SandBox Logistics LLC, et al v. Proppant Express Investments LLC, et al.
Filing
234
MEMORANDUM OPINION ON CLAIM CONSTRUCTION (Signed by Judge George C Hanks, Jr) Parties notified.(dperez, 3)
United States District Court
Southern District of Texas
ENTERED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
GALVESTON DIVISION
§
§
Plaintiffs,
§
VS.
§
§
GRIT ENERGY SOLUTIONS LLC, et al, §
§
Defendants.
§
July 09, 2018
David J. Bradley, Clerk
SANDBOX LOGISTICS LLC, et al,
CIVIL ACTION NO. 3:16-CV-12
CIVIL ACTION NO. 4:17-CV-589
MEMORANDUM OPINION ON CLAIM CONSTRUCTION
On March 1, 2018, the Court held a Markman hearing at which the parties
proposed meanings for several terms that are used in the patents at issue in this litigation
and that the parties have asked the Court to construe. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372 (1996) (“[T]he construction of a patent, including
terms of art within its claim, is exclusively within the province of the court.”). The parties
have also filed thorough and well-written briefing. Having carefully considered the
parties’ arguments, the evidence, and the applicable law, the Court construes the disputed
claim terms as stated below. For the sake of clarity, the plaintiffs will be referred to
collectively as “Sandbox,” and the defendants will be referred to collectively as “Grit.”
I.
LEGAL STANDARD GOVERNING CLAIM CONSTRUCTION
The claims of a patent define the scope of the patented invention and function to
forbid “not only exact copies of an invention, but products that go to the heart of an
invention [while avoiding] the literal language of the claim by making a noncritical
change.” Id. at 373–74 (citations and quotation marks omitted). Claim construction is “a
1 / 37
way of elaborating the normally terse claim language in order to understand and explain,
but not to change, the scope of the claims.” Embrex, Inc. v. Service Engineering Corp.,
216 F.3d 1343, 1347 (Fed. Cir. 2000) (brackets and quotation marks omitted).
Claim construction requires a determination as to how a person of ordinary skill in
the relevant art would understand a claim term in the context of the entire patent,
including the specification and prosecution history, at the time of invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005). “There is a heavy presumption
that claim terms are to be given their ordinary and customary meaning.” Aventis Pharm.
Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013). “Properly viewed, the
‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the
entire patent.” Phillips, 415 F.3d at 1321.
The Court begins its analysis by considering the language of the claims themselves
but must keep in mind that “claims must be read in view of the specification, of which
they are a part.” Id. at 1314–15 (quotation marks omitted). The specification, being “the
single best guide to the meaning of a disputed term[,]” is “always highly relevant to the
claim construction analysis” and will “usually” be “dispositive[.]” Id. at 1315. The Court
should also consider the patent’s prosecution history, if that history is in evidence. Id. at
1317. The prosecution history “represents an ongoing negotiation between the [Patent
and Trademark Office] and the applicant” and, as a result, “often lacks the clarity of the
specification[;]” but, nevertheless, it “can often inform the meaning of the claim language
by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than
2 / 37
it would otherwise be.” Id. Put another way, “[t]he best source for understanding a
technical term is the specification from which it arose, informed, as needed, by the
prosecution history.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478
(Fed. Cir. 1998). The Court may also rely on “extrinsic” evidence, which is defined as
“all evidence external to the patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises[;]” but extrinsic evidence is generally seen
“as less reliable than the patent and its prosecution history in determining how to read
claim terms[.]” Phillips, 415 F.3d at 1317–18 (quotation marks omitted).
With respect to many of the claim terms at issue, Sandbox calls for the Court to
construe the terms in accordance with their “plain and ordinary meaning[s.]” Sandbox
highlights the Federal Circuit’s statement that “the specification and prosecution history
[of a patent] only compel departure from the plain meaning [of a term] in two instances:
lexicography and disavowal.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014). A district court must apply an “exacting” standard in
determining whether a patentee has acted as its own lexicographer or limited its claims by
disavowal (which is sometimes referred to as “disclaimer”). Id. Lexicography requires a
clear expression by the patentee of an intent to define the claim term, while a
determination of disavowal (or disclaimer) requires a clear indication by the specification
or prosecution history that the invention does not include a particular feature. Id.
However, “clear,” the Federal Circuit has noted, does not always mean “explicit.” Trs. of
Columbia Univ. in City of N. Y. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016)
(“Our case law does not require explicit redefinition or disavowal.”).
3 / 37
Grit counters Sandbox’s “plain and ordinary meaning” arguments by contending
that the relevant patents’ specifications and prosecution histories demonstrate that
Sandbox did in fact limit its claims by “describ[ing] its invention narrowly in the patent
specifications and during the prosecution of its applications” in order “[t]o obtain patent
protection over a crowded field” (Dkt. 111 at p. 9).1 Sandbox’s claim construction
proposals, Grit’s argument continues, are an impermissible attempt “to expand the scope
of [Sandbox’s patent] protection by proposing undefined ‘plain and ordinary meanings’
of terms” (Dkt. 111 at p. 9) (some brackets omitted). The Federal Circuit has indeed
emphasized that the doctrine of disavowal exists to prevent a patentee from unfairly
broadening its patent protection once a patent has been secured. Aylus Networks, Inc. v.
Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) (“Ultimately, the doctrine of
prosecution disclaimer ensures that claims are not construed one way in order to obtain
their allowance and in a different way against accused infringers.”) (quotation marks
omitted).
II.
THE PATENTS AT ISSUE
Four patents form the basis of this litigation. Those patents deal with containers
for and methods of storing, transporting, and unloading proppant in hydraulic fracturing
operations. The patent numbers at issue are: 9,296,518 (“the ‘518 patent”); 9,403,626
(“the ‘626 patent”); 9,511,929 (“the ‘929 patent”); and 9,440,785 (“the ‘785 patent”). At
the Markman hearing, the parties grouped the first three patents together and discussed
the ‘785 patent separately. The Court will group the patents in the manner in which the
1
All record citations correspond to the docket numbers in case number 4:17-CV-589.
4 / 37
parties did in their Markman presentations and will address the terms in the order in
which the parties did in their Markman presentations.
III.
THE ‘518, ‘626, AND ‘929 PATENTS
The parties have asked the Court to conduct nine constructions related to the ‘518,
‘626, and ‘929 patents. Grit has also argued that a claim contained in the ‘626 and ‘929
patents is indefinite.
1. The term “adjacent” in claim 13 of the ‘626 and ‘929 patents: The Court
concludes that a person of ordinary skill in the art would understand the
phrase “moving the first container to a position adjacent the second
container” in claim 13 to mean placing the two containers in a stacked
configuration.
The parties first contest the meaning of the term “adjacent” as it is used in the
phrase “moving the first container to a position adjacent the second container.” See Claim
13 of the ‘626 and ‘929 patents. Sandbox argues that the term “adjacent” should be given
its “plain and ordinary meaning,” which is set forth in the fourth edition of Webster’s
New World College Dictionary as “near or close.” In response, Grit argues that the term
“adjacent,” as used in the context of claim 13, must actually mean “above.” To support its
proposed construction, Grit points to diagrams and language in the patent specifications
that, according to Grit, indicate that claim 13 of the ‘626 and ‘929 patents only claims a
method of discharging proppant onto a portable conveyor belt from a stacked
configuration of multiple ocean freight containers, meaning that Sandbox’s specifications
have disclaimed any definition of “adjacent” in claim 13 that is not “above” or “below.”
Grit’s argument regarding the language of claim 13 has force. The intrinsic
evidence shows that the stacked configuration of multiple ocean freight containers is
5 / 37
essential to the inventions claimed in the ‘626 and ‘929 patents. The patents emphasize
how the stacking of multiple ocean freight containers eliminates the need for special
proppant storage facilities, going so far as to say that, “[b]ecause of this stacking
arrangement, special proppant storage facilities are not required at the fracturing site”
(Dkt. 103-4 at p. 13) (emphasis added). According to the patents, special proppant
storage facilities entail “a large capital investment” that can now be avoided because a
“stacking arrangement” of “two containers, three containers, or more . . . provides a
suitably modular arrangement whereby a proppant storage facility can be easily
constructed on-site” (Dkt. 103-4 at pp. 11, 13). Then, “[a]fter the fracturing operation is
completed, the containers can be easily removed from this stacked configuration and
transported to another location” (Dkt. 103-4 at p. 13).
During the fracturing operation, when the proppant needs to be taken out of
storage and transported to the fracturing site, the ocean freight containers remain stacked
during the unloading of the proppant. One of the stated objects of the invention, as a
matter of fact, is “to provide a proppant storage assembly which allows proppant to be
efficiently removed from a stacked configuration of containers” (Dkt. 103-4 at p. 12).
And a section of the patents entitled “Detailed Description of the Invention” reads:
FIG. 2 shows an end view of the proppant storage assembly of the present
invention showing of the present invention [sic]. In FIG. 2, it can be seen
that the first container is spaced from the second container. The second
container is suitably spaced from the third container. The bottom hatch of
the first container is openable so that the proppant within the first container
can be discharged through the hatch onto a portable conveyor. The portable
conveyor can be easily transported to a location below the hatch of the first
container so as to allow the proppant from the containers to be transported
to another location. Each of the containers is vertically aligned in a stacked
6 / 37
orientation. The first container has a capacity for storing 100,000 pounds of
proppant. The second container and the third container can store 30,000
pounds of proppant. As such, a very large amount of proppant can be
provided to the fracturing site, in a simple easy and convenient manner.
Dkt. 103-4 at pp. 13–14 (emphasis added; numbers corresponding to
accompanying diagram omitted).
Just as the passage quoted above describes, Figure 2 of the patents shows three
stacked ocean freight containers with a portable conveyor belt beneath them (Dkt. 103-4
at p. 8). Figure 1 of the patent, which depicts in great detail the mechanics of the gravitydriven path along which the proppant flows from the higher containers to the lower
containers when it is unloaded from the temporary storage facility, also shows three
stacked ocean freight containers (Dkt. 103-4 at p. 7). Figure 1 and Figure 2 are the only
drawings that depict multiple ocean freight containers; the other drawings show the
composition of the individual containers and depict how those containers are modified to
store and discharge large quantities of proppant (Dkt. 103-4 at pp. 9–10).
Further, the ‘518, ‘626, and ‘929 patents all open with a “Field of the Invention”
section that reads:
The present invention relates to storage containers. More particularly, the
present invention relates to storage container assemblies whereby a product
in one container can flow to an interior volume of a lower container.
Dkt. 103-4 at p. 11; Dkt. 111-2 at p. 9; Dkt. 111-3 at p. 10.
Taken in conjunction with the diagrams and other language in the specifications,
the “Field of the Invention” section strongly indicates that the first container it describes
is stacked atop the second, “lower” container. Indeed, Claim 13 itself recites:
[a] method for delivering large volumes of proppant to a fracturing site, the
method comprising . . . positioning a first container [and] stacking a second
container . . . in a vertically stacked positioned [sic] above the first
7 / 37
container . . . to allow proppant to flow therefrom [to] the first container
[and] from the first container onto a conveyor positioned at an elevation
below the first [container] and the second [container].
(Dkt. 103-4 at p. 16) (emphasis added).
In short, whenever the specifications depict multiple ocean freight containers,
whether verbally or visually, they do so in a stacked configuration; and the patent
specifications repeatedly tout that stacked configuration as an advantage and distinction
of the described invention that makes possible the modular construction of a temporary
proppant storage facility from which the proppant can be easily and efficiently removed
and transported via conveyor to the fracturing site. Additionally, the patents’ prosecution
history specifically distinguishes prior art on the basis that the prior art did not involve
stacked containers:
Claim 29 is being amended with this paper to clarify that the spacer is
elongate and that is for supporting another container that is above the
container. What is identified in Glewee et al. ‘232 as being a spacer is
merely a member set between lateral containers and not containers that are
vertically stacked. Thus this feature of claim 29 is not taught by Glewee et
al. ‘232.
Dkt. 111-5 at p. 10 (all emphasis in original).
In the Campbell patent, it is intended that a nozzle 13 be applied of the
circular bottom opening so as to allow for the discharge of material from
the interior of the container. As such, the Campbell patent would not be
configured so as to allow for a stacked arrangement of such containers
whereby the proppant from an upper container can be discharged into and
through the top hatch of a lower container so as to fill the interior volume
of the lower container.
Dkt. 111-7 at p. 12.
“[W]hen the scope of the invention is clearly stated in the specification, and is
described as the advantage and distinction of the invention, it is not necessary to disavow
explicitly a different scope.” On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d
8 / 37
1331, 1340 (Fed. Cir. 2006). Moreover, “the patentee’s choice of preferred embodiments
can shed light on the intended scope of the claims.” Astrazeneca AB v. Mutual
Pharmaceutical Co., Inc., 384 F.3d 1333, 1340 (Fed. Cir. 2004). The language and
diagrams contained in the specifications lead the Court to conclude that a person of
ordinary skill in the relevant art would understand the phrase “moving the first container
to a position adjacent the second container” in claim 13 to mean placing the two
containers in a stacked configuration. See Boss Control, Inc. v. Bombardier, Inc., 410
F.3d 1372, 1376–79 (Fed. Cir. 2005) (“Because the specification makes clear that the
invention involves a two-stage interrupt mode, the intrinsic evidence binds Boss to a
narrower definition of ‘interrupt’ than the extrinsic evidence might support.”); see also
On Demand, 442 F.3d at 1339–40 (holding that the district court erred in using the
dictionary definition of “customer” when the patent “specification repeatedly reinforce[d]
its usage of the term ‘customer’ as the retail consumer”—“[T]he focus of the Ross patent
is immediate single-copy printing and binding initiated by the customer and conducted at
the customer’s site. The district court’s definition of ‘customer’ cannot eliminate these
constraints in order to embrace the remote large-scale production of books for publishers
and retailers.”). This conclusion is reinforced by the patents’ prosecution history, in
which Sandbox distinguished prior art on the basis that the prior art did not involve
stacked containers. See Trs. of Columbia Univ., 811 F.3d at 1368 (“In other words, what
distinguished the invention from the prior art is that it could predict whether a registry
access was malicious from a model that was built using only normal data. . . . The district
9 / 37
court’s conclusion that the model of the #084 and #306 patents must be built with only
attack-free normal data is correct.”).
2. The term “bottom” in the ‘518, ‘626, and ‘929 patents and the term “top”
in the ‘626 and ‘929 patents: The Court concludes that a person of
ordinary skill in the art would understand the terms “bottom” and “top”
to mean “bottom wall” and “top wall.”
The Court will address the next two terms, “bottom” and “top,” together. Sandbox
argues that both terms should be given their “broad” plain and ordinary meanings, while
Grit argues that the two terms must be construed as referring to top and bottom walls,
“consistent with the inventor’s view of the invention as a modified shipping container”
(Dkt. 111 at pp. 15, 23; Dkt. 118 at pp. 17–18).
Again, Grit’s argument has force. The specification language of the patents
emphasizes that the principal goal of this invention is to facilitate the modular
construction of a temporary proppant storage facility with modified ocean freight
containers—the patents even say that “[e]ach of the containers is [an] ocean freight
container” (Dkt. 103-4 at p. 12). The specification language goes on to explain that the
use of modified ocean freight containers carries particular advantages in that the
containers are easily transportable, stackable, and interchangeable:
In the configuration shown in FIG. 1, volumes of proppants can be easily
stored at the fracturing site. It is only necessary to stack each of the
containers upon one another in the manner described in FIG. 1. Each of the
containers has an exterior configuration similar to that of an ocean freight
container. As such, these containers can be easily transported on the bed of
a truck, on a freight train or on a ship to the desired location.
...
10 / 37
The present invention provides a suitably modular arrangement whereby a
proppant storage facility can be easily constructed on-site. After the
fracturing operation is completed, the containers can be easily removed
from this stacked configuration and transported to another location.
Similarly, if desired, the containers can be suitably replaced by another
container so as to provide the desired proppant to the fracturing site.
Dkt. 103-4 at p. 13 (numbers corresponding to accompanying diagram
omitted).
As previously mentioned, Figure 1 of the patent depicts in great detail the
mechanics of the gravity-driven path along which the proppant flows from the higher
containers to the lower containers when it is unloaded from the temporary storage
facility. The containers shown in Figure 1, just like the ocean freight containers from
which they are derived, have top and bottom walls; hatches in these top and bottom walls
swing open to form a “unique and guided flowpath” that allows the proppant to flow
“efficiently” and “directly” from the higher containers to the lower ones and ultimately
from the lowest container onto a portable conveyor belt (Dkt. 103-4 at pp. 12–13). A
smaller version of Figure 1 is also included on the front page of the patent below the
abstract, which describes the containers as “having a first end wall, a second end wall, a
first side wall, a second side wall, a top wall and a bottom wall” (Dkt. 103-4 at p. 2).
The description of the modular units as modified ocean freight containers also
pervades the portions of the prosecution history that are in evidence. During the patent
prosecution, Sandbox stated to the patent examiner that, “[i]n order to accommodate such
a large amount of proppant weight, the configuration of a standard twenty foot ISO
container must be modified in an extreme manner and adapted to the particular purposes
associated with such proppant” (Dkt. 111-7 at p. 9). The described modification,
11 / 37
according to the prosecution history, “adds unique qualities to the standard twenty foot
ISO container” that allow the container to accommodate the proppant (Dkt. 111-7 at p.
10). Sandbox then distinguished prior art on the basis that “the prior art patents would not
address a technique for converting a twenty foot ISO container for the purpose of
containing a large amount of proppant material therein” (Dkt. 111-7 at pp. 15–16). In
another exchange, the patent examiner labeled a claim “vague on the basis [that] the term
‘ocean freight container’ was deemed unclear” (Dkt. 111-5 at p. 9). Sandbox responded
by providing the patent examiner with the URL to a webpage listing “various sizes [of]
ocean freight containers” (Dkt. 111-5 at p. 9). Based on that webpage, Sandbox
“respectfully submit[ted]” that the term “ocean freight container” is “known and
understood to those skilled in the art and is therefore clear” (Dkt. 111-5 at p. 9). It
appears that the URL is no longer operational; but the record contains a screen capture of
the referenced webpage, which shows 20- and 40-foot standard intermodal shipping
containers as well as a 40-foot “hi-cube” shipping container (Dkt. 111-6 at pp. 2–5).2 In
yet another filing, Sandbox again distinguished prior art on the basis that the prior art
“would only contain relatively light weight material” and that as a result “there would be
no need to include structures that would enhance the structural integrity of a 20 foot ISO
container” (Dkt. 111-9 at p. 18).
The screen capture also shows other types of shipping containers, which are labeled “reefer
container”; “bin”; “platform”; “flatrack”; and “open top container.” The intrinsic evidence
provides no indication that Sandbox intended for the term “ocean freight container” to
encompass these other types of containers. Unlike the standard intermodal shipping containers,
the other types of containers are not repeatedly discussed elsewhere in the patent specification
and the prosecution history.
2
12 / 37
“[W]hen the scope of the invention is clearly stated in the specification, and is
described as the advantage and distinction of the invention, it is not necessary to disavow
explicitly a different scope.” On Demand, 442 F.3d at 1340. Moreover, “the patentee’s
choice of preferred embodiments can shed light on the intended scope of the claims.”
Astrazeneca, 384 F.3d at 1340. The Court concludes from its review of the specification
and prosecution history that a person of ordinary skill in the art would understand that the
modular units used to construct the temporary proppant storage facility are modified
standard intermodal shipping containers, which have top walls and bottom walls. By
extension, the Court concludes that a person of ordinary skill in the art would understand
the terms “bottom” and “top” to mean “bottom wall” and “top wall.” See Boss Control,
410 F.3d at 1376–79; On Demand, 442 F.3d at 1339–40; Trs. of Columbia Univ., 811
F.3d at 1368.
3. The term “hatch” in the ‘518, ‘626, and ‘929 patents: The Court concludes
that a person of ordinary skill in the art would understand the term
“hatch” to mean “a cover for an opening that opens outward and that is
movable between a first position overlying the opening and a second
position forming one right angle with the opening.”
The parties next contest the meaning of the term “hatch.” Sandbox argues that the
term should be given its “plain and ordinary meaning,” while Grit argues that the term
should be construed as meaning “a hinged cover for an opening.” The specification and
prosecution history lead the Court to conclude that the proper construction of the term
“hatch” is somewhat more particular than either construction proposed by the parties.
The specification describes the hatches as crucial to the formation of the gravitydriven path along which the proppant flows from the higher containers to the lower
13 / 37
containers when it is unloaded from the temporary storage facility. Specifically, the top
hatch of one container combines with the bottom hatch of the container above to help
“form a unique and guided flowpath” for the proppant. As the specification makes clear,
the creation of the “flowpath” is possible because each hatch opens outward and is
capable of resting in a position that forms one right angle with the opening that the hatch
covers when closed. Hence, when both hatches are open, they can rest “generally
parallel” to each other, forming a path from the interior of the higher container to that of
the lower container:
In particular, in FIG. 1, it can be seen that the first container has a hatch
extending over the opening thereof. In particular, the hatch is hingedly
mounted to the top wall of the first container so as to be movable between a
closed position and an open position (illustrated in broken-line fashion). In
particular, the bottom hatch of the second container will extend
downwardly perpendicularly to the bottom wall. Similarly, the top hatch of
the first container will extend upwardly in generally transverse relationship
to the top wall. The hatches will be in generally parallel relationship in this
configuration. As such, the hatches will form a unique and guided flowpath
whereby the proppant in the interior volume of the second container can
flow directly into the opening and into the interior volume of the first
container. The length dimension of the hatches will be less than the
distance between the top wall of the first container and the bottom wall of
the second container.
Dkt. 103-4 at p. 13 (numbers corresponding to accompanying diagram
omitted).
The Court further notes that Sandbox also used the hatches and the flowpath they
create to distinguish and claim an advantage over prior art:
The prior art combination of the Campbell patent, the Shuert patent, the
Elstone patent, Areddy patent and the Meritt patent would not suggest to
one having ordinary skill in the art the arrangement of the top hatch and the
bottom hatch in which the top hatch and the bottom hatch are in parallel
spaced relationship to each other when they are in the open position. As
such, the prior art combination would fail to provide the function of a
14 / 37
guided flow path for the proppant between the upper container and the
lower container. The prior art combination would fail to show or suggest
the advantage of the present invention of avoiding any dispersal of the
proppant through such a discharging relationship.
Dkt. 111-9 at p. 22.
“[W]hen the scope of the invention is clearly stated in the specification, and is
described as the advantage and distinction of the invention, it is not necessary to disavow
explicitly a different scope.” On Demand, 442 F.3d at 1340. Moreover, “the patentee’s
choice of preferred embodiments can shed light on the intended scope of the claims.”
Astrazeneca, 384 F.3d at 1340. The Court concludes from its review of the specification
and prosecution history that a person of ordinary skill in the art would understand the
term “hatch” to mean “a cover for an opening that opens outward and that is movable
between a first position overlying the opening and a second position forming one right
angle with the opening.” See Boss Control, 410 F.3d at 1376–79; On Demand, 442 F.3d
at 1339–40; Trs. of Columbia Univ., 811 F.3d at 1368.
4. The term “coupled to” in the ‘626 and ‘929 patents: The Court concludes
that a person of ordinary skill in the art would understand the term
“coupled to” to mean “directly attached to.”
The parties next contest the meaning of the term “coupled to” in the phrases
“sidewalls coupled to and extending between the top and bottom” and “sidewalls coupled
to the top and bottom.” Sandbox argues that the term “coupled to” should be given its
“plain and ordinary meaning,” while Grit argues that the term should be construed as
meaning “directly attached to.”
As discussed above, the Court has concluded from its examination of the patent
specification and the prosecution history that the principal goal of this invention is to
15 / 37
facilitate the modular construction of a temporary proppant storage facility with modified
ocean freight containers because such containers are easily transportable, stackable, and
interchangeable. The prosecution history shows that Sandbox argued to the patent
examiner that the term “ocean freight container” is well-known to persons of ordinary
skill in the art as referring to an intermodal shipping container. With that in mind, the
Court has already construed the terms “top” and “bottom” to mean “top wall” and
“bottom wall.” The sidewalls of an ocean freight container are directly attached to the top
wall and the bottom wall, as would be the sidewalls of a container emulating an ocean
freight container. The Court concludes that a direct connection between the sidewalls and
the top and bottom walls is necessary to achieve the principal goal of the invention. As a
result, the Court concludes that a person of ordinary skill in the art would understand the
term “coupled to” to mean “directly attached to.” See OPTi, Inc. v. Advanced Micro
Devices, Inc., No. 2:07-CV-278, 2009 WL 2424029, at *8 (E.D. Tex. Aug. 5, 2009) (“It
is precisely the direct connection of the signal lines to the host platform that drives the
number of pins whose reduction is a principal goal of the patent. Accordingly, the court
construes the term ‘coupling’ to mean ‘directly connecting.’”) (emphasis removed).
5. The term “arranging spacers” in the ‘626 and ‘929 patents: The Court
concludes that no construction of this term is necessary.
The parties next contest the meaning of the term “arranging spacers” in claim 14
of the ‘626 and ‘929 patents. Sandbox argues that the term “arranging spacers” should be
given its “plain and ordinary meaning,” while Grit argues that the term should be
construed as meaning “placing spacers.” The language of claim 14 reads:
16 / 37
The method of claim 13, comprising arranging spacers between the first
and second containers to provide clearance for the first open position.
Dkt. 103-4 at p. 16.
Grit argues that construing “arranging spacers” as “placing spacers” clarifies that
claim 14 “requires the additional step of placing spacers between the containers” (Dkt.
111 at p. 38).
The Court sees no need to construe this term. The specification painstakingly
spells out the role of the spacers in the invention:
A first spacer is positioned on the top wall of the first container and extends
upwardly therefrom. The first spacer abuts the bottom wall of the second
container. A second spacer is positioned on the top wall of the first
container and extends upwardly therefrom. The second spacer abuts the
bottom wall of the second container. The first spacer is in spaced
relationship to the second spacer. The spacers serve to assure a proper
distance between the containers whereby the hatches can be properly
opened so as to allow for the flow of proppant therebetween.
...
Suitable spacers serve to support the bottom wall of the third container a
proper distance above the top wall of the second container.
Dkt. 103-4 at p. 13 (numbers corresponding to accompanying diagram
omitted).
It is obvious that the spacers go between the stacked containers so that there is
sufficient clearance between the containers for the hatches to open. The Court is not
convinced that the term “arranging spacers” in claim 14 calls for construction and, for
that matter, sees no material difference between the phrases “arranging spacers” and
“placing spacers.” The Court declines to construe this term.
6. The term “support braces” in the ‘518, ‘626, and ‘929 patents and the
term “structural supports” in the ‘626 and ‘929 patents: The Court
concludes that a person of ordinary skill in the art would understand the
17 / 37
terms “support braces” and “structural supports” to refer to structural
fortifications made to an existing ocean freight container that do not
materially alter the shape of the container, but the Court declines to
construe the terms further.
The Court will address the next two terms, “support braces” and “structural
supports,” together. Sandbox argues that both terms should be given their plain and
ordinary meanings, while Grit argues that the two terms must be construed as referring to
“distinct structures [that] are affixed to opposing sidewalls” (Dkt. 111 at p. 27).
These phrases make several appearances in the patents. For the “support braces”
phrase, those appearances are typified by Claim 1 of the ‘929 patent, which in relevant
part reads:
A container structurally strengthened to transport and store large volumes
of proppant effectively therein to supply to a fracturing site, the container
comprising:
...
a plurality of sidewall supports positioned to provide structural support to
the sidewalls when large volumes of proppant are positioned within the
interior volume of the container[,] the plurality of sidewall supports
including a plurality of support braces extending in a substantially
horizontal position and positioned in direct contact with interior surfaces of
the sidewalls to enhance support of the sidewalls when the container is
filled with the proppant[. T]he plurality of support braces includes a first set
of support braces attached to a first pair of sidewalls and a second set of
support braces attached to a second pair of sidewalls, the first set of support
braces extending in a plane direction transverse to a plane direction of the
second set of support braces[.]
Dkt. 103-4 at p. 15.
For the “structural supports” phrase, those appearances are typified by Claim 7 of
the ‘929 patent, which in relevant part reads:
18 / 37
A system structurally strengthened to transport and store large volumes of
proppant effectively therein, the system comprising:
a first container comprising:
...
a first plurality of structural supports positioned to provide structural
support to the first plurality of sidewalls when large volumes of proppant
are positioned within the first interior volume[;]
...
a second container positioned below the first container,
the second container comprising:
...
a second plurality of structural supports positioned to provide structural
support to the second plurality of sidewalls when large volumes of proppant
are positioned within the second interior volume[.]
Dkt. 103-4 at p. 15.
The Court concludes from its review of the specification and prosecution history
that these claims describe structural fortifications made to existing ocean freight
containers that do not materially alter the shape of the containers. The Court has already
discussed how the specification and prosecution history describe the use of modified
ocean freight containers as modular units with which a temporary proppant storage
facility can be constructed. The claims quoted above—which, again, typify the use of the
terms “support braces” and “structural supports” in the patents—describe ways to ensure
that those modified containers are sufficiently “structurally strengthened to transport and
store [the] large volumes of proppant” that are needed at a fracturing site (Dkt. 103-4 at p.
15). As a passage from the prosecution history puts it:
19 / 37
In order to accommodate such a large amount of proppant weight, the
configuration of a standard twenty foot ISO container must be modified in
an extreme manner and adapted to the particular purposes associated with
such proppant. As such, the present invention utilizes the first support
brace, the second support brace, the first support member and the second
support member in a unique manner so as to assure that the container is
able to withstand such great weight.
Dkt. 111-7 at p. 9.
That said, the descriptions of fortifying modifications provided in the patent
specification strike the Court as exemplary rather than exclusive in nature because the
patent specification discusses alternative methods of bracing the sidewalls of the ocean
freight container. The specification first proposes welding a brace to the two end walls
and a brace to the two sidewalls to provide “rigid structural support” to all four walls
(Dkt. 103-4 at p. 14). The specification then proposes adding “another support brace
extending between the side walls” before further noting that, “[w]ithin the concept of the
present invention, various other support braces, in the nature of angle irons, can be
utilized so as to suitably support the structure of the container” (Dkt. 103-4 at p. 14). In
other words, the specification and prosecution history describe structurally strengthened
and stacked ocean freight containers with hatches on the tops and bottoms capable of
opening at right angles as advantages and distinctions of the invention, but they do not
discernibly describe one particular method of structurally strengthening those containers
as an advantage and distinction of the invention. The Court thus concludes that a person
of ordinary skill in the art would understand the terms “support braces” and “structural
supports” to refer to structural fortifications made to an existing ocean freight container
20 / 37
that do not materially alter the shape of the container, but the Court declines to construe
the terms further.
7. The term “support members” in the ‘518, ‘626, and ‘929 patents: The
Court concludes that a person of ordinary skill in the art would
understand the term “support members” to refer to structural
fortifications that reinforce inclined surfaces that are added to the interior
of an existing ocean freight container, but the Court declines to construe
the term further.
The parties next contest the meaning of the term “support members.” According to
the patent claims and specifications, the “support members” fortify the ramps that help
direct the proppant toward the hatches of the containers so that the ramps can “withstand
the weight and forces imparted thereto by the proppant” (Dkt. 103-4 at p. 14). The claims
of the ‘518 patent describe “support members that extend between the bottom [of the
container] and inclined surfaces [that form the ramps]” (Dkt. 111-2 at p. 13). The claims
of the ‘626 and ‘929 patents describe “a plurality of support members attached to a
bottom surface of the ramps and extending downwardly toward the bottom [of the
container]” (Dkt. 103-4 at p. 15). Sandbox argues that the term “support members”
should be given its “plain and ordinary meaning,” while Grit argues that the term should
be construed as requiring that the support members be “directly attached to” the bottom
surfaces of the ramps.
The diagrams of Sandbox’s patents exclusively show support members that are
directly attached to the bottom surfaces of the ramps, but no party contends that the
patent claims and specification impose a “direct attachment” requirement on the support
members. Grit draws its argument for such a requirement from statements made by
21 / 37
Sandbox during an inter partes review (“IPR”) proceeding in which Sandbox purportedly
disavowed support members that are not directly attached to the bottoms of the ramps.
Specifically, Sandbox distinguished a piece of prior art, the “Claussen” patent, by noting
that:
[t]here is no disclosure in Claussen of a container that includes support
members that attach to a bottom surface of the inclined surfaces of the
containers (ramps) and extend down to the bottom of the container.
Dkt. 11-19 at p. 10.
Sandbox further noted that:
Claussen does not disclose any embodiment in which what [Grit] alleges
are “support members” are attached directly to an inclined surface.
Dkt. 111-19 at p. 11 (emphasis added).
Sandbox argues that these statements, in context, were meant to distinguish the
Claussen patent on a different basis, namely “that Claussen does not disclose support
members that are attached to the ramps at all, either directly or indirectly” (Dkt. 118 at p.
38).
In the IPR proceeding, the parties argued sharply over the teachings of Claussen.
The Claussen patent describes an invention in which one or more containers, which may
be tapered at the bottom, can be removably mounted on a frame (Dkt. 111-20 at pp. 3–
23). According to the Claussen specification, “the frame may include [a] lower container
support apparatus to support the one or more containers from the lower portions of the
one or more containers and [an] upper container support apparatus to support the one or
more containers from the upper portions of the one or more containers” (Dkt. 111-20 at p.
17) (numbers corresponding to accompanying diagram omitted). In the IPR proceeding,
22 / 37
Grit argued that the Claussen patent’s diagrams show two angled components of the
frame that teach “support members” as described in Sandbox’s patents; notably, these
angled components, which appear to connect the “lower container support apparatus” to
the rest of the frame, are not expressly discussed in the Claussen patent’s specification or
claim language. Sandbox’s IPR briefing vigorously contested Grit’s characterization,
arguing that, because the Claussen containers are removable from the frame, the Claussen
angled components are “part of the frame and not the container [and] are therefore not
support members as claimed [by Grit]” (Dkt. 111-21 at pp. 7–8) (emphasis added). Grit
countered by pointing out that the Claussen patent contemplates, though it does not
describe or depict, an embodiment in which “the container and the frame [are] a single,
continuous piece” instead of being separable (Dkt. 111-20 at p. 15). Sandbox replied that,
even in such a “single, continuous piece” embodiment, the angled components in
Claussen, if they were part of the embodiment at all, would by all indications be designed
“merely [to] hold [the] lower container support apparatus . . . in place” and not to
strengthen the container itself (Dkt. 111-21 at p. 11).
Despite the above-quoted references to attachment in Sandbox’s IPR briefing, the
Court does not see Sandbox’s IPR statements as clearly disavowing support members that
are not directly attached to the ramps. The main thrust of Sandbox’s argument in the IPR
proceeding was evidently that, while Sandbox’s support members are specifically
intended to buttress internal ramps that constitute an important element of its modified
ocean freight container, Claussen’s angled components (which are never explicitly
discussed in the Claussen patent) help strengthen a frame that is separate from (and
23 / 37
indeed typically separable from) a storage container that may or may not be tapered but
either way does not have (or need) internal ramps. Put another way, Sandbox was arguing
not that its support members strengthen ramps better than Claussen’s angled components
but that Claussen’s angled components do not strengthen ramps at all.3 Claussen’s
specification does not even describe “ramps” in the sense that Sandbox’s does; the
Claussen patent describes containers that, again, may or may not be tapered at the bottom
but regardless do not feature ramps like the ones shown in the Sandbox patents. At
bottom, the excerpts from the IPR proceedings to which Grit cites are not clear enough,
in the full context of the specification and prosecution history, to constitute a disclaimer
of claim scope. See Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir.
2016) (“Where the alleged disavowal is ambiguous, or even amenable to multiple
reasonable interpretations, we have declined to find prosecution disclaimer.”) (quotation
marks omitted).
“The party seeking to invoke prosecution history disclaimer bears the burden of
proving the existence of a clear and unmistakable disclaimer that would have been
evident to one skilled in the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063–64
(Fed. Cir. 2016) (quotation marks omitted). Grit has not met that burden. The
specification and prosecution history of Sandbox’s patents do not contain a clear
The diagrams in the Claussen patent only show two angled components connected to the frame,
regardless of whether the frame is holding one container (which if tapered would have four
inclined surfaces) or two containers (which if tapered would between them have eight inclined
surfaces) (Dkt. 111-20 at pp. 3–12). The diagrams help explain Sandbox’s argument in the IPR
proceeding that the angled components exist to provide support for the frame rather than the
containers, whether or not those containers are tapered; and in doing so the diagrams bolster
Sandbox’s argument to this Court that its IPR statements do not constitute a clear disclaimer of
support members that are not directly attached to the ramps in its containers.
3
24 / 37
disavowal of support members that are not directly attached to the ramps in its containers.
The Court thus concludes that a person of ordinary skill in the art would understand the
term “support members” to refer to structural fortifications that reinforce inclined
surfaces that are added to the interior of an existing ocean freight container, but the Court
declines to construe the term further.
8. Claim 18 of the ‘626 patent and claim 18 of the ‘929 patent are not
indefinite.
Grit argues that two claims, one in each of the ‘626 and ‘929 patents, are
indefinite. Grit’s rationale is the same as to both claims: the phrase “a plurality of support
members attached to a bottom surface of the ramps and extending downwardly toward
the bottom” is recited twice.
A patent specification must conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant regards as the
invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). “[A]
patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Id. Patents are
presumed to be valid, and the burden of establishing invalidity of a patent (or its
individual claims) rests on the challenger. 35 U.S.C. § 282; Nautilus, 134 S.Ct. at 2130 n.
10.
The two allegedly indefinite claims are identical. In relevant part, they read:
A container structurally strengthened to transport and store large volumes
of proppant effectively therein, the container comprising:
25 / 37
...
ramps downwardly inclined and extending inwardly from the sidewalls to
direct the proppant toward the outlet when the proppant is stored therein, a
plurality of support members attached to a bottom surface of the ramps and
extending downwardly toward the bottom, and at least one support brace of
the plurality of support braces being positioned vertically higher than the
ramps; [and]
a plurality of support members attached to a bottom surface of the ramps
and extending downwardly toward the bottom[.]
Dkt. 103-4 at p. 16 (emphasis added).
Grit argues that “[t]hese claims are indefinite because there is no objective basis
for determining if they require at least two or four support members” (Dkt. 111 at p. 37).
In response, Sandbox argues, among other things, that, “[i]f the phrase were only in the
claim once, it would require more than one support member (i.e. a plurality) and, when
repeated, it still requires a ‘plurality’ of support members” (Dkt. 103 at p. 42).
The Court agrees with Sandbox. Generally, the term “plurality” does not mean
“two;” it means “more than one.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367,
1373–74 (Fed. Cir. 2005) (“This reference defines the invention to encompass a plurality
of blades, thus eschewing any numerical limit on the number of blades.”) (quotation
marks omitted); see also Pictometry Int’l Corp. v. Geospan Corp., No. 13-2359, 2014
WL 4232246, at *8 (D. Minn. Aug. 26, 2014) (“In this case, the ‘133 Patent describes a
‘plurality’ of modes which include the four identified above. Nothing in the claim
language or specification prevents Claim 17 from covering a system with additional
measurement modes, including a mode allowing for simple distance measurements or
measurements conducted above ground.”). The Court sees nothing in the specification or
26 / 37
prosecution history indicating that Sandbox disavowed that meaning or limited the
definition of “plurality” to “two.” Even with the repeated phrase included, Claim 18
simply claims “more than one support member attached to a bottom surface of the ramps
and extending downwardly toward the bottom.” The challenged claims do not fail to
inform, with reasonable certainty, those skilled in the art about the scope of the invention.
They are not indefinite.
IV.
THE ‘785 PATENT
The parties have asked the Court to conduct three constructions related to the ‘785
patent.
1. Sandbox’s amendments to the claims in the ‘785 patent disclaimed
conveying proppant during the discharge of proppant, but Sandbox did
not clearly and unmistakably surrender conveying proppant before all of
the proppant in the containers has been discharged.
The first requested claim construction stems from claims 1, 9, and 16 of the ‘785
patent. In relevant part, the ‘785 patent describes a proppant delivery system that consists
of containers positioned above a conveyor belt. Claim 1 claims “[a] method of unloading
fracking proppant at a well site[,]” the last two steps of which are:
discharging by gravity feed the fracking proppant contained within each of
the plurality of proppant containers when positioned on the support
structure and within the plurality of cradles from the outlet positioned at a
bottom of each of the plurality of proppant containers so that the fracking
proppant passes onto the common conveyor; and
conveying the fracking proppant away from the plurality of proppant
containers, after the discharging of the fracking proppant onto the common
conveyor, toward a desired location at the well site where hydraulic
fracking is to be performed so that the fracking proppant is introduced to
fracking fluid for passage into a wellbore at the well site.
Dkt. 103-3 at pp. 17–18 (letter “d” between steps omitted).
27 / 37
Claim 9 claims “[a] method for storing and unloading of fracking proppant at a
well site[,]” the last two steps of which are:
selectively opening one or more of the outlets of the plurality of proppant
containers to discharge by gravity feed the fracking proppant from the
outlet positioned at the bottom of each the [sic] plurality of containers so
that the fracking proppant passes onto the conveyor; [and]
conveying the fracking proppant away from the plurality of proppant
containers toward a desired location at the well site where hydraulic
fracking is to be performed so that the fracking proppant is introduced to
fracking fluid for passage into a wellbore at the well site.
Dkt. 103-3 at pp. 18–19 (letter “e” between steps omitted).
Claim 16 claims “[a] method for controlling the unloading of fracking proppant at
a well site[,]” the last two steps of which are:
selectively moving one or more flow gates from a closed to an open
position to allow fracking proppant to pass from the plurality of hoppers to
the conveyor at a desired flow rate; [and]
conveying the fracking proppant away from the plurality of proppant
containers toward a desired location at the well site where hydraulic
fracking is to be performed so that the fracking proppant is introduced to
fracking fluid for passage into a wellbore at the well site.
Dkt. 103-3 at pp. 19–20 (letter “d” between steps omitted).
The prosecution history of the ‘785 patent reveals that these claims underwent
significant amendments before they reached their final, above-quoted form. Initially, all
of the claims contained language indicating that the final step—“conveying the fracking
proppant away from the plurality of containers”—was to take place “during discharge of
the fracking proppant” (Dkt. 111-28 at pp. 4, 6, 9). The patent examiner rejected the
claims “as failing to comply with the written description requirement” of 35 U.S.C. §
112:
28 / 37
The claim(s) contains subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor or a joint inventor, or for pre-AIA the
inventor(s), at the time the application was filed, had possession of the
claimed invention. Support for the conveying step occurring during
discharge of the fracking proppant could not be found in the original
disclosure.
Dkt. 111-31 at p. 4 (emphasis added).
In response to the rejection, Sandbox “respectfully disagree[d]” with the patent
examiner’s assessment but amended the claims to remove the “during discharge”
language from the claims’ “conveying” paragraphs (Dkt. 111-28 at pp. 4, 6, 9, 12).
Sandbox also added the phrase “after the discharging of the [fracking proppant]” to
Claim 1’s “conveying” paragraph (Dkt. 111-28 at p. 4). The amendments to the claims’
“conveying” paragraphs read as follows, with excised language struck through and added
language underlined:
Claim 1:
conveying the fracking proppant away from the plurality of containers,
during discharge of the after the discharging of the fracking proppant and
after passing onto the common conveyor, toward a desired location at the
well site where hydraulic fracking is to be performed so that the fracking
proppant is introduced to fracking fluid for passage into a wellbore at the
well site.
Dkt. 111-28 at p. 4.
Claim 9:
conveying the fracking proppant away from the plurality of containers
during discharge of the fracking proppant and after passing onto the
conveyor toward4 a desired location at the well site where hydraulic
fracking is to be performed so that the fracking proppant is introduced to
fracking fluid for passage into a wellbore at the well site.
The inclusion of the word “toward” in this excision was inadvertent, and Sandbox fixed it in a
subsequent amendment (Dkt. 111-29 at p. 7).
4
29 / 37
Dkt. 111-28 at p. 6.
Claim 16:
conveying the fracking proppant away from the plurality of containers
during discharge of the fracking proppant and after passing onto the
conveyor toward a desired location at the well site where hydraulic fracking
is to be performed so that the fracking proppant is introduced to fracking
fluid for passage into a wellbore at the well site.
Dkt. 111-28 at p. 9.
After Sandbox removed the “during discharge” language from the claims’
“conveying” paragraphs, the patent examiner allowed the claims. Grit argues that
Sandbox’s removal of the “during discharge” language from the claims’ “conveying”
paragraphs constitutes a disclaimer of conveying during discharge. Grit then extends that
argument and further contends that “[t]he step of discharging all proppant must be
completed before the step of conveying begins” (Dkt. 111 at p. 44) (emphasis added).
The Court agrees with Grit’s first contention but not its second. An applicant can
certainly disavow claim scope by amending claims during prosecution, but the Federal
Circuit has repeatedly emphasized that the disclaimer must be “clearly and
unambiguously express[ed].” Arendi S.A.R.L. v. Google LLC, 882 F.3d 1132, 1135–36
(Fed. Cir. 2018); see also United Video Props., Inc. v. Amazon.com, Inc., 561 F. App’x
914, 917 (Fed. Cir. 2014); MarcTec, LLC v. Johnson & Johnson, 394 F. App’x 685, 687
(Fed. Cir. 2010). In making its determination of how far Sandbox’s disclaimer goes, the
Court also draws guidance from the discussions of the relationship between prosecution
history estoppel and the doctrine of equivalents that can be found in both Federal Circuit
and Supreme Court precedent:
30 / 37
Whether prosecution history estoppel applies to a particular argument, and
thus whether the doctrine of equivalents is available for a particular claim
limitation, is a question of law. Where an amendment narrows the scope of
the claims, and that amendment is adopted for a substantial reason related
to patentability, the amendment gives rise to a presumption of surrender for
all equivalents that reside in the territory between the original claim and the
amended claim.
...
The applicability of prosecution history estoppel does not completely bar
the benefit of the doctrine of equivalents from all litigation related to the
amended claim. The scope of the estoppel must fit the nature of the
narrowing amendment. A district court must look to the specifics of the
amendment and the rejection that provoked the amendment to determine
whether estoppel precludes the particular doctrine of equivalents argument
being made.
Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1290–91 (Fed. Cir. 2010)
(citations and quotation marks omitted).
“There is no reason why a narrowing amendment should be deemed to relinquish
equivalents . . . beyond a fair interpretation of what was surrendered.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 737–38 (2002).
The record contains scant information about the circumstances surrounding
Sandbox’s removal of the “during discharge” language from the claims’ “conveying”
paragraphs—the relevant communications between the patent examiner and Sandbox, in
their entirety, consist of the examiner’s statement that “[s]upport for the conveying step
occurring during discharge of the fracking proppant could not be found in the original
disclosure” and Sandbox’s reply expressing “respectful[] disagree[ment]” with that
statement but nevertheless amending the claims to remove the “during discharge”
language. The Court can glean from the record that Sandbox’s amendments surrendered
conveying during discharge in order to secure Sandbox’s patent. See United Video
31 / 37
Properties, 561 F. App’x at 917. However, it does not necessarily follow that Sandbox
surrendered conveying before all proppant in the containers is discharged. Neither the
patent examiner nor Sandbox said anything to that effect. Moreover, the communications
between Sandbox and the patent examiner contain no discussion of the ‘785 patent’s
descriptions of “metering” and “control[ing]” the “discharge of proppant . . . onto the
conveyor” so that a “portion of the proppant” can be discharged onto the conveyor in a
“selected and controlled” manner (Dkt. 103-3 at p. 16). These descriptions would be
superfluous if Sandbox had disclaimed conveying before all proppant in the containers
has been discharged; there is no need to selectively discharge a portion of proppant onto
the conveyor belt if the belt is not going to run until all of the proppant is discharged
anyway.
Sandbox, when it amended its claims, disclaimed conveying during discharge, i.e.
running the conveyor belt while the container gates are open and proppant is being
discharged from the containers. But the record does not include a clear and unambiguous
disclaimer of running the conveyor belt before all of the proppant in the containers is
discharged. Neither Sandbox nor the patent examiner said in the communications
between them that a particular amount of the proppant in the containers—let alone all of
it—must be discharged before conveying begins. Cf. ACCO Brands, Inc. v. Micro Sec.
Devices, Inc., 346 F.3d 1075, 1078–79 (Fed. Cir. 2003) (“We conclude that the pin clause
of claim 10 must be construed in the same way as the pin clause of claim 1, for the
examiner’s Reasons for Allowance make clear that the examiner and the applicant
understood that the invention requires that the pin extends (actively) into the slot after
32 / 37
rotation.”). And, without support in the record, “[s]uch a draconian preclusion would be
beyond a fair interpretation of what was surrendered.” Intervet, 617 F.3d at 1292 (“Merial
is not, however, estopped from arguing that a pathogenic porcine viral sequence with
over 99% nucleotide homology with one of the five representative strains is equivalent to
that strain. . . . The rationale for the amendment was to narrow the claimed universe of
ORFs down to those of PCV-2, and bore only a tangential relation to the question of
which DNA sequences are and are not properly characterized as PCV-2.”).
2. The term “structural support members” in the ‘785 patent: The Court
concludes that a person of ordinary skill in the art would understand the
term “structural support members” to refer to structural fortifications to
the end walls and sidewalls of an existing ocean freight container that are
placed between the container’s end frame members, but the Court
declines to construe the term further.
The next requested claim construction asks the Court to examine the term
“structural support members.” Sandbox argues that the term “structural support
members” should be given its “plain and ordinary meaning,” while Grit argues that the
term should be construed as requiring that the structural support members be “separate
and distinct from the walls and container edges” and “positioned to span the end walls
and the sidewalls between outside edge frame members” (Dkt. 111 at pp. 38–39).
The Court’s analysis here is similar to the one the Court employed for the terms
“support braces” and “structural supports” in the ‘518, ‘626, and ‘929 patents. “Structural
support members” are described in Claim 1 (and other claims) of the ‘785 patent as:
a plurality of structural support members positioned to span the end walls
and the sidewalls between end frame members to enhance support of the
end walls and the side walls when the proppant container is full of fracking
proppant.
33 / 37
Dkt. 103-3 at p. 18.
Like the container described in the ‘518, ‘626, and ‘929 patents, the “proppant
container” described in this portion of the ‘785 patent is a modified ocean freight
container—specifically, a “ten-foot ISO container” (Dkt. 103-3 at pp. 14, 15, 17). The
“structural support members” constitute one of the modifications; as depicted in the
diagrams and described in the specification of the ‘785 patent, the “structural support
members” encircle the sidewalls and end walls of the ocean freight container to form a
“cage-like configuration around the walls” (Dkt. 103-3 at pp. 6, 15). While applying for
the patent, Sandbox claimed that the “cage-like configuration” of structural support
members:
is advantageous because it allows the containers to be filled with proppant
without compromising the structural integrity of the container. For
example, in some embodiments, each container may carry up to about
45,000 lbs of fracking proppant or more. Such large amounts of proppant
within the containers exerts a great outward force on the end walls and side
walls of the containers, which outward force can cause the containers to
deform if not structurally reinforced. Such deformation, however, is
prevented by the structural support members that surround the containers,
and that span the end walls and the side walls of the containers between
edges of the containers.
Dkt. 111-27 at p. 17.
In light of the intrinsic evidence, the Court concludes that a person of ordinary
skill in the relevant art would understand the term “structural support members” to refer
to structural fortifications to the end walls and sidewalls of an existing ocean freight
container that are placed between the container’s end frame members. The Court declines
to construe the term further.
34 / 37
3. The term “support structure” in the ‘785 patent: The Court concludes
that a person of ordinary skill in the art would understand the term
“support structure” to refer to a frame upon which separate containers
can be removably positioned.
The next requested claim construction asks the Court to examine the term “support
structure.” Sandbox argues that the term “support structure” should be defined as “a
frame upon which separate containers can be removably positioned” (Dkt. 103 at p. 31).
Grit concedes that Sandbox’s proposed construction is part of the proper definition but
would further define “support structure” as a structure that is equipped not only to
support the proppant storage containers but also to open their gates using an actuator that
is affixed to the support structure (Dkt. 111 at pp. 47–48). Sandbox contends that Grit’s
proposed construction of “support structure” is forestalled by the doctrine of claim
differentiation.
On the intrinsic evidence in this record, Sandbox is correct. “Th[e] doctrine [of
claim differentiation], which is ultimately based on the common sense notion that
different words or phrases used in separate claims are presumed to indicate that the
claims have different meanings and scope, normally means that limitations stated in
dependent claims are not to be read into the independent claim from which they depend.”
Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)
(citations omitted); see also Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent
claim that adds a particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim.”). In the ‘785 patent, an independent
claim, Claim 1, describes the “support structure” as:
35 / 37
including a plurality of cradles that correspond to the plurality of proppant
containers transferred thereto, the common conveyor being positioned to
underlie and to be spaced-apart from each of the plurality of cradles[.]
Dkt. 103-3 at p. 18.
Claim 2, which is dependent on Claim 1, then describes the “support structure [as]
further compris[ing] . . . a receptacle positioned to engage a gate positioned over the
outlet of the proppant container, the gate being operatively coupled to an actuator to drive
movement of the gate between an open position and a closed position” (Dkt. 103-3 at p.
18).
“The juxtaposition of independent claims lacking any reference to [an actuator]
with dependent claims that add [an actuator] limitation provides strong support for
[Sandbox’s] argument that the independent claims were not intended to require the
presence of [an actuator].” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.
Cir. 2004). Grit has not rebutted the “presumption that the [actuator] limitation in
question is not found in the independent claim.” Id. Although Grit points out that the
actuator limitation is included in a preferred embodiment of the invention, this alone does
not overcome the presumption erected by the claim differentiation doctrine. Karlin, 177
F.3d at 971–72; see also Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (“To interpret the term ‘video delay circuit’ to mean a video delay circuit
that compensates for the delay introduced by the IF vision modulator, as Harris suggests,
would render claim 2 completely superfluous and redundant of claim 1. Harris has not
shown any reason sufficient to rebut the presumption that claim 1 should not be so
limited in order to preserve the distinction between claims 1 and 2. Consequently, we
36 / 37
decline Harris’s invitation to limit the term ‘video delay circuit’ to the specific function
disclosed in the preferred embodiment[.]”). The Court concludes that a person of ordinary
skill in the art would understand the term “support structure” to refer to a frame upon
which separate containers can be removably positioned.
V.
CONCLUSION
The foregoing opinion represents the Court’s construction of certain claims and
terms under Markman and Phillips.
SIGNED at Galveston, Texas, this 9th day of July, 2018.
___________________________________
George C. Hanks Jr.
United States District Judge
37 / 37
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?