Proppant Express Investments LLC (PropX) announced that the United States Patent and Trademark Office, through the Patent Trial and Appeal Board (PTAB), invalidated patent claims of a SandBox Logistics LLC patent.
Specifically, the PTAB found that all 18 claims of Sandbox’s U.S. Patent 9,440,785 challenged by PropX are unpatentable in an inter partes review proceeding. SandBox is a subsidiary of U.S. Silica Holdings, Inc.
With this ruling, the PTAB has issued rulings on all the asserted patents currently challenged by PropX through IPR proceedings and, in each case, has invalidated the majority of claims from the SandBox patents. The PTAB has invalidated 53 patent claims (out of a total of 60 challenged), which were contained in four patents challenged by PropX.
“This ruling strongly supports PropX’s position as the leading provider of last mile sand logistics solutions to the oilfield services industry and reinforces PropX’s legal position in their unique, differentiated technology,” said Kevin Fisher, president and chief executive officer of PropX. “We are pleased PropX prevailed in both our non-infringement defense and in our patent invalidity arguments. Combined with our victory in federal court in January of this year that we do not infringe on SandBox patents and additional PTAB rulings invalidating other Sandbox patent claims, this PTAB ruling should eliminate any doubt that PropX has unique technology that fairly and strongly competes in the sand logistics industry. We look forward to continuing to grow our position as the premier last mile delivery provider and remain committed to serving our customers with our unique, efficient and market-leading containerized sand logistics systems.”
SandBox intends to appeal the decision to invalidate challenged claims in one of the patents at issue. This is in addition to other pending appeals filed by both parties in the on-going dispute between SandBox and PropX.
”We have been pleased with the Patent Office’s decisions upholding multiple claims across three of four patents challenged by PropX in other IPRs that have reached a final decision. It’s important to note that in the underlying case against PropX, we only need to establish infringement of one claim and several of the claims in suit have been upheld in IPRs. Although we believe this latest decision was wrong, our success rate in these IPRs is well above the statistical norm and positions us very well in the litigation,” said Bryan Shinn, U.S. Silica president and chief executive officer. “SandBox maintains a robust portfolio of more than fifty issued U.S. patents encompassing hundreds of claims. We will continue to vigorously defend our intellectual property portfolio,” he added.