Grit Energy Solutions, LLC v. Oren Technologies, LLC
Docket No. 2019-1063 (IPR2017-00768)
PROST, NEWMAN, WALLACH
April 30, 2020
Brief Summary: PTAB IPR decision of no obviousness vacated and remanded; Grit found to have Article III standing based on previously dismissed (without prejudice) litigation.
Summary: Grit appealed PTAB IPR decision finding claims 1-7 of US 8,585,341 directed to a “proppant discharge system” (a proppant being “a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing”) were not shown to be unpatentable for obviousness in view of a US patent (“Eng Soon”) and a French patent (“Constantin”). Grit argued that while “Eng Soon discloses the opposite of the ‘341 configuration”, Constantin discloses the ‘341 configuration in its claim 5 (obvious over these references, “either alone or in further view of additional prior art”). Grit argued that “Constantin expressly indicates that its depicted embodiment was non-limiting” (that embodiment also disclosing the opposite of the ‘341 configuration) and that because the “use of reference numerals does not limit the scope under French patent law” and “such use should also not limit what the claims disclose.” The PTAB disagreed with Grit, finding that “Constantin’s claim 5 also discloses the pin and receptacle only in the opposite configuration of the ‘341 configuration”, “[t]here is no evidence that person of ordinary skill would understand French patent law and incorporate that law into their understanding of this technical reference”, “disagree[d] with [Grit Energy’s] argument that transposing Eng Soon’s pin and receptable would have been a simple substitution to achieve predictable results”, and patentee (Oren) “present[ed] persuasive evidence that swapping the location of Eng Soon’s pin and receptacle would result in a more expensive system.” In this appeal, Oren argued Grit did not have Article III standing since it “neither committed nor plans to commit acts that create a sufficient threat of litigation” (e.g., “transferred ownership of all products accused of infringement” and “has not identified any concrete plans for future activity”). Grit argued for Article III standing because “Oren previously sued Grit Energy for infringement” (previously dismissed without prejudice) “and Oren is free to reassert those infringement claims”, and the FC panel agreed that Grit has standing (Semtek, US 2001; JTEKT, FC 2018; DuPont, FC 2011). The FC panel also agreed with Grit that the PTAB’s “determination…is unsupported by substantial evidence” as it “rests on an erroneous reading of Constantin’s claim 5” which “plainly teaches that the stud and orifice can be either in the ‘341 configuration or the opposite of the ‘341 configuration” (e.g., “substantial evidence does not support the Board’s determination that claim 5’s parenthetical reference to shutter blade ‘8’ limits its disclosure in such a manner”, the PTAB inappropriately “mapp[ed] the non-limiting example to the claims” and its denial of Grit’s request for rehearing “offered entirely new reasoning to support its conclusion”; Orthopedic Equip., FC 1983 (economic reason not to combine not the same as “some technological incompatibility that prevented their combination”)). The PTAB decision was therefore vacated and remanded. Judge Newman dissented as to the majority’s view of the Constantin reference.