Grit Energy Solutions, LLC v. Oren Technologies, LLC
957 F.3d 1309
Fed. Cir.2020Background
- The ’341 patent claims a proppant discharge system whose independent claim 1 requires (1) a container gate with a pin fixed to the gate and (2) a support structure actuator having a receptacle that engages the pin when the container is placed on the support (the "’341 configuration").
- Prior art: Eng Soon discloses sliding base plates with a projection/catch arrangement that the parties agree shows a pin/receptacle in the opposite location to the ’341 configuration. Constantin (French patent application) discloses two shutter blades with a stud (pin) and corresponding orifice and includes drawing Figure 3 showing the stud/orifice in the opposite configuration; Constantin also states the example is "non-limiting."
- Grit Energy petitioned for inter partes review of claims 1–7; the PTAB found Grit Energy failed to show obviousness because neither Eng Soon nor Constantin disclosed the ’341 configuration and rejected the proposed combination theories.
- The PTAB interpreted Constantin’s claim 5 as limited by the parenthetical reference numerals to Figure 3 (i.e., stud on blade 8 only), and credited Patent Owner evidence that swapping locations would be costlier and not taught.
- On appeal the Federal Circuit held Grit Energy has Article III standing (original infringement suit was dismissed without prejudice) and concluded the Board’s finding that Constantin does not disclose the ’341 configuration is unsupported by substantial evidence.
- The Court vacated and remanded the PTAB’s obviousness decision for further proceedings (rejecting the Board’s alternative reasons as inadequate or insufficiently explained).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Article III standing to appeal PTAB final decision | Grit Energy argued it has standing because Oren previously sued it for infringement and the dismissal was without prejudice (so a live controversy remains). | Oren argued Grit Energy lacks standing because it transferred accused products and has no current or planned infringing activity; prior suit dismissal eliminates a present controversy. | Held: Grit Energy has standing—past suit (dismissed without prejudice) and unresolved exposure suffice to establish a sufficient controversy. |
| Whether Constantin discloses the ’341 configuration (claim 5 interpretation) | Grit Energy: claim 5 states stud is "provided on one of the shutter blades" and orifice on "the blade of the other shutter," so the claim plain language discloses either orientation; the parenthetical numerals do not limit disclosure. | Oren/PTAB: claim 5 is linked to Figure 3 by the parenthetical numerals; the specification and drawing show only the opposite configuration and a skilled artisan would read it as limited. | Held: The Board’s reading is not supported by substantial evidence; claim 5’s language plainly discloses the stud/orifice may be on either blade and the reference numerals to the non-limiting example do not negate that disclosure. |
| Whether PTAB’s obviousness finding (Eng Soon + Constantin) is supported | Grit Energy: combination would have been obvious—Constantin discloses the configuration and swapping Eng Soon’s pin/receptacle is a predictable reorganization of known elements (KSR). | Oren/PTAB: Constantin does not disclose the ’341 configuration; swapping Eng Soon’s components would increase cost and lacks adequate motivation explanation. | Held: Because the Board’s foundational finding about Constantin is unsupported, its obviousness rejection cannot stand; the Board’s alternative factual reasoning (cost and alleged lack of motivation) was not an adequate, independent basis to affirm. Case remanded for further factfinding and analysis. |
| Remedy | N/A | N/A | Held: Vacate PTAB Final Written Decision and remand for reconsideration consistent with the opinion. |
Key Cases Cited
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) (Article III standing—injury in fact requirements)
- Consumer Watchdog v. Wisconsin Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014) (standing in appeals from administrative patent proceedings)
- JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217 (Fed. Cir. 2018) (relaxation of immediacy/redressability in IPR appellant standing)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness: predictable variation and combination of familiar elements)
- Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (substantial-evidence standard and requirement for reasoned agency explanation)
- Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270 (Fed. Cir. 2017) (limits on importing unstated limitations into prior art references)