A team of Baker Botts lawyers secured a win for Solaris Oilfield Site Services Operating from the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board against Masaba.
The Monday decision canceled all claims of a patent covering sand-handling equipment used in oilfield operations.
“This victory validates our client’s position that Masaba’s patent claims cover nothing more than predictable combinations of well-known conveyor technologies,” Baker Botts partner Liz Flannery, who led the firm’s trial team, said in a news release. “The PTAB’s thorough analysis confirms that the patent never should have been issued in the first place.”
The case focused on one patent owned by Masaba, which covers equipment that transfers sand from delivery trucks into elevated storage containers for use in operations such as hydraulic fracturing at oil and gas well sites.
In its decision, the PTAB ruled that all 25 claims of Masaba’s patent are unpatentable as obvious over combinations of prior art references.
The PTAB rejected Masaba’s argument that the prior art lacked critical features, finding that known conveyor systems rendered the claimed invention obvious to skilled engineers.
The petition was before Administrative Patent Judges James A. Tartal, Carl M. DeFranco and Robert L. Kinder.
Masaba accused Solaris’s Top Fill Sand Loading Systems of infringing on the patent in a 2023 lawsuit before the Wyoming District Court. That case was stayed pending the PTAB decision in August 2024.
Baker Botts attorneys Paul Morico, Brian Hausman and Laura Natchev also represented Solaris.
Chad Nydegger, David Todd and Brian Platt of Workman Nydegger represented Masaba. They did not respond to a request for comment.
The case number is 2024-01179.