Case: 19-1778 Document: 64 Page: 1 Filed: 07/23/2021
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`
`
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`OREN TECHNOLOGIES, LLC,
`Appellant
`
`v.
`
`PROPPANT EXPRESS INVESTMENTS LLC,
`PROPPANT EXPRESS SOLUTIONS LLC,
`Appellees
`______________________
`
`2019-1778
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2017-
`01918.
`
`______________________
`
`Decided: July 23, 2021
`______________________
`
`JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
`DC, for appellant. Also represented by CALVIN ALEXANDER
`SHANK, JASON M. WILCOX; GIANNI CUTRI, MEREDITH
`ZINANNI, Chicago, IL.
`
` MARK T. GARRETT, Norton Rose Fulbright US LLP,
`Austin, TX, for appellees. Also represented by STEPHANIE
`N. DEBROW; JONATHAN S. FRANKLIN, PETER B. SIEGAL,
`Washington, DC.
`
`

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`OREN TECHNOLOGIES, LLC v.
` PROPPANT EXPRESS INVESTMENTS
`
` ______________________
`
`Before NEWMAN, O’MALLEY, and CHEN, Circuit Judges.
`PER CURIAM.
`Oren Technologies, LLC (“Oren”) appeals the decision
`of the Patent Trial and Appeal Board (“PTAB” or “Board”),
`ruling on inter partes review (“IPR”) that claims 1–7, 9, 10,
`and 12–20 (all the challenged claims) of U.S. Patent No.
`9,403,626 (“the ’626 patent”) are unpatentable on the
`ground of obviousness.1 Oren had charged Proppant Ex-
`press Investments LLC (“PropX”) with infringement of the
`’626 patent, together with continuation U.S. Patent No.
`9,511,929 (“the ’929 patent”) and a third related patent,
`U.S. Patent No. 9,296,518 (“the ’518 patent”) in the United
`States District Court for the Southern District of Texas.
`While the district court case was pending, PropX filed this
`petition for IPR of the ’626 patent, and corollary petitions
`for the ’929 and ’518 patents. The PTAB found the ’626
`patent invalid for obviousness. Oren appealed. We con-
`clude that the PTAB erred in basing its obviousness finding
`on a ground of unpatentability not presented by petitioner
`and in its evidentiary analysis on the objective evidence of
`nonobviousness. We reverse-in-part, vacate-in-part, and
`remand.
`
`BACKGROUND
`The ’626 patent is for a “Proppant Storage Vessel and
`Assembly Thereof.” Proppant is particulate material, such
`as silica sand, used in the process of hydraulic fracturing
`that is commonly called “fracking.” Fracking is “the injec-
`tion of fluid into shale beds at high pressure in order to free
`up petroleum resources (such as oil or natural gas).”
`
`1 Proppant Express Inv., LLC v. Oren Techs., LLC,
`No. IPR2017-01918, Paper 83 (P.T.A.B. Feb. 14, 2019)
`(“Board Op.”).
`
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`Fracking, MERRIAM-WEBSTER DICTIONARY. Proppant is in-
`serted into the well and shale rock to preserve the pres-
`sure-induced fractures in the rock and thus to facilitate
`flow of oil and gas into the well. The record states that a
`fracking well may require several tons of proppant.
`The sources of proppant tend to be remote from well
`sites, and the proppant must be contained, transported,
`stored, and delivered to the well site. Oren states that
`methods previously used, such as proppant storage in rail-
`road cars and delivery by pneumatic trailers, were incon-
`venient, noisy, wasteful, dusty, and unsafe.
`The ’626 patent describes and claims a container struc-
`ture that Oren states enables containment, transportation,
`storage, and efficient release of large volumes of proppant.
`Figure 1 of the ’626 patent shows the containers stacked
`for transport, storage, and use:
`
`.
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`’626 patent, Fig. 1.
`The containers are structured so that the proppant in
`each container can flow through hinged hatches, and is dis-
`charged at the well site through the outlet on the bottom
`container. The specification states that “the hatches 24
`and 28 will form a unique and guided flowpath whereby the
`proppant in the interior volume 18 of the second container
`16 can flow directly into the opening 24 and into the inte-
`rior volume 14 of the first container 12.” ’626 patent, col.
`5, ll. 38–42.
`Patent Figure 6 shows the structure of the individual
`container, with support members 102 and 104 and ramps
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`82 and 84, described as providing support and strength for
`the heavy loads for which these containers are intended:
`
`
`
`’626 patent, Fig. 6.
`Figure 6 also shows hatches 22 and 32 through which the
`proppant flows from stacked container to container.
`Claim 18 is representative:
`18. A container structurally strengthened to
`transport and store large volumes of proppant ef-
`fectively therein, the container comprising:
`a top; a bottom, having an outlet formed therein;
`sidewalls coupled to the top and bottom, so as to
`define an interior volume of the container thereby
`to store the proppant therein;
`a plurality of sidewall supports positioned to pro-
`vide structural support to the sidewalls when large
`volumes of proppant are positioned within the in-
`terior volume, the proppant having a substantially
`spherical shape and a tightly graded particle dis-
`tribution, the plurality of sidewall supports includ-
`ing a plurality of support braces extending in a
`substantially horizontal position, the container in-
`cluding a container frame structurally arranged to
`support another container when filled with large
`volumes of proppant and when positioned in a
`
`.
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`vertically stacked arrangement thereabove, and
`the large volumes are at least 30,000 pounds;
`ramps downwardly inclined and extending in-
`wardly from the sidewalls to direct the proppant to-
`ward the outlet when the proppant is stored
`therein, a plurality of support members attached to
`a bottom surface of the ramps and extending down-
`wardly toward the bottom, and at least one support
`brace of the plurality of support braces being posi-
`tioned vertically higher than the ramps;
`a plurality of support members attached to a bot-
`tom surface of the ramps and extending down-
`wardly toward the bottom; and
`a hatch positioned proximate the outlet, the hatch
`being moveable between open and closed positions.
`’626 patent, col. 11, l. 52–col. 12, l. 16.
`Other independent claims are directed to the system of
`multiple containers, an additional conveyor, and the
`method of delivering large quantities of proppant to the
`fracking site. Dependent claims add additional limita-
`tions.
`
`I
`Procedural Issues -- Issue Preclusion
`PropX filed IPR petitions against the ’626 patent and
`its continuation, the ’929 patent, and the same panel of the
`PTAB conducted separate trials. The Board first consid-
`ered the ’626 patent, and in a Final Written Decision dated
`February 14, 2019, the Board held all the challenged
`claims of the ’626 patent unpatentable on the ground of ob-
`viousness. Board Op. at 52. Then, 27 days later, the PTAB
`issued a Final Written Decision on the continuation ’929
`patent and held that claims 4, 7, 10, 12, 15, 18, and 19,
`directed to the same claim limitations at issue in the ’626
`patent, were patentable. Proppant Express Invs., LLC v.
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`Oren Techs., LLC, No. IPR2017-02103, Paper 100 (P.T.A.B.
`Mar. 13, 2019) (“’929 Board Op.”). Both sides, in their
`briefs filed on this appeal, recognized that the ’626 and ’929
`patent decisions were in direct conflict and could not be rec-
`onciled. PropX advised the court that it had requested
`PTAB reconsideration of the ’929 decision.
`While the present appeal was awaiting decision, the
`PTAB reconsidered its ’929 holding. The PTAB then held
`all claims except claim 4 of the ’929 patent unpatentable.
`Proppant Express Invs., LLC v. Oren Techs., LLC, No.
`IPR2017-02103, 2020 WL 2562742 (P.T.A.B. May 20, 2020)
`(“’929 Reconsideration Op.”). The PTAB stated that “we
`erred in our analysis of this limitation [of “at least 30,000
`pounds” in the ’929 patent] given our prior analysis in the
`-01918 Proceeding [for the ’626 patent].” ’929 Reconsider-
`ation Op. at *2.
`Meanwhile, two days before the PTAB issued the ’929
`Reconsideration Decision, this court affirmed the district
`court’s claim construction of certain claims terms, reported
`at Sandbox Logistics LLC v. Proppant Express Investment
`LLC, 813 F. App’x 548 (Fed. Cir. 2020). On that claim con-
`struction, the parties had stipulated to non-infringement of
`the ’626, ’929, and ’518 patents, and the district court had
`entered final judgment in favor of PropX. Id. at 551. Fol-
`lowing our affirmance of claim construction and non-in-
`fringement, neither party appealed
`from the
`’929
`Reconsideration Decision.
`Both sides filed supplemental briefs in this appeal on
`issue preclusion. PropX argues that “the Board’s final writ-
`ten decision in IPR2017-02103 . . . , as modified on rehear-
`ing, has dispositive, preclusive effect on this appeal,”
`because “[Oren] did not appeal.” PropX Suppl. Br. 1. Oren
`responds that preclusion does not arise because the basic
`requirements of issue preclusion are not met and, further,
`because Oren did not have a meaningful incentive to ap-
`peal the ’929 Reconsideration Decision.
`
`.
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`The Restatement (Second) of Judgments § 27
`states:
`When an issue of fact or law is actually litigated
`and determined by a valid and final judgment, and
`the determination is essential to the judgment, the
`determination is conclusive in a subsequent action
`between the parties, whether on the same or a dif-
`ferent claim.
`Issue preclusion requires not only identity of issues, but
`also adequacy of review and finality of decision. Id. This
`court has recognized that issue preclusion may apply to
`PTAB proceedings. For example, in Papst Licensing
`GMBH & Co. KG v. Samsung Electronics America, Inc.,
`924 F.3d 1243 (Fed. Cir. 2019), this court applied issue pre-
`clusion to the meaning of a claim term that was “materially
`identical” to that construed by the Board for a related pa-
`tent; the court explained that the Board’s claim construc-
`tion “resolved [all the] issues now before us, and those
`resolutions were essential to the Board’s decision.” Id. at
`1252.
`PropX argues that the Board’s ’929 Reconsideration
`Decision precludes our review of the Board’s ’626 Decision,
`for the claims in both patents are the same or similar, and
`the “issues Oren raises here are identical to issues the
`Board resolved against Oren in the ’929 IPR final written
`decision.” PropX Suppl. Br. 2. PropX states that because
`Oren did not appeal the ’929 Reconsideration Decision,
`that decision became final for preclusion purposes.
`Oren responds that the Board’s unappealed ’929 Recon-
`sideration Decision does not preclude our review of the ’626
`decision, and refers to the recognized equitable exceptions
`to issue preclusion, as recited in the Restatement (Second)
`of Judgments § 28. Preclusion does not apply when:
`There is a clear and convincing need for a new de-
`termination of the issue . . . (b) because it was not
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`sufficiently foreseeable at the time of the initial ac-
`tion that the issue would arise in the context of a
`subsequent action, or (c) because the party sought
`to be precluded, as a result of the conduct of his ad-
`versary or other special circumstances, did not
`have an adequate opportunity or incentive to ob-
`tain a full and fair adjudication in the initial action.
`Id. § 28(5). The purpose of the equitable exceptions to issue
`preclusion is to “serve the twin goals of fairness and effi-
`cient use of private and public litigation resources.” Nat’l
`R.R. Passenger Corp. v. Pa. Pub. Util. Comm’n, 288 F.3d
`519, 525 (3d Cir. 2002). The exceptions assure fairness and
`flexibility as circumstances warrant.
`Oren argues that it lacked incentive to litigate the
`PTAB’s invalidation of all but one of the ’929 claims for two
`reasons: first, that validity of claim 4 had been sustained
`and provides some protection for the ’929 subject matter;
`and second, that after stipulated judgment of non-infringe-
`ment, Oren “could not have obtained damages or an injunc-
`tion” for infringement of the ’929 patent by PropX. Oren
`Suppl. Br. 5.
`In Power Integrations, Inc. v. Semiconductor Compo-
`nents Industries, LLC, 926 F.3d 1306, 1312–13 (Fed. Cir.
`2019), this court explained that principles of fairness ne-
`gate imposing issue preclusion when the party sought to be
`precluded “had a considerably greater incentive to continue
`litigating” an issue in a second case than it had in a first
`case. Id. (citing Papst, 924 F.3d at 1251–52). We conclude
`that issue preclusion does not apply here, because of Oren’s
`lack of incentive to litigate the ’929 patent given the timing
`of this court’s decision affirming the district court’s stipu-
`lated judgment of non-infringement and because of the sur-
`vival of a claim in the ’929 patent as compared to the
`invalidation of all challenged ’626 patent claims.
`We turn to the merits of the appeal of the PTAB’s ’626
`patent decision.
`
`.
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`OREN TECHNOLOGIES, LLC v.
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`II
`The Prior Art
`The PTAB held all challenged claims of the ’626 patent
`unpatentable as obvious. The Board relied in its final de-
`cision on five references, Smith, Claussen, Hedrick,
`Krenek, and Racy, in various combinations. Oren raises
`challenges to the Board’s treatment of two of these refer-
`ences, Smith and Claussen. With respect to Smith, Oren
`argues that the Board improperly relied on a theory of mod-
`ifying Smith that was never presented by the petitioner for
`the relevant limitation. With respect to Claussen, Oren
`states that there is no teaching or suggestion in Claussen
`of a support member and of including support members in
`the ’626 container structure as claimed. Oren also argues
`that its container and system provide advantages that
`have been recognized in the industry and achieved signifi-
`cant commercial success.
`Of the prior art, we need only discuss the Smith refer-
`ence, U.S. Patent Publication No. 2008/0226434, to reach
`our decision. The Smith reference is the foundation of the
`Board’s analysis. Smith shows “an intermodal hopper con-
`tainer” having two compartments and “a structural frame
`defining a rectangular volume suitable for stacking with
`conventional intermodal containers.” Smith, Abstract.
`The Smith container has “plural compartments,” each of
`which “has a hopper formed at a bottom end.” Smith, Ab-
`stract. Figure 15 depicts the Smith two-compartment con-
`tainer:
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`Smith, Fig. 15.
`Smith states that its container has a “maximum payload of
`52,500 pounds,” with each compartment holding a maxi-
`mum of 26,250 pounds. Smith, ¶ 56.
`Smith was cited during examination of the ’626 appli-
`cation, and Oren argued that a significant distinction of
`Oren’s container was its ability to hold and manage a
`greater weight than the limit stated in Smith. Claims 1–
`6, 9, 15, and 18–20 of the ’626 patent recite that the con-
`tainer includes sidewall supports “to provide structural
`support to the sidewalls when large volumes of proppant
`are positioned within the interior volume” wherein “the
`large volumes are at least 30,000 pounds.” The examiner
`allowed the claims over Smith after Oren’s amendment
`adding the “at least 30,000 pounds,” limitation.
`In this IPR proceeding, PropX argued that despite an
`explicit limitation in Smith to a maximum capacity of
`26,250 pounds per compartment, the Smith container
`“would be capable of holding 30,000 pounds of proppant”
`because it “would have had to have been designed using a
`safety factor of 1.15 with respect to maximum payloads.”
`
`.
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`Board Op. at 34 (quoting Wooley Decl. ¶ 181). The Board
`observed, however, that Smith does not mention a “safety
`factor” that would allow Smith’s capacity beyond the re-
`cited maximum of 26,250 pounds.2
`Nevertheless, the Board reasoned that the 30,000
`pounds limitation was met by the combined references be-
`cause the Board agreed with PropX that a skilled artisan
`would have been motivated to modify Smith to carry more
`proppant than the disclosed 26,250 pounds. The Board rea-
`soned:
`[E]ven if Smith’s 20-foot container is only capable
`of carrying 52,500 pounds, or 26,250 pounds per
`compartment, the claimed limitation is satisfied
`through the proposed modification of Smith, in
`which Petitioner proposes to modify and reinforce
`Smith’s container to carry more proppant, possibly
`above 80,000 pounds, or about 40,000 pounds per
`compartment.
`Board Op. at 34–35. The Board concluded that: “Because
`Petitioner proposes to modify Smith’s container to be capa-
`ble of holding about 80,000 pounds of proppant, or 40,000
`pounds per compartment, the claimed limitation is satis-
`fied.” Board Op. at 35.
`As Oren points out, this modification theory was not
`advanced to the Board by PropX in relation to the 30,000
`pound limitation. J.A. 141–42. The modification theory
`was presented in the context of providing a motivation to
`add Hedrick’s bracing structure to Smith’s container to
`meet the limitation of a “plurality of structural supports
`positioned to provide structural support to the first plural-
`ity of sidewalls.” ’626 patent, col. 9, ll. 4–5; Board Op. 18–
`
`2 We understand the Board to have thus rejected the
`safety factor theory, a conclusion that is supported by sub-
`stantial evidence.
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`19, 22–24; J.A. 128–33. PropX’s expert calculated that the
`full volume of the Smith container of proppant would weigh
`around 79,000 to 84,000 pounds, which is greater than the
`maximum payload of 52,500 pounds disclosed by Smith.
`J.A. 1722, 1726–27 (¶¶ 130–31, 140–42). PropX argued,
`therefore, that a skilled artisan would have been motivated
`to increase the payload capacity beyond Smith’s disclosed
`maximum to take advantage of the unused volume. J.A
`129. But those arguments were not specifically directed to
`the 30,000 pound limitation. J.A. 141–42. It was error by
`the Board to rely on this unpresented theory for finding the
`30,000 pound limitation obvious.
`The “Board must base its decision on arguments that
`were advanced by a party, and to which the opposing party
`was given a chance to respond.” In re Magnum Oil Tools
`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016); Emera-
`Chem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859
`F.3d 1341, 1348 (Fed. Cir. 2017) (noting that the APA im-
`poses particular procedural requirements on the USPTO
`regarding timely notice and the opportunity to respond to
`matters of fact and law asserted). We have held that the
`Board erred when it relied on a prior art reference that was
`unasserted for meeting a particular limitation, even
`though the passage from the reference that the Board re-
`lied on for disclosing the limitation had been block quoted
`in the petition and institution decision, in a different con-
`text. EmeraChem, 859 F.3d at 1350. Petitioner’s identifi-
`cation of the reference as a motivation to combine was also
`insufficient for the Board on its own to rely on the reference
`for teaching a missing limitation. Id. at 1352. In M & K
`Holdings, Inc. v. Samsung Elecs. Co., Ltd., we held that the
`Board erred in finding a claim was anticipated when the
`petitioner asserted only obviousness because the Board’s
`decision deprived the patent owner of an opportunity to re-
`spond to a claim interpretation that underlay the anticipa-
`tion theory. 985 F.3d 1376, 1385 (Fed. Cir. 2021).
`
`.
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`Likewise, here, the Board erred by repurposing the the-
`ory of a motivation to modify Smith to increase its capacity
`as a basis for finding the 30,000 pound limitation met.
`PropX did not assert this theory of obviousness in its peti-
`tion. See Magnum Oil Tools, 829 F.3d at 1381. Nor was
`the theory raised by the Board’s institution decision (or at
`any time before the final written decision). See Emera-
`Chem, 859 F.3d at 1348, 1352. Therefore, relying on this
`theory in finding claims obvious was reversible error be-
`cause the petitioner bears the burden of proving obvious-
`ness and Oren had no notice or opportunity to respond. See
`Magnum Oil Tools, 829 F.3d at 1380–81.
`Moreover, we do not think the theory of modifying
`Smith achieves the result stated by the Board. The Board
`found a skilled artisan would have been motivated to mod-
`ify Smith to increase its load capacity and would have
`found it obvious to accomplish the increased capacity by in-
`cluding Hedrick’s support braces in Smith’s container.
`Board Op. 19, 22–24. But that theory and the evidence
`supporting it do not address any specific capacity that
`Smith’s container, modified with Hedrick’s support braces,
`would have had, whether it would have been greater than
`30,000 pounds, or the obviousness of any specific increased
`capacity to a skilled artisan. Although the container could
`volumetrically hold more than 30,000 pounds of proppant,
`as argued in support of the motivation to modify, that does
`not necessarily mean Smith modified by Hedrick’s support
`braces would, without more, be enough to structurally sup-
`port the weight of 30,000 pounds. These gaps only further
`illustrate that the Board’s unilateral modification of Smith
`to purportedly meet the 30,000 pound limitation was an
`“unpatentability theor[y] never presented by petitioner
`and not supported by record evidence.” Magnum Oil Tools,
`829 F.3d at 1381.
`Claims 1–6, 9, 15, 18–20 recite the 30,000 pound limi-
`tation, and we reverse the Board’s decision on these claims.
`Although Oren also challenges the Board’s reliance on the
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`Claussen reference for meeting the support members limi-
`tation, because all of the claims at issue that recite the sup-
`port members limitation also recite the 30,000 pound
`limitation, and given our reversal on the 30,000 pound lim-
`itation, we need not address Claussen.3
`III
`Objective Indicia of Nonobviousness
`The remaining claims at issue, which do not recite the
`30,000 pound limitation, are claims 7 and 10–14. For these
`claims, the Board failed to properly analyze the objective
`indicia evidence and, therefore, we remand.
`As discussed in Graham v. John Deere Inc., 383 U.S. 1
`(1960), objective indicia are an integral part of the obvious-
`ness analysis. Id. at 18–19. Commercial success and in-
`dustry praise are recognized evidence of nonobviousness,
`for the way persons in the field of an invention perceive its
`advantages “may often be the most probative and cogent
`evidence in the record.” Polaris Indus., Inc. v. Arctic Cat,
`Inc., 882 F.3d 1056, 1071 (Fed. Cir. 2018). Such evidence
`may establish that a new device having relatively small dif-
`ference in a crowded field was not obvious to persons of
`skill in that field. The objective indicia are part of the to-
`tality of evidence concerning obviousness. Stratoflex, Inc.
`v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).
`“For objective evidence of secondary considerations to
`be accorded substantial weight, its proponent must estab-
`lish a nexus between the evidence and the merits of the
`claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d
`
`
`3 Oren does not raise any arguments related to
`Hedrick, Krenek, or Racy, and whether it would have been
`obvious to modify Smith according to those prior art refer-
`ences. Therefore, we do not address those portions of the
`Board’s decision.
`
`.
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`1214, 1220 (Fed. Cir. 2016) (internal quotation marks omit-
`ted). That is, “objective evidence of non-obviousness must
`be commensurate in scope with the claims which the evi-
`dence is offered to support.” Polaris Indus., 882 F.3d at
`1072. There can be “a presumption of nexus for objective
`considerations when the patentee shows that the asserted
`objective evidence is tied to a specific product” and that
`product “is the invention disclosed and claimed in the pa-
`tent.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed.
`Cir. 2016) (internal quotation marks omitted); see also Fox
`Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1374 (Fed. Cir.
`2019) (“[W]hat we do require is that the patentee demon-
`strate that the product is essentially the claimed inven-
`tion.”). The presumption can apply “even when the product
`has additional, unclaimed features.” PPC Broadband, Inc.
`v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 747
`(Fed. Cir. 2016); see also Fox Factory, 944 F.3d at 1374–75.
`Once established, this presumption of nexus is rebuttable
`with evidence showing the objective evidence is “due to ex-
`traneous factors other than the patented invention.”
`WBIP, 829 F.3d at 1329 (quoting Demaco, 851 F.2d 1387,
`1393 (Fed. Cir. 1988)).
`Oren presented evidence that mapped its commercial-
`ized SandBox container to the claimed container of the ’626
`patent, J.A. 6954–7010, and we conclude the Board’s find-
`ing that Oren had established a presumption of nexus is
`supported by substantial evidence. Board Op. 30. PropX’s
`arguments that the application of this presumption was
`unwarranted are not persuasive. SandBox is a commer-
`cialized product that Oren showed is the claimed container
`of the ’626 patent. See Fox Factory, 944 F.3d at 1373–74
`(holding that the patentee is required to “demonstrate that
`the product is essentially the claimed invention”); WBIP,
`829 F.3d at 1331 (“[Patentee] was entitled to the presump-
`tion of nexus for its objective evidence of non-obviousness
`because it established that the specific products . . . are em-
`bodiments of the invention in the asserted claims.”).
`
`

`

`Case: 19-1778 Document: 64 Page: 17 Filed: 07/23/2021
`
`OREN TECHNOLOGIES, LLC v.
`PROPPANT EXPRESS INVESTMENTS
`
`17
`
`The Board next found that PropX rebutted the pre-
`sumption of nexus with evidence showing that aspects of a
`broader SandBox system other than the claimed container
`product were responsible for the system’s success. Board
`Op. 30–33. The Board credited the fact that Oren “leases
`an equipment set that includes boxes, a conveyor (as part
`of [Oren’s] cradle . . .), rig mats, a fork lift, a light-duty
`loader, and chassis (plural, which are trailers).” Board Op.
`30 (citing J.A. 691); see J.A. 691–92 (citing evidence that
`Oren leases or rents “an equipment set,” “the entire set,”
`and “the entire equipment set”). In addition, the Board
`found persuasive the testimony of Oren’s own witnesses re-
`garding the importance of the non-container aspects to the
`success of the overall system. The Board concluded that
`Oren’s commercial success and industry praise were
`“largely” a result of these non-container features “rather
`than the features of the challenged claims.” Board Op. 33.
`However, in doing so, the Board did not contend with
`and weigh any of the evidence potentially showing that the
`SandBox container itself is also an important contributor
`to the commercial success and praise of the system. Board
`Op. 30–33. Oren presented significant revenue numbers
`generated from the lease and license of the SandBox prod-
`uct. J.A. 557 n.3; J.A. 7572 ¶ 6; J.A. 7574 (“Equip lease/li-
`cense/other”). A PropX real-party-in-interest, Liberty
`Oilfield Services, LLC, (“Liberty”) entered into a 5-year
`contract with Oren’s operating subsidiary, SandBox Logis-
`tics, for the “patented sand delivery process and container-
`ization equipment.” J.A. 557; J.A. 7575–76. The
`containerized sand solution, specifically, was noted to be
`effective. J.A. 560; J.A. 7590. And a market analyst de-
`clared that the “sand in a big box” was a “disruptive tech-
`nology” for the fracking industry. J.A. 561–62; J.A. 6223–
`24.
`
`The Board should have addressed this evidence. Alt-
`hough the evidence the Board did consider showed that
`other features of Oren’s system are important to the
`
`.
`
`

`

`Case: 19-1778 Document: 64 Page: 18 Filed: 07/23/2021
`
`18
`
`OREN TECHNOLOGIES, LLC v.
` PROPPANT EXPRESS INVESTMENTS
`
`system’s success, and Oren has not disputed that finding,
`“[i]t is not necessary . . . that the patented invention be
`solely responsible for the commercial success, in order for
`this factor to be given weight appropriate to the evidence,
`along with other pertinent factors.” Continental Can Co. v.
`Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991). Thus,
`failure to address the Sandbox container-specific evidence
`was legal error by the Board. On remand, the Board must
`consider this evidence to properly decide the issue of obvi-
`ousness.
`
`CONCLUSION
`We reverse on claims 1–6, 9, 15, 18–20 the Board’s find-
`ing of obviousness because the Board impermissibly relied
`on a theory not raised by petitioner and which Oren had no
`notice of and opportunity for responding to, and remand on
`claims 7 and 10–14 for further analysis of the objective in-
`dicia consistent with this opinion.
`REVERSED-IN-PART, VACATED-IN-PART, AND
`REMANDED
`COSTS
`The parties shall bear their own costs.
`
`