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`DMS 301678903
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ENSIGN US SOUTHERN DRILLING LLC
`Petitioner
`v.
`C&M OILFIELD RENTALS, LLC
`D/B/A C-MOR ENERGY SERVICES
`Patent Owner of Record
`
`Inter Partes Review No.
`IPR2023-00804
`Patent No. 10,976,016
`Filing Date: September 9, 2020
`Issue Date: April 13, 2021
`
`DECLARATION OF JAKE HAMDAN
`
`Petitioner Ensign
`Exhibit 1008 - Page 1 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 4 
`I. 
`BACKGROUND AND QUALIFICATIONS ................................................. 5 
`II. 
`INFORMATION CONSIDERED ................................................................... 6 
`III. 
`IV.  LEGAL STANDARDS ................................................................................... 7 
`A. 
`Claim Construction ............................................................................... 7 
`B. 
`Anticipation ........................................................................................... 9 
`C. 
`Obviousness ......................................................................................... 10 
`LEVEL OF SKILL IN THE ART ................................................................. 19 
`V. 
`VI.  THE ‘016 PATENT SPECIFICATION ........................................................ 20 
`VII.  THE PRIOR ART .......................................................................................... 22 
`A.  Overview and State of the Prior Art as of 2018 .................................. 22 
`B. 
`Admitted Prior Art (Ex. 1001, ‘016 Patent Background and Fig. 1) .. 39 
`C.  WO2018/042348 (“Gowanlock”) (Ex. 1003) ..................................... 43 
`D. 
`Swivelpole Catalog (Ex. 1004) ........................................................... 45 
`E. 
`Chinese Patent No. 203215413U (“Chinese ‘413”) (Ex. 1005) ......... 47 
`F.  Magnalight YouTube video (copyright 2004-2012) (Ex. 1006) ......... 48 
`VIII.  ANALYSIS AND IDENTIFICATION OF HOW CLAIMS 1, 2, and 23
`ARE UNPATENTABLE ............................................................................... 50 
`A.  Gowanlock Anticipates Claims 1, 2, and 23 ....................................... 50 
`B. 
`Claims 1, 2, and 23 Are Obvious Over Gowanlock and Swivelpole
`Catalog ................................................................................................. 54 
`
`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 2 of 84
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`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`
`Claims 1, 2, and 23 Are Obvious Over Swivelpole Catalog and
`Chinese ‘413 in light of Admitted Prior Art ........................................ 62 
`Claims 1, 2, and 23 Are Obvious Over Magnalight YouTube video in
`View of Admitted Prior Art ................................................................ 73 
`
`C. 
`
`D. 
`
`
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 3 of 84
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`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`
`I, Jake Hamdan, declare as follows:
`
`I.
`INTRODUCTION
`1. My name is Jake Hamdan. Herein, I give my opinions as to how a
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`hypothetical person of ordinary skill in the art (“POSITA”) would understand the
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`scope of the claims and whether certain claims of U.S. Patent No. 10,976,016 (‘016
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`Patent) are invalid. I provide technical bases for these opinions as appropriate.
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`2.
`
`I am an employee of Ensign Drilling Inc. and its Vice-President of
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`Engineering. I am over eighteen years of age, and I would otherwise be competent
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`to testify as to the matters set forth herein if I am called upon to do so.
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`3.
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`I have prepared this Declaration for consideration by the Patent Trial and
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`Appeal Board in the Inter Partes Review of U.S. Patent No. 10,976,016.
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`4.
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`I provide this Declaration at the request of Ensign US Southern Drilling LLC,
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`an affiliate of Ensign Drilling Inc., in connection with the above-captioned Inter
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`Partes Review. I have been informed and understand that Ensign US Southern
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`Drilling LLC contends that asserted claims 1, 2, and 23 of the ‘016 Patent are invalid.
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`5.
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`I have been asked to provide my opinions regarding whether claims 1, 2, and
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`23 are unpatentable because they would have been either anticipated or obvious to a
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`POSITA at the time of the alleged invention, in light of the prior art.
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 4 of 84
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`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`6.
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`After careful analysis it is my opinion that claims 1, 2, and 23 of the ‘016
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`Patent are invalid over the prior art I considered during my analysis. The individual
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`analysis of each of these claims is set out below.
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`7.
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`This declaration contains statements of my opinions formed to date and the
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`bases and reasons for those opinions. I may offer additional opinions based on
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`further review of materials in this case, including opinions and/or testimony of other
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`expert witnesses. I make this declaration based upon my own personal knowledge
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`and, if called upon to testify, would testify competently to the matters contained
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`herein. I have not been compensated for my efforts in connection with the
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`preparation of this declaration. My employment and compensation at Ensign
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`Drilling Inc. is in no way contingent on the results of these or any other proceedings
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`in relation to the above captioned patent.
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`8.
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`In forming my opinions, I relied on my knowledge and experience in the field
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`and on documents and information referenced in this Declaration.
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`II. BACKGROUND AND QUALIFICATIONS
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`9. My complete qualifications and professional experience are described in my
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`Curriculum Vitae, a copy of which can be found in Exhibit 1007. The following is
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`a brief summary of my relevant qualifications and professional experience.
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 5 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`10.
`
`I am not an attorney. As shown in my curriculum vitae, I have extensive
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`industry experience with engineering in the oil and gas industry. Specifically, I have
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`over eighteen years of industry experience in the oil and gas industry generally,
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`including experience designing, engineering, and managing numerous systems and
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`components related to oil and gas rigs.
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`11.
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`I have extensive expertise in all aspects of rigs, including engineering and
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`design work related to derricks, crown decks, control systems, and well site lighting.
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`I am an expert in all related aspects of oil and gas rigs design and engineering.
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`III.
`12.
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`INFORMATION CONSIDERED
`I have considered the following documents:
`
`a.
`
`b.
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`c.
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`U.S. Patent No. 10,976,016 (the ‘016 Patent) (Ex. 1001)
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`Prosecution History for the ‘016 Patent (Ex. 1002)
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`Knowledge of a POSITA as Documented in “Overview and State of the
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`Prior Art as of 2018” Section and the exhibits referenced therein
`
`d.
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`Prior Art:
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` WO2018/042348 (“Gowanlock”) (Ex. 1003)
`
`Swivelpole Catalog (Ex. 1004)
`
`Chinese Patent No. 203215414U (Chinese ‘413) (Ex. 1005)
`
`Larson Electronics / Magnalight YouTube video at
`https://www.youtube.com/watch?v=EWXJeKNRs00 Ex. 1006.
`Petitioner Ensign
`Exhibit 1008 - Page 6 of 84
`
`DMS 301678903
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`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`13.
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`In addition to the documents above, in forming the opinions expressed below,
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`I have also considered:
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`e. My own knowledge and experience based upon my work in the fields
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`of engineering, lighting, and rig design, as described above and in my CV; and
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`f.
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`The level of skill of a POSITA at the time of the alleged invention and
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`filing of the ‘016 Patent as described in detail below.
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`IV. LEGAL STANDARDS
`14.
`I am not an attorney and have not been asked to offer my opinion on the law.
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`However, as an expert offering an opinion on whether the claims in the ‘016 patent
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`are patentable, I have been told that I am obliged to follow existing law.
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`15.
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`I have been informed of the following legal standards, which I have applied
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`in forming my opinions.
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`16. First, I understand that a claimed invention is only patentable when it is new,
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`useful, and non-obvious in light of the “prior art.” That is, the invention, as defined
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`by the claims of the patent, must not be anticipated by or rendered obvious by the
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`prior art.
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`A. Claim Construction
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`17.
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`I understand that the claims define the invention. I also understand that an
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`unpatentability analysis is a two-step process. First, the claims of the patent are
`Petitioner Ensign
`Exhibit 1008 - Page 7 of 84
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`DMS 301678903
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`construed to determine their meaning and scope. Second, after the claims are
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`construed, the content of the prior art is compared to the construed claims.
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`18.
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`I have been told that the meaning of claim terms is considered from the
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`viewpoint of one of ordinary skill in the art at the time of the alleged invention.
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`Specifically, claim terms in inter partes review proceedings are to be given their
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`ordinary and accustomed meaning as understood by a person of ordinary skill in the
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`art in light of the specification and the prosecution history of the patent. I understand
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`that the claims are generally not limited by the embodiments described in the
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`specification.
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`19.
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`I understand that in addition to the claims, specification, and prosecution
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`history, other evidence may be considered to ascertain the meaning of claim terms,
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`including textbooks, encyclopedias, articles, and dictionaries. I have been informed
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`that this other evidence is often less significant and less reliable than the claims,
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`specification, and prosecution history.
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`20.
`
`I understand that a court already construed certain terms in the ‘016 patent.
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`(Ex. 1009, Court Order). I have been asked to employ the below constructions from
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`that Court Order in my analysis.
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`“crown deck” (Claims 1, 2, and 23) - A “crown” is the collection of structures
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`at the uppermost portion of a drilling rig, and the “crown deck” is a collection of
`Petitioner Ensign
`Exhibit 1008 - Page 8 of 84
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`DMS 301678903
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`structures within the crown that includes a walking surface, parts supporting the
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`walking surface, and any associated handrail.
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`“mounting pole” (Claims 1 and 23) - A “mounting pole” is a pole used for
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`mounting something. Both “mounting” and “pole” have their plain and ordinary
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`meanings.
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`“bracket” (Claims 1 and 2) - A component or components connecting one part
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`to another or holding a part.
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`“attached” (Claims 1 and 23), “connected” (Claim 2), and “coupled” (Claim
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`23) - Plain and ordinary meaning, which includes direct and indirect attachment,
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`connection, and coupling.
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`B. Anticipation
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`21.
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`I have been told the following legal principles apply to analysis of
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`patentability pursuant to 35 U.S.C. §102, a provision in the patent law regarding
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`anticipation. I have been told that, in an inter partes review proceeding, a patent
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`claim may be deemed unpatentable if it is shown by preponderance of the evidence
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`(i.e., it is more likely than not) that the claim was anticipated by a prior-art patent or
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`publication.
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 9 of 84
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`22.
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`I have been told that for a claim to be anticipated, every limitation of the
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`claimed invention must be disclosed by a single prior-art reference, viewed from the
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`perspective of a person of ordinary skill in the art.
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`23.
`
`I have been informed by counsel that whether the single item of prior art
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`anticipates every one of the elements is evaluated from the view of a person of
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`ordinary skill in the art from his or her review of the particular piece of prior art. I
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`have also been informed and understand that the description in the prior art reference
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`does not have to be in the same words as the claim, but all the limitations must be
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`present, either expressly or inherently, so that someone of ordinary skill in the art
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`looking at the reference would have everything necessary to make and use the
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`claimed invention.
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`C. Obviousness
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`24.
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`I understand that a patent claim is deemed invalid as “obvious” if it would
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`have been obvious to a person of ordinary skill in the art at the time the invention
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`was made. I also understand that under 35 U.S.C. § 103, a patent is invalid if the
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`differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said subject
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`matter pertains. Obviousness may be shown by considering more than one item of
`Petitioner Ensign
`Exhibit 1008 - Page 10 of 84
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`DMS 301678903
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`prior art in combination with others or based on a single prior art reference in
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`combination with the general state of the art.
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`25.
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`I understand that a conclusion of obviousness may be based upon a
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`combination of prior art references. However, I also understand that a patent
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`composed of several elements may not be proved obvious merely by demonstrating
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`that each of its elements was independently known in the art. I further understand
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`that there must be an appropriate articulation of a reason to combine the elements
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`from the prior art in the manner claimed, and obviousness cannot be based on a
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`hindsight combination of components selected from the prior art using the patent
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`claims as a roadmap.
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`26.
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`In determining whether an invention is obvious, I understand that obviousness
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`is determined from the perspective of a person of ordinary skill in the art of the
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`invention. In undertaking this analysis, it is important to consider four issues: (1) the
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`scope and content of the prior art, (2) the differences between the prior art and the
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`claim under consideration, (3) the level of ordinary skill in the art, and (4) any
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`“secondary considerations” of non-obviousness.
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`27.
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`In evaluating the scope and content of the prior art, I understand that the
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`inquiry is whether the prior art was reasonably relevant to the particular problem
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`faced by the inventor(s) in making the invention covered by the patent claims. I
`Petitioner Ensign
`Exhibit 1008 - Page 11 of 84
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`DMS 301678903
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`understand that such relevant prior art includes prior art in the field of the invention
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`and also prior art from other fields that a person of ordinary skill would look to when
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`attempting to solve the problem. I further understand that, to determine obviousness,
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`the courts look to the interrelated teachings of multiple patents, the effects of
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`demands known to the design community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art.
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`28.
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`In determining the differences between the invention covered by the patent
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`claims and the prior art, I understand that the prior art references are not looked at
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`in isolation. Rather, the claimed invention as a whole must be considered, and it
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`must be determined whether or not it would have been obvious in light of all of the
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`prior art.
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`29.
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`I further understand that obviousness is determined from the perspective of a
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`person of ordinary skill in the art, and that such a person is presumed to know all
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`prior art, not just what the inventor may have known. The person of ordinary skill
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`faced with a problem is able to apply his or her experience and ability to solve the
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`problem and also look to any available prior art to help solve the problem.
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`30.
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`I understand that one rationale for determining obviousness of a claimed
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`invention is that some reason within the prior art would have led one of ordinary
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 12 of 84
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`skill to modify the prior art reference or to combine prior art teachings to arrive at
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`the claimed invention. Such reasons include the following:
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`a.
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`combining prior art elements according to known methods to yield
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`predictable results;
`
`b.
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`simple substitution of one known element for another to obtain
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`predictable results;
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`c.
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`use of a known technique to improve similar devices (methods or
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`products) in the same way;
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`d.
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`applying a known technique to a known device (method or product)
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`ready for improvement to yield predictable results;
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`e.
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`“obvious to try” – choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`f.
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`known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations would have been predicable to one of ordinary skill
`
`in the art; and
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`g.
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`some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to modify the prior art reference or to combine prior
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`art teachings to arrive at the claimed invention.
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`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 13 of 84
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`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`31.
`
`In determining whether or not the invention would have been obvious to one
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`of ordinary skill in the art at the time the invention was made, I understand that you
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`must consider whether or not the combination is more than the predictable use of
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`prior art elements according to their established functions. If a technique has been
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`used to improve one device, and a person of ordinary skill in the art would recognize
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`that it would improve similar devices in the same way, using the technique would
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`have been obvious unless the actual application is beyond that person’s skill. In
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`answering this question, I understand that it will often be necessary to consider: any
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`apparent reason to combine the known elements in the manner of the patent claims;
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`teachings of multiple references; the effects of demands that were known to the
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`community or that were present in the marketplace; and the background knowledge
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`possessed by persons of ordinary skill in the art.
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`32.
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`I understand that it is important to identify a reason that would have prompted
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`a person of ordinary skill in the art to combine the elements as the invention does.
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`Advances that would have occurred anyway in the ordinary course of development
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`of the art may have been obvious, but consideration need not be limited to the same
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`problem or same prior art elements, or same solution adopted by the inventor. I also
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`understand that obviousness may not be shown if the proposed modification or
`
`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 14 of 84
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`combination would change the principle of operation of the prior art being modified,
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`such as rendering the prior art unsatisfactory for its intended purpose.
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`33.
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`I further understand that it is appropriate to consider the level of common
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`sense and creativity of persons of ordinary skill in the art, that familiar items may
`
`have obvious uses beyond their primary purposes, and that a person of ordinary Skill
`
`in the art may be able to fit the teachings of multiple patents and/or references
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`together like the pieces of a puzzle.
`
`34.
`
`I further understand that in certain circumstances, the fact that a combination
`
`was obvious to try might show that it was obvious under § 103. For example, when
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`there is a design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp. If this leads to
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`the anticipated success, it is likely, but not necessarily, the product not of innovation
`
`but of ordinary skill and common sense.
`
`35.
`
`I understand that the reason to select and combine features, the predictability
`
`of the results of doing so, and a reasonable expectation of success may be found in
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`the teachings of the prior art references themselves, in the nature of any need or
`
`problem in the field that was addressed by the patent, in the knowledge of persons
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`having ordinary skill in the field at the time, as well as in common sense or the level
`Petitioner Ensign
`Exhibit 1008 - Page 15 of 84
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`DMS 301678903
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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`of creativity exhibited by persons of ordinary skill in the art. I further understand
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`that there need not be an express or explicit suggestion to combine references.
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`36.
`
`I further understand that if the combination of known elements yielded
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`unexpected or unpredictable results, or if the prior art teaches away from combining
`
`the known elements, then this evidence would make it more likely that the claim that
`
`successfully combined those elements was not obvious. I further understand that if
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`a reference teaches away from the invention when it would have discouraged a
`
`person of ordinary skill in the art from practicing the claimed invention, or when
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`such a person would be led in a different direction than practicing the claimed
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`invention.
`
`37.
`
`I understand that a prior art reference must be considered in its entirety, i.e.,
`
`as a whole, including portions that would lead away from the claimed invention. I
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`further understand that, when considering a disclosure or reference, it is proper to
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`take into account not only specific teachings of the reference but also the inferences
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`which one skilled in the art would reasonably be expected to draw from the
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`reference.
`
`38.
`
`In addition, I understand that objective indications of non-obviousness must
`
`also be considered. The presence of any of these indications may suggest that the
`
`invention was not obvious. I understand that no factor alone is dispositive, and that
`Petitioner Ensign
`Exhibit 1008 - Page 16 of 84
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`DMS 301678903
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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
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`the invention as a whole must be considered for obviousness or non-obviousness. I
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`also understand that these objective indications are only relevant to obviousness if
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`there is a connection, or nexus, between them and the invention of the patent claims.
`
`I understand that these objective indications include:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
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`commercial success of the products or methods covered by the patent;
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`claims;
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`a long-felt need for the invention;
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`failed attempts by others to make the invention;
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`copying of the invention by others in the field;
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`unexpected results achieved by the invention;
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`praise of the invention by the alleged infringer or others in the field;
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`the taking of licenses under the patent by others;
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`expressions of surprise by experts and those skilled in the art at the
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`making of this invention; and
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`j.
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`the patentee proceeded contrary to accepted wisdom of the prior art.
`
`39.
`
`I have been informed by counsel that there must be a nexus or a connection
`
`between the evidence showing these factors and the inventions of the asserted
`
`claims, if this evidence is to be given weight in arriving at a conclusion on the
`
`obviousness issue; for example, if commercial success is due to market position,
`Petitioner Ensign
`Exhibit 1008 - Page 17 of 84
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`DMS 301678903
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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
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`advertising, promotion, salesmanship, or the like, or is due to features of the products
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`other than those described in the asserted claims, then any commercial success may
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`have no relation to the issue of obviousness.
`
`40.
`
`I have been informed by counsel that, in my determination of obviousness, I
`
`must consider whether the patent owner of record (or such other person claiming the
`
`right to enforce the patent; hereafter “Patent Owner”) has demonstrated not only that
`
`such secondary considerations exist, but also whether Patent Owner has proven that
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`there is sufficient nexus between these considerations and the claimed invention –
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`in other words whether the claimed inventions in the patent contributed to these
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`secondary considerations rather than the considerations being due to other features
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`of the allegedly accused products, or any other actions taken in producing and
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`marketing the accused products.
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`41.
`
`I have been informed by counsel that Patent Owner has the burden of proving
`
`any secondary consideration by a preponderance of the evidence, i.e., that Patent
`
`Owner must produce evidence which, considered in the light of all the facts, leads
`
`one to believe that what Patent Owner claims is more likely true than not; but that I
`
`DMS 301678903
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`Petitioner Ensign
`Exhibit 1008 - Page 18 of 84
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`

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`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`should keep in mind, that Ensign continues to bear the ultimate burden of proving
`
`invalidity by a preponderance of the evidence.1
`
`V. LEVEL OF SKILL IN THE ART
`42.
`I am informed and understand that a person of ordinary skill in the art is a
`
`hypothetical person presumed to have known the relevant art at the time of the
`
`alleged invention. I am informed and understand that factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (A) the type of
`
`problems encountered in the art; (B) prior art solutions to those problems; (C) the
`
`rapidity with which innovations are made; (D) the sophistication of the technology;
`
`and (E) the educational level of active workers in the field.
`
`43. Upon consideration, in my opinion, a person of ordinary skill in the art
`
`(“POSITA”) is someone who would have had at least a bachelor’s degree in
`
`petroleum engineering, mechanical engineering, civil engineering, construction,
`
`architecture, or a similar degree with a year or more experience working on or around
`
`
`1 I am not aware at this time of any secondary consideration asserted by C&M
`
`Oilfield Rentals LLC as the Patent Owner of Record as to the ‘016 Patent (C&M
`
`Oilfield Rentals LLC is referred to herein as the “Patent Owner of Record”).
`
`DMS 301678903
`
`Petitioner Ensign
`Exhibit 1008 - Page 19 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`rigs, such as a drilling rig, where one or more lighting systems were used to
`
`illuminate the wellsite.
`
`44. Lack of work experience could have been remedied by additional education,
`
`and vice versa. Such academic and industry experience would be necessary to
`
`appreciate what was obvious and/or anticipated in the industry and what a POSITA
`
`would have thought and understood at the time.
`
`45.
`
`I have been informed that the earliest possible priority date of the ‘016 Patent
`
`is the provisional filing date of March 15, 2018. At that time, I possessed more than
`
`such experience and knowledge of a POSITA; hence, I am qualified to opine on the
`
`‘016 Patent.
`
`VI. THE ‘016 PATENT SPECIFICATION
`46. The ‘016 Patent describes a light unit attached to the frame of a drilling rig
`
`which includes a mounting pole 240, a light fixture 248 having a light, and a bracket
`
`242, 244 configured to attach the mounting pole to the drilling rig. The light unit is
`
`standalone but can be part of a system that includes a plurality of light units that are
`
`mounted independently from each other to form what the ‘016 Patent describes as
`
`modular system. Ex. 1001, 2:25-61; Figs. 9A-9F.
`
`47. Figure 9F shows the described system installed on a rig. Ex. 1000, Fig. 9F.
`
`DMS 301678903
`
`Petitioner Ensign
`Exhibit 1008 - Page 20 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`
`
`
`DMS 301678903
`
`Petitioner Ensign
`Exhibit 1008 - Page 21 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`VII. THE PRIOR ART
`A. Overview and State of the Prior Art as of 20182
`
`48. The following table summarizes some prior art that discloses early electrical
`
`lights including both incandescent lighting and energy efficient light emitting diodes
`
`(LED).
`
`49. Early Electrical Lights and LED Lighting
`
`EX.
`NO.
`1020
`
`1021
`
`Patent No.,
`Published
`Publication No.,
`
`Appl. No.
`8-29-1876 U.S. Pat. 181,613
`to Woodward et
`al.
`1-27-1880 U.S. Pat. 223,898
`11-04-
`to Edison
`1878
`1022 7/31/2012 5/21/2015 U.S.
`2015/0138780 to
`Yoshizawa et al.
`
`Filed
`
`1-04-
`1875
`
`Description /
`Title
`Electric Light
`
`Electric-Lamp
`
`Illumination
`Device
`
`Assignee /
`Owner
`Edison
`Electric
`
`Edison
`Electric
`Mitsubishi
`Chem.
`Corp.
`
`
`
`50. Thus, the electric light bulb has existed in the prior art since as early as 1875,
`
`for providing illumination.
`
`
`2 The Patent Owner of Record is well-aware of the prior art in these tables because
`
`I understand that it was disclosed by Ensign in its preliminary invalidity contentions.
`
`DMS 301678903
`
`Petitioner Ensign
`Exhibit 1008 - Page 22 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`51. The following table summarizes some prior art that discloses elevated lighting
`
`systems including lighting towers:
`
`52. Elevating Lighting Systems
`
`EX.
`NO.
`
`Filed
`AIA
`(35 U.S.C.
`§ 102)
`1023 7/16/1970
`
`Published
`Patent No.,
`AIA
`Publication
`(35 U.S.C.
`No., Appl. No.
`§ 102)
`10/3/1972 U.S.
`Pat.
`3,696,241
`to
`Meyer et al
`1024 12/15/1969 12/24/1974 U.S.
`3,856,639
`Rohn t al.
`
`Pat.
`to
`
`1025 9/23/1987
`
`1026
`
`6/9/1988
`
`2/27/1990 U.S.
`4,903,442
`Trommen
`
`Pat.
`to
`
`6/26/1990 U.S.
`Pat.4,937,717 to
`Betzvog, Jr.
`
`Pat.
`1027 10/28/1992 12/21/1993 U.S.
`5,272,611 to Lai
`
`1028 5/20/1998
`
`12/5/2000 U.S.
`6,155,696
`Winton et al.
`
`Pat.
`to
`
`DMS 301678903
`
`Description /
`Title
`
`Assignee /
`Owner
`
`Light Fixture
`Tower
`
`Meyer
`Mfg. Inc.
`
`High-Level
`Light Tower
`with
`Light
`Lowering
`and
`Device
`Control Sys.
`Mast
`for
`Measuring or
`Illumination
`Purposes
`Lighting
`System
`Hazardous
`Areas
`Electrical Cord
`Assy
`for
`Illumination-
`Adjustable
`Lighting
`Fixture
`Lighting Assy
`Raised
`and
`Lowering
`Along Pole
`
`for
`
`Rohm Mfg.
`Co
`
`G.A.
`Pfleiderer
`GmbH &
`Co. KG
`Betzvog, Jr.
`
`Lai
`
`NSI
`Enterprises,
`Inc.
`
`Petitioner Ensign
`Exhibit 1008 - Page 23 of 84
`
`

`

`Declaration of Jake Hamdan supporting Petition for Inter Partes Review of
`U.S. Patent No. 10,976,016
`
`
`
`Light Tower
`
`
`
`Arm
`Single
`Mogul Mount
`for
`Sports
`Lighting
`Fixtures
`Assy of LED
`for
`Lighting
`Applications
`Compact and
`Adjustable
`LED Lighting
`Apparatus and
`Method
`Lighting Assy
`Raised
`and
`Lowering
`Along Pole
`Composite
`Photometric
`Method
`Portable
`Lighting Unit
`
`Light
`Adjustment
`Apparatus
`Low-Profile
`Collapsible
`Lighting
`System
`Mobile
`Lighting
`Apparatus
`
`Musco
`Corp
`
`
`
`Musco
`Corp
`
`NSI
`Enterprises,
`Inc.
`
`Mycro-
`Group Co
`
`Century
`&
`Mft
`Equip Inc.
`Genie
`Indus. Inc.
`
`Magnum
`Power
`Prods, LLC
`
`
`
`Petitioner Ensign
`Exhibit 1008 - Page 24 of 84
`
`1029 1/30/1905
`
`1030 1/18/2006
`
`Pat.
`to
`
`5/2/1905 U.S.
`788,707
`Coverstone
`8/10/2006 US
`2006/0176708
`to Gordin et al.
`
`1031 12/6/2005
`
`1032 2/25/2011
`
`9/4/2008 US
`2008/0212329
`to Duguay et al.
`8/30/2012 US
`2012/0217897
`to Gordin et al.
`
`1033 5/20/1998
`
`12/5/2000 U.S