Case: 19-1684 Document: 53 Page: 1 Filed: 05/18/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SANDBOX LOGISTICS LLC, OREN
TECHNOLOGIES, LLC,
Plaintiffs-Appellants
v.
PROPPANT EXPRESS INVESTMENTS LLC,
PROPPANT EXPRESS SOLUTIONS LLC,
Defendants-Appellees
______________________
2019-1684
______________________
Appeal from the United States District Court for the
Southern District of Texas in No. 4:17-cv-00589, United
States District Judge George C. Hanks, Jr.
______________________
Decided: May 18, 2020
______________________
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, for plaintiffs-appellants. Also represented by CALVIN
ALEXANDER SHANK, JASON M. WILCOX; GIANNI CUTRI, Chi-
cago, IL.
JONATHAN S. FRANKLIN, Norton Rose Fulbright US
LLP, Washington, DC, for defendants-appellees. Also rep-
resented by STEPHANIE DEBROW, Austin, TX; MARK
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2 SANDBOX LOGISTICS LLC v. PROPPANT EXPRESS
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FRANCIS EBERHARD, CHARLES BRUCE WALKER, JR., Hou-
ston, TX.
______________________
Before LOURIE, WALLACH, and HUGHES, Circuit Judges.
WALLACH, Circuit Judge.
Appellants SandBox Logistics LLC and Oren Technol-
ogies, LLC (together, “SandBox”) sued Appellees Proppant
Express Investments LLC and Proppant Express Solutions
LLC (together, “PropX”) in the U.S. District Court for the
Southern District of Texas (“District Court”) alleging in-
fringement of claims 2 and 13 of U.S. Patent No. 9,296,518
(“the ’518 patent”), claims 6 and 17 of U.S. Patent
No. 9,403,626 (“the ’626 patent”), claims 1, 3, 7, 8, 16, 18,
19, and 21–23 of U.S. Patent No. 9,440,785 (“the ’785 pa-
tent”), and claims 4 and 7 of U.S. Patent No. 9,511,929 (“the
’929 patent”) (collectively, “the Asserted Claims”). 1 After a
Markman hearing, the District Court issued an opinion,
construing the parties’ disputed claim terms. See Sandbox
Logistics LLC v. Grit Energy Sols. LLC, Nos. 3:16-CV-12,
4:17-CV-589,
2018 WL 3344773, at *2–17 (S.D. Tex. July 9,
2018) (Opinion). Thereafter, SandBox and PropX stipu-
lated to non-infringement of the Asserted Claims by
PropX’s accused products (“the Accused Products”), and the
District Court entered a final judgment in favor of PropX.
See J.A. 1–4 (Final Judgment).
SandBox appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1). We affirm.
1 SandBox also sued Liberty Oilfield Services LLC,
J.A. 115, which is not a party to this appeal.
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BACKGROUND
I. The ’518, ’626, and ’929 Patents
Entitled “Proppant Storage Vessel and Assembly
Thereof,” the ’518, ’626, and ’929 patents share a common
specification that “relates to storage containers” for prop-
pant and “[m]ore particularly, . . . to storage container as-
semblies whereby a product in one container can flow to an
interior volume of a lower container.” ’518 patent col. 1
ll. 34–37. 2 The ’518, ’626, and ’929 patents explain that
“[p]roppant is a material, such as grains of sand, ceramic,
or other particulates” used during hydraulic fracturing (or
“fracking”) to “prevent . . . fractures from closing[.]”
Id.
col. 1 ll. 53–54. 3 The ’518, ’626, and ’929 patents disclose
“a proppant storage vessel . . . compris[ing] a container
having a first end wall, a second end wall, a first side wall[,]
and a second side wall.”
Id. col. 3 ll. 20–22; see
id. col. 4
l. 48 (“Each of the containers is [an] ocean freight con-
tainer.”). “The container also has a top wall and a bottom
wall” and “[a] hatch . . . formed on the bottom wall” which
“is movable between an open position and a closed posi-
tion.”
Id. col. 3 ll. 22–26. An “inclined surface” extends
from each wall to the bottom hatch,
id. col. 3 ll. 26–32, “to
assure that the proppant contained within the [container]
is suitably funneled toward the bottom hatch[,]”
id. col. 7
ll. 18–21. The container may include “support brace[s]” to
“structurally enhance the strength of the container . . . so
as to . . . withstand the weight of the proppant that is
2 Because the ’518, ’626, and ’929 patents share a
common specification, we cite to only the ’518 patent for
ease of reference, unless otherwise specified.
3 “Hydraulic fracturing is the propagation of frac-
tions in a rock layer caused by the presence of pressurized
fluid[,] . . . made in order to release petroleum, natural gas,
coal seam gas, or other substances for extraction.” ’518 pa-
tent col. 1 ll. 36–41.
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contained therein.”
Id. col. 7 ll. 24–44. The ’518, ’626, and
’929 patents disclose that the containers may be “vertically
aligned in a stacked orientation[,]”
id. col. 6 l. 65, so that
proppant “in one container can flow to an interior volume
of a lower container[,]”
id. col. 1 ll. 36–37, and ultimately
onto a “portable conveyer . . . placed below the bottom
hatch” of the lowermost container,
id. col. 6 ll. 7–8; see
id.
col. 4 ll. 2–6 (“The bottom hatch of the second container is
aligned with the opening of the first container such that a
proppant in the first container can flow through the [bot-
tom] hatch thereof into the interior volume of the first con-
tainer.”); see also
id., Figs. 1, 2.
II. The ’785 Patent
Entitled “Method of Delivering, Storing, Unloading,
and Using Proppant at a Well Site,” the ’785 patent “relates
to storage containers” and “[m]ore particularly, . . . to prop-
pant discharge systems wherein proppant can be dis-
charged from the storage container. Additionally, the [’785
patent] relates to a process for providing proppant to a well
site by the transport and delivery of the proppant contain-
ers.” ’785 patent col. 1 ll. 16–21. The ’785 patent discloses
“a container for the transport and storage of proppant . . .
compris[ing] a box having a bottom, a pair of side walls[,] a
pair of end walls[,] and a top.”
Id. col. 7 ll. 53–55; see
id.
col. 10 ll. 32–36 (“[T]he container . . . is a ten-foot [Interna-
tional Organization for Standardization] container.”). An
“inlet [is] formed at or adjacent to the top” of the box and
an “outlet” is formed “at the bottom.”
Id. col. 7 ll. 56–57. A
“ramp” extends from each wall to the outlet,
id. col. 7 ll. 60–
64, and “serve[s] to funnel[] the proppant that is retained
within . . . the container . . . toward the outlet[,]”
id. col. 10
ll. 44–46. The container also includes an “exterior frame”
that “provides structural support for the container . . . and
generally surrounds the exterior of the container” with “a
plurality of vertical bars that extend so as to form a cage-
like configuration around the walls[.]”
Id. col. 9 l. 64,
col. 10 ll. 15–20; see
id., Figs. 1, 2.
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III. Procedural History
In February 2017, SandBox sued PropX in the District
Court, alleging infringement of the Asserted Claims.
J.A. 115. In March 2018, the District Court held a Mark-
man hearing. J.A. 125–26. In July 2018, the District Court
issued its Opinion, construing, among other terms, “[t]he
term ‘bottom’ in the ’518, ’626, and ’929 patents[,]” Sandbox
Logistics,
2018 WL 3344773, at *4, and “[t]he term ‘struc-
tural support members’ in the [’]785 patent[,]”
id. at *15. 4
Thereafter, SandBox and PropX stipulated to non-infringe-
ment of the Asserted Claims by the Accused Products and
the District Court entered the Final Judgment in favor of
PropX. See J.A. 1–4.
DISCUSSION
I. Standard of Review and Legal Standard
“The proper construction of a patent’s claims is an issue
of Federal Circuit law[.]” Powell v. Home Depot U.S.A.,
Inc.,
663 F.3d 1221, 1228 (Fed. Cir. 2011) (citation omit-
ted). “[C]laim construction must begin with the words of
the claims themselves.” Amgen Inc. v. Hoechst Marion
Roussel, Inc.,
457 F.3d 1293, 1301 (Fed. Cir. 2006) (citation
omitted). “[W]ords of a claim are generally given their or-
dinary and customary meaning,” which is “the meaning
4 The District Court also construed other terms that
SandBox raises on appeal. See Sandbox Logistics,
2018 WL
3344773, at *2–6 (construing the terms “adjacent” and
“top” of the ’626 and ’929 patents), *8–10 (construing the
term “support braces” of the ’518, ’626, and ’929 patents
and the term “structural supports” of the ’626 and ’929 pa-
tents); see also Appellant’s Br. 15. We need not address the
District Court’s construction of these other terms, however,
as we may resolve the issues on appeal by addressing the
terms “bottom” and “structural support members” alone.
See infra notes 11, 12.
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that the term would have to a person of ordinary skill in
the art [(‘PHOSITA’)] in question at the time of the inven-
tion[.]” Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (internal quotation marks and
citations omitted). “The words used in the claims are in-
terpreted in light of the intrinsic evidence of record, includ-
ing the written description, the drawings, and the
prosecution history[.]” Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1324 (Fed. Cir. 2002) (citation omitted).
The PHOSITA “is deemed to read the claim term not only
in the context of the particular claim in which the disputed
term appears, but in the context of the entire patent, in-
cluding the specification.”
Phillips, 415 F.3d at 1313. 5 The
prosecution history may also be looked to in order to supply
additional evidence of a claim term’s intended meaning.
See Home Diagnostics, Inc. v. Lifescan, Inc.,
381 F.3d 1352,
1356 (Fed. Cir. 2004). 6 While courts may also consider ex-
trinsic evidence in claim construction, “such evidence is
generally of less significance than the intrinsic record.” Wi-
LAN, Inc. v. Apple Inc.,
811 F.3d 455, 462 (Fed. Cir. 2016)
(citation omitted). 7 “[T]he ultimate construction of a claim
term is a legal question reviewed de novo, [while] underly-
ing factual determinations made by the district court are
reviewed for clear error.” Enzo Biochem Inc. v. Applera
5 The specification “includes both the written de-
scription and the claims” of a patent. In re Packard,
751
F.3d 1307, 1320 n.11 (Fed. Cir. 2014).
6 A patent’s prosecution history “consists of the com-
plete record of the proceedings before the [U.S. Patent and
Trademark Office (‘USPTO’)],” providing “evidence of how
the [US]PTO and the inventor understood the patent.”
Phillips, 415 F.3d at 1317 (citation omitted).
7 “[E]xtrinsic evidence . . . consists of all evidence ex-
ternal to the patent and prosecution history[.]”
Phillips,
415 F.3d at 1317 (internal quotation marks and citation
omitted).
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Corp.,
780 F.3d 1149, 1153 (Fed. Cir. 2015) (citation omit-
ted).
II. The District Court Properly Construed the Term
“Bottom” as Recited in the ’518, ’626, and ’929 Patents
The District Court concluded that a PHOSITA would
understand the “term ‘bottom’ in the ’518, ’626, and ’929
patents . . . to mean ‘bottom wall[.]’” Sandbox Logistics,
2018 WL 3344773, at *4. Specifically, the District Court
“conclude[d] from its review of the specification and prose-
cution history that a [PHOSITA] would understand that
the [containers] used to construct the temporary proppant
storage facility are modified standard intermodal shipping
containers, which have . . . bottom walls.”
Id. at *6. Thus,
the District Court “conclude[d] that a [PHOSITA] would
understand the term[] ‘bottom’ . . . to mean ‘bottom wall[.]’”
Id. SandBox contends, however, that the District Court’s
construction “must be set aside” as “[i]ts rationale . . . re-
lied entirely on its erroneous understanding that the
claims require an ‘ocean freight container’ and on continu-
ing to read in limitations from the specification.” Appel-
lant’s Br. 68. We disagree with SandBox.
The District Court properly construed the term “bot-
tom” as recited in the ’518, ’626, and ’929 patents. Con-
sistent with claim construction principles, we look first to
the language of the Asserted Claims, followed by the lan-
guage of the specification and prosecution history. See
Phillips, 415 F.3d at 1314–17. Independent claim 1 of the
’518 patent, from which asserted claims 2 and 13 depend,
recites, in relevant part, “a container comprising[:] a cav-
ity; sidewalls that define a lateral periphery of the cav-
ity; . . . inclined surfaces that define a lower periphery of
the cavity . . . ; a bottom; . . . [and] a hatch positioned
closely adjacent to the bottom[.]” ’518 patent col. 8 l. 57–
col. 9 l. 3. Similarly, independent claim 1 of the ’626 patent,
from which asserted claim 6 depends, recites a “container
comprising: a top; a bottom, having an outlet formed
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therein; sidewalls coupled to the top and bottom, so as to
define an interior volume of the container . . . ; and a hatch
positioned proximate the outlet[.]” ’626 patent col. 8 l. 64–
col. 9 l. 25. Independent claim 13 of the ’626 patent, from
which asserted claim 17 depends, likewise recites a “first
container having . . . a first outlet in a first bottom” and a
“second container . . . having a second outlet in a second
bottom[.]”
Id. col. 11 ll. 4–7, 13–17. Finally, independent
claim 1 of the ’929 patent, from which asserted claim 4 de-
pends, and independent claim 7 of the ’929 patent, both re-
cite, in relevant part, limitations materially identical to
those recited in the ’626 patent. See ’929 patent col. 9
ll. 14–45, col. 10 ll. 1–52.
While the claims do not shed much light on the appro-
priate construction of “bottom,” the claims invariably re-
quire that the “bottom” has an “outlet” or “hatch” formed
therein. Additionally, the juxtaposition of the terms “bot-
tom” and “sidewalls” throughout the claims indicates that
“bottom” may refer to something other than a wall. See
Phillips, 415 F.3d at 1314 (“Differences among claims
can . . . be a useful guide in understanding the meaning of
particular claim terms.”); cf. Fuji Photo Film Co. v. Int’l
Trade Comm’n,
386 F.3d 1095, 1104–05 (Fed. Cir. 2004)
(“The fact that . . . [a] limitation was included in the first
step and omitted from the second and third steps provides
strong textual support for [the] argument that the claim
should be construed to distinguish between the first step
and the other two.”). Thus, while not dispositive, the
claims seem to suggest that “bottom” may refer to a group
of structures other than walls alone.
Turning to the broader specification, see Trs. of Colum-
bia Univ. v. Symantec Corp.,
811 F.3d 1359, 1363 (Fed.
Cir. 2016) (“[T]he specification is always highly relevant to
the claim construction analysis and is, in fact, the single
best guide to the meaning of a disputed term.” (internal
quotation marks, emphasis, and citation omitted)), the
’518, ’626, and ’929 patents disclose three embodiments of
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the “present invention” each of which explicitly requires
containers with a “bottom wall”: (1) “[t]he present inven-
tion is a proppant storage vessel that comprises a container
having a first end wall, a second end wall, a first side wall[,]
and a second side wall” as well as “a top wall and a bottom
wall which serve to define an interior volume therein[,]”
’518 patent col. 3 ll. 20–24; (2) “[t]he present invention is
also a proppant storage assembly that comprises a first
container” that “has a bottom wall [with] a bottom hatch
affixed thereto” and a “second container” that “has [a] bot-
tom hatch formed on a bottom wall thereof[,]”
id. col. 3
l. 62–col. 4 l. 2; and (3) “[i]n an alternative embodiment of
the present invention, the first container has the first side
wall, a second side wall, a first end wall[,] and second end
wall hingedly mounted to the bottom wall thereof[,]”
id.
col. 4 ll. 49–52; see
id., Abstract (“A proppant storage vessel
has a container having . . . a bottom wall.”). Thus, the spec-
ification makes clear that the invention of the ’518, ’626,
and ’929 patents includes a “bottom wall.” See Poly-Am.,
L.P. v. API Indus., Inc.,
839 F.3d 1131, 1136 (Fed.
Cir. 2016) (“While disavowal must be clear and unequivo-
cal, it need not be explicit. For example, an inventor may
disavow claims lacking a particular feature when the spec-
ification describes ‘the present invention’ as having that
feature.” (internal citations omitted)). 8 Indeed, each
8 While the ’518, ’626, and ’929 patents provide that
the embodiments of the “present invention” are “not in-
tended, in any way, to limit the scope of the present inven-
tion[,]” ’518 col. 4 ll. 55–60; see
id. col. 8 ll. 48–53 (“The
foregoing disclosure and description of the invention is il-
lustrative and explanatory thereof.”), such boilerplate lan-
guage, without more, is not sufficient to overcome the
explicit description of the “present invention,” see D Three
Enters., LLC v. SunModo Corp.,
890 F.3d 1042, 1051 (Fed.
Cir. 2018) (“[B]oilerplate language at the end of the . . .
specification is not sufficient to show adequate disclosure
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embodiment disclosed in the ’518, ’626, and ’929 patents
includes a “bottom wall.” See ’518 patent col. 5 ll. 18–24
(“[T]he preferred embodiment of the present invention . . .
includes a first container . . . having . . . a bottom wall[.]”),
col. 8 ll. 18–23 (“[A]n alternative embodiment of the con-
tainer . . . of the present invention . . . includes . . . end
walls . . . and . . . side walls . . . extending upwardly from a
bottom wall[.]”). Thus, while the claims may suggest that
“bottom” refers to something other than a wall, the broader
specification makes clear that “bottom” refers to a “bottom
wall.” Cf. Edwards Lifesciences LLC v. Cook Inc.,
582 F.3d
1322, 1332 (Fed. Cir. 2009) (“[C]laim differentiation is a
rule of thumb that does not trump the clear import of the
specification.”). 9
The prosecution history supports the conclusion that
“bottom” refers to a “bottom wall.” During prosecution of
the ’518 patent, an examiner twice rejected claims for
“omitting essential elements[,]” viz., “[t]he bottom wall on
of the actual combinations and attachments used in the . . .
[c]laims.”); see also IP Innovation, L.L.C. v. Ecollege.com,
156 F. App’x 317, 321 (Fed. Cir. 2005) (explaining that
“common boiler plate” language did not effectively disclose
an alternative embodiment to support a broader construc-
tion of the claims at issue than the embodiment described
in the specification as the “present invention”).
9 Moreover, were the “bottom” something other than
a wall as SandBox argues, e.g., “a mesh, an open frame, or
some other structure[,]” Appellant’s Br. 69, the “bottom”—
against which “[t]he bottom hatch resides . . . when in the
closed position[,]” ’518 patent col. 3 ll. 59–61—would allow
proppant to escape the container, see Medrad, Inc. v. MRI
Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005) (“It
is . . . entirely proper to consider the functions of an inven-
tion in seeking to determine the meaning of particular
claim language.”).
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which the hatch is mounted.” J.A. 1007 (March 2015 Office
Action), 1063 (November 2014 Office Action) (the Examiner
explaining that “[t]he only hatches disclosed are positioned
on a flat bottom wall”). 10 As the Examiner explained, he
“considered [the bottom wall] essential because the specifi-
cation does not describe a means to connect the hatch to
the container without the bottom wall.” J.A. 1007. Sand-
box did not challenge the Examiner’s understanding; in-
stead, in response, SandBox amended the claims of the ’518
patent to recite a “bottom[,]” J.A. 575, with SandBox ex-
plaining that although the claims “were rejected on the ba-
sis [that] they lack essential elements[,]” the claims were
“being amended to include a bottom, and that the hatch is
positioned closely adjacent to the bottom[,]” J.A. 580. The
Examiner allowed the ’518 patent, based at least in part on
his understanding that the claims of the ’518 patent were
amended to include a “bottom wall on which the hatch is
mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability)
(the Examiner explaining that the prior art “fails to teach
or suggest . . . a bottom[] and a hatch closely adjacent to the
bottom”). SandBox’s failure to challenge the Examiner’s
understanding amounts to a disclaimer. See Biogen Idec,
Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090, 1096 (Fed.
Cir. 2013) (“If an applicant chooses, she can challenge an
10 The prosecution history of the ’518 patent is rele-
vant to the scope of the ’626 and ’929 patents, which ma-
tured from continuation applications of the ’518 patent.
See ’626 patent, Front Page; ’929 patent, Front Page; see
also Augustine Med., Inc. v. Gaymar Indus., Inc.,
181 F.3d
1291, 1300 (Fed. Cir. 1999) (“[T]he prosecution history of a
parent application may limit the scope of a later applica-
tion using the same claim term[.]”); Jonsson v. Stanley
Works,
903 F.2d 812, 818 (Fed. Cir. 1990) (explaining that
the prosecution history of a parent application is relevant
to understanding the scope of claims issuing in a continua-
tion application).
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examiner’s characterization in order to avoid any chance
for disclaimer, but the applicants in this case did not di-
rectly challenge the examiner’s characterization.”); Tor-
Pharm, Inc. v. Ranbaxy Pharm., Inc.,
336 F.3d 1322, 1330
(Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued
patent, the public is entitled to equate an inventor’s acqui-
escence to the examiner’s narrow view of patentable sub-
ject matter with abandonment of the rest. Such
acquiescence may be found where the patentee narrows his
or her claims by amendment[.]” (internal citation omitted)).
Thus, the prosecution history confirms that “bottom” refers
to a “bottom wall.” Accordingly, the District Court properly
construed the term “bottom” as recited in the ’518, ’626, and
’929 patents. 11
11 Because every asserted claim of the ’518, ’626, and
’929 patents requires a “bottom[,]” see ’518 patent col. 8
l. 67 (independent claim 1, from which asserted claims 2
and 13 depend); ’626 patent col. 8 l. 67 (independent
claim 1, from which asserted claim 6 depends), col. 11 ll. 6–
7, 17 (independent claim 13, from which asserted claim 17
depends); ’929 patent col. 9 l. 18 (independent claim 1, from
which asserted claim 4 depends), col. 10 ll. 6, 28 (asserted
independent claim 7), and because SandBox stipulated
that the “Accused Products do not have a ‘bottom wall’
as . . . is required by the term ‘bottom[,]’” J.A. 2, we need
not consider SandBox’s remaining arguments as to the Dis-
trict Court’s construction of other terms of the ’518, ’626,
and ’929 patents to affirm the District Court’s Final Judg-
ment of non-infringement as to those patents, see Advanced
Steel Recovery, LLC v. X-Body Equip., Inc.,
808 F.3d 1313,
1321 (Fed. Cir. 2015) (“Because we affirm [the district
court’s determination of] noninfringement, we do not reach
[the defendant]’s alternative arguments for affirmance.”).
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III. The District Court Properly Construed the Term
“Structural Support Members” as Recited in the
’785 Patent
The District Court concluded that a PHOSITA “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[.]” Sandbox Logistics,
2018 WL 3344773, at *15. SandBox contends, however,
that “nothing about the term ‘structural support members’
requires that the claims’ containers be ‘ocean freight con-
tainers.’” Appellant’s Br. 53. Additionally, SandBox ar-
gues that “‘structural support members’ does not refer
solely to ‘structural fortifications to the end walls and side-
walls’ of a container, much less require adding supports to
an existing ocean freight container.”
Id. at 54. Rather, “the
plain and ordinary meaning of ‘structural support mem-
bers’ includes features in or of the wall itself[, ]e.g., a cor-
rugated surface[].”
Id. (emphasis omitted). We disagree
with SandBox.
The District Court properly construed the term “struc-
tural support members” as recited in the ’785 patent as
“structural fortifications” provided on an “existing” con-
tainer. Turning first to the language of the Asserted
Claims, see
Phillips, 415 F.3d at 1314, independent claim 1
of the ’785 patent, from which asserted claims 3, 7, and 8
depend, recites, in relevant part, “a plurality of proppant
containers . . . each . . . having a closed and substantially
rectangular upper proppant containing portion,” as well as
“a pair of vertically-extending end walls and a pair of ver-
tically-extending side walls defining the closed and sub-
stantially rectangular upper proppant containing portion,”
and “a frame including a plurality of structural support
members positioned to span the end walls and the side-
walls between end frame members to enhance support of
the end walls and the side walls when the proppant con-
tainer is full of fracking proppant[.]” ’785 patent col. 14
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l. 65–col. 15 l. 31. Independent claim 16 of the ’785 patent,
from which asserted claims 18, 19, and 21–23 depend, re-
cites materially identical limitations. See
id. col. 18 ll. 27–
64. That the “structural support members” are recited sep-
arately from the “end walls” and “side walls” implies that
the “structural support members” are a structurally dis-
tinct component. See Becton, Dickinson & Co. v. Tyco
Healthcare Grp., LP,
616 F.3d 1249, 1254 (Fed. Cir. 2010)
(“Where a claim lists elements separately, the clear impli-
cation of the claim language is that those elements are dis-
tinct components of the patented invention.” (internal
quotation marks, alteration, and citation omitted)); see
HTC Corp. v. Cellular Commc’ns Equip., LLC, 701 F. App’x
978, 982 (Fed. Cir. 2017) (“The strongest evidence for this
separation is the claim language itself, which plainly re-
cites two different structures . . . . The separate naming of
two structures in the claim strongly implies that the named
entities are not one and the same structure.”). Thus, the
claim language supports the District Court’s construction.
Turning to the broader specification, see Trs. of Colum-
bia
Univ., 811 F.3d at 1363, the ’785 patent discloses that
a “frame . . . provides structural support for the con-
tainer . . . and generally surrounds the exterior of the con-
tainer. The frame is formed of a plurality of vertical bars
that extend so as to form a cage-like configuration around
the walls[.]” ’785 col. 10 ll. 15–19. As shown in Figures 1
and 2 of the ’785 patent, the “vertical bars,” i.e., “structural
support members,” of the disclosed frame are depicted as
separate and distinct components vis-à-vis the walls, even
extending beyond the walls to the bottom of the container.
Id., Figs. 1 and 2. Indeed, each embodiment disclosed in
the ’785 patent includes this configuration. Thus, as with
independent claims 1 and 16, the broader specification sup-
ports the District Court’s construction.
Finally, during prosecution of the ’785 patent, SandBox
disclaimed the construction it now proposes, and limited
the “structural support members” to a separate and
Case: 19-1684 Document: 53 Page: 15 Filed: 05/18/2020
SANDBOX LOGISTICS LLC v. PROPPANT EXPRESS 15
INVESTMENTS
distinct component. Specifically, in response to an obvious-
ness rejection over prior art, including U.S. Publication
No. 2013/0206415 (“Sheesley”), SandBox distinguished
Sheesley by arguing that the “container . . . [of Sheesley] is
formed from corrugated metal” in which “the corrugated
metal structure is an integral part of the sidewalls used to
form the structure of the container . . . . As such, the side-
walls do not include separate, distinct support members as
recited by [the] independent [c]laims[.]” J.A. 1268–69; see
J.A. 1269 (“As shown in F[ig]. 9, the sidewalls are stand-
alone components of the container . . . without any addi-
tional support members attached thereto.”). This is incon-
sistent with SandBox’s position on appeal, viz., that the
same claim language “broadly encompasses fortifications
made in the walls themselves, such as internal folds or cor-
rugations that add strength.” Appellant’s Br. 3. SandBox
clearly disavowed this subject matter, and cannot be al-
lowed to recapture it. See Omega Eng’g, Inc, v. Raytek
Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003) (“The doctrine
of prosecution disclaimer . . . preclud[es] patentees from re-
capturing through claim interpretation specific meanings
disclaimed during prosecution.”); see also Aylus Networks,
Inc. v. Apple Inc.,
856 F.3d 1353, 1360 (Fed. Cir. 2017) (“Ul-
timately, 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 in-
fringers.” (internal quotation marks and citation omitted)).
Accordingly, the District Court properly construed the
term “structural support members” as recited in the ’785
patent as “structural fortifications” provided on an “exist-
ing” container. 12
12 Because SandBox “limit[ed] their infringement al-
legation pertaining to the term ‘structural support mem-
bers’ in the ’785 patent to the horizontal corrugations in the
walls of the Accused Products,” J.A. 3, and because
Case: 19-1684 Document: 53 Page: 16 Filed: 05/18/2020
16 SANDBOX LOGISTICS LLC v. PROPPANT EXPRESS
INVESTMENTS
CONCLUSION
We have considered SandBox’s remaining arguments
and find them unpersuasive. Accordingly, the Final Judg-
ment of the U.S. District Court for the Southern District of
Texas is
AFFIRMED
“structural support members” cannot include “corrugations
in . . . walls” based on SandBox’s representations during
prosecution of the ’785 patent, we need not consider Sand-
Box’s remaining arguments as to the District Court’s con-
struction of other terms of the ’785 patent to affirm the
District Court’s Final Judgment of non-infringement as to
that patent, see Advanced
Steel, 808 F.3d at 1321.
