`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
`________________
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`

`I. 
`II. 
`
`V. 
`
`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 7 
`IPR Requirements ............................................................................................ 8 
`A. 
`Standing ................................................................................................. 8 
`B. 
`Challenge ............................................................................................... 8 
`III.  Background .................................................................................................... 12 
`A. 
`The ‘016 Patent ................................................................................... 13 
`B. 
`The Relevant Prosecution History of the ‘016 Patent ......................... 14 
`IV.  Expert Testimony, Level of Skill in the Art, Claim Construction ................ 19 
`A.  Declaration Evidence .......................................................................... 19 
`B. 
`Level of Skill in the Art ....................................................................... 19 
`C. 
`Claim Construction ............................................................................. 19 
`Prior Art ......................................................................................................... 22 
`A. 
`PCT Publication WO 2018/0423348 (“Gowanlock”) ......................... 23 
`B. 
`Swivelpole Product Catalogue NEC V2-4. Printed March
`2014 (“Swivelpole catalog”) ................................................................ 25 
`Chinese Patent No. 203215413U (“Chinese ‘413”) ............................ 27 
`Larson Electronics / Magnalight YouTube video at
`https://www.youtube.com/watch?v=EWXJeKNRs00
`(copyright 2004-2012) (Ex. 1006) ...................................................... 28 
`Admitted Prior Art in the ‘016 Patent ................................................. 31 
`E. 
`VI.  Motivation to Combine .................................................................................. 33 
`A.  Gowanlock and Swivelpole catalog .................................................... 33 
`
`C. 
`D. 
`
`- i -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`B. 
`
`C. 
`
`Swivelpole catalog and Chinese ‘413 in light of Admitted prior
`art in ‘016 Background and Figure 1 ................................................... 38 
`Larson Electronics / Magnalight YouTube video at
`https://www.youtube.com/watch?v=EWXJeKNRs00 in light of
`Admitted Prior Art in ‘016 Background and Figure 1 ......................... 44 
`VII.  Claims 1, 2, and 23 Are Invalid ..................................................................... 51 
`A.  Ground 1: Claims 1, 2, and 23 are Anticipated by Gowanlock ......... 51 
`B. 
`Ground 2: Claims 1, 2, and 23 are Obvious Over Gowanlock
`in view of Swivelpole catalog .............................................................. 58 
`Ground 3: Claims 1, 2, and 23 are Obvious Over Swivelpole
`Catalog and Chinese ‘413 in light of Admitted Prior Art .................... 70 
`D.  Ground 4: Claims 1, 2, and 23 are Obvious Magnalight
`YouTube Video in light of Admitted Prior Art ................................... 80 
`VIII.  Secondary Considerations Cannot Overcome the Strong Evidence of
`Obviousness ................................................................................................... 89 
`IX.  This Petition Should Not Be Discretionarily Denied .................................... 89 
`X. 
`Conclusion ..................................................................................................... 93 
`XI.  Mandatory Notices ......................................................................................... 93 
`A. 
`Real Parties in Interest (37 C.F.R. § 42.8(b)(1)) ................................. 93 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 93 
`C. 
`Designation of Lead and Backup Counsel (37 C.F.R. §
`42.8(b)(3)) and Service Information (37 C.F.R. § 42.8(b)(4))............ 94 
`Payment of Fees (37 C.F.R. § 42.103) ................................................ 94 
`D. 
`Power of Attorney (37 C.F.R. § 42.10) ............................................... 95 
`E. 
`CERTIFICATE OF SERVICE ................................................................................. 97 
`
`
`C. 
`
`- ii -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`EXHIBIT LIST
`
`
`Exhibit No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1006-A
`
`1007
`
`1008
`
`1009
`
`
`1010
`
`1011
`
`1012
`
`Description
`U.S. Patent No. 10,976,016 (“the ‘016 Patent”)
`
`Prosecution History of U.S. Patent No. 10,976,016
`
`WO 2018/042348 (“Gowanlock”)
`
`Swivelpole Product Catalogue NEC V2-4. Printed March 2014
`(Swivelpole Catalog)
`
`Certified Translation of Chinese Patent No. 203215413U
`(Chinese ‘413)
`
`Larson Electronics / Magnalight YouTube video (copyright
`2004-2012)
`
`Screenshot of Larson Electronics / Magnalight YouTube video
`(copyright 2004-2012) page
`
`Curriculum Vitae of Jake Hamdan
`
`Declaration of Jake Hamdan
`
`‘016 Claim Construction Order in C&M Oilfield Rentals, LLC v.
`Apollo Lighting Solutions, Inc. and Cleantek Industries, Inc., Civil
`Action No. 6:21-CV-00544-ADA, Western District of Texas,
`Waco Division
`
`Docket sheet showing April 1, 2023 date of service of complaint
`
`June 9, 2022 K. Vidal Memo on Admissions
`
`Collection of Rig Photos referred to in Hamdan declaration;
`named as Ex. 1012-1, 1012-2, 1012-3, 1012-4, 1012-5, 1012-6,
`and 1012-7
`
`
`- iii -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`Exhibit No.
`
`1012-A
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Description
`Collection of Rig Photos referred to in Hamdan declaration;
`names as Ex. 1012-A-1, 1012-A-2, and 1012-A-3
`
`Photos referred to in Hamdan declaration; named as Ex. 1013-1,
`1013-2, and 1013-3
`
`Screen capture of 2017 Lighting Catalog referred to in Hamdan
`declaration from Wayback Machine link at Scaffold / Rail
`Mount Rig Lights - Larson Electronics (archive.org)
`
`Collection of YouTube Videos referred to in Hamdan declaration
`as Exhibits 1015-1 to 1015-4
`
`Patent Owner of Record March 27, 2023 Proposed Claim Terms
`
`Dkt. 35 C&M v. Ensign Scheduling Order
`
`Director Vidal Memorandum re: Interim Procedure for
`Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation, June 22, 2022
`
`US Publication 2015/0184840 (2015 Gowanlock ‘840)
`
`U.S. Pat. 181,613 to Woodward et al.
`
`U.S. Pat. 223,898 to Edison
`
`U.S. 2015/0138780 to Yoshizawa et al.
`
`U.S. Pat. 3,696,241 to Meyer et al.
`
`U.S. Pat. 3,856,639 to Rohn t al.
`
`U.S. Pat. 4,903,442 to Trommen
`
`U.S. Pat.4,937,717 to Betzvog, Jr.
`
`U.S. Pat. 5,272,611 to Lai
`
`- iv -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`Exhibit No.
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`Description
`
`
`U.S. Pat. 6,155,696 to Winton et al.
`
`U.S. Pat. 788,707 to Coverstone
`
`US 2006/0176708 to Gordin et al.
`
`
`US 2008/0212329 to Duguay et al.
`
`US 2012/0217897 to Gordin et al.
`
`U.S. Pat. 6,155,696 to Winton et al.
`
`U.S. Pat. 4,450,507 to Gordin
`
`U.S. Pat. 5,272,609 to Nelson
`
`U.S. Pat. 6,607,285 to Citron et al.
`
`U.S. Pat. 8,172,438 to Konop
`
`U.S. Pat. 8,439,534 to Roe et al.
`
`U.S. Pat. 8,734,163 to Gordin et al.
`
`U.S. Pat. 8,931,932 to Lipscomb et al.
`
`US 2003/0137840 to Citron et al.
`
`US 2016/0109079 to McKinley et al.
`
`US 2017/0141721 to Schmidt
`
`U.S. Pat. 2,895,039 to Hutchison
`
`US 200/0266859 to Palmisano, Jr.
`
`- v -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`Exhibit No.
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`
`
`Description
`
`
`U.S. Pat. App. Publ. 2005/0083690A1 to Griffin
`
`U.S. Patent No. 1,706,215 to Davidson
`
`U.S. Patent No. 3,358,952 to Burns
`
`U.S. Patent No. 4,595,165 to Klingensmith et al.
`
`U.S. Patent No. 5,060,435 to Bogdanow
`
`U.S. Patent No. 6,283,425 to Liljevik
`
`U.S. Patent No. 6,768,474 to Hunt
`
`U.S. Patent Publ. 2005/0184207 to Bertram III
`
`C&M expert declaration excerpt on POSITA
`
`
`- vi -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`I.
`
`Introduction
`Ensign US Southern Drilling LLC (“Petitioner”) petitions for IPR of claims 1,
`
`2, and 23 of U.S. Patent 10,976,016 (“‘016 Patent”), assigned to C&M Oilfield
`
`Rentals, LLC D/B/A C-Mor Energy Services according to the USPTO assignment
`
`records (“Patent Owner of Record”). Claims 1 and 23 are independent claims while
`
`claim 2 is a dependent claim.1
`
`The ‘016 patent (Ex. 1001) is entitled, “Elevated Structure-Mounted Lighting
`
`System”. Claims 1, 2, and 23 introduce nothing new or nonobvious in the art of
`
`lighting systems generally, and the lighting of drilling rigs specifically. The ‘016
`
`patent admits in the Background that “To ensure even and effective lighting of the well
`
`site, lighting systems have previously been installed on the uppermost portion of the
`
`drilling rig, also referred to as the “crown” of the rig.” Ex. 1001, p.1 of 24, col.1, lines
`
`14-17. Independent claims 1 and 23 simply recite attaching a plurality of lights on
`
`mounting poles to the crown deck. Ex. 1001, p.24 of 24. Claim 1 simply requires a
`
`bracket to attach the pole with a light to the crown deck while claim 23 does not even
`
`state how it is attached. Ex. 1001, p.24 of 24. Dependent claim 2 simply uses bolts –
`
`a common fastener – to connect the bracket. Ex. 1001, p.24 of 24.
`
`
`1 Without explanation, the Patent Owner of Record disclaimed claims 3 and 4 of the
`
`‘016 Patent on June 16, 2022. Ex. 1002, p.1 of 371.
`
`- 7 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`As shown below, the use of lights on poles (with or without brackets and/or
`
`bolts) was well-known at the time for attaching lights to, for example, decks and
`
`handrails that are commonly found on elevated structures such as rigs. During
`
`prosecution the prior art in this Petition was not applied by the Examiner to the claims
`
`nor distinguished by the Patent Owner of Record.
`
`II.
`
`IPR Requirements
`A.
`Standing
`Petitioner certifies the ‘016 Patent is available for IPR and Petitioner is not
`
`barred or estopped from requesting IPR. The ‘016 Patent issued on April 13, 2021.
`
`This Petition is filed within one year of service of the Complaint against Petitioner
`
`alleging infringement of the ‘016 Patent. (Ex. 1010, p.3 of 6, Dkt. Entry 10 of docket
`
`sheet showing April 1, 2022 date of service) and the Petition is not barred under 35
`
`U.S.C. § 315(b).
`
`B. Challenge
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.104(b), this Petition requests
`
`cancellation of claims 1, 2, and 23 as anticipated or alternatively obvious based on
`
`the following prior art references:
`
` PCT publication WO 2018/042348 (“Gowanlock”). Ex. 1003.
`
`- 8 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
` Swivelpole Product Catalogue NEC V2-4. Printed March 20142
`
`(“Swivelpole catalog”). Ex. 1004.
`
` Chinese Patent No. 203215413 (“Chinese ‘413”). Ex. 1005.
`
` Larson Electronics / Magnalight YouTube video (copyright 2004-
`
`2012) published April 18, 2012. Ex. 1006.3
`
`
`2 The publication date is shown at the bottom of Exhibit 1004 at page 5 of 28.
`
`3 The PTAB and federal courts recognize that publicly available and disseminated
`
`videos, including videos available on YouTube, are “printed publications” and
`
`appropriate as a basis to institute an IPR. MerchSource, LLC v. DODOCase VR, Inc.,
`
`No. IPR2018-00494, 2018 WL 4043241, *8 (P.T.A.B. August 22, 2018) (YouTube
`
`video supported institution of IPR); Cartessa Aesthetics, LLC v. Serendia, LLC, No.
`
`IPR2022-00593 2022 WL 3337271 (P.T.A.B. August 12, 2022) (concurrence) (a video
`
`is a printed publication if it is publicly accessible; video at issue was accessible and
`
`thus a printed publication, citing Acco Brands Corp. v. Think Prods., Inc., 2015 WL
`
`6232937, *7 (P.T.A.B. Oct. 21, 2015) (finding that “product video” published on
`
`website qualifies as “printed publication” (citing In re Wyer, 655 F.2d 221, 227 (CCPA
`
`1981); Manual of Patent Examining Procedure (“MPEP”) § 2128 (9th ed.2014)); LKQ
`
`Corporation v. GM Global Technology Operations LLC, No. PGR2020-00054, 2020
`
`- 9 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
`WL 6065196 *15 (P.T.A.B. Oct. 13, 2020) (videos available on Wayback Machine
`
`and YouTube relied on by Petitioner); DJI Technology, Inc. v. Remote Imaging
`
`Solutions, LLC, No. IPR2020-00345, 2020 WL 3549114 *5 (P.T.A.B. June 30, 2020);
`
`Intex Recreation Corp. v. Bestway Inflatables & Material Corp., 2017 WL 2312915,
`
`*10 (PTAB May 26, 2017) (holding challenged claims unpatentable as obvious “over
`
`the Intex Video and Blomquist”); Ex Parte Mettke, 2008 WL 4448201, *6 (P.T.A.B.
`
`Sept. 30, 2008) (finding “video tape” qualifies as “printed publication” under the
`
`statute because “the key ... is the ‘probability of dissemination’ rather than form”). See
`
`also Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (citation
`
`omitted) (whether a reference qualifies as a "printed publication” is a legal conclusion
`
`based on underlying factual determinations); HVLPO2, LLC v. Oxygen Frog, LLC,
`
`Slip Copy 2018 WL 11413543 (N.D. Fl. May 28, 2018) (YouTube video was a
`
`“printed publication”); Apple, Inc. v. Samsung Electronics Co., Ltd., 877 F.Supp.2d
`
`838 , 885-85 (N.D. Ca. July 1, 2012) rev’d on other grounds, 695 F.3d 1370 (Fed. Cir.
`
`2012) (video was printed publication because it disseminated at conferences and was
`
`publicly accessible).
`
`
`
`- 10 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`2
`
`3
`
` § 103
`
` § 103
`
`The statutory grounds4 are:
`Ground 35 U.S.C. Claims References
`WO 2018/042348 (“Gowanlock”)
`1
`§ 102
`1, 2, and
`23
`
`1, 2, and
`23
`1, 2, and
`23
`
`Gowanlock in view of Swivelpole catalog
`
`Swivelpole catalog and Chinese ‘413 in light of
`Admitted prior art in ‘016 Background and
`Figure 1
`Larson Electronics / Magnalight YouTube
`video in light of Admitted prior art in ‘016
`Background and Figure 1
`https://www.youtube.com/watch?v=EWXJeKN
`
`4
`
` § 103
`
`1, 2, and
`23
`
`
`As demonstrated by Ex. 1008, Declaration of Jake Hamdan, including at paragraphs
`
`54 and 65, Exhibit 1006 Larson Electronics / Magnalight YouTube video (copyright
`
`2004-2012) published April 18, 2012 and is a publicly accessible and disseminated
`
`video found by a search on YouTube.
`
`4 Grounds 3 and 4 are permissible because each rely upon a prior art reference and
`
`admissions and/or POSITA’s general knowledge as establishing the background
`
`knowledge possessed by a person of ordinary skill in the art which provide a factual
`
`foundation as to what a skilled artisan would have known at the time of the invention.
`
`As such, neither the admissions or POSITA’s general knowledge are not “the basis”
`
`of the ground and therefore permissible. See, e.g., Ex. 1011, June 9, 2022 K. Vidal
`
`Memo on Admissions.
`
`- 11 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`Rs00 in light of Admitted Prior Art in ‘016
`Background and Figure 1
`
`
`
`The record establishes a reasonable likelihood of prevailing on each ground.
`III. Background
`The ‘016 Patent issued on April 13, 2021, and is a continuation-in-part of U.S. Patent
`
`Application No. 16/571,527, filed on September 16, 2019, now U.S. Patent No. 10,
`
`900, 626, which is a continuation of application No. 16/138,723, filed on Sep. 21, 2018
`
`, now U.S. Pat. No. 10,473,282, which is a continuation-in- part of application No.
`
`16/009,032, filed on Jun. 14, 2018, now U.S. Pat. No. 10,711,961, which also claims
`
`priority to U.S. Provisional Application No. 62/643,663, filed on March 15, 2018.
`
`Thus, the earliest possible effective filing date of the ‘016 Patent is March 15, 2018
`
`and post-AIA law applies.5
`
`
`5 Petitioner does not concede that the ‘016 Patent is entitled to the March 15, 2018
`
`provisional filing date. However, the effective priority date is irrelevant to this IPR
`
`because all the prior art references in the asserted grounds of invalidity are prior to the
`
`provisional filing date.
`
`- 12 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`A. The ‘016 Patent
`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 units
`
`are part of a system that includes a plurality of light units that are mounted
`
`independently from each other. Ex. 1001, p.2 of 24, col. 2, lines 25-61; Figs. 9A-
`
`9F. Figure 9F below shows a described system installed on a rig. Ex. 1001, p.16 of 24.
`
`- 13 -
`
`
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`FIG. 9F of the ‘016 Patent Ex. 1001, Fig. 9F.
`
`
`B.
`The Relevant Prosecution History of the ‘016 Patent
`The ‘016 patent was filed on September 9, 2020, as U.S. Patent Application No.
`
`17/016,083 (“the ‘083 application”). Ex. 1001, p.1 of 24.
`
`Asserted claims 1, 2, and 23 were rejected twice during prosecution under 35
`
`U.S.C. 102(a)(l) and 102(a)(2) as being anticipated by US Publication 2015/0184840
`
`to Gowanlock cited by examiner (the “2015 Gowanlock ‘840”). Ex. 1002, pp. 80-85
`
`and pp. 55-61 of 371. In order to overcome these rejections, in an after-final
`
`amendment, the Applicant amended independent claims 1 and 27, now claims 1 and
`
`23 in the ‘016 patent, to add the underlined portions to recite:
`
`1. (Currently Amended) A modular lighting system mounted
`
`on a rig, the modular lighting system comprising: a plurality
`
`of light units, each light unit separately attached to a crown
`
`deck of the rig, and each light unit comprising: a mounting
`
`pole; a light fixture comprising one or more lights; and a
`
`bracket configured to attach the mounting pole to the [[a]]
`
`crown deck of the rig.
`
`- 14 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`27. (Currently Amended) A rig comprising: a derrick; a
`
`crown deck at the top of the derrick; and a plurality of light
`
`units, each light unit separately attached to the crown deck,
`
`each light unit comprising: a mounting pole, wherein each
`
`light unit comprises a separate mounting pole, such that the
`
`system comprises a plurality of mounting poles; and a light
`
`fixture comprising one or more lights, the light fixture
`
`coupled to the mounting pole. Ex. 1002, pp.37-45 of 371.
`
`The Examiner allowed the claims without any meaningful explanation, stating,
`
`as follows:
`
`The following is an examiner’s statement of reasons for
`
`allowance: The amendments to independent claims 1, 22,
`
`and 27 render them allowable over the prior art; claims 2-14,
`
`23-26, and 28-36 are allowable based on their dependence
`
`from one of the independent claims. Ex. 1002, pp.15-19 of
`
`371.
`
`The two rejections described above were over the 2015 Gowanlock ‘840. Ex.
`
`1019. Fig. 1 below from 2015 Gowanlock ‘840 depicts what the ‘016 Patent describes
`
`in the Background as:
`
`- 15 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`fixed, monolithic structures that are typically crown or frame
`
`systems, with a single size and layout accommodating one
`
`type of light and rig. Because they are a single structural unit,
`
`they are heavy and typically require cranes along with
`
`multiple workers for installation, removal, and adjustments.
`
`Ex. 1001, p.21 of 24, col. 1, lines 23-28.
`
`
`
`- 16 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`The ‘016 Patent passage above overstates the problem because the prior art
`
`available to a POSITA includes much more than “fixed, monolithic structures that are
`
`typically crown or frame systems.” That is, the prior art available to a POSITA
`
`included lighting components for elevated structures like rigs such as, for example,
`
`brackets, poles, and bolts that were commonly attached to a deck or a surrounding
`
`handrail. The motivation for a POSITA to use these known available components was
`
`stated right in the Background of the ‘016 Patent which explained the need for lighter,
`
`easier to install, and safer lighting than the monolithic structure. Ex. 1001, p.21 of 24,
`
`col. 1, lines 23-39.
`
`During prosecution of the ‘016 Patent the sole focus in both rejections was the
`
`fixed, monolithic structure of 2015 Gowanlock ‘840 while the other available prior art
`
`such as that described in the instant Petition was not applied by the Examiner. Nor
`
`was the other available prior art such as that described in the instant Petition
`
`distinguished by the Patent Owner of Record. Accordingly, there is no overlap
`
`between the arguments made during examination and the manner in which the Petition
`
`- 17 -
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`relies on and presents the prior art so the Petition should not be denied on the basis of
`
`35 U.S.C. § 325(d).6
`
`
`6 In evaluating whether to deny institution on the basis of 35 U.S.C. § 325(d), the Board
`
`has considered certain non-exclusive factors. See Becton Dickinson & Co. v. B. Braun
`
`Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper
`
`8) (precedential in relevant part). The Becton Dickinson non-exclusive factors include:
`
`1. the similarities and material differences between the asserted art and the prior art
`
`involved during examination; 2. the cumulative nature of the asserted art and the prior
`
`art evaluated during examination; 3. the extent to which the asserted art was evaluated
`
`during examination; 4. the extent of the overlap between the arguments made during
`
`examination and the manner in which a petitioner relies on the prior art or a patent
`
`owner distinguishes the prior art; 5. whether a petitioner has pointed out sufficiently
`
`how the Office erred in evaluating the asserted prior art; and 6. the extent to which
`
`additional evidence and facts presented in the petition warrant reconsideration of the
`
`prior art or arguments.
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`
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`IV. Expert Testimony, Level of Skill in the Art, Claim Construction
`A. Declaration Evidence
`This Petition is supported by the declaration of Jake Hamdan. Ex. 1008.
`
`B.
`Level of Skill in the Art
`The ’016 Patent describes lighting systems for drilling rigs. Ex. 1001, abstract.
`
`A person of ordinary skill in the art (“POSITA”) 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
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`working on or around rigs, such as a drilling rig, where one or more lighting systems
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`were used to illuminate the wellsite. Ex. 1008, ¶¶42-43. Additional practical
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`experience would substitute for lack of a formal degree. Id., ¶44.7
`
`C. Claim Construction
`The claim terms of the ’016 Patent are construed under Phillips, considering
`
`the plain meaning of the claim terms to a POSITA.8 While it is currently believed
`
`
`7 An expert for Patent Owner of Record had a similar POSITA definition in a related
`
`case. Ex. 1054, pp.2-3 of 4.
`
`8 Petitioner neither concedes each claim satisfies all statutory requirements, such as
`- 19 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`that no terms need to be expressly construed for purposes of this IPR because the
`
`plain and ordinary meaning applies, the following claim constructions may be
`
`employed9:
`
`“crown deck” (Claims 1, 2, and 23) - A “crown” is the collection of structures
`
`at the uppermost portion of a drilling rig, and the “crown deck” is a collection of
`
`structures within the crown that includes a walking surface, parts supporting the
`
`walking surface, and any associated handrail.10
`
`
`§§ 101 and 112, nor waives any argument concerning claim scope or grounds that
`
`can only be raised in district court.
`
`9 Patent Owner of Record has only asserted that “crown deck” and “mounting pole”
`
`require any sort of construction in the current related district court case. Ex. 1016, p.2
`
`of 3.
`
`10 Patent Owner of Record previously proposed a plain and ordinary meaning of “the
`
`portion of the crown on which a person can walk and including any associated
`
`handrail.” Ex. 1009, p.5 of 19.
`
`- 20 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`“mounting pole” (Claims 1 and 23) - A “mounting pole” is a pole used for
`
`mounting something. Both “mounting” and “pole” have their plain and ordinary
`
`meanings.11
`
`“bracket” (Claims 1 and 2) - A component or components connecting one part
`
`to another or holding a part.
`
`“attached” (Claims 1 and 23), “connected” (Claim 2), and “coupled” (Claim
`
`23) - Plain and ordinary meaning, which includes direct and indirect attachment,
`
`
`11 Patent Owner of Record previously proposed “mounting pole” means plain and
`
`ordinary meaning of “elongated structure for mounting where the length of the
`
`structure far exceeds the width.” There is no support in the intrinsic record for this
`
`specific construction. The District Court properly rejected it saying that “A pole can
`
`be cut shorter and still remain a pole, even if its length no longer far exceeds the width
`
`as proposed.” Ex. 1009, p.7 of 19. The specification supports this as it expressly does
`
`not require any particular mounting pole length or width configuration stating, “As one
`
`of skill in the art would understand from reading the foregoing description, it is not
`
`necessary that the light fixtures 248 be attached to the rig or other structure using
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`mounting poles that have the particular configuration shown in FIGS. 2-8.” Ex. 1001,
`
`p.23 of 24..
`
`- 21 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`connection, and coupling. The above claim constructions were those adopted in a
`
`Claim Construction Order and Memorandum by a Western District of Texas Court in
`
`a prior lawsuit involving the ‘016 Patent and a party other than Petitioner. Ex. 1009,
`
`pp.17-18 of 19.12
`
`V.
`
`Prior Art
`None of the prior art relied upon in the Petition was employed in any rejection
`
`in the ‘016 file history.13
`
`
`12 Whether the Court’s actual constructions or the Patent Owner of Record’s asserted
`
`constructions described in the cited claim construction are employed is irrelevant for
`
`purposes of the instant IPR and the asserted grounds of invalidity as in either case the
`
`claims are anticipated or obvious.
`
`13 Pages 5-9 of the Swivelpole catalog appears on the face of the ‘016 Patent. Ex.
`
`1001, p.1 of 24. CA3034206 listed on the face of the ‘016 Patent is a Canadian
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`counterpart of PCT Publication WO 2018/0423348 (“Gowanlock”). Ex. 1001, p.1 of
`
`24.
`
`- 22 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`A.
`PCT Publication WO 2018/0423348 (“Gowanlock”)
`Gowanlock was filed August 30, 2017 claiming priority to an August 30, 2016
`
`provisional. Ex. 1003. Gowanlock published on March 8, 2018 and is prior art under
`
`at least post-AIA 35 U.S.C. § 102(a)(1). Ex. 1003.
`
`Gowanlock describes a drilling rig “including a derrick or mast and crown,
`
`having a drilling site lighting system attached thereto, comprising at least one light
`
`fixture attached directly to the crown on each of at least two sides, wherein the light
`
`fixture contains a fixed or removable light fixture attachment connecting the light
`
`fixture to the crown.” Ex. 1003, paragraph [0008].
`
`Figure 1 of Gowanlock shown below depicts a modular lighting system mounted
`
`on a rig. Ex. 1003, p.10 of 16, Figure 1A.
`
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
`
`A plurality of lights are attached to the crown deck at the top of the derrick with each
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`light being separately attached using a pole, a bracket, and bolts as shown in Figure
`
`1A above and Figure 1B and Figure 2 below. Ex. 1003, pp.10-11 of 16, Figures 1A,
`
`1B, and 2.
`
`- 24 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
`
`B.
`
`Swivelpole Product Catalogue NEC V2-4. Printed March 2014
`(“Swivelpole catalog”)
`The Swivelpole catalog was printed in March 2014. Ex. 1004. The Swivelpole
`
`catalog is prior art under at least post-AIA 35 U.S.C. § 102(a)(1). The Swivelpole
`
`catalog expressly notes that it is useful in the oil and gas industry and notes that it may
`
`be mounted in many different configurations including to handrails which it refers to as
`
`“guardrails”. Ex. 1004, p.8 of 28. As shown in the Swivelpole catalog, figures S1 and
`
`S3 below depict mounting configurations that, of course, include brackets and bolts.
`
`See, for example, Ex. 1004, p.6 of 28, Figures S1 and S3, p.18 of 28 stating “It features
`
`a sturdy right angle bracket which simply bolts to an existing structure.”
`
`- 25 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
`
`The Swivelpole catalog further states:
`
`
`
`Swivelpole™ solves all your lighting maintenance and upgrade problems in
`
`one smart move. It's unique, globally patented swivel mechanism lets you
`
`lower – and rotate – a light fitting to a safe working level in minutes. No
`
`ladders, no scaffolding, and no fall arrest systems.
`
`Swivelpole™ can be built-in to new facilities, or easily retrofitted without
`
`welding so there’s no need for hot work permits. And once fitted, you can
`- 26 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`change – or upgrade – to new lighting technology. To operate, all you need is
`
`a socket wrench. Ex. 1004, p.2 of 28.
`
`
`
`C. Chinese Patent No. 203215413U (“Chinese ‘413”)
`Chinese ‘413 entitled “Novel Lighting Lamp Stand for Oil Drilling Rig Well
`
`Site”” was filed March 6, 2013 and published September 25, 2013. Ex. 1005, p.1 of
`
`19. Chinese ‘413 is prior art under at least post-AIA 35 U.S.C. § 102(a)(1).
`
`Chinese ‘413 allows one to carry out the regulation of illumination scope in
`
`limited space and adjust the angle of illumination for lights on oil drilling rigs. Ex.
`
`1005, p.2 of 19 stating, “Both the lighting height and lighting direction of the present
`
`utility model can be regulated and adjusted. When the present utility model is moved
`
`or transported, the lamp stand as a whole can be put down, thus there will be no
`
`problems of excessive height or collision during lamp support transportation.”
`
`Annotated Figure 1 below shows a representative light with lights, bolts, and
`
`brackets that may be attached to an oil drilling rig. Ex. 1005.
`
`- 27 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
`
`D. Larson Electronics
`at
`video
`/ Magnalight YouTube
`https://www.youtube.com/watch?v=EWXJeKNRs00 (copyright 2004-
`2012) (Ex. 1006)
`The YouTube video at Exhibit 1006 demonstrates how easily one may attach a
`
`light on a pole to a hand railing (such as one that may be surrounding a rig’s crown)
`
`deck using a simple bracket and bolt. The below still photos from the video illustrate
`
`the two simple steps.
`
`- 28 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`
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`- 29 -
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 10,976,016
`
`
`As stated in the April 18, 2012 comments below the video:
`
`
`
`500 watt 120 Volt quartz light with aluminum scaffold mount covers 3,300
`
`square feet. The adjustable aluminum mount can be attached to ladders, ship
`
`rails, hand rails, catwalks and scaffolding to facilitate convenient placement of
`
`this 12 volt work light. The aluminum rail mount is adjustable from 26 inches
`
`to 43 inches to accommodate the spacing between all types of rails. The operator
`
`- 30 -
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`