Paper No. 21
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`ARROWS UP, LLC
`Petitioner
`
`v.
`
`OREN TECHNOLOGIES, LLC
`Patent Owners
`
`__________________
`
`Case No. IPR2018-01230
`U.S. Patent No. 9,248,772
`__________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`ARROWS UP, LLC
`Petitioner
`
`v.
`
`OREN TECHNOLOGIES, LLC
`Patent Owners
`
`__________________
`
`Case No. IPR2018-01230
`U.S. Patent No. 9,248,772
`__________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`Paper No. 21
`
`
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE SCHAAF DECLARATION IS FACTUALLY SUPPORTED .............. 1
`PATENT OWNER CONCEDES THE INVALIDITY OF THOSE
`LIMITATIONS THAT IT DID NOT ADDRESS .......................................... 2
`IV. SHEESLEY TEACHES “A SECOND DIFFERENT END SURFACE” ....... 3
`V.
`SHEESLEY TEACHES “VERTICALLY STACKING A PLURALITY
`OF EMPTY PROPPANT CONTAINERS IN CLOSE PROXIMITY TO
`A RAIL SPUR” ............................................................................................. 10
`VI. SHEESLEY TEACHES “VERTICALLY STACKING THE SECOND
`PLURALITY OF PROPPANT FILLED CONTAINERS WITH A
`LOADER SO THAT ONE OF THE PLURALITY OF PROPPANT
`FILLED CONTAINERS OVERLIES ANOTHER ONE OF THE
`PLURALITY OF FILLED CONTAINERS TO REDUCE THE
`FOOTPRINT OF THE AREA REQUIRED FOR STORAGE OF THE
`PROPPANT IN CLOSE PROXIMITY TO THE RAIL SPUR” .................. 16
`VII. SHEESLEY TEACHES “CONVEYING THE PROPPANT FROM
`ONE OR MORE OF THE PLURALITY OF PROPPANT [F]ILLED
`CONTAINERS TO ONE OR MORE PROPPANT TRANSPORTING
`ROAD VEHICLES ON A SECOND CONVEYOR” ................................... 20
`VIII. CONCLUSION .............................................................................................. 25
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Paper No. 21
`
`
`
`Page(s)
`
`Cases
`
`Apple, Inc. v. Uniloc Luxembourg, S.A.,
`No. IPR2018-00394, 2018 WL 3216847 (P.T.A.B. June 29, 2018) ..........................................2
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012)................................................................................................22
`
`Cisco Sys., Inc. v. Focal IP, LLC,
`No. IPR 2016-01254, 2017 WL 6611482 (P.T.A.B. Dec. 27, 2017).....................11, 13, 19, 25
`
`Growlerwerks, Inc. v. Drink Tanks Corp.,
`No. IPR 2017-00262, 2018 WL 1037399 (P.T.A.B. Feb. 21, 2018) .......................................23
`
`Leggett & Platt, Inc. v. VUTEk, Inc.,
`537 F.3d 1349 (Fed. Cir. 2008)..................................................................................................9
`
`Santarus, Inc. v. Par Pharm., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012)................................................................................................24
`
`Ultradent Prod., Inc. v. Life-Like Cosmetics, Inc.,
`127 F.3d 1065 (Fed. Cir. 1997)................................................................................................13
`
`In re Wesslau,
`53 C.C.P.A. 746, 353 F.2d 238 (C.C.P.A. 1965) .....................................................................11
`
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018)................................................................................................15
`
`
`
`
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`Paper No. 21
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`U.S. 9,248,772 (“‘772 patent”)
`
`Declaration of Robert Schaaf (“Shaaf Decl.”)
`
`U.S. Published Appl. No. 2013/0206415 (“Sheesley”)
`
`U.S. 8,915,691 (“Mintz”)
`
`U.S. Published Application No. 2013/0022441 (“Uhryn”)
`
`U.S. Application No. 13/332,937 (“‘937 Application”)
`
`Redline of U.S. Application No. 13/332,937 and U.S.
`9,248,772
`
`U.S. Provisional Application No. 61/429,046 (“Mintz
`Provisional”)
`
`U.S. Provisional Application No. 61/509,943 (“Uhryn
`Provisional”)
`
`Portions of the prosecution history for U.S. Application No.
`14/314,468 (“‘468 File History”)
`
`Portions of the prosecution history for U.S. Application No.
`14/841,942 (“‘066 File History”)
`
`ISO 1496-1: Series 1 Freight Containers—Specification and
`Testing—Part 1, General Cargo Containers (August 1990)
`(“ISO 1496 Standard”)
`
`Intermodal Transportation: Moving Freight in a Global
`Economy (published 2011) (“Intermodal Transportation”)
`
`Ex. 1014
`
`Reserved
`
`iii
`
`
`
`
`
`
`
`
`Paper No. 21
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`March 21, 2019 Declaration of Robert S. Hill In Support of
`Petitioners' Unopposed Motion for Pro Hac Vice Admission
`of Robert S. Hill
`
`Transcript of July 30, 2019 Deposition of Fred Smith
`
`Web Archive from October 18, 2009 – “Containers for
`Storage – 20ft Double-door”
`
`Web Archive from February 4, 2012 – “‘Mini’ Sand Storage
`Trailers”
`
`
`
`
`
`
`iv
`
`
`
`Paper No. 21
`
`I.
`
`INTRODUCTION
`
`Patent Owner begins by editorializing at length about the history between
`
`the parties. It suffices to say that Petitioner disagrees with these characterizations,
`
`and that the litigation referenced by Patent Owner is on appeal. More to the point,
`
`neither that litigation nor Petitioner’s motivation in bringing this Petition are
`
`relevant, in any way, to the questionable validity of the ’772 patent.
`
`As discussed in the Petition, the claims of the ’772 patent claims the
`
`standard logistical steps involved in moving material from one location to another
`
`in containers. It is therefore unsurprising that these claims are invalid in view of
`
`the prior art. Patent Owner’s Response makes no effort to identify a genuinely
`
`novel feature of the claimed system. Instead, Patent Owner falls back on a hyper-
`
`technical reading of the prior art that fundamentally misrepresents the scope of
`
`those disclosures to persons of ordinary skill in the art. As explained below, Patent
`
`Owner’s arguments are meritless, and the claims of the ’772 patent are invalid.
`
`II. THE SCHAAF DECLARATION IS FACTUALLY SUPPORTED
`
`Much of Patent Owner’s Response is devoted to complaints, recycled from
`
`the Preliminary Response, about Mr. Schaaf’s Declaration (Ex. 1002). Although
`
`Patent Owner claims that Mr. Schaaf’s opinions are conclusory, it offers no
`
`explanation for why those opinions are conclusory. Instead, Patent Owner asserts
`
`that Mr. Schaaf’s Declaration “parrots” the Petition and that his “opinions are not
`
`
`
`
`1
`
`
`
`Paper No. 21
`
`his own, but are instead those of Petitioner’s lawyers who prepared the Petition.”
`
`Paper No. 14 (Response) at 21, 24. In essence, Patent Owner argues that the
`
`Petition is too consistent with Mr. Schaaf’s opinions. This is certainly not a basis
`
`for wholesale exclusion of the Schaaf Declaration. Indeed, the Panel rejected such
`
`a drastic approach in its Institution Decision, instead deciding to “weigh Mr.
`
`Schaaf’s opinions on particular issues in accordance with the underlying support
`
`provided for those opinions.” Paper No. 7 (Decision) at 10. Nor does Mr.
`
`Schaaf’s alignment with the Petition undermine the evidentiary value of his
`
`Declaration. See Apple, Inc. v. Uniloc Luxembourg, S.A., No. IPR2018-00394,
`
`2018 WL 3216847, at *6 (P.T.A.B. June 29, 2018) (“That the Petition repeats Dr.
`
`Houh’s testimony regarding reasons a skilled artisan would have been motivated to
`
`combine [prior art] does not undermine that testimony's persuasiveness or its status
`
`as evidence, nor does it mean Petitioner’s argument is mere speculation or
`
`conjecture, as Patent Owner suggests.”). As such, Patent Owner’s complaints
`
`should be disregarded.
`
`III. PATENT OWNER CONCEDES THE INVALIDITY OF THOSE
`LIMITATIONS THAT IT DID NOT ADDRESS
`
`In its Response, Patent Owner argues only that limitations [1(a)(i)],
`
`[1(a)(ii)], [2], and [4(b)] are not disclosed in the prior art. Paper No. 14 (Response)
`
`at 15, 25, 28, 32. It does not address the patentability of any other limitations in
`
`claims 1 or 4, nor does it address the patentability of claims 3 or 6-11. Patent
`
`
`
`
`2
`
`
`
`Paper No. 21
`
`Owner has thus waived any such arguments. See Paper No. 8 (Scheduling Order)
`
`at 5 (“Patent Owner is cautioned that any arguments for patentability not raised in
`
`a response may be deemed waived.”).
`
`IV. SHEESLEY TEACHES “A SECOND DIFFERENT END SURFACE”
`
`Claim 1 of the ’772 patent requires in part “each of the plurality of empty
`
`containers including at least a first end surface and at least a second different end
`
`surface[.]” Ex. 1001 (’772 patent) at claim 1. Sheesley teaches this limitation.
`
`As explained in the Petition, Sheesley teaches the use of an ISO container
`
`modified to store proppant. Ex. 1003 (Sheesley) at Abstract; [0004]; [0012].
`
`Sheesley explains that “cargo container 130 is made out of corrugated metal and
`
`has doors 132 and 134, on the one end thereof[.]” Ex. 1003 (Sheesley) [0050].
`
`These features may be seen in Figure 9 of Sheesley, shown below.
`
`
`
`
`3
`
`
`
`
`
`Paper No. 21
`
`In its Preliminary Response, Patent Owner proposed that the broadest
`
`reasonable construction for the term “a second different end surface” is “an
`
`additional end surface that is not the same as the first end surface.” Paper No. 6
`
`(Preliminary Response) at 10. In its Institution Decision, the Panel agreed with
`
`Patent Owner’s reasoning, stating that the “term ‘different’ indicates a structural
`
`difference, rather than the mere duplication of the first surface.” Paper No. 7
`
`(Decision) at 9 (emphasis by Panel).
`
`The Panel disagreed, however, that Sheesley did not disclose a structurally
`
`different second end surface. Specifically, the Panel explained that Sheesley
`
`“states that the container ‘has doors 132 and 134, on the one end thereof,’” and that
`
`“Sheesley’s ‘second end surface’ is different from Sheesley’s ‘first end surface’ in
`
`that only one of them has doors 132, 134.” Paper No. 7 (Decision) at 17 (quoting
`
`Ex. 1003 (Sheesley) [0050]) (emphasis by Panel).
`
`Nevertheless, Patent Owner doubles down on its previously-rejected
`
`argument that Sheesley does not disclose this limitation. More precisely, Patent
`
`Owner asserts that “Sheesley is silent as to whether the hidden ‘End Wall’ labeled
`
`by Petitioner is the same as the visible one.” Paper No. 14 (Response) at 27.
`
`Patent Owner hypothesizes that, because the far end of the container portrayed in
`
`Figure 9 is obscured, and because a “POSITA would know that many ISO
`
`containers were and are available with doors on both ends, including standard 20
`
`
`
`
`4
`
`
`
`Paper No. 21
`
`ft. cargo containers as disclosed by Sheesley,” it is possible that the second end
`
`wall of Sheesley also has doors. Paper No. 14 (Response) at 27. These arguments
`
`strain credulity.
`
`As the Panel has already observed, Sheesley plainly states that “cargo
`
`container 130 is made out of corrugated metal and has doors 132 and 134, on the
`
`one end thereof[.]” Ex. 1003 (Sheesley) [0050]; [0006] (“A general purpose cargo
`
`container has doors fitted at one end and is constructed of corrugated weathering
`
`steel.”); see Paper No. 7 (Decision) at 17. These doors are “operable by handles
`
`136 and 138, respectively.” Ex. 1003 (Sheesley) [0050]. In addition, “Control
`
`panel openings 148 and 150 are cut in doors 132 and 134, respectively.” Ex. 1003
`
`(Sheesley) [0050]. These doors, handles, and control panel openings are described
`
`as being “on the one end thereof.” Ex. 1003 (Sheesley) [0050]. Nowhere are they
`
`described as being duplicated at the other end wall. As such, Figure 9 of Sheesley
`
`portrays doors 132 and 134 (and handles 136 and 138, and control panel openings
`
`148 and 150) on one side of the container, but does not indicate equivalent features
`
`on the far side of the container.1 And indeed, Patent Owner’s expert, Mr. Smith,
`
`
`1 Indeed, Figure 9 of Sheesley suggests that such equivalent features would be
`
`indicated if they were part of Sheesley’s invention. For example, Figure 9 makes
`
`an effort to indicate the location of features 144 and 146 on the container’s bottom
`
`
`
`
`5
`
`
`
`Paper No. 21
`
`confirmed at his deposition that the ’772 patent does not disclose equivalent
`
`features on the far side of the container. Ex. 1016 (Smith Dep.) at 23:20-25 (“Q.
`
`‘Do they describe control panels on the other end anywhere in the patent?’ A.
`
`‘No.’ Q. ‘Do they describe doors anywhere on the other end anywhere in the
`
`patent?’ A. ‘Not that I am aware of, no.’”).
`
`At his deposition, Mr. Smith stated that “[a]ll of the views of the end wall in
`
`the Sheesley patent appear to show one side, but I suppose it could be showing
`
`both sides,” and that “if you have doors on both ends of the Sheesley container you
`
`can’t tell which end you are looking at because they would all look the same.” Ex.
`
`1016 (Smith Dep.) at 21:3-11. In
`
`other words, Mr. Smith speculated
`
`that those figures of Sheesley
`
`portraying multiple containers with
`
`doors (Figure 3, for example) may
`
`be showing the front ends of some
`
`containers and the back ends of others.
`
`
`wall, which is otherwise not shown. That Sheesley does not make the same effort
`
`with regard to the back wall further suggests the absence of these features.
`
`
`
`
`6
`
`
`
`Paper No. 21
`
`But even if the back wall of Sheesley was equipped with doors, the front
`
`wall would still be structurally different. In particular, Sheesley explains that
`
`“Control panel openings 148 and 150 are cut in doors 132 and 134, respectively.”
`
`Ex. 1003 (Sheesley) [0050]. These control panels provide an additional structural
`
`difference between the front wall and the back wall. Patent Owner does not argue
`
`that the hypothetical doors on the back wall would be fitted with control panels.
`
`Indeed, Sheesley’s Figure 16 plainly indicates that control panels are fitted on one
`
`end only.
`
`
`See also Ex. 1002 (Sheesley) Fig. 5, Fig. 17. Moreover, each of Sheesley’s figures
`
`portraying doors also portray cut-outs for the described control panels, indicating
`
`that those figures are portraying the same side of the containers (i.e., the side with
`
`doors 132 and 134, handles 136 and 138, and control panel openings 148 and 150).
`
`See Ex. 1002 (Sheesley) Fig. 3, Fig. 4, Fig. 7, Fig. 8.
`
`
`
`
`7
`
`
`
`Paper No. 21
`
`Patent Owner also relies on Exhibit 2010 for the proposition that a “POSITA
`
`would know that many ISO containers were and are available with doors on both
`
`ends, including standard 20 ft. cargo containers as disclosed by Sheesley.” Paper
`
`No. 14 (Response) at 27. Patent Owner’s Exhibit 2010 is an archived website
`
`describing Triple Eight Containers’ “20ft Double-door” containers. But this
`
`website plainly indicates that these “20ft Double-door” containers are an
`
`alternative, double-door version of Triple Eight Containers’ standard, single-door
`
`20 ft. container. See Ex. 2010 (“As with our standard 20s’…”; “Like our standard
`
`20’s, these double doored containers…”). See also Ex. 1017 (expanded view of
`
`same webpage, distinguishing between “20ft Double-door” and “20ft Standard”
`
`containers). At his deposition, Mr. Smith revealed that he did not research this
`
`company’s container offerings and did not know whether its “standard” containers
`
`had one set of doors or two. Ex. 1016 (Smith Dep.) at 38:14-39:6.
`
`Finally, although Patent Owner interprets Sheesley’s lack of explicit
`
`language as a license to speculate, the ’772 patent specification itself is entirely
`
`silent as to the claimed “second different end surface.” Specifically, the ’772
`
`patent describes a “proppant storage apparatus 10” including “a pair of end walls
`
`22 and 24.” Ex. 1001 (’772 patent) at 6:26-28. The patent explains that “the end
`
`wall 22 is recessed inwardly,” and has a “convex shape [that] facilitates the ability
`
`to funnel the proppant from within the interior volume of container 12 outwardly
`
`
`
`
`8
`
`
`
`Paper No. 21
`
`through the flow gate 28.” Ex. 1001 (’772 patent) at 6:42-49. In addition, “[a]n
`
`inlet 32 is generally positioned at the end wall 22 and opened through the end wall
`
`22 to the interior volume of the container 12.” Ex. 1001 (’772 patent) at 6:53-55.
`
`“A vent 34 is also positioned at the end wall 22.” Ex. 1001 (’772 patent) at 6:65-
`
`66. Yet nowhere does the ’772 patent state that these features of end wall 22
`
`(convex shape, inlet 32, and vent 34) are not also present in end wall 24. Nor does
`
`Figure 1 of the ’772 patent demonstrate the absence of these features from end wall
`
`24; as in Sheesley, end wall 24 is obscured. Thus, by Patent Owner’s logic, the
`
`’772 patent fails to support a second end surface that is structurally different from
`
`the first.
`
`At base, Patent Owner’s speculative arguments are irrelevant. By asserting
`
`that a person of ordinary skill in the art reading Sheesley would understand that the
`
`back wall could include doors, Patent Owner implicitly acknowledges that a back
`
`wall without doors is also disclosed. The proper inquiry is not whether Sheesley
`
`also contemplates embodiments with doors on the back wall, but whether a person
`
`of ordinary skill in the art would understand Sheesley to teach a compartment with
`
`structurally different end surfaces. See Leggett & Platt, Inc. v. VUTEk, Inc., 537
`
`F.3d 1349, 1356 (Fed. Cir. 2008) (“This argument relies on the erroneous
`
`assumption that the disclosure of multiple examples renders one example less
`
`anticipatory.”). For these reasons, Sheesley teaches this limitation.
`
`
`
`
`9
`
`
`
`Paper No. 21
`
`V.
`
`SHEESLEY TEACHES “VERTICALLY STACKING A PLURALITY
`OF EMPTY PROPPANT CONTAINERS IN CLOSE PROXIMITY TO
`A RAIL SPUR”
`
`Claim 1 of the ’772 patent requires in part “vertically stacking a plurality of
`
`empty proppant containers in close proximity to a rail spur.” Ex. 1001 (’772
`
`patent) at claim 1. Sheesley teaches this limitation.
`
`As explained in the Petition, Sheesley teaches that the modified containers
`
`may be stacked while empty. Specifically, Figure 3 of Sheesley offers “a pictorial
`
`illustration of the stackability of modified cargo containers, with or without sand
`
`therein.” Ex. 1003 (Sheesley) at [0021]. Sheesley also explains that “the modified
`
`frac containers may be stacked in any conventional means either while in transit or
`
`at the frac site.” Ex. 1003 (Sheesley) at [0018].
`
`Sheesley also teaches that empty containers may be filled with proppant in a
`
`stacked configuration. Figure 5 of Sheesley illustrates this process. Ex. 1003
`
`(Sheesley) at [0023]; [0085]; Fig. 5. And while Figure 5 specifically portrays these
`
`containers being filled on a rail car, Sheesley makes clear that containers may be
`
`filled at any location in the supply chain (which includes, inter alia, a rail site).
`
`See Ex. 1003 (Sheesley) at [0078] (“sand from the sand quarry 30 or source can
`
`now be loaded by a conveyor . . . to a modified cargo container.”) (emphasis
`
`added); claim 21 (“wherein said source may be any point along a supply chain of
`
`said proppant.”); [0017] (“The modified cargo containers can then move through
`
`
`
`
`10
`
`
`
`Paper No. 21
`
`all of the normal modes of transportation, including ship, barge, rail or by
`
`truck[.]”); [0019]; [0020]; [0042]; [0049]; [0077]; Fig. 1.
`
`Taken together, these disclosures teach that Sheesley’s containers may be
`
`stacked while empty, that these empty containers may be filled2 while in a stacked
`
`configuration, and that this filling may occur at any point in the supply chain,
`
`including at a rail line. And indeed, to fill containers at a rail line, empty
`
`containers must be present in close proximity to that rail line. As such, Sheesley
`
`teaches that empty containers may be stacked in close proximity to a rail spur. See
`
`Cisco Sys., Inc. v. Focal IP, LLC, No. IPR 2016-01254, 2017 WL 6611482, at *25
`
`(P.T.A.B. Dec. 27, 2017) (“a reference need not . . . explain every detail since it is
`
`speaking to those skilled in the art.”) (quotations omitted).
`
`Nonetheless, Patent Owner disputes that Sheesley teaches stacking empty
`
`containers “in close proximity to a rail spur.” It does this through a piecemeal
`
`dissection of Sheesley that disregards the interaction between these teachings.
`
`This approach is improper. See In re Wesslau, 53 C.C.P.A. 746, 353 F.2d 238, 241
`
`(C.C.P.A. 1965) (prior art reference should be considered in its entirety for what it
`
`fairly suggests to one skilled in the art); Cisco, 2017 WL 6611482, at *25 (“A prior
`
`
`2 To be filled with proppant, such containers must first be empty. It is unclear
`
`whether Patent Owner disputes this.
`
`
`
`
`11
`
`
`
`Paper No. 21
`
`art reference must be considered together with the knowledge of one of ordinary
`
`skill in the pertinent art.”) (internal quotations omitted).
`
`The first disclosure that Patent Owner improperly isolates is Figure 3.
`
`Patent Owner asserts that Sheesley’s Figure 3 teaches stacking containers only at
`
`the well site, based on paragraph [0083]’s statement that “[a]t the well site to be
`
`fraced, modified cargo containers 270 can be stacked as shown in FIG. 3.” Ex.
`
`1003 (Sheesley) at [0083]; see Paper No. 14 (Response) at 16. But this statement
`
`simply emphasizes that the stackability portrayed in Figure 3 may be implemented
`
`at the well site. Sheesley’s primary characterization of Figure 3 – “a pictorial
`
`illustration of the stackability of modified cargo containers, with or without sand
`
`therein” – contains no such spatial limitation. Ex. 1003 (Sheesley) at [0021]. Nor
`
`does Patent Owner attempt to explain why, in the context of Sheesley’s disclosure,
`
`the stacking capability portrayed in Figure 3 may only be practiced at the well site.
`
`Nor can it, because Sheesley quite clearly teaches that the containers may be
`
`stacked in other locations. For example, Sheesley explains that “the modified frac
`
`containers may be stacked in any conventional means, either while in transit or at
`
`the frac site.” Ex. 1003 (Sheesley) at [0018]. Further, Figure 5 of Sheesley
`
`portrays stacked, empty containers being filled with proppant “while sitting on rail
`
`car 313.” Ex. 1003 (Sheesley) at [0085].
`
`
`
`
`12
`
`
`
`Paper No. 21
`
`Patent Owner next addresses Figure 5. Patent Owner argues that, because
`
`Figure 5 portrays empty containers stacked on a rail car, “at best, Sheesley
`
`discloses filling stacked containers on a rail car, not ‘vertically stacking a plurality
`
`of empty containers in close proximity to a rail spur.’” Paper No. 14 (Response) at
`
`17 (emphasis by Patent Owner). In other words, because the empty containers in
`
`Sheesley’s Figure 5 are positioned on a rail car, a person of ordinary skill in the art
`
`would not understand Sheesley to teach stacking empty containers in other
`
`locations. There are two issues with this argument.
`
`The first issue is that Patent Owner’s attempt to limit Sheesley to an
`
`illustrative example is improper. Sheesley discloses stacking empty containers at
`
`various places, and filling these stacked containers anywhere in the supply chain,
`
`including at a rail site. Figure 5’s portrayal of stacked containers being filled on a
`
`rail line is illustrative, not limiting. See Ultradent Prod., Inc. v. Life-Like
`
`Cosmetics, Inc., 127 F.3d 1065, 1068 (Fed. Cir. 1997) (“The district court thus
`
`erred by construing the scope of the Rosenthal disclosure as limited to the
`
`preferred embodiment.”). By focusing myopically on the illustrative example
`
`portrayed in Figure 5, Patent Owner misses the larger teaching of Sheesley: that
`
`because Sheesley’s containers may be stacked while empty, and may be filled
`
`while stacked at any point in the supply chain (including at a rail site), they may be
`
`stacked while empty in close proximity to a rail site. See Cisco, 2017 WL
`
`
`
`
`13
`
`
`
`Paper No. 21
`
`6611482, at *25 (“a reference need not . . . explain every detail since it is speaking
`
`to those skilled in the art.”) (quotations omitted).
`
`The second issue is that Patent Owner’s argument relies on the premise that
`
`empty containers stacked on a rail car are not “in close proximity to a rail spur.”3
`
`And indeed, Patent Owner does argue that the “’772 Patent makes clear that ‘in
`
`close proximity to’ is distinct from ‘on.’” Paper No. 14 (Response) at 17. This is a
`
`backdoor claim construction argument, and one which Patent Owner did not raise
`
`in the proper course.
`
`Nor would such a claim construction be supported. Patent Owner’s
`
`argument hinges on an illustrative embodiment portrayed in Figure 3 of the ’772
`
`patent, and the relative positions of components that are “located on a rail spur” or
`
`“adjacent to the bulk material train 64.” “bulk material train 64,” “a vessel 62,”
`
`and an “engine 66,” which are “located on a rail spur 68.” Ex. 1001 (’772 patent)
`
`at 7:57-59; 7:66-8:01. See Paper No. 14 (Response) at 18-19 (“While it is clear
`
`that bulk material train 64 and engine 66 are on rail spur 68, it is similarly clear
`
`that containers 70, 72, 74, and 76 are situated in close proximity to the rail spur,
`
`
`3 To be clear, a POSITA would understand that empty containers stacked on a rail
`
`car “would necessarily be in ‘close proximity’ to the rail spur.” Ex. 1002 (Schaaf
`
`Decl.), ¶ 68.
`
`
`
`
`14
`
`
`
`Paper No. 21
`
`not on it.”). But Figure 3 merely “shows a system [] of the present invention.”
`
`Ex. 1001 (’772 patent) at 7:54. “It is well established that claims are not limited to
`
`preferred embodiments, unless the specification clearly indicates otherwise.”
`
`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323-24 (Fed. Cir.
`
`2018). Moreover, the ’772 patent is clear that the claimed invention is not limited
`
`to this illustrative embodiment. Ex. 1001 (’772 patent) at 9:62-66. (“The
`
`foregoing disclosure and description of the invention is illustrative and explanatory
`
`thereof. Various changes in the details of the illustrated construction can be made
`
`within the scope of the appended claims without departing from the true spirit of
`
`the invention.”). As such, Patent Owner’s backdoor claim construction argument
`
`is without merit.4
`
`
`4 Patent Owner also references testimony from Mr. Schaaf’s deposition, stating that
`
`containers 70, 72, 74, and 76 are not “on rail line 68[.]” Paper No. 14 (Response)
`
`at 19. These statements are inapposite. Mr. Schaaf was answering specific
`
`questions about the components portrayed in Figure 3, not offering a universal
`
`definition of the terms “on” and “in close proximity to.” Moreover, these
`
`questions concerned the position of containers 70, 72, 74, and 76, which has no
`
`bearing on the issue disputed by Patent Owner: whether containers on rail cars are
`
`“in close proximity to a rail spur.”
`
`
`
`
`15
`
`
`
`Paper No. 21
`
`For these reasons, Patent Owner’s attempts to confine Sheesley’s teachings
`
`to certain illustrative examples should be rejected.
`
`VI. SHEESLEY TEACHES “VERTICALLY STACKING THE SECOND
`PLURALITY OF PROPPANT FILLED CONTAINERS WITH A
`LOADER SO THAT ONE OF THE PLURALITY OF PROPPANT
`FILLED CONTAINERS OVERLIES ANOTHER ONE OF THE
`PLURALITY OF FILLED CONTAINERS TO REDUCE THE
`FOOTPRINT OF THE AREA REQUIRED FOR STORAGE OF THE
`PROPPANT IN CLOSE PROXIMITY TO THE RAIL SPUR”
`
`Claim 2 of the ’772 patent depends from claim 1, and requires in part
`
`“vertically stacking the second plurality of proppant filled containers with a loader
`
`so that one of the plurality of proppant filled containers overlies another one of the
`
`plurality of filled containers to reduce the footprint of the area required for storage
`
`of the proppant in close proximity to the rail spur.” Ex. 1001 (’772 patent) at claim
`
`2. Sheesley teaches this limitation.
`
`As explained in the Petition, Sheesley teaches vertically stacking filled
`
`containers with a loader. For instance, Sheesley teaches the use of “Rough Terrain
`
`Cargo Handler 298,” which “may be used to pick up and stack the modified cargo
`
`containers 270 as illustrated in FIG. 3.” Ex. 1003 (Sheesley) at [0083]. Further, as
`
`discussed above in Section IV, Sheesley makes clear that containers may be
`
`stacked “with or without sand therein” (Ex. 1003 (Sheesley) at [0021]), that they
`
`“may be stacked in any conventional means either while in transit or at the frac
`
`site,” (Ex. 1003 (Sheesley) at [0018]), that they may be filled while stacked (Ex.
`
`
`
`
`16
`
`
`
`Paper No. 21
`
`1003 (Sheesley) at [0023]; [0085]; Fig. 5), and that this filling may occur anywhere
`
`in the supply chain, including at a rail site (Ex. 1003 (Sheesley) at [0019]; [0042];
`
`[0049]; [0077]; [0078]; Fig. 1; claim 21). In light of Sheesley’s disclosures, “a
`
`POSITA would understand that multiple containers could be filled and stacked at
`
`the rail spur,” and therefore that “Sheesley discloses this limitation.” Ex. 1002
`
`(Schaaf Decl.), ¶¶ 80, 81; Paper No. 1 (Petition) at 33-34.
`
`Patent Owner disputes that “stacking full containers in close proximity to a
`
`rail spur” is obvious in light of Sheesley’s teachings. Paper No. 14 (Response) at
`
`28. The crux of Patent Owner’s argument appears to be that, although “Sheesley
`
`discloses that modified cargo containers may be filled while stacked on a rail car,”
`
`“on a rail car is not the same as in close proximity to a rail spur.” Paper No. 14
`
`(Response) at 28 (emphasis by Patent Owner). But as discussed above in Section
`
`V, Patent Owner’s backdoor claim construction of “in close proximity” is both
`
`unsupported and irrelevant. Figure 5 does not circumscribe Sheesley, but rather
`
`elaborates Sheesley’s clear disclosure that its containers may be stacked, empty or
`
`full, anywhere in the supply chain.
`
`Patent Owner supports its argument by observing that “Figure 3 discloses
`
`stacked containers ‘at the well site to be fraced,’ not at the rail spur,” and that
`
`“Sheesley teaches that rail spurs and frac sites are distinct.” Paper No. 14
`
`(Response) at 30. As discussed above in Section V, Patent Owner’s artificially
`
`
`
`
`17
`
`
`
`Paper No. 21
`
`narrow reading of Figure 3 disregards other, non-limiting characterizations of that
`
`figure. And while no one disputes that rail spurs and frac sites are distinct,
`
`Sheesley does not place limitations on where filled containers may be stacked, but
`
`rather teaches that containers may be stacked and filled anywhere in the supply
`
`chain, including at a rail site. Ex. 1003 (Sheesley) at [0017]; [0018]; [0019];
`
`[0020]; [0021]; [0042]; [0049]; [0077]; [0078]; Fig. 1.
`
`Patent Owner’s final argument is that “Sheesley discloses that its container
`
`is offloaded from the rail spur to a flatbed truck and then taken to the frac site to be
`
`stored; it does not disclose stacking filled containers in close proximity to the rail
`
`spur as claimed.” Paper No. 14 (Response) at 31. But Patent Owner misrepresents
`
`the scope of claim 2. That claim does not require, as Patent Owner implies, that
`
`filled containers are stored for extended periods of time at the rail site. Rather,
`
`claim 2 requires “vertically stacking” filled containers “so that one [plurality of]
`
`containers overlies another [plurality of] containers to reduce the footprint of the
`
`area required for storage of the proppant in close proximity to the rail spur.” Ex.
`
`1001 (’772 patent) at claim 2. This claim does not necessitate storing large
`
`quantities of proppant at the rail spur. Instead, it requires that, after the containers
`
`are filled but before they are moved onto proppant transporting rail vehicles (as
`
`required by claim 1), the filled containers are stacked to maximize available space
`
`
`
`
`18
`
`
`
`Paper No. 21
`
`at the rail site. As such, it is immaterial that Sheesley’s filled containers are
`
`ultimately taken to the frac site.
`
`Patent Owner also fixates on Mr. Schaaf’s use of the word “could,” in the
`
`context of the statement “a POSITA would understand that multiple containers
`
`could be filled and stacked at the rail spur” in light of Sheesley’s teachings. Ex.
`
`1002 (Schaaf Decl.), ¶ 81. In Patent Owner’s view, “Petitioner [sic] statement that
`
`multiple containers could be filled with proppant concedes that Sheesley does not
`
`actually disclose this claim 2 limitation.” Paper No. 14 (Response) at 29
`
`(emphasis by Patent Owner). Here, Patent Owner misses the point. Mr. Schaaf
`
`was not stating, as Patent Owner suggests, that a person of ordinary skill in the art
`
`could m
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
