TankLogix, LLC v. SitePro, Inc.

TankLogix, LLC v. SitePro, Inc. is a Post-Grant Review (PGR) proceeding before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 12,321,184. The Petitioner, TankLogix, LLC, is an oilfield automation and controls company specializing in custom and engineered solutions for the oil and gas industries, offering services like tank monitoring dashboards, SCADA, and PLC programming. The Patent Owner, SitePro, Inc., is a provider of cloud-based software solutions for water and wastewater management, offering digital oilfield solutions, real-time information for water lifecycle management, and control/monitoring of critical infrastructure across energy, municipal, and industrial sectors. SitePro also offers surveying equipment and skid steer attachments, though its core business appears to be in software and automation for critical infrastructure. The patent at issue, U.S. Patent No. 12,321,184, is titled "Remote control of fluid-handling devices," suggesting it relates to the automated control and monitoring systems used in industries like oil and gas, water, and wastewater management.

This PGR proceeding (PGR2025-00060), filed on July 10, 2025, was not instituted by the PTAB due to procedural reasons, specifically a discretionary denial. The decision to deny institution was made by the USPTO Director on November 20, 2025. This type of denial often involves considerations like the timing of the petition relative to parallel district court litigation or other discretionary factors that the Director may weigh in determining whether to proceed with a trial. In this particular instance, there is a parallel patent infringement lawsuit, SitePro, Inc. v. TankLogix, LLC (6:24-cv-00642), filed on December 20, 2024, in the U.S. District Court for the Western District of Texas, Waco Division, before Judge Xavier Rodriguez. SitePro, Inc. is the plaintiff in this district court case, asserting U.S. Patent No. 12,321,184 against TankLogix, LLC. TankLogix, LLC filed a motion to stay the district court cases on April 16, 2025, pending the outcome of the PTAB proceedings.

The case is notable for the interplay between the PTAB PGR and the parallel district court litigation, particularly the PTAB's discretionary denial of institution. Such denials, especially those related to discretionary considerations, have become a significant aspect of PTAB practice, with the USPTO Director now directly involved in these decisions, aiming to enhance transparency and realign accountability. The procedural posture highlights the strategic decisions companies make in challenging patents at the PTAB while simultaneously defending against infringement claims in district court. While the PGR was denied institution, the underlying district court litigation is ongoing, and the denial means that TankLogix cannot challenge the validity of the '184 patent through this specific PGR pathway at the PTAB.TankLogix, LLC v. SitePro, Inc. is a Post-Grant Review (PGR) proceeding before the Patent Trial and Appeal Board (PTAB) challenging U.S. Patent No. 12,321,184. The Petitioner, TankLogix, LLC, is an operating company that provides oilfield automation and control solutions, including tank monitoring systems and SCADA, primarily for the oil and gas industries. The Patent Owner, SitePro, Inc., is also an operating company that develops cloud-based software solutions for managing water and wastewater, offering digital oilfield tools and real-time monitoring and control for critical infrastructure across energy, municipal, and industrial sectors. The asserted patent, U.S. Patent No. 12,321,184, is titled "Remote control of fluid-handling devices" and generally relates to systems for automated control and monitoring of fluid logistics in industrial applications.

The procedural posture of this case is a PGR before the PTAB (PGR2025-00060), which was filed on July 10, 2025. The PTAB ultimately decided not to institute the review, issuing a discretionary denial on November 20, 2025. This means the Board opted not to proceed with a full review of the patent's validity, often based on factors such as the stage of parallel district court litigation or other policy considerations. The venue for this PGR, the PTAB, is significant as it offers an administrative alternative to district court litigation for challenging patent validity, though recent policy changes have given the USPTO Director more direct involvement in institution decisions.

This case is notable because the PGR was initiated as a response to a parallel patent infringement lawsuit, SitePro, Inc. v. TankLogix, LLC (6:24-cv-00642), filed by SitePro in the U.S. District Court for the Western District of Texas on December 20, 2024, where Patent No. 12,321,184 is being asserted. TankLogix had filed a motion to stay the district court case pending the PTAB's decision. The PTAB's discretionary denial of institution prevents TankLogix from using this specific PGR proceeding to challenge the patent's validity, leaving the validity challenge to be addressed within the ongoing district court infringement action. This outcome highlights the increasing use of discretionary denials by the PTAB, particularly in light of parallel litigation, and underscores the strategic importance of timing and procedural considerations in patent disputes.

The case of TankLogix, LLC v. SitePro, Inc., PGR2025-00060, is a Post-Grant Review (PGR) proceeding before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 12,321,184. Although the prompt refers to "patent infringement litigation," this specific case is a PTAB administrative proceeding. However, it is closely related to a parallel patent infringement lawsuit in district court.

Here are the key legal developments and outcomes:

Parallel District Court Litigation Filing:

• 2025-06-06: SitePro, Inc. filed a patent infringement lawsuit against TankLogix, LLC in the U.S. District Court for the Western District of Texas, case number 7:25-cv-00266, asserting infringement of U.S. Patent No. 12,321,184.
• TankLogix, LLC subsequently filed an answer to the complaint, which included counterclaims. SitePro, Inc. then filed an answer to TankLogix's counterclaims.

PGR Filing:

• 2025-07-10: TankLogix, LLC, as the Petitioner, filed a Post-Grant Review (PGR) petition, PGR2025-00060, challenging the patentability of U.S. Patent No. 12,321,184. The petition raised grounds challenging the patent under 35 U.S.C. § 101 (abstract idea), 35 U.S.C. § 103 (obviousness over Kahn & SCADA), and for lack of written description.

Pre-trial Motions (District Court Stay):

• 2025-08-28: The U.S. District Court for the Western District of Texas, presided over by Judge Xavier Rodriguez, granted TankLogix's motion to stay the patent infringement litigation (7:25-cv-00266). The court ordered the case stayed until the Patent Trial and Appeal Board (PTAB) resolved the pending PTAB proceedings, including PGR2025-00060 and other related inter partes review (IPR) proceedings. The parties were directed to file advisories every 180 days on the progress of the PTAB proceedings.

Claim Construction:

• For PGR2025-00060, formal claim construction (Markman) proceedings akin to those in district court did not occur, as the petition was ultimately not instituted. Had the PGR been instituted, the PTAB would have construed claims under the Phillips standard, consistent with district court practice for PGRs.

Discovery Milestones:

• In the district court case, a joint Rule 26(f) Discovery Report/Case Management Plan was filed prior to the stay. Discovery in the district court was halted by the stay. Discovery in the PGR proceeding is typically more limited than in district court litigation.

PGR Outcome - Non-Institution (Discretionary Denial):

• 2025-11-20: The PTAB issued a Director's Discretionary Denial decision for PGR2025-00060. This means the PGR was not instituted, and no trial before the PTAB commenced, due to procedural reasons related to the Board's discretion to deny institution.

Final Disposition/Present Posture:

• The PGR proceeding (PGR2025-00060) is concluded, with the PTAB deciding not to institute a review of U.S. Patent No. 12,321,184.
• The parallel district court patent infringement litigation (7:25-cv-00266) remains stayed pending further orders from the court after the resolution of the PTAB proceedings.

Parallel PTAB IPR/PGR Proceedings:

• In addition to PGR2025-00060, TankLogix, LLC filed several other PTAB challenges against patents owned by SitePro, Inc. These included IPR2025-00761 (challenging U.S. Patent No. 12,019,461 B2, filed April 10, 2025, and denied institution on September 3, 2025, also due to discretionary denial).
• TankLogix also filed a series of IPRs (IPR2025-00647 through IPR2025-00653) challenging other SitePro patents, such as 9,898,014, 8,649,909, 9,342,078, 10,488,871, 11,175,680, 11,294,403, and 11,726,504 B2. Some of these (e.g., IPR2025-00647, -00648, -00649) were denied institution based on discretionary grounds related to "settled expectations" of the patent owner on July 31, 2025. At least one (IPR2025-00652) was denied institution on the merits, finding no reasonable likelihood that the petitioner would prevail, on October 10, 2025.
• The existence of these various PTAB proceedings contributed to the district court's decision to stay the infringement litigation.

Here is the counsel of record representing TankLogix, LLC, the plaintiff (Petitioner) in PGR2025-00060:

Attorneys for TankLogix, LLC (Petitioner):

• Robert D. Katz

  • Role: Attorney for Petitioner
  • Firm: Katz PLLC
  • Office Location: Dallas, TX (8350 N. Central Expressway, Suite 1900, Dallas, TX 75206)
  • Experience Note: Robert D. Katz is listed as an attorney in multiple PTAB proceedings for TankLogix, LLC, including IPR2025-00761 and IPR2025-00650, where he also signed a Petitioner's Sotera Stipulation. This indicates experience with PTAB proceedings and strategies related to parallel district court litigation.

• Gregory J. Gonsalves

  • Role: Attorney for Petitioner
  • Firm: Katz PLLC
  • Office Location: Not explicitly stated in the provided search results, but presumably also Dallas, TX, consistent with the firm's main office listed for Robert D. Katz.
  • Experience Note: Gregory J. Gonsalves is listed as an attorney for TankLogix LLC in PTAB proceedings IPR2025-00761 and PGR2025-00060, indicating experience in patent invalidity challenges before the Board.

Counsel of Record for SitePro, Inc. in PGR2025-00060

SitePro, Inc., the respondent in the Patent Trial and Appeal Board (PTAB) Post-Grant Review (PGR) proceeding PGR2025-00060, is represented by attorneys from Perkins Coie LLP.

The identified counsel are:

• Babak Tehranchi

  • Role: Likely lead counsel or a key attorney given his listing.
  • Firm: Perkins Coie LLP.
  • Office Location: Needs to be confirmed through further search.
  • Experience Note: Babak Tehranchi is listed as respondent counsel in another PTAB case, IPR2024-00741, involving SitePro, Inc.

• Matthew Lutz

  • Role: Backup Counsel
  • Firm: Perkins Coie LLP.
  • Office Location: Phoenix, AZ.
  • Experience Note: Matthew Lutz is listed as backup counsel for SitePro, Inc. in related PTAB proceedings.

• Fareid Asphahani

  • Role: Backup Counsel
  • Firm: Perkins Coie LLP.
  • Office Location: San Diego, CA.
  • Experience Note: Fareid Asphahani is listed as backup counsel for SitePro, Inc. in related PTAB proceedings.

• M. Craig Tyler

  • Role: Attorney.
  • Firm: Perkins Coie LLP.
  • Office Location: Needs to be confirmed through further search.
  • Experience Note: No specific experience note is immediately available from the provided search results for this case context.

Further details regarding specific roles (e.g., lead counsel vs. co-counsel) beyond "backup counsel" for Lutz and Asphahani, and the office locations and detailed experience for Tehranchi and Tyler, would require a more in-depth search of their professional profiles and additional docket entries if publicly available. It is important to note that the PTAB proceeding was not instituted due to procedural reasons.Here is the counsel of record representing SitePro, Inc. in PGR2025-00060:

Firm: Perkins Coie LLP

• Babak Tehranchi, Ph.D.

  • Role: Partner, likely lead counsel. He is the firmwide co-chair of Perkins Coie's Post-Grant Proceedings practice.
  • Office Location: San Diego, CA.
  • Experience Note: Dr. Tehranchi has extensive experience in patent prosecution and post-grant proceedings, including acting as lead counsel in numerous inter partes reviews (IPRs) and post-grant reviews (PGRs) before the PTAB, representing both petitioners and patent owners. He has been involved in over 125 IPRs, PGRs, and Covered Business Method Review (CBM) proceedings.

• M. Craig Tyler

  • Role: Partner, first-chair trial lawyer.
  • Office Location: Austin, TX.
  • Experience Note: Mr. Tyler has dedicated his 30-year career to complex technology cases nationwide, litigating and trying cases involving infringement of patents, copyrights, trademarks, trade dress, and trade secrets. He has achieved historic results at trial for clients, including a landmark patent litigation win in the Eastern District of Texas.

• Matthew Lutz

  • Role: Associate, Backup Counsel.
  • Office Location: Phoenix, AZ.
  • Experience Note: Mr. Lutz is a patent litigation associate with deep technical knowledge, bringing several years of experience in project management, software development, and cybersecurity. He represents clients ranging from small, privately held companies to large, multinational corporations and has experience in depositions, source code analysis, and drafting litigation documents.

• Fareid Asphahani, Ph.D.

  • Role: Counsel, Backup Counsel.
  • Office Location: San Diego, CA.
  • Experience Note: Dr. Asphahani focuses on patent procurement and prosecution, strategic portfolio development, and patent due diligence. He also supports litigation teams handling disputes in U.S. district courts and post-grant proceedings before the USPTO, including IPRs and patent reexaminations.