Frac Shack Inc.

Patent Trials and Appeals Board

Oct 15, 2020

IPR2019-00995 (P.T.A.B. Oct. 15, 2020)

Trials@uspto.gov Paper 32
571-272-7822 Date: October 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ALASKA FUEL DISTRIBUTORS INC., AFD PETROLEUM (TEXAS)
INC., AND AFD PETROLEUM LTD.,
Petitioner,
v.
FRAC SHACK INC.,
Patent Owner.

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Before HUBERT C. LORIN, KEVIN F. TURNER, and
TIMOTHY J. GOODSON, Administrative Patent Judges.
GOODSON, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting Patent Owner’s Motion to Amend
Denying Petitioner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64

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I. INTRODUCTION
A. Procedural Background and Summary
Alaska Fuel Distributors Inc., AFD Petroleum (Texas) Inc., and AFD
Petroleum Ltd. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
inter partes review of claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42,
45, and 47 of U.S. Patent No. 10,029,906 B2 (Ex. 1001, “the ’906 patent”).
Frac Shack Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). We instituted an inter partes review on all claims and all
grounds asserted in the Petition. See Paper 8 (“Dec. on Inst.”).
After institution of trial, Patent Owner did not file a Patent Owner
Response and instead filed a Non-Contingent Motion to Amend. Paper 12
(“MTA”). Petitioner filed an Opposition to that motion. Paper 14 (“MTA
Opp.”). Pursuant to Patent Owner’s request, we issued non-binding
Preliminary Guidance on the motion. Paper 15 (“PG”).
Patent Owner then filed a Revised Non-Contingent Motion to Amend
(Paper 16, “RMTA”), in which Patent Owner proposed substitute claims 48–
62. Id. at A1–A4. The briefing on Patent Owner’s Revised Motion to
Amend also included Petitioner’ Opposition (Paper 20, “Opp. RMTA”),
Patent Owner’s Reply (Paper 23, “Reply RMTA”), and Petitioner’s Sur-
Reply (Paper 27, “Sur-Reply RMTA”). We held a hearing on August 13,
2020, a transcript of which is included in the record. See Paper 31 (“Tr.”).
Petitioner also filed a motion to exclude certain evidence relating to
Patent Owner’s arguments on objective indicia of nonobviousness. For the
reasons discussed in Section II below, we deny that motion.
We have authority under 35 U.S.C. § 6. This Final Written Decision
is issued pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73
(2018). For the reasons discussed below, Patent Owner’s Revised Motion to
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Amend is granted. We do not address the patentability of the originally
challenged claims, each of which is cancelled or replaced by a substitute
claim by virtue of Patent Owner’s non-contingent Revised Motion to
Amend. See infra § I.E.
B. Real Parties in Interest
Petitioner identifies the following persons or entities as real parties in
interest: Alaska Fuel Distributors Inc.; AFD Petroleum (Texas) Inc.; AFD
Petroleum Ltd.; AFD Holdings (USA) Inc.; AFD Holdings Inc.; 993106
Alberta Ltd.; 993131 Alberta Ltd.; 1597322 Alberta Ltd.; AFD Global
Aviation Inc.; The Decal Shop Corp.; 1497668 Alberta Ltd.; L&M Fuels
Ltd.; 679094 BC Inc.; AFD Community Support Corp.; 1736445 Alberta
Ltd.; Global Engineering Solutions Limited; GES Holdings Limited; Global
Engineering Solutions Pty Ltd.; Zhangjiagang Jiesi Petroleum Equipment
Co., Ltd.; Parker McLean; Kim McLean; Shayne Lowrie; and Robert
Reeves. Pet. 2. Patent Owner lists only itself as a real party in interest. See
Paper 5, 2.
C. Related Matters
The parties inform us that the ’906 patent has been asserted in two
district court proceedings: Frac Shack Inc. v. Alaska Fuel Distributors Inc.
et al., No. 7:19-cv-00026-DC in the U.S. District Court for the Western
District of Texas; and Frac Shack, Inc. v. Atlas Oil Company et al., No.
4:18-cv-02566 in the U.S. District Court for the Southern District of Texas.
Pet. 3; Paper 5, 2.
The parties further state that the ’906 patent is related to U.S. Patent
No. 9,346,662 (the “Parent Patent”), which has been asserted in two district
court proceedings: Frac Shack Inc. v. Alaska Fuel Distributors Inc. et al.,
No. 7:19-cv-00026-DC in the U.S. District Court for the Western District of
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Texas; and Frac Shack Inc. v. Atlas Oil Company et al., No. 1:16-cv-02275-
STV in the U.S. District Court for the District of Colorado. Pet. 3–4; Paper
5, 2. In addition, the Parent Patent was the subject of IPR2017-01349, in
which the Board denied institution. Pet. 4; see also Ex. 1011 (Decision
Denying Institution).
The parties also report that the ’906 patent is related to Canadian
Patent No. 2,693,567, which has been asserted in a foreign court proceeding:
Frac Shack Inc. and Frac Shack International Inc. v. AFD Petroleum Ltd.,
No. T-2149-14 in the Federal Court of Ottawa, Canada. Pet. 3–4; Paper 5, 2.
D. The ’906 Patent
The ’906 patent issued July 24, 2018, from an application filed May 2,
2016. Ex. 1001, [45], [22]. It claims priority to a number of related
applications, the earliest of which is a provisional application filed February
17, 2010. Id. at [60].
The ’906 patent relates to systems and methods for delivering fuel to
equipment at a well site. See id. at 1:25–27. According to the Background
section of the ’906 patent, equipment used for fracturing a well requires a
large amount of fuel, and the conventional method of refueling was “the well
known method of manually discharging fluid from a fuel source into each
fuel tank one after the other.” Id. at 1:8–14. That method entailed a risk that
the equipment would run out of fuel, which would damage the well or
necessitate additional work, and also presented dangers to operators. Id. at
1:14–21. The ’906 patent relates to systems and methods for reducing the
likelihood that fuel tanks of equipment at a well site will run out of fuel
during fracturing of a well. Id. at 1:25–27.
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Figure 1 of the ’906 patent is reproduced below:

Figure 1 depicts a schematic of fuel delivery system 14. Id. at 1:67, 2:27–
30, Fig. 1. As shown in Figure 1, fuel delivery system 14 delivers fuel to
fuel tanks 12 of multiple pieces of equipment 10 at a well site during
fracturing of a well. Id. at 2:28–31. The fuel delivery is accomplished by
“pumping fuel from . . . the fuel source 14 through hoses 24 in parallel to
each of the fuel tanks 12” and “controlling fluid flow through each hose 24
independently of flow in other hoses 24. . . . in response to receiving signals
representative of fuel levels in the fuel tanks.” Id. at 5:29–35. The
’906 patent describes that the fuel delivery system should be transportable to
various well sites, such as by containing “[t]he fuel delivery system 14 . . .
on a single trailer . . . or parts may be carried on several trailers or skids.”
Id. at 2:32–36.
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Fuel delivery system 14 includes fuel source 16 including one or more
tanks 18, 20, which can be mounted on the same trailer as the rest of fuel
delivery system 14 or on other trailers. Id. at 2:37–41. Equipment used at
the well site for the fracturing job includes blenders and pumpers 10, each
having a fuel tank 12. Id. at 2:25–31. Fuel source 16 has fuel outlets 22 and
hoses 24. Each hose 24 connects a fuel outlet 22 to a fuel cap 26 to deliver
fuel to fuel tank 12. Id. at 2:42–47. A valve arrangement including valve
28, valve 58, or both is provided at each fuel outlet 22 to control fluid flow
through hose 24 and permit independent operation of each hose 24. Id. at
2:53–57. Fuel outlets 22 are located on manifolds 36, 38, which are
connected to pumps 32, 34 and fuel source tanks 18, 20 via lines 40, 42. Id.
at 3:4–9.
E. Originally Challenged Claims and Proposed Substitute Claims
In the Petition, Petitioner challenged claims 2, 8, 10, 18, 19, 28–30,
32–34, 37, 38, 40–42, 45, and 47 of the ’906 patent. Pet. 1. None of the
originally challenged claims remain at issue in this proceeding. In lieu of
filing a Patent Owner Response to defend the originally challenged claims,
Patent Owner elected to file a non-contingent motion to amend. See MTA 1
(“Patent Owner . . . is forgoing a formal response, is unconditionally filing
this Motion to Amend . . . to cancel and substitute the claims as set forth
[herein], and is asking the Board to decide the patentability of the claims so
substituted.”); RMTA 1 (“Patent Owner . . . files this unconditional revised
motion to amend to cancel and substitute the claims as set forth in Appendix
A.”). As we noted in our Preliminary Guidance, “[a] non-contingent motion
to amend is one in which ‘the Board provides a final decision on the
patentability of substitute claims in place of determining the patentability of
corresponding original claims.’” PG 2 n.1 (quoting Notice Regarding a New
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Pilot Program Concerning Motion to Amend Practice and Procedures in
Trial Proceedings Under the America Invents Act Before the Patent Trial
and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019)). Patent Owner
agreed at the hearing that this Final Written Decision should only address
the patentability of the claims in the non-contingent Revised Motion to
Amend and not the originally challenged claims. Tr. 47:5–14.
In the Revised Motion to Amend, every originally challenged claim
has either been canceled or replaced with a proposed substitute claim.
Specifically, Patent Owner cancels claims 10, 18, and 47 and proposes
substitute claims to replace originally challenged claims as set forth in the
table below:
Original Claim Proposed
Substitute Claim
2 48
8 49
19 50
28 51
29 52
30 53
32 54
33 55
34 56
37 57
38 58
40 59
41 60
42 61
45 62
See RMTA A1–A4.
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Proposed substitute claim 48 is reproduced below, with underscoring
to indicate text that has been added to claim 2:
48. A method of reducing the likelihood of blenders and
pumpers at a well site running out of fuel during fracturing of a
well and for reducing dangers from extreme operating
temperatures and pressures, extreme noise levels, and fire hazard
from fuel and fuel vapors when fueling the pumpers and blenders
during fracturing of the well, the blenders and pumpers including
fuel tanks, the method comprising:
transporting a fuel delivery system including fuel delivery
connections and a fuel source to the well site on a trailer or
trailers, the fuel delivery connections comprising a fuel level
sensor for detecting a low and high fuel level in the tanks to
which the fuel delivery connection is connected;
securing hoses to the fuel tanks with the fuel delivery
connections;
detecting a low and high fuel level in the tanks with the
fuel level sensors;
pumping fuel from the fuel source through the hoses and
subsequently through the fuel delivery connections in parallel to
each of the fuel tanks during fracturing of the well when the
blenders and pumpers are consuming fuel;
controlling fluid flow through each hose independently of
flow in other hoses by starting fuel flow to each fuel tank by
signaling an automatically operable valve associated with each
fuel tank when the fuel level sensor associated with each fuel
tank detects a low fuel level, and stopping fuel flow to each fuel
tank by signaling the automatically operable valve associated
with each fuel tank when the fuel level sensor associated with
each fuel tank detects a high fuel level, the signaling issued
remotely from the fuel delivery connections; and
logging fuel consumption while pumping fuel.
Id. at A1–A2.
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F. Prior Art References and Testimonial Evidence
Petitioner relies on the following references for its challenges to the
patentability of the substitute claims proposed in the Revised Motion to
Amend:
Reference Patent or Publication No. Date Exhibit
Gerardot US 5,983,962 Nov. 6, 1999 1012
Robinson US 2007/0125544 A1 June 7, 2007 1013
Yoshida JP 2003-341797 A Dec. 3, 2003 10141
Hockner US 2008/0223482 A1 Sept. 18, 2008 1035
Mitrovich US 8,281,823 B2 Oct. 9, 20122 1034
Burns US 5,579,233 Nov. 26, 1996 1015
Adler US 2,498,229 Feb. 21, 1950 1016
See Opp. RMTA 3.
In addition to the cited references, Petitioner also relies on the
declaration testimony of Richard E. Berry, P.E. See Ex. 1003; Ex. 1029;
Ex. 1039. Petitioner offers Mr. Berry’s opinions as expert testimony. See
Ex. 1003 ¶¶ 2–3; Ex. 1039 ¶¶ 2–7. Patent Owner did not take Mr. Berry’s
deposition.

1 Citations to Yoshida in this Decision refer to the certified English-language
translation, which was provided with the original Japanese-language
document as part of Exhibit 1014.
2 Petitioner contends that Mitrovich qualifies as prior art to the ’906 patent
under pre-AIA § 102(e) based on its filing date of June 16, 2009, and its
claim to the benefit of the filing date of a provisional application filed on
June 16, 2008. See Opp. RMTA 3; see also Ex. 1036 (application that
eventually issued as Mitrovich); Ex. 1037 (provisional application). Patent
Owner does not contest Petitioner’s assertion that Mitrovich qualifies as
prior art.
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Patent Owner relies on the testimony of Todd Van Vliet. See
Ex. 2020; Ex. 2207. Patent Owner offers Mr. Van Vliet as a fact witness
testifying on topics relating to objective indicia of nonobviousness. See
Tr. 86:21–25 (Patent Owner confirming that Van Vliet is a fact witness).
The record also includes the transcript of Petitioner’s deposition of Mr. Van
Vliet. See Ex. 1038.
G. Asserted Grounds
Petitioner asserts that proposed substitute claims 48–62 would have
been unpatentable on the following grounds:
Claims Challenged 35 U.S.C. §3 References
48–58, 61, 62 103(a) Gerardot, Robinson, Yoshida, Hockner, and Mitrovich
54, 55, 57 103(a) Gerardot, Robinson, Yoshida, Hockner, Mitrovich, and Burns
59, 60 103(a) Gerardot, Robinson, Yoshida, Hockner, Mitrovich, and Adler
See Opp. RMTA 3.
II. PETITIONER’S MOTION TO EXCLUDE
Petitioner filed a motion to exclude Exhibits 2020–2026 and 2207.
See Paper 25 (“Mot. to Exclude”). Patent Owner filed an Opposition (Paper
26, “Opp. Mot. to Exclude”) and Petitioner filed a Reply (Paper 30, “Reply
Mot. to Exclude”).

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
the ’906 patent states that it is a continuation of an application filed before
March 16, 2013, we apply the pre-AIA versions of the statutory bases for
unpatentability.
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A. Exhibit 2020
Exhibit 2020 is a Declaration of Todd Van Vliet, one of the inventors
of the ’906 patent and the founder and Chief Executive Officer of Patent
Owner. Ex. 2020 ¶¶ 2–4. In his declaration, Mr. Van Vliet testifies
regarding commercial success and industry praise for the ’906 patent. See
id. ¶¶ 5–22.
Petitioner argues that Mr. Van Vliet’s declaration is irrelevant and has
minimal probative value because Patent Owner has not adequately
demonstrated a nexus between the asserted objective indicia and the merits
of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2.
This argument attacks the merits of Patent Owner’s substantive arguments
on objective indicia and does not establish an evidentiary basis for excluding
Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van
Vliet’s testimony is relevant to the issue of objective indicia of
nonobviousness. See Opp. Mot. to Exclude 1–2.
Petitioner also argues that Mr. Van Vliet’s declaration should be
excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to
Exclude 2. Petitioner states that it “is not moving to exclude based on the
fact that the Declaration itself [is] hearsay, but rather that it contains a
multitude of statements therein that are themselves hearsay, made by persons
other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner
points out, Petitioner does not identify any specific statements in the
declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after
Patent Owner pointed out this lack of specificity, Petitioner’s Reply still
does not clarify which specific statements in the declaration are alleged to be
hearsay and instead simply repeats the assertion there are “a multitude of
statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.
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In the absence of any particularized argument, Petitioner’s hearsay challenge
is unpersuasive.
B. Exhibits 2021–2026
Exhibits 2021–2026 are materials Mr. Van Vliet refers to in his
declaration. See Ex. 2020 ¶¶ 17–22; Ex. 2207 ¶¶ 4–7. In particular, Exhibit
2021 is a marketing video describing the operation of the Frac Shack, which
Mr. Van Vliet testifies is the automatic refueller whose use embodies the
claims of the ’906 patent. See Ex. 2021; Ex. 2020 ¶¶ 12, 17; Ex. 2207 ¶ 4.
Exhibit 2022 is a photograph of the Frac Shack’s fuel delivery connection.
See Ex. 2022; Ex. 2020 ¶ 18. Exhibit 2023 is an excerpt from a marketing
presentation for the Frac Shack that includes a photograph of one component
of the system. See Ex. 2023; Ex. 2020 ¶ 19. Exhibit 2024 is an “Inspection
Summary Report” and a follow-up letter correcting a clerical error in that
report. See Ex. 2024; Ex. 2020 ¶ 20; Ex. 2207 ¶ 5. Finally, Exhibits 2025
and 2026 are email chains concerning customer feedback on the Frac Shack.
See Exs. 2025–2026; Ex. 2020 ¶¶ 21–22; Ex. 2207 ¶¶ 6–7.
Petitioner argues that these materials are “irrelevant, prejudicial,
misleading, and of minimal probative value” because they lack nexus, are
incomplete, include grammatical errors, and reflect bias. Mot. to Exclude 6–
7; Reply Mot. to Exclude 2–3. Petitioner’s arguments go to the weight that
should be given to these materials in the objective indicia analysis, not their
admissibility.
Next, Petitioner argues that these exhibits should be excluded as
hearsay because through them, Patent Owner is relying on unsworn
statements of the creators or authors of these materials. Mot. to Exclude 8.
The entirety of Petitioner’s hearsay argument for these six exhibits is set
forth in a single paragraph in Petitioner’s Motion, which is repeated in the
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Reply without any response to Petitioner’s detailed arguments in opposition
to the motion. See id.; Opp. Mot. to Exclude 4–14; Reply Mot. to
Exclude 4. Petitioner’s cursory treatment is insufficient to establish that
Patent Owner’s use of these materials violates the prohibition on hearsay.
We are persuaded by Patent Owner’s argument that the materials are either
not statements (in the case of the photographs) or Patent Owner is not
relying on the statements for the truth of the matter asserted but for the
independent purposes of showing how the Frac Shack was marketed and
how it was regarded by those in the market. Opp. Mot. to Exclude 6, 8, 11–
14.
Petitioner additionally argues that Exhibits 2021, 2023, and 2024–
2026 lack authentication. Mot. to Exclude 8–9. We disagree that Patent
Owner’s showing is insufficient under Federal Rule of Evidence 901.
Mr. Van Vliet’s testimony is adequate to support a finding that these
materials are what Patent Owner says they are. See Ex. 2020 ¶¶ 17–22;
Ex. 2207 ¶¶ 4–7. Patent Owner also points to other indicia in the materials
themselves that provide circumstantial evidence of authenticity. Opp. Mot.
to Exclude 5–6, 9–14.
C. Exhibit 2207
Exhibit 2207 is a supplemental declaration from Mr. Van Vliet.
Petitioner argues that it should be excluded because it contains hearsay.
Mot. to Exclude 9. “For example, it contains the names of persons and dates
of statements (Ex. 2207 ¶¶ 4–7) that are hearsay statements without
exception pulled from hearsay documents relied upon for their truth, e.g., the
statement was made by the named person at the time so stated.” Id. This
argument is difficult to follow. To the extent Petitioner’s argument is that
Mr. Van Vliet’s supplemental declaration is hearsay because it addresses
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materials that are inadmissible hearsay, we have addressed that argument in
the preceding section. To the extent Petitioner’s argument is that Mr. Van
Vliet’s supplemental declaration is hearsay because he testifies regarding
names and dates referenced in the documents, the argument is unpersuasive
because Mr. Van Vliet’s testimony is sworn testimony in this proceeding
and is, therefore, not hearsay. See Opp. Mot. to Exclude 14.
Petitioner also argues that Mr. Van Vliet’s supplemental declaration is
procedurally defective because Patent Owner did not timely provide the
evidence after Petitioner objected to Exhibits 2021 and 2024–2026 on
authentication grounds. Mot. to Exclude 9. In response, Patent Owner
shows that it did provide Mr. Van Vliet’s supplemental declaration within
the period permitted by our rules after Petitioner’s evidentiary objections.
Opp. Mot. to Exclude 15. Petitioner’s Reply then shifts to an argument that
Exhibit 2207 is procedurally deficient because it was filed prior to any
motion to exclude. Reply Mot. to Exclude 4. Thus, Petitioner’s Motion to
Exclude argues that the supplemental declaration was provided too late; the
Reply argues that the supplemental declaration was filed too early. The
original argument is unpersuasive in light of the arguments and evidence in
Patent Owner’s opposition brief. And the Reply does not persuade us that
exclusion is appropriate for at least the reason that Petitioner did, ultimately,
file a motion to exclude. Thus, even if Petitioner is correct that the
supplemental declaration should have been filed with the opposition to the
motion to exclude, we fail to see how Petitioner is unfairly prejudiced by
Patent Owner’s earlier filing of the supplemental declaration or why such
early filing warrants exclusion of the supplemental declaration.
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D. Conclusion
For the foregoing reasons, we deny Petitioner’s motion to exclude in
its entirety.
III. ANALYSIS OF PATENT OWNER’S MOTION TO AMEND
A. Legal Standards for Motions to Amend
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d) (2018). The Board must assess the patentability of
proposed substitute claims “without placing the burden of persuasion on the
patent owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir.
2017) (en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
01129, Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Ordinarily,
“the petitioner bears the burden of proving that the proposed amended
claims are unpatentable by a preponderance of the evidence.” Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027, 1040 (Fed. Cir.
2017) (as amended on rehearing); see Lectrosonics, Paper 15 at 3–4.
In determining whether a petitioner has proven unpatentability of the
substitute claims, the Board focuses on “arguments and theories raised by
the petitioner in its petition or opposition to the motion to amend.” Nike,
Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). The Board itself also
may justify any finding of unpatentability by reference to evidence of record
in the proceeding. Lectrosonics, Paper 15 at 4 (citing Aqua Products, 872
F.3d at 1311 (O’Malley, J.)). However, “only under rare circumstances
should the need arise for the Board to advance grounds of unpatentability to
address proposed substitute claims that the petitioner did not advance, or
insufficiently developed, in its opposition to the motion.” Hunting Titan,
Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67, 9 (PTAB
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July 6, 2020) (precedential). This case does not present any of the rare
circumstances that would make it appropriate to look beyond the theories
Petitioner advances against the proposed substitute claims. Instead, this case
presents the usual scenario in which we should rely on the adversarial
process to frame the issues for the Board. Id. at 11.
Before reaching the patentability issues that Petitioner argues,
however, we first consider whether Patent Owner’s Revised Motion to
Amend meets the statutory and regulatory requirements of 35 U.S.C.
§ 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy
those requirements, Patent Owner must demonstrate that: (1) the amendment
proposes a reasonable number of substitute claims; (2) the amendment
responds to a ground of unpatentability involved in the trial; (3) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter; and (4) the proposed claims are supported in
the original disclosure (and any earlier filed disclosure for which the benefit
of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121
(2018).
B. Statutory and Regulatory Requirements
1. Reasonable Number of Substitute Claims
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). Here,
Patent Owner’s Revised Motion to Amend cancels three originally
challenged claims of the ’906 patent and proposes one substitute claim for
each of the remaining originally challenged claims. See RMTA, App’x A.
Thus, the Revised Motion to Amend complies with the requirement that the
amendment propose a reasonable number of substitute claims.
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2. Responsive to Ground of Unpatentability
Patent Owner’s Revised Motion to Amend responds to a ground of
unpatentability involved in this trial. 37 C.F.R. § 42.121(a)(2)(i). Patent
Owner’s claim amendments add features in an attempt to distinguish the
proposed substitute claims from the references asserted in the Petition.
RMTA 9. The Revised Motion to Amend also sets out Patent Owner’s
arguments regarding how the proposed substitute claims distinguish the prior
art references asserted in the Petition. See id. at 9–20.
3. No Enlargement of the Scope of the Claims
“A motion to amend may not present substitute claims that enlarge the
scope of the claims of the challenged patent.” Lectrosonics, Paper 15 at 6–7
(citing 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). The Revised
Motion to Amend satisfies this requirement. Proposed substitute claims 48–
50 add narrowing limitations to claims 2, 8, and 19 and do not eliminate any
limitations from those claims. See RMTA, at A1–A3. Proposed substitute
claims 51–62 merely change the dependency of claims 28–30, 32–34, 37,
38, 40–42, and 45. Id. at A3–A4. As such, none of the proposed substitute
claims enlarges the scope of the claims they replace.
4. No New Matter
“A motion to amend may not present substitute claims that . . .
introduce new subject matter.” Lectrosonics, Paper 15 at 6–7 (citing
35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). To evaluate
compliance with the prohibition on amendments that add new matter,
the Board requires that a motion to amend set forth written
description support in the originally filed disclosure of the
subject patent for each proposed substitute claim, and also set
forth support in an earlier filed disclosure for each claim for
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which benefit of the filing date of the earlier filed disclosure is
sought.
Id. at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). The Revised Motion to
Amend fulfills that requirement by providing a chart listing the support for
each proposed substitute claim in the originally filed disclosures of U.S.
Application No. 15/144,547, filed May 2, 2016 (Ex. 1002, 80–103), U.S.
Application No. 13/028,991, filed Feb. 16, 2011 (Ex. 2011), and U.S.
Provisional Application No. 61/305,320, filed Feb. 17, 2010 (Ex. 2012). See
RMTA 7–9.
In opposing Patent Owner’s original Motion to Amend, Petitioner
argued that the limitation in the proposed substitute claims of “fuel delivery
connections comprising a fuel level sensor” lacked written description
support. See MTA Opp. 5–6. Our Preliminary Guidance considered those
opposition arguments but found, based on the record at that stage, that Patent
Owner had shown a reasonable likelihood that there is adequate written
description support for the claim limitation at issue. See PG 6–7. In its
Opposition to the Revised Motion to Amend, Petitioner refers back to its
Opposition to the original Motion to Amend and purports to “maintain[]”
and “not waive its position that certain claim language is . . . not described.”
Opp. RMTA 2–3. But Petitioner does not provide any argument in its
operative briefing to develop or explain its new matter or written description
theories. See id.; see also Sur-Reply RMTA 2–5. We are doubtful that this
manner of merely referring to arguments presented in an earlier brief, which
opposed an earlier and different version of the motion to amend, is sufficient
for Petitioner to preserve any new matter argument with respect to the
Revised Motion to Amend. See 37 C.F.R. § 42.6(a)(3) (“Arguments must
not be incorporated by reference from one document into another
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document.”). In any event, Petitioner’s arguments against the Revised
Motion to Amend do not respond to the analysis we provided in the
Preliminary Guidance on this issue, and no other development in the record
of this proceeding causes us to revise our analysis therein of whether the
“fuel delivery connections comprising a fuel level sensor” limitation has
written description support.
We determine that the proposed substitute claims in Patent Owner’s
Revised Motion to Amend do not introduce new matter.
5. Conclusion Regarding Statutory and Regulatory Requirements
Patent Owner’s Revised Motion to Amend satisfies the requirements
of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
C. Patentability of Substitute Claims
As noted above in Section I.G, Petitioner’s patentability challenges to
the proposed substitute claims are based on obviousness. See Opp.
RMTA 3. Although Petitioner’s opposition lists three grounds to cover each
of the proposed substitute claims, Petitioner’s arguments focus almost
entirely on claim 48. Id. at 4–18. Specifically, Petitioner contends that
claim 48 would have been obvious based on the combination of Gerardot,
Robinson, Yoshida, Hockner, and Mitrovich. See id. Petitioner’s arguments
regarding the other proposed substitute claims are covered in a single
paragraph, in which Petitioner refers back to arguments in its Petition to
address any limitations beyond those recited in claim 48. See id. at 18–19;
Sur-Reply RMTA 9–10.
1. Legal Standards for Obviousness Analysis
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under § 103
that requires consideration of four factors: (1) the “level of ordinary skill in
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the pertinent art,” (2) the “scope and content of the prior art,” (3) the
“differences between the prior art and the claims at issue,” and (4) when in
evidence, “secondary considerations” of nonobviousness such as
“commercial success, long-felt but unsolved needs, failure of others, etc.”
Id. at 17–18. “While the sequence of these questions might be reordered in
any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
(2007), the Federal Circuit has explained that an obviousness determination
can be made only after consideration of all of the Graham factors. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
2012).
2. Level of Ordinary Skill in the Art
In our Decision on Institution, based on the parties’ proposals and the
record at that stage, we adopted Patent Owner’s proposal of the level of
ordinary skill in the art—namely, a person with “a Bachelor of Science
degree in chemical, oil & gas, or industrial engineering, or comparable
degree, and at least two years’ experience working in the field of fueling
hydraulic fracturing equipment.” Dec. on Inst. 9. We also agreed with
Patent Owner that “a higher level of training or skill might make up for less
education, and vice-versa.” Id. The post-institution briefing did not address
the level of ordinary skill in the art, and the parties confirmed at the hearing
their agreement with the definition adopted in the Decision on Institution.
See Tr. 13:9–15, 47:25–48:4. Thus, for the reasons explained in the
Decision on Institution, we maintain our finding quoted above regarding the
level of ordinary skill in the art.
3. Claim Construction
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed using the same claim construction standard that would be used to
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construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to
the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).4 That standard
“includ[es] construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.; see also
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
We discuss three terms below, which are the only terms that require
express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the
extent necessary to resolve the controversy”); see also Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of an inter partes review). We note
that the parties disagree over whether the entirety of claim 48’s preamble is
limiting. See Tr. 14:24–15:3, 51:14–54:6. We need not decide that issue
because, as discussed below, we find Petitioner’s challenge to claim 48
unpersuasive for reasons unrelated to the preamble.
a) “fuel delivery connections comprising a fuel level sensor”
Proposed substitute claim 48 recites “transporting a fuel delivery
system including fuel delivery connections and a fuel source to the well site”
and further recites that “the fuel delivery connections compris[e] a fuel level
sensor.” RMTA, at A1. Although the parties do not propose constructions
that specifically address the relationship between the fuel delivery

4 The Petition in this case was filed April 19, 2019. See Paper 3, 1.
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connections and the fuel level sensor, the parties’ arguments applying the
cited references to this limitation evince a disagreement about the meaning
of the phrase “fuel delivery connections comprising a fuel level sensor.” See
Tr. 13:17–14:4.
In particular, Petitioner argues that this term does not require a
physical or structural connection between the fuel delivery connections and
the fuel level sensor. See Opp. RMTA 7–8; Sur-Reply RMTA 3–4;
Tr. 14:5–18, 34:11–35:3. According to Petitioner, “[t]hey can be viewed as
a logical construct.” Tr. 34:13–14; see also id. at 14:14–18 (“So they’re
viewed together for the purpose of effectuating refueling, but Petitioner AFD
doesn’t believe that they’re required to physically—the refueling hose and
the fuel sensor are physically required to be one part.”). In support of that
understanding, Petitioner points to the ’906 patent’s illustration of refueling
hose 24 as separate from fuel level sensor 54. Opp. RMTA 8 (citing
Ex. 1001, Fig. 2; Ex. 1039 ¶ 56). Patent Owner counters that Petitioner’s
interpretation of this claim language is overbroad because “Petitioner’s
conflation of separate ‘components operationally connected to effectuate
refueling’ as part of the [fuel delivery connection] would make every part of
the ’906 Patent’s fuel delivery system part of the [fuel delivery connection].”
Reply RMTA 5.
We determine that the plain language of the claim, which requires that
the fuel delivery connections “compris[e]” the fuel level sensor, shows that
the fuel level sensor is structurally connected to the fuel level sensor. As
Petitioner agrees, this claim language requires that the fuel delivery
connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel
delivery connections and the fuel level sensor are structures, so for one to
include the other, they must be physically connected. Petitioner’s argument
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that the phrase merely requires a logical or operational association does not
give effect to the word “comprising.” Because a fuel delivery connection
and a fuel level sensor would be operationally connected in any system that
has both items, Petitioner’s interpretation essentially reads out the word
“comprising” and treats the claim phrase as if it recited “fuel delivery
connections and a fuel level sensor.” Our interpretation that the fuel
delivery connections must be physically connected to the fuel level sensor is
more faithful to the claim’s recitation that the fuel delivery connections
“compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives
meaning to all the terms of the claim is preferred over one that does not do
so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005)).
We are not persuaded by Petitioner’s argument that Figure 2 of the
’906 patent supports its interpretation. See Opp. RMTA 8. Petitioner argues
that because Figure 2 shows refueling hose 24 as separate from fuel level
sensor 54, a fuel delivery connection need only be operationally linked and
not physically connected. Id. But as shown in Figure 2 and explained in the
Detailed Description of the ’906 patent, fuel level sensor 54 and hose 24 are
both physically connected to fuel cap 26. Ex. 1001, Fig. 2; see also id. at
3:40–42 (“Each cap 26 also preferably comprises a fuel level sensor 54
mounted in port 49.”); id. at 4:7–11 (“The port 50 [in fuel cap 26] may be
used to house a conduit 27 . . . that extends down through the cap 26 to the
bottom of the fuel tank 12, and which is connected . . . to one of the hoses
24.”). Thus, although the fuel cap 26, fuel level sensor 54, and hose 24 are
each separately identifiable structures, all three are physically connected. As
such, we find no support in the Specification for Petitioner’s position that the
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claim does not require a physical or structural connection between the fuel
delivery connections and the fuel level sensor.
For these reasons, we determine that the phrase “fuel delivery
connections comprising a fuel level sensor” requires that the fuel delivery
connections are physically connected to the fuel level sensor.
b) “low . . . fuel level” and “high fuel level”
Proposed substitute claim 48 recites “a fuel level sensor for detecting
a low and high fuel level in the tanks to which the fuel delivery connection is
connected.” RMTA A1. Patent Owner proposes that “low” fuel level means
“empty or nearly empty” and “high” means “full or nearly full.” Id. at 5
nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not
contest Patent Owner’s proposed constructions or offer competing
constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14.
Although Patent Owner’s argument in support of these constructions
is truncated, we determine that Patent Owner’s proposals are supported by
the evidence of record. The ’906 patent describes that operators can be
provided with “visual representations or displays showing the fuel level in
each of the tanks 12. Any visual representation or display may be used that
shows at least a high level condition (tank full) and a low level condition
(tank empty or nearly empty) and preferably also shows actual fuel level.”
Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control
station 56 may be provided with a full readout or display for each fuel tank
12 being filled that shows the level of fuel in the fuel tank 12 including when
the fuel tank 12 is near empty and near full. An alternative is to provide
only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”).
These descriptions equate a high fuel level with the tank being full or nearly
full and a low fuel level with the tank being empty or nearly empty. Patent
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Owner also cites a district court’s claim construction order relying on this
description5 as definitional and, therefore, construing “a low fuel condition”
to mean “a state in which the fuel level is empty or nearly empty.” See Ex.
2002, 11–12. The district court’s construction of “a low fuel condition” is
relevant to the construction of “low . . . fuel level” because the terms are
substantially similar.
Accordingly, we adopt Petitioner’s proposed constructions of “low”
fuel level as “empty or nearly empty” and “high” fuel level as “full or nearly
full.”
4. Summary of Petitioner’s Cited References
a) Summary of Gerardot
Gerardot discloses a “portable fuel dispensing device [that] includes a
fuel container formed of inner and outer fuel impervious walls and a
plurality of fuel metering and dispensing units coupled to the container for
simultaneously dispensing metered quantities of fuel to a plurality of
vehicles.” Ex. 1012, 2:5–9. Gerardot seeks to provide a system that
eliminates the need for underground storage tanks at customer locations, and
that offers versatility and portability insofar as units can be moved out of
areas as needed, such as when flooding occurs. Id. at 1:10–14, 1:47–52.
In Gerardot’s system, a “plurality of wheels such as the undercarriage
of a semi-tractor trailer support the [portable fuel dispensing] device for
allowing the device to be moved between locations at which fuel is

5 The district court was construing the Parent Patent (see supra § I.C) — i.e.,
U.S. Patent No. 9,346,662, to which the ’906 patent states that it is related as
a continuation. See Ex. 2002, 1; Ex. 1001, code (63). The portion of the
Parent Patent on which the district court relied as definitional for “low fuel
condition” is also present in the ’906 patent. See Ex. 2002, 11; Ex. 1001,
4:3.
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dispensed to vehicles and a fuel container refilling location.” Id. at 2:9–13.
Figures 1 and 2 are reproduced below:

Figures 1 and 2 depict a side elevation view and a cross-section of a semi-
tractor trailer, respectively, carrying a portable fuel dispensing device
holding fuel in supply tanks 1. Id. at 2:34–38, 2:55–58.
Fuel is dispensed from supply tank 1 through pipe line 6, main
manifold supply line 12, and dispensers 2 to customer vehicles. Id. at 3:4–5,
3:14–15, 3:40–42. Hoses 53 at dispensers 2 are equipped with automatic
disconnect snap couplers to prevent spillage if a customer fails to remove the
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nozzle prior to leaving the dispensing station. Id. at 4:3–5. Dispensers 2
also include automatic shut-off filler nozzles 51 to prevent customers from
overfilling their vehicle tanks. Id. at 4:1–3. Ground cable 23 connects
chassis 3 of the trailer to the ground to prevent static electricity buildup, and
concrete barriers 25 are set up on both sides of the carrier chassis to prevent
accidental crashes into the chassis and supply tank. Id. at 3:49–55.
b) Summary of Robinson
Robinson discloses a well treatment operations factory “for providing
pressure for a well fracturing operation.” See Ex. 1013, at Abstract, ¶ 5.
The factory includes “one or more docking areas for docking one or more
pumping units to a pressure manifold wherein the one or more docking areas
are operable to provide access between one or more pumping units.”
Id. ¶¶ 5, 21.
Figure 1 is reproduced below:

Figure 1 shows well treatment operations factory 100 including centralized
power unit 103, pumping grid 111, central manifold 107, proppant storage
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system 106, chemical storage system 112, and blending unit 105. Id. ¶¶ 9,
21.
Figure 7 is reproduced below:

Figure 7 is a schematic for a well fracturing method using manifold trailers
701, 702, each of which is connected to pressurized stimulating fluid
through pump trucks 703 or through pumping grid 111. Id. ¶¶ 15, 31.
Figure 8 is reproduced below:

Figure 8 shows an aerial view of pumping grid 111, including walkways 807
and docks 810 that receive equipment. Id. ¶¶ 16, 32. Pumping grid 111
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includes freestanding pumps 801, which rely on centralized fuel, coolant,
and power. Id. ¶ 32. Pumping grid 111 can also include pumps 809
attached to trucks 808. Id. “Pumps 809 can each contain its own fueling,
cooling, lubrication, and power sources.” Id.
c) Summary of Yoshida
Yoshida discloses “a refueling apparatus which enables the automatic
supply of fuel” from an external fuel tank to an internal fuel tank by
switching the operation of a fuel supply pump in accordance with the
amount of fuel in the internal fuel tank. Ex. 1014 ¶ 14. Yoshida’s Figure 3
is reproduced below:

Figure 3 shows internal fuel tank 6 and refueling hose 44, which links
internal fuel tank 6 to external fuel tank 43. Id. ¶ 11. Yoshida uses “an
upper limit float switch FH . . . provided inside the internal fuel tank 6 as a
detector for detecting the upper limit fuel level of the stored fuel” and “a
lower limit float switch FL . . . provided inside the internal fuel tank 6 as a
detector for detecting the lower limit fuel level of the stored fuel.” Id. ¶ 14.
Thus, Yoshida’s “refueling apparatus . . . automatically resupplies fuel from
the external fuel tank 43 to the internal fuel tank 6.” Id. ¶ 16.
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d) Summary of Hockner
Hockner describes a device for preventing overfilling of fuel tanks at
a gasoline station. Ex. 1035 ¶ 1, Abstract. Hockner explains that prior art
tank trucks had multiple compartments, each equipped with a fill-level
sensor connected to a computer that calculated the quantities filled into and
dispensed from that compartment. Id. ¶ 2. This approach only monitored
fill level “in an indirect manner.” Id. ¶ 3. While optical or thermistor
threshold sensors were also known for preventing overfilling tanks, such
sensors had to be observed and, therefore, “involve[d] uncertainty.” Id. ¶ 4.
Hockner seeks to avoid these disadvantages with a system that “easily
transmit[s] information about reaching a predetermined fill level and . . .
initiate[s] automatic closing of the appropriate inlet valves.” Id. ¶ 7. In
particular, the tanks in a filling station include a fill-level threshold sensor
that is connected to a transmitter. See id. ¶¶ 12–15. “During communication
between the transmitter 1, the receiver 2, and an interrogation circuit
associated with the transmitter 1, the individual fill-level threshold sensors 3
in the separate tanks 8 may be queried in rapid succession, and the
information sent to the transmitter 1.” Id. ¶ 18. Hockner explains that “[i]t
is practical to connect the transmitter 1 to an evaluation circuit that shuts off
a valve controlling the hose 6 connected to the tank 8 in question when a
signal is received that indicates that the specified maximum fill level has
been reached.” Id. ¶ 19.
e) Summary of Mitrovich
Mitrovich describes a refueling apparatus that automatically stops
when a desired refueling level is reached. See Ex. 1034, 1:15–17. Figure 2
is reproduced below:
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As depicted in Figure 2, the refueling apparatus includes “fluid flow control
valve 20 which, working in concert with a float valve (float control module)
70, can be opened or closed, thereby shutting off a flow of fuel into a
container 6 (e.g., fuel tank).” Id. at 2:24–28. Bleed conduit 90 “fluidly
interconnect[s] the two components and allow[s] the float control module 70
to automatically close the fluid flow control valve 20 upon a predetermined
level of fluid in the container being reached. . . .” Id. at 4:19–23.
f) Summary of Burns
Burns discloses a “method of on-site refueling, i.e., delivering
petroleum and similar products from a tank truck into customer vehicles or
other tanks at a customer’s site, that ensures the accurate delivery of
products.” Ex. 1015, Abstract. Burns’ method is implemented by “a
delivery truck 50, having a plurality of compartments 52, 54, 56, and 58 and
a corresponding outlet valve 62, 64, 66, and 68 that controls the flow of the
product from each compartment to a manifold, and then through a pump and
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associated meter to a connected hose.” Id. at 8:28–33, Fig. 2. Burns’
delivery truck further includes a digital computer system having a
“controller that allows the on-board computer to read the accumulating
gallonage being passed through the truck meter(s), and to set relay contacts
that directly control the flow of fuel into vehicles.” Id. at 5:54–56, 5:66–6:3.
g) Summary of Adler
Adler discloses a portable service station mounted on a vehicle, for
dispensing fuels and lubricants to vehicles in the field or at remote points
from a permanent gas station. Ex. 1016, 1:1–20. Adler’s portable gas
station includes pipes 46–49 connected to hoses that are stored on reels 52–
59. Id. at 2:6–13, 2:45–50, 4:55–5:3, Figs. 1, 5. The portable gas station
achieves “an optimum disposition of products-dispensing hose reels and
other auxiliary parts necessary for providing efficient and flexible dispensing
of various products and to enable quick servicing of several vehicles
simultaneously while out in the field.” Id. at 2:6–11.
5. Claim 48
Petitioner contends that Gerardot, Robinson, Yoshida, Hockner, and
Mitrovich together teach every limitation of proposed substitute claim 48
and that an ordinarily skilled artisan would have been motivated to combine
those references to yield the claimed subject matter. See Opp. RMTA 4–18;
Sur-Reply RMTA 1–9. Our analysis focuses on the limitations in claim 48
reciting “fuel delivery connections comprising a fuel level sensor for
detecting a low and high fuel level,” starting and stopping fuel flow based on
detection of low and high fuel levels,6 and motivation to combine,

6 In particular, we focus on the limitations in proposed substitute claim 48
reciting “starting fuel flow to each fuel tank by signaling an automatically
operable valve . . . when the fuel level sensor associated with each tank
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particularly with respect to the requirement that signaling for the
automatically operable valves is “issued remotely from the fuel delivery
connections.” As discussed below, these aspects of Petitioner’s obviousness
ground are unpersuasive. While these weaknesses in Petitioner’s case are
sufficient to find for Patent Owner, for the sake of completeness we also
consider Patent Owner’s arguments regarding objective indicia. In our view,
Patent Owner’s objective indicia weigh only modestly in favor of
nonobviousness.
a) The “Fuel Delivery Connections” Limitation
Proposed substitute claim 48 recites “fuel delivery connections
comprising a fuel level sensor for detecting a low and high fuel level in the
tanks to which the fuel delivery connection is connected.” As discussed in
Section III.C.3.a), we determine that the phrase “fuel delivery connections
comprising a fuel level sensor” requires that the fuel delivery connections
are physically connected to the fuel level sensor. And as discussed in
Section III.C.3.b), we determine that “low” fuel level means “empty or
nearly empty” and “high” fuel level means “full or nearly full.”
Petitioner has not provided a persuasive explanation of how the
combination teaches every aspect of the “fuel delivery connections”
limitation. Although Petitioner frames its challenge as a single combination
of the five cited references, see Opp. RMTA 3, Petitioner’s arguments
regarding this limitation are better understood as two alternatives: a first
alternative in which Yoshida teaches the limitation, and a second alternative
in which Mitrovich teaches the limitation. See Tr. 28:14–24. Petitioner does

detects a low fuel level” and “stopping fuel flow to each fuel tank by
signaling the automatically operable valve . . . when the fuel level sensor . . .
detects a high fuel level.” RMTA A1.
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not argue that an ordinarily skilled artisan would have combined Yoshida
and Mitrovich to arrive at this limitation. See id. at 29:8–30:3.
As to the first alternative, Petitioner contends that “Yoshida discloses
a fuel sensor that detects both low and high fuel levels of fuels [sic] and a
fuel delivery connection including between hose 44 and internal tank 6.”
Opp. RMTA 5–6. Petitioner provides the following annotated version of
Yoshida’s Figure 3:

Petitioner’s annotated version of Figure 3 illustrates how Petitioner
correlates Yoshida’s components to the limitations of claim 48. Id. at 6. In
particular, Petitioner labels and highlights (in purple) Yoshida’s upper limit
float switch FH and lower limit float switch FL. Id.
Patent Owner argues that Yoshida fails to disclose the claimed fuel
delivery connections comprising a fuel level sensor because “Yoshida’s
internal fuel tank (6) is supplied by a refueling hose (44) that is shown just to
be a drop tube at a distinctly different part of the fuel tank from the built-in
sensors.” RMTA 14–15. Patent Owner points out that Yoshida shows “no
structure . . . between the hose 44 and the tank 6 for introducing a hose” and
“Yoshida’s sensors (FH and FL) are separate from this unshown fuel intake
line (44) structure.” Id. at 15 (emphasis omitted); Reply RMTA 2.
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We agree with Patent Owner that Yoshida does not disclose fuel
delivery connections comprising a fuel level sensor under the construction
we have adopted, which requires a physical connection between the fuel
delivery connection and the fuel sensor. Petitioner’s only rebuttal on this
point is to argue that the claim merely requires a logical or operational
connection, not a physical or structural connection, between the fuel delivery
connections and the fuel level sensor. See Opp. RMTA 7–8; Sur-Reply 3.
That argument is unpersuasive for the reasons we discussed in Section
III.C.3.a). Petitioner does not point to, and we do not find, any indication in
Yoshida that refueling hose 44 is physically or structurally connected to float
switches FH or FL. Yoshida’s Figure 3 shows refueling hose 44 entering
fuel tank 6 independently of, and without any physical connection to, float
switches FH and FL. Ex. 1014, Fig. 3; see also Tr. 34:6–10 (Petitioner
agreeing that in Yoshida, the supply hose and the sensor are separate).
Yoshida’s description says nothing of any physical connection between float
sensors FH and FL and refueling hose 44, and instead simply states that
upper limit float switch FH and lower limit float switch FL are “provided
inside the internal fuel tank 6,” with “upper limit float switch FH . . .
positioned above the lower limit float switch FL.” Ex. 1014 ¶ 14.
Turning to the second alternative, Petitioner argues that Mitrovich
discloses the “fuel delivery connections” limitation because it “describes that
a fluid flow control valve module 20 includes a shutoff valve, and fluid level
sensor 70 automatically controls the opening and closing of said shutoff
valve to start and stop refueling.” Opp. RMTA 10. According to Petitioner,
Mitrovich’s
fluid level sensor is configured to automatically close the fluid
flow control valve upon the sensor sensing that said fluid level is
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higher than a predetermined level, and to automatically open the
fluid flow control valve module upon the sensor sensing that said
fluid level is lower than a predetermined level in said container.
Id. (citing Ex. 1034, 6:12–34, 7:9–19).
Patent Owner counters that “Mitrovich’s float control module fails to
disclose the claimed high and low level detecting, because it only detects a
high level.” Reply RMTA 4. Patent Owner argues that Mitrovich does not
teach detecting a high and low level but instead describes “a mechanism
similar to a common toilet tank, with one float that detects a high level
(when pushed up to a predetermined level) and a ‘not high level’ (when not
pushed up to that level).” Id.
We agree with Patent Owner that Petitioner has not shown that
Mitrovich’s fluid level sensor 70 detects “low” and “high” fuel levels under
the constructions we have adopted — namely, “empty or nearly empty” and
“full or nearly full.” Mitrovich’s goal is to provide a refueling apparatus that
automatically stops when a desired refueling level is attained. Ex. 1034,
1:15–17, 1:25–28, 2:24–28. Consistent with that goal, Mitrovich discloses
that fluid flow control valve 20 permits fluid to flow “as long as the flow
control module[ 70]’s float valve is open” but “[w]hen the fluid level
reaches a preset level,” fluid flow control valve 20 prevents further fluid
flow to the container. Id. at 5:3–20. Mitrovich describes opening or closing
the valve based on whether the fluid level is higher or lower than a single
“predetermined level.” Id. at 6:25–31, 7:9–19. Because Mitrovich senses
only whether the fluid level is higher or lower than a single preset level, it
does not teach a fuel level sensor for detecting a low (i.e., empty or nearly
empty) and high (i.e., full or nearly full) fuel level.
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Petitioner responds to Patent Owner’s argument regarding the absence
of low fuel level detection in Mitrovich by pointing back to Yoshida. See
Sur-Reply RMTA 6. But Yoshida is deficient for the reasons already
discussed, and Petitioner does not propose combining Yoshida’s low fuel
sensor with Mitrovich. See Tr. 29:8–30:3. We have also considered the
testimony of Mr. Berry to which Petitioner directs us. See Ex. 1039 ¶¶ 61–
62. That testimony has little impact on our analysis because Mr. Berry’s
testimony essentially repeats Petitioner’s arguments with no further
explanation or detail. See Opp. RMTA 11–12. Mr. Berry does not explain,
for example, why an ordinarily skilled artisan would have understood
Mitrovich to disclose detecting two different fluid levels, as opposed to one
predetermined level.
Petitioner argues, and Mr. Berry testifies, that “a low and high fuel
level sensor was well-known in the art.” Id. at 12 (citing Ex. 1001, 3:43–
45); Ex. 1039 ¶ 62. That assertion does not support that Mitrovich, the
reference Petitioner relies on, teaches that limitation. Indeed, Mr. Berry’s
and Petitioner’s reliance on the teachings in the ’906 patent to support that
assertion appears to exemplify improper hindsight. See Otsuka Pharm. Co.
v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s own
path itself never leads to a conclusion of obviousness; that is hindsight.”).
Accordingly, Petitioner has not shown that the proposed combination
teaches the “fuel delivery connections” limitation.
b) Starting and Stopping Fuel Flow Based on Detecting Low and
High Fuel Levels
Proposed substitute claim 48 recites “starting fuel flow to each fuel
tank by signaling an automatically operable valve . . . when the fuel level
sensor associated with each tank detects a low fuel level” and “stopping fuel
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flow to each fuel tank by signaling the automatically operable valve . . .
when the fuel level sensor . . . detects a high fuel level.” RMTA A1. In
addressing these aspects of claim 48, Petitioner relies on Mitrovich as
disclosing “automatically starting fuel flow to a fuel tank when a low fuel
level is detected and automatically stopping fuel flow to the tank when a
high fuel level is detected by a controlling fuel valve.” Opp. RMTA 15. For
the same reasons just discussed, we are not persuaded that Mitrovich
discloses detecting a low and high fuel level. Thus, Petitioner’s arguments
regarding these limitations are unpersuasive.
c) Motivation to Incorporate Remote Signaling
Proposed substitute claim 48 further recites that the signaling to the
automatically operable valve is “issued remotely from the fuel delivery
connections.” RMTA A1. Petitioner relies on Hockner to disclose signaling
issued remotely from fuel delivery connections. Opp. RMTA 15. With
respect to the motivation to incorporate this feature from Hockner into the
proposed Gerardot-based combination, Petitioner contends that an ordinarily
skilled artisan would have “understood that providing a single control center
allows an operator to monitor the refueling operations of all fuel tanks from
a single location outside the hot zone.” Id. at 17; see also id. at 18 (arguing
that “having a centralized control station outside the hot zone has several
benefits” including keeping sensitive components “out of the harsh
temperature and environmental conditions of the refueling zone”); Ex. 1039
¶¶ 76–77 (Mr. Berry testifying the same); Sur-Reply RMTA 9 (arguing that
ordinarily skilled artisans “knew that the small risk to personnel from using
an automatic refueling system could be made even smaller by routing the
signal to a remote location because if the processor malfunctioned, personnel
could perform maintenance outside of the hot zone”).
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Thus, the premise of Petitioner’s motivation argument is that a skilled
artisan would have incorporated remote signaling so as to permit operators
to monitor and perform maintenance from outside the hot zone. Yet
Petitioner does not point to any disclosure in any of the cited references
suggesting that there are risks of having an operator in the hot zone or that it
would be beneficial to permit an operator to monitor refueling operations
from outside the hot zone. While it is unnecessary for a patent challenger to
show that the cited references themselves supply a teaching, suggestion or
motivation to combine, KSR, 550 U.S. at 415, the motivation analysis
nevertheless remains focused on the state of the art at the time of the
invention. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
Cir. 2013); see also TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1362
(Fed. Cir. 2019) (reversing Board’s obviousness determination because the
expert testimony on which it was based was untethered to supporting
contemporaneous evidence and failed to provide a “meaningful explanation
for why one of ordinary skill in the art would be motivated to combine these
references at the time of this invention”) (emphasis in original). Here,
Petitioner has not provided any persuasive evidence to show that ordinarily
skilled artisans at the time of the invention would have recognized the
presence of operators near equipment during refueling as a problem. See
Leo Pharmaceutical Prods., Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir.
2013) (noting that “an invention can often be the recognition of a problem
itself”).
Petitioner relies on Hockner as teaching the remote signaling feature,
but Hockner’s purpose is simply to provide a system that prevents
overfilling of tanks at a filling station for environmental reasons. Ex. 1035
¶¶ 1, 4–5. When asked at the hearing whether any of the cited references
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describe any risks or disadvantages of having an operator near fracking
equipment while it is operating, Petitioner pointed to Yoshida. See Tr.
41:23–43:2. However, we find no disclosure in Yoshida relating to worker
safety or the dangers of operators being near fracking equipment. Yoshida’s
stated goal is to prevent a continuously operating engine generator from
running out of fuel. Ex. 1014, Abstract, ¶ 3. Moreover, Yoshida describes
that “the starting/stopping of the engine generator 1, the resupply of fuel,
and the like are performed by operating the instrument box 15 from the
outside of one side face of the cover 2.” Id. ¶ 12. Yoshida’s teaching that
operators use an instrument box on the cover of the machine to operate the
machine runs counter to Petitioner’s reliance on Yoshida as suggesting the
dangers of placing operators in the hot zone.
Petitioner also points to an “OSHA7 letter that says when you
implement an automatic system, then there’s suddenly de minim[i]s risk by
virtue of that being automatic.” Tr. 42:2–6. The OSHA letter is a document
that includes in its footer an address on OSHA’s website. See Ex. 1031, 1.
The footer also includes the notation “2/26/2020.” The letter is dated June
11, 1996 and is addressed to Mr. Ted Hillman in response to his request for
an interpretation of OSHA’s regulations addressing fire protection during the
fueling of mobile equipment, specifically 29 C.F.R. § 1926.152(g)(10). Id.
The OSHA letter states that
the requirement to shut off the engines of mobile equipment
during the fueling operation is intended to prevent injuries due to
fire. We agree that if the equipment is equipped with a Wiggins
Refueling System, and the equipment is refueled outdoors or in
a well ventilated open structure, the intent of § 1926.152(g)(10)

7 OSHA stands for the Occupational Safety and Health Administration.
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is met and that conducting diesel fueling operations with the
engine running would be a de minimis condition.
Id. Petitioner relies on the OSHA letter to argue that an ordinarily skilled
artisan would have been motivated to provide control of the automatically
operated valves from outside the hot zone to minimize risk to personnel. See
Opp. MTA 8–9, 21; Ex. 1029 ¶ 53; Opp. RMTA 17–18; Ex. 1039 ¶ 77.
An initial problem with Petitioner’s reliance on the OSHA letter is
that Petitioner has not provided persuasive evidence that it reflects the state
of the art or the knowledge of ordinarily skilled artisans at the time of the
invention. Petitioner does not explain when or how the OSHA letter was
published and provides no evidence that ordinarily skilled artisans would
have consulted documents of this kind or knew where to find them. When
asked about this at the hearing, Petitioner referred to the testimony of Mr.
Berry (see Tr. 43:3–44:6), but Mr. Berry’s testimony regarding the OSHA
letter also does not establish that it was known by or available to ordinarily
skilled artisans during the prior art period. See Ex. 1029 ¶¶ 27, 53, 66; Ex.
1039 ¶¶ 27, 52.
Further, as Patent Owner points out, the OSHA letter provides little
information about the capabilities of the system that created the de minimis
exception or why those features create an exception to the requirement to
shut off engines during fueling. See RMTA 10. The OSHA letter’s
reference to an “Automatic Fuel Shutoff System” (Ex. 1031, 1) suggests that
automatic fuel shutoff sufficiently eliminates the risk of fire to warrant an
exception. But Petitioner relies on the OSHA letter as motivation for the
inclusion of both Mitrovich’s automatic valve control based on a fuel level
reading, as well as Hockner’s remote signaling feature. Opp. MTA 8–9. As
we pointed out in our Preliminary Guidance,
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given Petitioner’s position that Mitrovich’s automatic valve
controlling would already reduce hot refueling risks to de
minimis . . . , Petitioner’s proffered reason for issuing the valve
control signals remotely from the fuel delivery connections (i.e.,
further risk mitigation) does not adequately explain how or why
an ordinarily skilled artisan would have combined the signals
issued remotely from the fuel delivery connections, as taught by
Hockner, with the automatic valve control of Mitrovich.
PG 12. Petitioner responds that even with automatic control, monitoring by
operators may still be needed and “the small risk to personnel could be made
even smaller by routing the signal to a remote location before it reaches the
valve, because if the processor malfunctions, personnel can perform
maintenance outside of the hot zone.” Opp. RMTA 18 (citing Ex. 1039
¶ 77). We are not convinced. As discussed above, none of the cited
references describes a concern for placing operators in the hot zone during
fueling. The OSHA letter, even leaving aside the issue of whether it reflects
knowledge of ordinarily skilled artisans at the time of the invention,
indicates that risk of injury due to fire when refueling a running engine is de
minimis when an automatic shutoff system is included. Thus, we are not
persuaded that an ordinarily skilled artisan would have been motivated by
operator safety to modify a system that included an automatic fuel shutoff
system to also include Hockner’s remote signaling feature.
We also note that the ’906 patent describes the hazards of operators
manually refueling equipment during fracking operations. See Ex. 1001,
1:18–21. Indeed, Mr. Berry references this description in the ’906 patent as
providing motivation for Petitioner’s proposed combination. See Ex. 1029
¶ 53. In the absence of any evidence that the risks or disadvantages of
operators being near equipment during fueling was known before the date of
the invention, Petitioner’s motivation for incorporating remote signaling
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appears to be simply following the path laid out in the ’906 patent itself. See
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985)
(“[T]here must be some reason for the combination other than the hindsight
gleaned from the invention itself.”).
For these reasons, we find that Petitioner has not provided a
persuasive reason to modify the proposed Gerardot-based system to include
Hockner’s remote signaling feature.
d) Objective Indicia of Nonobviousness
Patent Owner argues that objective indicia in the form of commercial
success and industry praise weigh in favor of nonobviousness. See RMTA
21–25; Reply RMTA 9–12. Petitioner disputes Patent Owner’s arguments
regarding objective indicia. Opp. RMTA 19–25; Sur-Reply 10–12. For the
reasons discussed below, we find that Patent Owner is entitled to a
presumption of nexus, that the evidence of commercial success weighs only
modestly in favor of nonobviousness, and that the industry praise evidence is
weak and carries little or no weight in the obviousness analysis.
(1) Nexus
“For objective indicia of nonobviousness to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.” Lectrosonics, Inc. v. Zaxcom, Inc.,
IPR2018-01129, Paper 33, 32 (PTAB Jan. 24, 2020) (precedential); see also
In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017)
(“Evidence of [objective indicia] is only relevant to the obviousness inquiry
‘if there is a nexus between the claimed invention and the [objective
indicia].’”). “[T]he patentee bears the burden of showing that a nexus
exists.’” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed.
Cir. 2019) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339,
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1359 (Fed. Cir. 1999)). A presumption of nexus applies “when the patentee
shows that the asserted objective evidence is tied to a specific product and
that product ‘embodies the claimed features, and is coextensive with them.’”
Lectrosonics, Paper 33, 32 (quoting Fox Factory, Inc. v. SRAM, LLC, 944
F.3d 1366, 1373 (Fed. Cir. 2019)).
Here, Patent Owner argues that the “Frac Shack” system was designed
to employ the method of proposed substitute claim 48. See RMTA 21–23.
In support of that assertion, Patent Owner provides the testimony of Mr. Van
Vliet, an inventor of the ’906 patent and founder of Patent Owner. See
Ex. 2020 ¶¶ 2–4. Mr. Van Vliet testifies that “the employees of my
company practice, and have always practiced this method [in proposed
substitute claim 48] using my company’s automatic frac equipment refueller,
the Frac Shack.” Id. ¶ 12. Mr. Van Vliet’s declaration includes or
references photographs and a video to illustrate the features and operation of
various iterations of the Frac Shack. Id. ¶¶ 13–14, 17–18. Patent Owner’s
briefing provides additional detail on how the materials Mr. Van Vliet
references show Frac Shack practicing the method of proposed substitute
claim 48. See RMTA 21–22. According to Mr. Van Vliet, “the patented
method of the ’906 Patent . . . is implemented whenever the referenced Frac
Shacks are/were used, and the Frack Shacks are the ‘heart’ of my company,
as providing frac refueling services using the Frac Shack is my company’s
main product.” Ex. 2020 ¶ 16. We find that Patent Owner’s showing is
sufficient to raise a presumption of nexus.
We have considered Petitioner’s counterarguments regarding nexus
but they do not dissuade us from applying a presumption of nexus. First,
Petitioner argues that Mr. Van Vliet’s declaration refers to the proposed
substitute claim 48 of Patent Owner’s original Motion to Amend, and
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therefore cannot establish nexus for the proposed substitute claim 48 of the
Revised Motion to Amend. Opp. RMTA 22–23. Petitioner is correct in
noting that claim 48 in the Revised Motion to Amend omits certain
limitations that were recited in the version of claim 48 in Patent Owner’s
original Motion to Amend. See id.; see also RMTA 1 (explaining that the
claims in the Revised Motion to Amend are the same as those in the original
Motion to Amend except that they do not have certain limitations that the
Board’s Preliminary Guidance indicated may lack written description
support); PG 7 (preliminarily determining that “Patent Owner has not
directed us to written description support for ‘repeating the securing,
detecting, pumping, and controlling steps at the second well site,’ as recited
in proposed substitute claims 48, 49, and 51”). In particular, claim 48 in the
Revised Motion to Amend no longer recites “transporting the portable fuel
delivery system to a second well site; and repeating the securing, detecting,
pumping, and controlling steps at the second well site.” Compare MTA A2,
with RMTA A2. However, we disagree that this difference renders Patent
Owner’s showing insufficient. As Patent Owner points out, “[i]f Patent
Owner practices the claim with the limitation, it must practice it without.”
See Reply RMTA 9–10 (citing Wahpeton Canvas Co., Inc. v. Frontier, Inc.,
870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989)). Petitioner’s arguments do not
persuade us that the differences between the original and revised proposed
substitute claim 48 undermine coextensiveness for the Frac Shack system.
Petitioner also argues that Mr. Van Vliet is not an engineer or a patent
attorney and did not review the entire prosecution history or prior art of
record. Opp. RMTA 23. We are not persuaded that Mr. Van Vliet lacks a
sufficient basis for his testimony regarding the Frac Shack’s use of the steps
recited in claim 48. As summarized above, the evidence shows that Mr. Van
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Vliet is an inventor of the ’906 patent and is familiar with the operation and
features of the Frac Shack system. See Ex. 2020 ¶¶ 2–18.
In addition, Petitioner argues that Mr. Van Vliet has not offered an
adequate explanation of what portion of Frac Shack’s success is due to the
’906 patent as compared to the invention of the Parent Patent.8 Opp. RMTA
25. Yet nexus does not require that objective indicia (such as commercial
success) must be attributed exclusively to one or the other of two related
patents. The Federal Circuit has found nexus to multiple related patents
many times9 and has explained that this result is appropriate if “the claims of
both patents generally cover the same invention.” Fox Factory, 944 F.3d at
1377. Petitioner does not identify any significant features recited in the
Parent Patent that are absent from proposed substitute claim 48.
Accordingly, we determine that Patent Owner has made a sufficient
showing that it is entitled to a presumption of nexus.
(2) Commercial Success
Patent Owner’s showing of commercial success relies on the
testimony of Mr. Van Vliet. See RMTA 23 (citing Ex. 2020 ¶¶ 4–9).
Mr. Van Vliet testifies that Patent Owner “recently recorded $110M (U.S.)
in sales per year, the vast majority of which (approximately 97% of sales) is
attributable to the refueling service using the Frac Shack.” Ex. 2020 ¶ 7.
Mr. Van Vliet further testifies that the Frac Shack system’s operating days
have steadily increased, from 2,373 in 2015 to 17,202 in 2019. Id. ¶ 8.

8 “Parent Patent” refers to U.S. Patent No. 9,346,662. See supra § I.C.
9 E.g., WBIP, LLC, v. Kohler Co., 829 F.3d 1317, 1324, 1331 (Fed. Cir.
2016); PPC Broadband, Inc. v. Corning Optical Communications RF, LLC,
815 F.3d 734, 737, 747 (Fed. Cir. 2016); Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1345, 1350 (Fed.
Cir. 2012).
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Based on an internal assessment that about 16,000 gallons are pumped on
average per operating day, Mr. Van Vliet testifies that Frac Shack refuellers
pumped over 275 million gallons of fuel in 2019. Id. ¶ 9.
We find that Patent Owner’s evidence of growth and the revenues it
has earned from Frac Shack weighs in favor of nonobviousness, but only
modestly so. As Petitioner points out, Patent Owner’s evidence fails to
provide any context regarding market size or market share. See Opp. RMTA
23–24. When asked at his deposition, Mr. Van Vliet was unaware of how
the Frac Shack’s usage compared to the usage of other fracking refueling
systems. Id.; Ex. 1038, 89:17–90:6. We recognize that, as Patent Owner
notes, sales figures alone can provide some evidence of commercial success.
See Reply RMTA 10–11 (citing Tec Air v. Denso Mfg. Mich., 192 F.3d
1353, 1360–61 (Fed. Cir. 1999)). However, the lack of context-providing
market data significantly diminishes the probative value of Patent Owner’s
raw revenue and growth figures. See Novo Nordisk A/S v. Caraco
Pharmaceutical Labs., Ltd., 719 F.3d 1346, 1356 n.5 (Fed. Cir. 2013)
(“[T]he most probative evidence of commercial sales is not overall sales, but
whether those sales represent ‘a substantial quantity in th[e] market.’”)
(quoting In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir.
2012)); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“This
court has noted in the past that evidence related solely to the number of units
sold provides a very weak showing of commercial success, if any.”).
Accordingly, we determine that Patent Owner’s commercial success
evidence weighs only modestly in favor of nonobviousness.
(3) Industry Praise
Patent Owner’s argument that the Frack Shack has received praise and
recognition is based on three isolated statements of industry participants.
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RMTA 24–25. For the reasons discussed below, we agree with Petitioner
that Patent Owner’s industry praise arguments are unpersuasive. See Opp.
RMTA 19–21.
Patent Owner relies on an email from Mr. Randy Arkinstall stating,
“[T]his new type of ERS technology is a new step in being able to reduce the
risk of injury, property damage and environmental events associated in hot
re-fuelling.” RMTA 24; Ex. 2025, 1. Mr. Arkinstall provided this email in
response to a request from Mr. Van Vliet for feedback that he could show to
others. Ex. 2025, 1. Most of the feedback in Mr. Arkinstall’s email related
to personnel and the final comment regarding the technology is vague and
generic. Id. Patent Owner also relies on a comment by Mr. Rob
Montgomery of Calfrac Well Services that “[t]he Frac Shack system
increases the efficiency of our crew, has had major positive impact on our
safety record and has almost eliminated the environmental risk due to
spills.” RMTA 24; Ex. 2026, 1. As Patent Owner freely acknowledges,
Patent Owner drafted this comment and only asked Mr. Montgomery for
approval to attribute this testimonial to Calfrac. RMTA 24–25. These
comments of praise, which were either ghostwritten or solicited by Patent
Owner for marketing purposes, are not the type of industry praise that is
probative of nonobviousness. See Apple Inc. v. Samsung Elecs. Co., 839
F.3d 1034, 1053 (Fed. Cir. 2016) (en banc) (observing that industry praise
weighs against obviousness because competitors “are not likely to praise an
obvious advance over the known art”); In re Cree, 818 F.3d 694, 702 (Fed.
Cir. 2016) (“While ‘praise in the industry for a patented invention, and
specifically praise from a competitor tends to “indicate that the invention
was not obvious,”’ self-serving statements from researchers about their own
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work do not have the same reliability.”) (quoting Power-One v. Artesyn
Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)).
Patent Owner also points to an excerpt in an Inspection Summary
Report of the Frac Shack stating, “The system is truly innovative in a lot of
regards and quite frankly is the Best Available Practice I have encountered.”
RMTA 24; Ex. 2024; Ex. 2020 ¶ 20. The Inspection Summary Report
appears to be more objective than the other two documents, but it is unclear
from the report what features in the Frac Shack were considered innovative
or the basis for that assessment. The report’s emphasis is on the Frac
Shack’s compliance with Canadian safety standards concerning signage,
wiring, and other features that have no apparent relationship to the subject
matter of proposed substitute claim 48. Ex. 2024, 1–3. When asked at his
deposition, Mr. Van Vliet had no information on what the writer of the
report thought to be innovative, or the writer’s background and experience
with fracking refueling systems. Ex. 1038, 43:5–14, 45:14–46:3.
Thus, we assess Patent Owner’s evidence of industry praise as having
little to no probative value with respect to nonobviousness.
e) Conclusion
When considering all of the evidence of obviousness and
nonobviousness together (see In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir.
2012)), we conclude that Petitioner has not shown by a preponderance of the
evidence that the subject matter of claim 48 would have been obvious over
the prior art.
6. Claims 49–62
Petitioner treats claim 48 as representative for its challenges to all of
the proposed substitute claims. See Opp. RMTA 4. As to claims 49–62,
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Petitioner simply refers back to arguments in its Petition to address any
limitations beyond those recited in claim 48. See id. at 18–19; Sur-Reply
RMTA 9–10. Claims 49 and 50 recite the same limitations discussed above
as driving the analysis with respect to claim 48. See RMTA, A2–A3. The
remaining proposed substitute claims depend, directly or indirectly, from
claim 50. Thus, Petitioner’s arguments do not establish the obviousness of
these claims for the same reasons discussed above with respect to claim 48.
IV. CONCLUSION
For the foregoing reasons, we grant Patent Owner’s Revised Motion
to Amend, as summarized in the following table:
Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment 2, 8, 10, 18, 19, 28–30,
32–34, 37, 38, 40–42,
45, 47
Substitute Claims Proposed in the Amendment 48–62
Substitute Claims: Motion to Amend Granted 48–62
Substitute Claims: Motion to Amend Denied
Substitute Claims: Not Reached
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Revised Motion to Amend is granted;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:
Pierre Hubert
Gilbert Greene
Diana Sangalli
Justus Getty
Jun Zheng
DUANE MORRIS LLP
pjhubert@duanemorris.com
bgreene@duanemorris.com
dmsangalli@duanemorris.com
jlgetty@duanemorris.com
jzheng@duanemorris.com

FOR PATENT OWNER:

Joshua S. Wyde
THE LAW OFFICE OF JOSHUA S WYDE
jwyde@wydelegal.com

Gary J. Fischman
FISCHMAN LAW PLLC
fischman@fischmaniplaw.com