinafter, “Aiken”) of
`
`Aiken Engineering Co. to discuss various engineering specifications related to the
`
`10—foot container.
`
`(Oren Affidavit,
`
`1] 11, Ex. 1019). Aiken provided initial
`
`drawings of engineering specifications related to Oren’s ideas on March 16, 2012.
`
`(Id.). Aiken subsequently provided additional drawings, dated May 1, 2012,
`
`reflecting Oren’s ideas for a modular system. (Oren Affidavit, 11 12, Ex. 1021, Ex.
`
`1022). Some of the features conceived by Oren that are illustrated in these
`
`drawings include at least: (a) a base unit having a pair of spaced support rails each
`
`extending from a first end to a second end, the base unit including a plurality of
`
`“DE - D?4686I000008 - 968533 V1
`
`20
`
`

`

`mounting locations; (b) a conveyor belt supported beneath the pair of support rails
`
`and extending from the first end to the second end; (0) a discharge chute located in
`
`each of the mounting locations and aligned with the discharge opening of one of
`
`the storage containers when the storage containers are supported on the base unit;
`
`(d) a base unit for supporting a plurality of containers each including a supply of a
`
`fracking proppant, such as sand; (e) a pair of spaced support rails extending from a
`
`first end to a second end, the base unit defining a plurality of mounting locations
`
`that each receive one or more of the containers; and (f) a discharge chute located in
`
`each of the mounting locations,
`
`the discharge chute aligned with a discharge
`
`opening of the storage container mounted at the mounting location. (Id).
`
`Oren
`
`filed a patent
`
`application (U.S. Patent Publication Number
`
`2014/0020765 (“the ‘635 application”)), published on January 23, 2014, directed to
`
`features for the 10—foot container on July 23, 2012. (Oren Affidavit, 11 13, Ex.
`
`10