GRIT ENERGY SOLUTIONS, LLC v. OREN TECHS., LLC.

GRIT ENERGY SOLUTIONS, LLC v. OREN TECHS., LLC., Appeal No. 2019-1063 (Fed. Cir. April 30, 2020). Before Prost, Newman, and Wallach. Appealed from PTAB.  (Obviousness)

Background:

Oren Technologies (“Oren”) sued Grit Energy Solutions (“Grit”) for infringement of one of its patents (“the ‘341 Patent”) directed to a proppant discharge system with a container and a support structure for hydraulic fracking.  Grit filed a petition for IPR, alleging that the claims of the patent were unpatentable as obvious.  Exemplary claim 1 of the patent required “(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” (“the ‘341 configuration”).

The reference at issue was a French patent that taught two containers joined together, one on top of the other.  “Both containers have an ‘orifice[] used for transferring’ product ‘from one container to another’ and a shutter device for opening and closing the respective orifices.”  Claim 5 of the reference recites “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.”  However, the “non-limiting examples” disclosed by the reference only taught the stud (alleged “pin”) being fixed to the shutter blade (8) of the alleged “support structure,” and the reference numerals in claim 5 of the reference similarly referred to this same configuration, which is the opposite of the ‘341 configuration.

Grit argued that “even though the claims include reference numerals to a figure depicting the stud and orifice in only the opposite of the ‘341 configuration, claim 5’s reference to these numerals does not limit its disclosure.”  Relying particularly on the reference numerals in claim 5 of the reference, the PTAB disagreed, determining that the reference did not disclose the features of claim 1 of the patent and instead discloses only the opposite of the ‘341 configuration.  The PTAB thus ruled in favor of Oren, finding the claims nonobvious over the cited reference.

Issue/Holding:

Did the PTAB err in finding the claims nonobvious?  (continue reading)

Summary by:  James Potts

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