Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: December 5, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUEL AUTOMATION STATION, LLC,
`Petitioner,
`
`v.
`
`FRAC SHACK INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01349
`Patent 9,346,662 B2
`____________
`
`
`
`Before BEVERLY M. BUNTING, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 5, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUEL AUTOMATION STATION, LLC,
`Petitioner,
`
`v.
`
`FRAC SHACK INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01349
`Patent 9,346,662 B2
`____________
`
`
`
`Before BEVERLY M. BUNTING, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01349
`Patent 9,346,662 B2
`
`
`I.
`
`INTRODUCTION
`
`Fuel Automation Station, LLC (“Petitioner”) filed a Petition for inter
`
`partes review of claims 1–12 of U.S. Patent No. 9,346,662 B2 (Ex. 1001,
`
`“the ’662 patent”). Paper 2 (“Pet.”), 1. Frac Shack Inc. (“Patent Owner”)
`
`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). The Petition
`
`asserts that claims 1–12 of the ’662 patent are unpatentable. Pet. 19, 61–64
`
`(addressing claim 12). After the Petition was filed, claim 12 of the ’662 was
`
`disclaimed. Ex. 2001 (disclaimer filed Aug. 31, 2017); Prelim. Resp. 62.
`
`We will treat the Petition as directed to claims 1–11, and will not discuss
`
`claim 12 further. See Facebook, Inc. v. Skky, LLC, Case CBM2016-00091,
`
`slip op. at 4–8 (PTAB Sept. 28, 2017) (Paper 12) (holding that statutory
`
`disclaimer filed after the Petition but prior to a Decision on Institution
`
`requires treating disclaimed claims as though they never existed).
`
`Institution of an inter partes review is authorized by statute only when
`
`“the information presented in the petition . . . and any response . . . shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a); see 37 C.F.R. § 42.108. For the reasons set forth below, we
`
`conclude that the information presented in the Petition fails to establish a
`
`reasonable likelihood that Petitioner will prevail in showing the
`
`unpatentability of claims 1–11. Accordingly, we decline to institute an inter
`
`partes review.
`
`A. Related Matters
`
`Petitioner and Patent Owner identify the following pending district
`
`court matter involving the ’662 patent that would likely affect, or be affected
`
`by, a decision in this proceeding: Frac Shack Inc. v. Atlas Oil Co. and Fuel
`
`2
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`IPR2017-01349
`Patent 9,346,662 B2
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`Automation Station, LLC, No. 16-cv-02275-STV (D. Colo. filed Sept. 9,
`
`2016). Pet. 1; Paper 4, 2.
`
`B. The ’662 Patent
`
`The ’662 patent discloses a fuel delivery system “for reducing the
`
`likelihood that a fuel tank of equipment at a well site during fracturing of a
`
`well will run out of fuel.” Ex. 1001, Abstract. According to the Background
`
`of the ’662 patent, conventional filling of equipment at a well site requires
`
`manually discharging fuel “into each fuel tank one after the other.” Id. at
`
`1:10–14.
`
`
`
`Figure 1 of the ’662 patent is reproduced below:
`
`
`
`Figure 1 shows fuel delivery system 14 for delivery of fuel to multiple fuel
`
`tanks 12 of “multiple pieces of equipment 10 at a well site during fracturing
`
`
`
`3
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`IPR2017-01349
`Patent 9,346,662 B2
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`of a well.” Id. at 2:29–30. Fluid delivery system 14 includes fuel source 16,
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`which includes fuel storage tanks 18, 20, with each tank having plural fuel
`
`outlets 22. Id. at 2:35–41. Hoses 24 connect fuel outlets 22 to fuel cap or
`
`fuel head 26 on respective fuel tanks 12 for delivery of fuel to fuel tank 12.
`
`Id. at 2:41–44.
`
`
`
`Each fuel cap 26 includes fuel level sensor 54, which communicates
`
`with control station or controller 56 located on trailer 14. Id. at 3:37–44.
`
`Controller 56 opens electrically operable valve 58 located on each fuel outlet
`
`22, and starts fuel flow to tank fuel 12 when sensor 54 sends a low fuel level
`
`signal to controller 56. Id. at 4:31–49.
`
`C. Claims
`
`Claim 1 is the only independent claim and is reproduced below:
`
`1. A fuel delivery system for fuel delivery to multiple pieces of
`equipment at a work site, comprising:
`
`a fuel source comprising one or more manifolds, the one or more
`manifolds being connectable to a fuel supply;
`
`each manifold of the one or more manifolds having multiple fuel
`outlets, each fuel outlet of the multiple fuel outlets having a
`hose connection;
`
`plural hoses, each hose having a first end and a second end and
`being connected at the first end of the hose to a corresponding
`one of the multiple fuel outlets and having a fuel delivery
`connection at the second end of the hose for securing the
`second end of the hose to a corresponding one of the multiple
`pieces of equipment to which fuel is to be delivered;
`
`an electrically operable valve responsive to electronic control
`signals on each fuel outlet;
`
`a sensor associated with each combination of fuel outlet, hose
`and fuel delivery connection, each sensor being configured to
`detect a low fuel condition associated with each of the
`multiple pieces of equipment to which fuel is to be delivered;
`
`4
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`IPR2017-01349
`Patent 9,346,662 B2
`
`
`a controller responsive to signals supplied from each sensor
`through respective communication channels, the controller
`being configured to provide control signals to open and close
`the respective electrically operable valves; and
`
`in which the controller is responsive to the detection of the low
`fuel condition, to display an indication of the low fuel
`condition or to open at least one of the electrically operable
`valves for each of the multiple pieces of equipment that is
`associated with the low fuel condition.
`
`Ex. 1001, 8:52–9:15.
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1–11 based on the following grounds
`
`(Pet. 19):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Toshio1 and Griswold2 or
`Hose Handbook3
`
`Toshio, Griswold or Hose
`Handbook, and Witter4
`
`Toshio, Griswold or Hose
`Handbook, and Lohmann5
`
`§ 103
`
`1–7, 9, 10, 11
`
`§ 103
`
`3
`
`§ 103
`
`4, 5
`
`
`
`1 JP 2003002400A (pub. Jan. 8, 2003) (Exs. 1003, 1004). We will cite to an
`English translation of Toshio provided by Petitioner. See Ex. 1004.
`2 U.S. Patent No. 599,702 (issued Mar. 1, 1898) (Ex. 1005).
`3 Hose Handbook, published by Rubber Manufacturers Assoc., Inc. (7th ed.
`2003) (Ex. 1006).
`4 U.S. Patent Pub. No. 2008/0313006 (pub. Dec. 18, 2008) (Ex. 1028).
`5 WO 2009/068065 A1 (pub. June 4, 2009) (Ex. 1009).
`
`5
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`IPR2017-01349
`Patent 9,346,662 B2
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`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Toshio, Griswold or Hose
`Handbook, and McCauley6
`
`§ 103
`
`2, 6
`
`Toshio, Griswold or Hose
`Handbook, and McNabb7
`
`Toshio, Griswold or Hose
`Handbook, and Admitted
`Prior Art8
`
`§ 103
`
`8
`
`§ 103
`
`7
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
`
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard). Consistent with the broadest reasonable
`
`construction, claim terms are presumed to have their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art in the context
`
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`The parties propose a number of constructions for several terms,
`
`including whether the preamble limits claim 1 and its proper scope. Pet.
`
`
`
`6 U.S. Patent No. 2,340,070 (issued Jan. 25, 1944) (Ex. 1007).
`7 U.S. Patent No. 5,927,603 (issued July 27, 1999) (Ex. 1010).
`8 Petitioner cites to the Background of the ’662 patent as evidence of
`allegedly admitted prior art. See Ex. 1001, 1:9–14; Pet. 60.
`
`6
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`IPR2017-01349
`Patent 9,346,662 B2
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`10–14; Prelim. Resp. 11–33. Based on the arguments and evidence of
`
`record, we determine that certain language in the preamble requires
`
`construction, and that no other claim term needs express interpretation. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”).
`
`1. Preamble as a limitation
`
`“In general, a preamble limits the invention if it recites essential
`
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`
`801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is
`
`not limiting ‘where a patentee defines a structurally complete invention in
`
`the claim body and uses the preamble only to state a purpose or intended use
`
`for the invention.’” Id. In other words, the preamble is regarded as limiting
`
`if it recites essential structure that is important to the invention or necessary
`
`to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418
`
`F.3d 1282, 1305–06 (Fed. Cir. 2005), abrogated on other grounds, see IRIS
`
`Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1361 n.1 (Fed. Cir. 2014). If
`
`the preamble language in dispute appears again in the body of the claim,
`
`with the preamble providing antecedent basis for the limitation, the preamble
`
`language “may limit claim scope because it indicates a reliance on both the
`
`preamble and claim body to define the claimed invention.” Catalina Mktg.,
`
`289 F.3d at 808. In addition, “clear reliance on the preamble during
`
`prosecution to distinguish the claimed invention from the prior art
`
`transforms the preamble into a claim limitation because such reliance
`
`indicates use of the preamble to define, in part, the claimed invention.” Id.
`
`7
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`Patent 9,346,662 B2
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`“Without such reliance, however, a preamble generally is not limiting when
`
`the claim body describes a structurally complete invention.” Id. at 809.
`
`Similarly, “preamble language merely extolling benefits or features of the
`
`claimed invention does not limit the claim scope without clear reliance on
`
`those benefits or features as patentably significant.” Id.
`
`Here, the preamble of claim 1 refers to “[a] fuel delivery system for
`
`fuel delivery to multiple pieces of equipment at a work site.” Ex. 1001,
`
`8:52–53. Petitioner argues in the Petition that “[t]he preamble of claim 1 is
`
`not a limitation and is of no significance to claim construction.” Pet. 13.
`
`Specifically, Petitioner argues that the preamble “merits no weight” because
`
`the “body of claim 1 defines a structurally complete apparatus and uses the
`
`preamble only to recite intended purpose or use.” Pet. 14. Petitioner
`
`contends that “rather than impose any structural limits on the claimed
`
`system, the preamble merely recites things that would be outside of or
`
`separate from the system as claimed, i.e., the equipment that may be
`
`serviced by the system and the surrounding environment (work site) at
`
`which the system may be used.” Id.
`
` Patent Owner counters that the preamble is limiting. Prelim. Resp.
`
`16. Patent Owner contends that the preamble provides antecedent basis for
`
`several claim limitations and helped differentiate claim 1 from the prior art
`
`during prosecution. Id. at 21–23.
`
`We first consider Patent Owner’s argument that the preamble provides
`
`antecedent basis for claim limitations in the body of claim 1. Patent Owner
`
`notes that the phrase “multiple pieces of equipment” provides antecedent
`
`basis for the same phrase appearing in the body of the claim. Id. at 22.
`
`8
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`Patent Owner also notes that “at a work site” provided antecedent basis for
`
`the precursor to dependent claim 7 during prosecution. Id. n.8.
`
`The body of claim 1 refers to “the multiple pieces of equipment” three
`
`times, and therefore refers back to the preamble’s “multiple pieces of
`
`equipment” for an antecedent basis. Ex. 1001, 8:52–53, 8:64, 9:4, 9:14–15.
`
`The use of the preamble phrase “multiple pieces of equipment” as an
`
`antecedent for the repeated use of that same phrase in the body of the claim
`
`strongly supports a conclusion that the phrase limits the claim. Catalina
`
`Mktg., 289 F.3d at 808; see also Storage Tech. Corp. v. Cisco Sys., Inc., 329
`
`F.3d 823, 835 (Fed. Cir. 2003) (stating that if body of claim had included
`
`language repeating relevant language from the preamble, the preamble
`
`language “unquestionably would have been a limitation”).
`
`The preamble phrase “at a work site” immediately follows “multiple
`
`pieces of equipment” in the preamble, but “at a work site” does not provide
`
`antecedent basis because it does not appear in the claim body. Ex. 1001,
`
`8:52–53. In some cases, using one portion of the preamble as antecedent
`
`basis may justify treating other portions of the preamble as a limitation, but
`
`we must remain mindful that finding one portion of a preamble limiting does
`
`not justify importing the entire preamble as a limitation. Compare
`
`Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368, 1376 (Fed. Cir.
`
`2005) (treating phrase in preamble as limiting even though another phrase
`
`provided antecedent basis for claim terms in the body of claim), with
`
`TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322–23 (finding that district court
`
`erred in treating entire preamble as limiting because a portion of the
`
`preamble provided antecedent basis for claim terms). Further, although
`
`Patent Owner contends that “at a work site” provided antecedent basis for a
`
`9
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`Patent 9,346,662 B2
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`dependent claim during prosecution, claim 7 as issued does not mention
`
`“work site” and instead recites a “well site.” Prelim. Resp. 22; Ex. 1001,
`
`10:1–2. Accordingly, consideration of the antecedent basis issue strongly
`
`suggests that the phrase “multiple pieces of equipment” limits claim 1, and
`
`that the patentee chose to use the preamble to limit the claim, at least in part.
`
`The antecedent basis inquiry does not conclusively establish that the phrase
`
`“at a work site” limits the claim, but does suggest that “at a work site” limits
`
`the claim because it immediately follows and further describes the location
`
`of the multiple pieces of equipment.
`
`We next consider Patent Owner’s argument that “during prosecution,
`
`the patentee argued that the preamble was limiting and differentiated the
`
`prior art from the claimed invention,” and that such reliance on the preamble
`
`renders the preamble a claim limitation. Id. at 22–23 (citing Ex. 1001 at
`
`105–07; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
`
`808–09 (Fed. Cir. 2002)). Patent Owner further relies on arguments made
`
`during prosecution when contending that its reliance on the preamble
`
`supports its contention that the preamble limits the claim. Prelim. Resp. 22.
`
`As noted above, Catalina states that “clear reliance on the preamble during
`
`prosecution to distinguish the claimed invention from the prior art
`
`transforms the preamble into a claim limitation.” Catalina Mktg., 289 F.3d
`
`at 808 (emphasis added). In Catalina, the applicants “did not rely on the
`
`preamble phrase to distinguish over” the prior art in question. Id. at 810; see
`
`also Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1238
`
`(Fed. Cir. 2017) (finding arguments in prosecution history in relation to
`
`claim limitations in the body of the claim insufficient to distinguish the prior
`
`art based on the language in the preamble). Based on the foregoing, the
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`10
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`prosecution history must show a “clear reliance” on the specific, disputed
`
`language in the preamble in an effort to distinguish over the prior art.
`
`Catalina Mktg., 289 F.3d at 808. Such clear reliance transforms the
`
`language into a limitation even if the language otherwise appears to be mere
`
`intended use or features of the claimed invention that would typically not
`
`limit the claim. Id. at 809.
`
`Here, applicants “clearly relied” on the entire “multiple pieces of
`
`equipment at a work site” phrase to distinguish claim 1 from the prior art
`
`during prosecution. Ex. 1002, 105–07. Applicants characterized claim 1
`
`(then pending claim 37) as “directed to a system for delivery of fuel to
`
`multiple pieces of equipment at a work site” and went on to note how the
`
`claimed system addressed how the system advantageously supplies fuel,
`
`where “equipment at the work site may need to be refueled several times.”
`
`Id. at 105. Applicants then relied on the “multiple pieces of equipment at a
`
`work site” phrase to distinguish three different prior art references. See id. at
`
`105 (“Hockner is directed to filling fuel tanks at a filling station (Hockner,
`
`Field of the Invention) and not to refuel[]ing of multiple pieces of equipment
`
`at a work site.” . . . “The system in Hockner is unlike the system in Claim 37
`
`which provides for the delivery of fuel to multiple pieces of equipment at a
`
`work site.”); id. at 106 (“Corts does not disclose a fuel delivery system for
`
`fuel delivery to multiple pieces of equipment at a work site.”); id. at 107
`
`(“Lohmann neither discloses nor is related to the field of fuel delivery to
`
`11
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`multiple pieces of equipment at a work site”).9 In addition, by describing the
`
`Hockner prior art as directed to filling tanks at a filling station and arguing
`
`that is not the same as refueling multiple pieces of equipment at a work site,
`
`the prosecution history suggests that the “work site” requirement does not
`
`encompass filling stations, and was a specific distinction made to overcome
`
`the prior art. See id. at 105.
`
`We note that the preamble phrase was not used to distinguish all of
`
`the references at issue, and other arguments for patentability were made by
`
`the patentee that were necessary to obtain allowance of the claims.
`
`However, the record makes clear that “multiple pieces of equipment at a
`
`work site” was relied on as part of a separate, succinct argument in support
`
`of distinguishing multiple prior art references. See id. at 105–07. Under
`
`these circumstances, we conclude that the applicants clearly relied on the
`
`phrase “multiple pieces of equipment at a work site” to distinguish claim 1
`
`from the prior art.
`
`Federal Circuit precedent addressing reliance on preambles during
`
`prosecution supports our interpretation here. In Hearing Components, for
`
`example, the dispute was whether the phrase “readily installed and replaced
`
`by a user” (the “readily installed” phrase) in the preamble limited the claim.
`
`
`
`9 See also id. at 105 (“The equipment at the work site may need to be
`refuelled several times (Present Application, ¶ 0002). The system claimed in
`Claim 37 [issued claim 1] having a controller responsive to detection of a
`low fuel condition allows the system to remain connected to the equipment
`continuously during its operation and continuously refuelled in response to
`the detection of a low fuel condition. Conventional refuelling during
`operation of equipment increases the dangers, including the potential fire
`hazard from fuel and fuel vapors (Present Application, ¶ 0002).”).
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`Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1365–66 (Fed. Cir.
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`2010), abrogated on other grounds by Nautilus, Inc. v. Biosig Instr., Inc.,
`
`134 S.Ct. 2120 (2014). The patentee in Hearing Components argued that the
`
`“readily installed” phrase did not limit the claim. Id. at 1365. During
`
`prosecution, however, the patentee distinguished a “Moser” reference on the
`
`basis that it lacked a “disposable wax guard” that was “readily installed and
`
`replaced by a user,” two phrases from the preamble, with the body of the
`
`claim only providing antecedent basis for the first phrase by referring to
`
`“said guard.” Id. at 1362, 1366. The patentee also distinguished two
`
`additional references based on the “readily installed” phrase. Id. The
`
`Federal Circuit concluded that such reliance on the disputed preamble
`
`language during prosecution justified treating the “readily installed” phrase
`
`as a claim limitation. Id. Similarly, in Storage Technology, the patentee
`
`argued that the term “forwarding device” in the preamble did not limit the
`
`claims. Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 834 (Fed. Cir.
`
`2003). The Federal Circuit concluded that the patentee’s reliance on
`
`“forwarding device” to distinguish a reference during prosecution supported
`
`the conclusion that the language limited the claim, even though the
`
`patentee’s argument during prosecution went on to argue other distinctions
`
`between limitations in the body of the claim and the prior art. Storage Tech.,
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`329 F.3d at 827–28, 835.
`
`Based on consideration of the evidence and arguments before us, and
`
`in particular the use of portions of the preamble as an antecedent basis and
`
`the clear reliance on the preamble to distinguish prior art during prosecution,
`
`we conclude that the preamble phrase “multiple pieces of equipment at a
`
`work site” limits claim 1.
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`2. “at a work site”
`
` Petitioner does not provide an express construction for the phrase “at
`
`a work site.” Pet. 13–14. In its obviousness analysis, however, Petitioner
`
`suggests that if the preamble does limit the claim, “at a work site” merely
`
`means “wherever the location of the system is, such as a building.” Pet. 21.
`
`Patent Owner contends that “at a work site” means “a temporary
`
`construction area.” Prelim. Resp. 24. According to Patent Owner, this
`
`construction comports with how one of ordinary skill in the art would read
`
`the term in light of the specification, which refers to “well sites” and the
`
`temporary nature of the site. Id. at 24–25. The Patent Owner also alleges
`
`that certain prior art disclosing a construction site was not distinguished
`
`from the claimed “work site,” which implicitly suggests the patentee viewed
`
`a construction site as falling within the scope of a work site. Id. at 25.
`
`We are not persuaded that either party’s proposed construction of the
`
`phrase “at a work site” is the broadest reasonable construction in light of the
`
`specification. Petitioner’s position suggests that any fuel delivery system
`
`automatically meets the “at a work site” limitation because any system will
`
`have a location (“wherever it is” in Petitioner’s approach), and any location
`
`suffices to meet the “at a work site” requirement. Pet. 21. Such an approach
`
`effectively reads the requirement out of the claim. The prosecution history
`
`also undermines Petitioner’s proposed construction because applicants
`
`distinguished the Hockner prior art as directed to filling tanks at a filling
`
`station, and argued the claimed “work site” does not encompass a filling
`
`station. Ex. 1002, 105. Accordingly, “work site” cannot encompass any
`
`building, or any location where a fuel delivery system is located.
`
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`Patent Owner’s proposed construction emphasizes the allegedly
`
`“temporary” nature of the site. Patent Owner does not, however, direct us to
`
`any passage in the specification describing the site as “temporary.”
`
`Moreover, use of the term “temporary” begs the question of how briefly a
`
`system must remain in place to fall within the scope of “temporary.” In
`
`addition, Patent Owner does not explain adequately how the well site
`
`described in the specification falls within the scope of a “construction site.”
`
`The written description of the ’662 patent does not use the term “work
`
`site” and instead consistently refers to the use of the system at a “well site.”
`
`Ex. 1001, 1:11, 1:26, 1:29, 1:49, 2:24, 2:29, 2:33–34, 5:12, 5:22, 5:33–36.
`
`The specification also suggests that the purpose of the claimed system is to
`
`deliver fuel to a well site during fracturing of a well. Id. at 1:9–30. Reading
`
`the phrase “at a work site” in light of the specification, therefore, does not
`
`suggest that “work site” refers to a “construction site” and instead “work
`
`site” refers to a “well site.” Extrinsic evidence submitted by Patent Owner
`
`also suggests that one of skill in the art uses these terms interchangeably.
`
`See Ex. 2010, 2–3 (Dept. of Labor guidelines discussing “well site” and
`
`“work site” without noting any differences between the two sites).
`
`We also consider whether limiting “work site” in claim 1 to a “well
`
`site” renders dependent claim 7, which refers to a “well site,”10 meaningless.
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`Patent Owner argues persuasively that claim 7 contains further limitations
`
`that go beyond the term “well site.” See Prelim. Resp. 29–33. We need not
`
`determine the scope of those limitations, but note that their presence
`
`
`
`10 Claim 7 reads: “The fuel delivery system of claim 1 set up for delivery of
`fuel at a well site during fracturing of a well.” Ex. 1001, 10:1–2.
`
`15
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`indicates that the doctrine of claim differentiation does not necessarily
`
`suggest a broader scope for “work site.”
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`Accordingly, based on the current record, we construe “at a work site”
`
`in the preamble of claim 1 under the broadest reasonable interpretation
`
`standard that governs this proceeding, to mean “at a well site.”11 Claim 1,
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`therefore, requires a fuel delivery system capable of supplying fuel to
`
`multiple pieces of equipment at a well site.
`
`B. Obviousness Based on Toshio
`
`Relying on the Declaration of Dr. C. Arthur MacCarley (Ex. 1035),
`
`Petitioner alleges that the combination of Toshio with either Griswold or the
`
`Hose Handbook renders claims 1 obvious under 35 U.S.C. § 103. Pet. 19.
`
`Petitioner relies on additional prior art in its assertion that dependent claims
`
`2–11 would have been obvious. Id. We determine, on this record, that
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`Petitioner has not established a reasonable likelihood of prevailing on its
`
`assertion that any of claims 1–11 would have been obvious.
`
`1. Overview of Toshio
`
`Toshio discloses “a centralized oil supply system for feeding liquid
`
`fuel in a storage tank installed underground or above ground to a plurality of
`
`combustion instruments via a relay tank.” Ex. 1004 ¶ 1. Toshio describes
`
`
`
`11 A person of ordinary skill in the art may understand “work site” to refer to
`a non-permanent or moveable site. See, e.g., Ex. 2013 ¶¶ 40–42. We need
`not reach this level of detail in our construction to resolve the current
`controversy on the asserted grounds of unpatentability, and we express no
`opinion as to potential further requirements of the claimed “well site.” See
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`
`16
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`supplying kerosene from the storage tank to a number of relay tanks
`
`“installed on each floor of a multistory structure, such as a building.” Id. at
`
`¶¶ 2, 34. The relay tanks on each floor supply fuel to combustion
`
`instruments such as heaters or water heaters located on the same floor. Id. at
`
`¶ 6. Toshio also discloses a supply sensing sensor that indicates when fuel
`
`in a relay tank decreases below a certain level (indicating the need for
`
`additional fuel), and a stop signal sensor that indicates when the fuel reaches
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`an upper limit (indicating the need to stop refueling). Id. at ¶¶ 7–9.
`
`2. Discussion
`
`Our claim construction analysis above drives the analysis of
`
`Petitioner’s obviousness assertions. With respect to the preamble, Petitioner
`
`relies on its assertion that the preamble does not limit the claim. Pet. 20.
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`Petitioner also alleges that Toshio discloses the preamble requirements,
`
`apparently as a backup argument in the event that the preamble limits the
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`claim. Id. at 20–21. With regard to the “at a work site” limitation, Petitioner
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`alleges that Toshio discloses the requirement because “at a work site” means
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`“wherever the location of the system is, such as a building” and cites to
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`portions of Toshio that describe use of its system in a building. Id. at 21
`
`(citing Ex. 1004, 9, 22, ¶ 34). Petitioner also cites to the Declaration of Dr.
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`MacCarley for support, with that testimony generally repeating the
`
`assertions in the Petition. Id. (citing Ex. 1035 ¶¶ 98–101); Ex. 1035 ¶ 101
`
`(“Toshio’s system is for delivery of fuel to multiple pieces of equipment at a
`
`work site, or at wherever the system is located. One example disclosed in
`
`Toshio is at a building. (Ex. 1004, [0034])”).
`
`
`
`As discussed above, we reject Petitioner’s assertion that “at a work
`
`site” can be read so broadly that it means “wherever the location of the
`
`17
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`IPR2017-01349
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`system is.” Instead, we construe it to mean “at a well site.” Petitioner does
`
`not provide credible evidence or argument to the effect that Toshio discloses
`
`use of its fuel delivery system at a well site. Pet. 20–21. Instead, we are
`
`more persuaded by Patent Owner’s argument that Toshio describes a
`
`permanently-installed fuel delivery system within a building, which is not a
`
`well site.12 Prelim. Resp. 34–40. Further, Petitioner does not rely on
`
`Griswold or the Hose Handbook as disclosing the “at a work site” limitation.
`
`See id. at 26–29.
`
`In an argument in the context of claim 7, Petitioner notes the
`
`similarity in some of the structures of Toshio and the ’662 patent, and argues
`
`that “Toshio is not limited to buildings” and thus “the system of Toshio is
`
`capable of being set up for delivery of fuel at a well site.” Pet. 40. While
`
`Toshio does not state that it is limited to buildings, it does not state that the
`
`disclosed system is suitable for application outside buildings. Mere
`
`assertions that prior art “is not limited” to its stated environment do not
`
`establish a rationale for modifying the disclosed system to a completely
`
`different environment. This is particularly true here, where permanent
`
`installation in a multi-story building environment does not appear, on its
`
`face, as analogous to a well site. See Ex. 1004 ¶¶ 2–4. Petitioner further
`
`relies on alleged “admitted prior art” in the ’662 patent specification in the
`
`context of claim 7 and the “well site” limitation. Pet. 59–61. Petitioner does
`
`
`
`12 The Petition also fails to set forth credible evidence or argument to
`establish that Toshio’s building amounts to a “construction site.”
`Accordingly, even if we construed “work site” as a “construction site” or
`“temporary construction site,” that would not change the outcome of this
`Decision.
`
`18
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`not rely on admitted prior art in the context of claim 1, and those alleged
`
`“admissions” merely go to the known need to refuel tanks at a well site. Id.
`
`at 60. The alleged admissions do not establish a rationale for modifying the
`
`building-based system of Toshio for use at a well site. In summary, we do
`
`not view Petitioner’s arguments with respect to claim 7 as filling the gaps
`
`evident from the analysis of claim 1.
`
`Based on the foregoing, the Petition fails to provide sufficient
`
`evidence and argument that the prior art, alone or in combination, discloses
`
`delivery of fuel to multiple pieces of equipment at a work site. We are,
`
`therefore, not persuaded by Petitioner’s argument and evidence that claim 1
`
`would have been obvious based on Toshio and either Griswold or the Hose
`
`Handbook. Each of dependent claims 2–11 depends directly or indirectly
`
`from independent claim 1. Petitioner’s analyses of the dependent claims do
`
`not cure the deficiencies noted above with respect to the disputed limitation.
`
`Therefore, for the same reasons as discussed supra with respect to claim 1,
`
`our determination concerning the insufficiency of Petitioner’s evidence
`
`applies equally to the arguments a
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