UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ENSIGN US SOUTHERN DRILLING LLC,
`Petitioner,
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`v.
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`C&M OILFIELD RENTALS, LLC
`D/B/A C-MOR ENERGY SERVICES
`Patent Owner.
`
`Case No. IPR2023-00804
`U.S. Patent No. 10,976,016
`_____________________________________________________________
`
`DECLARATION OF DR. GARY WOOLEY IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,976,016
`
`1
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`Exhibit 2006
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`PUBLIC VERSION - REDACTED
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`
`________________
`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.
`
`Case No. IPR2023-00804
`U.S. Patent No. 10,976,016
`_____________________________________________________________
`
`DECLARATION OF DR. GARY WOOLEY IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,976,016
`
`1
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`Exhibit 2006
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`I, Gary Wooley, declare as follows:
`INTRODUCTION & QUALIFICATION
`I.
`A. Engagement
`My name is Gary R. Wooley, and I am over 18 years of age.
`1.
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`2.
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`I have been retained on behalf of C&M Oilfield Rentals, LLC (“C&M”
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`or “Patent Owner”) to prepare a declaration in support of the Patent Owner’s
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`Response for inter partes review of U.S. Patent No. 10,976,016 (the “’016 Patent”).
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`My firm is being compensated at an hourly rate of $720 for my time working in this
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`matter. My firm’s compensation is not contingent on my findings or the outcome of
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`this proceeding. My firm and I have no financial interest in the ’016 Patent,
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`Petitioners, Patent Owner, or the outcome of this matter.
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`3.
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`Patent Owner has asked me to offer opinions regarding the ’016 Patent,
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`including the patentability of claims 1, 2, and 23 (which I may refer to subsequently
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`as the “Challenged Claims”) in view of the prior art identified and discussed in the
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`Petition and the accompanying exhibits. This declaration sets forth the opinions I
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`have reached to date regarding these matters.
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`4.
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`This declaration briefly outlines my background and qualifications to
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`provide my opinion, describes the technology at issue and background of the art,
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`identifies materials I reviewed to prepare this declaration, and sets forth my
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`understanding of the patent claims as my analysis regarding the application of the
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`patent claims of the prior art provided to me. I reserve the right to supplement my
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`opinions in the future, to clarity responses where appropriate, and to take into
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`account new information as it becomes available to me.
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`B. Qualifications
`I am a Registered Professional Engineer in the state of Texas.
`5.
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`6.
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`I received a Bachelor of Science in Mechanical Engineering from
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`Louisiana State University in 1969. I received a Masters of Science in Engineering
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`Mechanics from Louisiana State University in 1970. I received a Ph D. in
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`Engineering Science from Louisiana State University in 1972 with minors in
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`Applied Mathematics and Mechanical Engineering.
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`7.
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`Early in my career I was an employee of four major oil and gas
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`operating companies: Shell, Chevron, Exxon, and Arco.
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`8.
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`I have participated in and been a member of professional organizations
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`including the American Society of Mechanical Engineers, Society of Petroleum
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`Engineers, American Petroleum Institute, and ASM.
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`9.
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`Since 1978, I have served as a consultant for oil and gas operators,
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`drilling contractors, service and supply companies, manufacturers, and others for
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`onshore and offshore wells around the world.
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`Information Considered
`C.
`10. My opinions are based on a review of the materials of record in this
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`proceeding, including the ’481 Patent and its prosecution history, and all exhibits
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`submitted by Petitioner and Patent Owner or otherwise referenced or cited in those
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`submissions. In reaching my opinions, I have relied upon my general knowledge
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`and experience in the field and also considered the viewpoint of a person having
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`ordinary skill in the art (“POSITA” or “skilled artisan”) at the time of the filing date
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`of the provisional application to which the ’016 Patent claim priority, i.e., March 15,
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`2018.
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`II.
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`PERSON HAVING ORDINARY SKILL IN THE ART
`I understand that Petitioner has proposed the following level of ordinary
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`skill in the art:
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`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 working on or around rigs, such as a
`drilling rig, where one or more lighting systems were used
`to illuminate the wellsite. Additional experience would
`substitute for lack of a formal degree.
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`Pet. at 19.
`12.
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`I am a POSITA according to Petitioner’s definition, as I have at least
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`the amount of experience and education, as described in the Petition.
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`III. OVERVIEW OF THE ’016 PATENT
` A POSITA would recognize that the ’016 Patent relates to a novel
`13.
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`lighting system for use on drilling rigs. Ex. 1001, Abstract. These systems are
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`“critical to ensure continuous and safe operation of well sites.” Id., 1:13-14. The
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`’016 Patent explains that, “[t]o ensure even and effective lighting of the well site,
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`lighting systems have previously been installed on the uppermost portion of the
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`drilling rig, also referred to as the ‘crown’ of the rig.” Id., 1:14-17. According to
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`the patent, “[p]rior art crown-mounted lighting systems developed for oil rigs are
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`limited in several ways,” including that “[t]heir designs are complicated and
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`designed for specific rigs or rig types” and, “[t]ypically, once they are designed for
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`a particular rig or a particular type of rig, the lighting systems designs are limited
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`and are not able to be adapted for other uses.” Id., 1:17-22.
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`14.
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`The patent further explains that “[p]rior art lighting systems for drilling
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`rigs are fixed, monolithic structures that are typically crown or frame systems, with
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`a single size and layout accommodating one type of light and rig.” Id., 1:23-26.
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`Thus, “they are heavy and typically require cranes along with multiple workers for
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`installation, removal, and adjustments.” Id., 1:27-28. For example, “[a] typical rig
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`lighting frame system may require between 6 and 12 hours for installation.” Id., 29-
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`30. “Due to the high cost of operating a rig, any such delay is extremely inefficient
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`for the operator of a wellsite.” Id., 1:35-37. These inefficiencies “also increase the
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`time required to be spent on maintaining these systems, which also increases safety
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`risk.” Id., 1:37-39.
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`15.
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`Unlike the prior art, the ’016 Patent claims, among other things, a
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`modular lighting system mounted on a rig where a plurality of light units are each
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`separately attached to a crown deck of the rig and comprise a mounting pole, a light
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`fixture having one or more lights, and a bracket configured to attach the mounting
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`pole to the crown deck of a rig. See, e.g., id., claim 1. Generally, these have a “low
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`profile to minimize the wind shear forces that may be experienced by the light units
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`at the top of a structure.” Id., 4:58-60.
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`16.
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`Figures 6 and 7A (below) provide an overview of one embodiment. Id.,
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`2:10-15, 3:5-8. Light fixture 248 (green) may be connected to light bracket 400
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`(orange). Id. at 4:31-40. Mounting pole 240 (light green) is attached to the crown
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`deck using brackets 300 and 310 (top and bottom, respectively) (purple) that attach
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`to top rail 242 (red) and bottom rail 244 (red). Id., 3:38-59, 4:30-53.
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`17.
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`Trial has been instituted for challenged claims 1, 2, and 23.
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`Independent claims 1 and 23 are illustrative of the challenged claims’ subject matter
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`(ID at 5-6):
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`1. A modular lighting system mounted on a rig, the modular
`lighting system comprising:
`a) a plurality of light units, each light unit separately attached to a
`crown deck of the rig, and each light unit comprising:
`b) a mounting pole;
`c) a light fixture comprising one or more lights; and
`d) a bracket configured to attach the mounting pole to the crown
`deck of the rig.
`Ex. 1001, 7:31-39.
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`23. A rig comprising:
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`a) a derrick;
`b) a crown deck at the top of the derrick; and
`c) a plurality of light units, each light unit separately attached to
`the crown deck, each light unit comprising:
`d) a mounting pole, wherein each light unit comprises a separate
`mounting pole, such that the system comprises a plurality of
`mounting poles; and
`e) a light fixture comprising one or more lights, the light fixture
`coupled to the mounting pole.
` Ex. 1001 at 8:39-48.
`IV. LEGAL STANDARDS
`I am not a lawyer and have not been asked to offer my opinion on the
`18.
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`law. Counsel has informed me of the applicable legal standards, as set forth below.
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`I have applied these legal standards in my analysis.
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`A.
`19.
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`Invalidity
`It is my understanding that, under the patent laws, a claim of an issued
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`patent is invalid if it does not cover eligible subject matter, it is not novel, and/or
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`obvious in light of what came before, and/or if the patent fails to meet the formal
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`requirements of written description, enablement, and definiteness.
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`20.
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`I further understand of what came before, for the purposes of
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`determining whether the claimed invention is novel and nonobvious, is referred to
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`as “prior art.” The claims of a patent are invalid if they are anticipated by the prior
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`art (i.e., are not novel) and/or are obvious in light of the prior art.
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`21.
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`I have been informed that, for purposes of determining whether a patent
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`or patent application is prior art to a claimed invention, the patent or patent
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`application is considered to be effectively filed (i) as of the actual filing date of the
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`patent or application, or (ii) if the patent or application includes a claim of priority
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`to or benefit of an earlier filing date, then as of the filing date of the earliest such
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`application that describes the claimed invention.
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`B. Anticipation
`I understand that “anticipation” is a question of fact and that for a
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`reference to anticipate a claimed invention it must disclose (either explicitly or
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`inherently) each and every element set forth in the claim for that invention. I further
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`understand that the requirement of strict identity between the claim and the reference
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`is not met if a single element or limitation required by the claim is missing from the
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`applied reference.
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`23.
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`It is further my understanding that a disclosure in a prior art reference
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`must be arranged in the same way as in the claims such that different embodiments
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`and/or disclosures in a reference cannot be combined for purposes of anticipation if
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`they were not arranged in that way in the reference. In other words, every limitation
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`of a claim must identically appear in a single prior art reference and be arranged in
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`the same way as the challenged claim for the reference to anticipate a claim.
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`24.
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`It is my understanding that (among other reasons) a patent claim is
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`invalid if the claimed invention was patented, described in a printed publication, or
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`in public use, on sale, or otherwise available to the public before the effective filing
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`date of the claimed invention. I understand there are exceptions to this rule, which
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`include, for example, that a disclosure made 1 year or less before the effective filing
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`date of a claimed invention shall not be prior art to the claimed invention if:
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`• the disclosure was made by the inventor or joint inventor or by another
`who obtained the subject matter disclosed directly or indirectly from
`the inventor or a joint inventor; or
`• the subject matter disclosed had, before such disclosure, been publicly
`disclosed by the inventor or a joint inventor or another who obtained a
`subject matter disclosed directly or indirectly from the inventor or a
`joint inventor.
`I further understand that an element is disclosed inherently in a prior art
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`25.
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`reference if it is necessarily present in the prior art reference.
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`C. Obviousness
`I understand that a claimed invention is unpatentable if the differences
`26.
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`between the invention and the prior art are such that the subject matter of the claim
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`as a whole would have been obvious at the effective filing date to a person having
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`ordinary skill in the art to which the subject matter pertains (i.e., a POSITA).
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`27.
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`It is my understanding that obviousness is a question of law based on
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`underlying factual issues including (1) the scope and content of the prior art, (2)
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`the differences between the prior art and the challenged claims, (3) the level of
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`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, long-felt but unresolved needs, failure of others,
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`copying, industry praise, etc.
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`28.
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`29.
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`I should first determine the scope and content of the prior art.
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`It is also my understanding that I should then consider the differences,
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`if any, between the prior art and each challenged claim; and that in doing so,
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`although it is proper to consider differences between the claimed invention and the
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`prior art, I should not focus on only the differences, because the test is whether the
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`claimed invention as a whole would be obvious over all of the prior art. It is also
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`my understanding that, in evaluating validity, each claim of the patent must be
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`considered separately and in its entirety.
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`30.
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`It is my understanding that the next step is to determine the level of
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`ordinary skill in the art to which the claimed invention pertains at the time the
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`invention was made.
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`31.
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`It is my understanding that the next step is to determine the level of
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`ordinary skill in the art to which the claimed invention pertains at the time the
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`invention was made.
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`32.
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`It is my understanding that a person of ordinary skill in the art is
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`presumed to have knowledge of the relevant prior art at the time of the claimed
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`invention; and that if I find that the available prior art shows, discloses, teaches or
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`suggests each of the elements of the challenged claims, I should determine whether
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`a POSITA would have a reason to combine or coordinate these elements in the
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`same manner as the challenged claim.
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`33.
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`I understand that an obviousness evaluation can be based on a
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`combination of multiple prior art references.
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`34.
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`I understand that for a single reference or a combination of references
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`to render obvious the claimed invention, a POSITA must have been able to arrive
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`at the claimed invention by altering or combining the applied reference or
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`references.
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`35.
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`It is my understanding that a patent claim composed of several
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`elements is not proven obvious merely by demonstrating that each of its elements
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`was independently known in the art. Rather, obviousness would arise only where
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`it is determined that the claimed invention implemented a predictable variation of
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`prior art elements or amount to nothing more than the predictable use of prior art
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`elements according to their established functions.
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`36.
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`I understand that the prior art references themselves may provide an
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`explicit suggestion, motivation, or reason to combine, but that the suggestion to
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`combine may also arise from the state of the prior art generally.
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`37.
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`It is my understanding that obviousness analyses can often be
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`improperly distorted by hindsight bias. Hindsight bias can arise when an
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`obviousness evaluation is influenced by the fact that the patented invention has
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`already explained and demonstrated the solution to the problem and has already
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`made clear the benefits of the claimed invention. My understanding is that once a
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`problem has been solved, the solution may thereafter seem obvious in hindsight
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`once the solution is already known. To avoid applying improper hindsight bias
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`while conducting an obviousness evaluation, I should consider only what was
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`known before the invention and cast my mind back to the time of the inventions
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`before the ’016 Patent existed and consider whether the invention as a whole
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`would have been obvious to a person of ordinary skill in the art, taking into
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`consideration any interrelated teachings of the prior art, the effects of demands
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`known to the marketplace, and the background knowledge possessed by a person
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`having ordinary skill in the art.
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`38.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a POSITA having the understanding and knowledge reflected in
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`the prior art and confronted by the problem facing the inventor would have been
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`led to make the combination of elements recited in the claims. Under this analysis,
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`the prior art references themselves, or any need or problem known in the field of
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`endeavor at the time of the invention, can provide a reason for combining the
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`elements of multiple prior art references in the claimed manner.
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`D.
`39.
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`Preponderance of Evidence
`I understand that unpatentability in an inter partes review must be
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`proven by a “preponderance of evidence” showing that the purported prior art
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`reference(s) disclose each and every element of a claim. I further understand that
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`any proposed obviousness combination—including at least how such references
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`could be combined and the motivation(s) to combine the specific references and/or
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`purported knowledge of a POSITA in the specific way proposed—must also be
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`shown by preponderance of evidence.
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`V. CLAIM CONSTRUCTION
`It is my understanding that, in its Institution Decision, the Board applied
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`the claim constructions as set forth in the Claim Construction Order and
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`Memorandum dated April 7, 2022, from the Western District of Texas proceeding.
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`ID at 8 (citing Ex. 1009, 17-18).
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`41.
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`I further understand that Patent Owner agrees that those claim
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`constructions should apply. Thus, in rendering my expert opinions, I applied the
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`constructions as set forth in the Claim Construction Order from the Western District
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`of Texas proceeding.
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`VI. GOWANLOCK DOES NOT ANTICIPATE THE CHALLENGED
`CLAIMS
`In my opinion, Petitioner did not show that Gowanlock anticipates
`42.
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`claims 1, 2, or 23. Gowanlock does not disclose any of a “crown deck,” a “mounting
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`pole,” “a bracket configured to attach the mounting pole to the crown deck of the
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`rig,” or “the bracket” to be “connected to the crown deck of the rig using bolts.”
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`A. Overview of Gowanlock
`Reference WO 2018/042348A1 to Gowanlock (“Gowanlock”) is titled
`43.
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`“Drilling Rig with Attached Lighting System and Method.” Ex. 1003, code (54). A
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`POSITA would understand Gowanlock to disclose a “method of providing lighting
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`to a drilling rig site,” by attaching the light fixture “directly to the crown of a drilling
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`rig on each of at least two sides, wherein the light fixture contains a fixed or
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`removable light fixture attachment connecting the light fixture to the crown[.]” Id.,
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`code (57).
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`44.
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`Figures 1A, 1B, and 2 of Gowanlock exemplify the relevant disclosures
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`of the reference.
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`Figure 1A depicts a “lighting system mounted on a drilling rig[.]” Id.
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`45.
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`at [0012]. The disclosed drilling rig 40 “includes a derrick 14,” a “crown block 13,”
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`and a plurality of light fixtures 29 “attached directly to the crown.” Id. at [0016],
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`[0019]. Figures 1B and 2 (below) depict a side view and a perspective view,
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`respectively, of the asserted embodiment of a light fixture. Id. at [0013], [0014].
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`“The light fixture (101 and 203) as shown in this embodiment … is held
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`46.
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`by a bracket (102 and 204).” Id. The bracket, in turn, is “connected to the crown
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`directly through the light fixture attachment (103 and 202).” Id. The bracket further
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`serves a function of “permit[ting] the light fixture to swivel both in a horizontal and
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`vertical orientation.” Id.
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`B. Gowanlock does not disclose a “crown deck.”
`Each of claims 1, 2, and 23 recite a “crown deck.” Under the agreed
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`construction, the term “crown deck” means “a collection of structures within the
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`crown that includes a walking surface, parts supporting the walking surface, and any
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`associated handrail.” Pet. at 20. In my opinion, the Board appropriately determined
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`in the Institution Decision that Gowanlock discloses no such thing. ID at 17.
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`48.
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` In my view, none of Figures 1A, 1B, or 2 on which Petitioner relies
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`discloses a “crown deck.” For example, Figure 1A (below) shows “a lighting system
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`mounted on a drilling rig.” Ex. 1003 at [0012]. At most, Gowanlock discusses a
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`“crown” and a “crown block 13” in connection with this figure. Id. at [0016]. A
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`POSITA would understand a “crown” to mean a “collection of structures at the
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`uppermost portion of a drilling rig,” Pet. 20, and a “crown block” to refer to the
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`“assembly of sheaves or pulleys mounted on beams at the top of the derrick or mast
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`over which a hoisting line is reeved.” Ex. 2024; see also Ex. 2023 (defining “Crown
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`Block and Water Table” as “an assembly of sheaves or pulley mounted on beams at
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`the top of the derrick”).
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`49.
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`Figures 1B and 2 do not disclose a “crown deck” either. See Pet. 52-
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`57. Instead, they disclose a “light fixture” (101, 203), a “bracket” (102, 204), and a
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`“light fixture attachment” (103, 202). Ex. 1003 at [0013], [0014]. In my opinion,
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`there is nothing in these figures that discloses a “crown deck.”
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`50.
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`The Petition also cites paragraph 81 of Mr. Hamdan’s Declaration for
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`purported support. Pet. 52-54. However, I found no technical reasoning or
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`evidentiary support for Mr. Hamdan’s opinions; the paragraph simply recited the
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`“summary chart” from the Petition. Compare Ex. 1008 ¶ 81, with Pet. 55-57. As I
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`explained above, there is nothing in the reference that discloses—or even suggests—
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`a “crown deck.”
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`C. Gowanlock does not disclose a “mounting pole.”
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`51.
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`A POSITA would not find Gowanlock to disclose a “mounting pole”
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`either.
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`52.
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`First, citing Figures 1A, 1B, and 2, Petitioner contends “Gowanlock
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`discloses a short mounting pole which it describes as a ‘light fixture attachment (103
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`and 202)’ in paragraph [0019].” Pet. at 52. However, a “light fixture attachment
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`(103 and 202) is not a “mounting pole,” and Petitioner never provides an explanation
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`to the contrary.
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`53.
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`As shown in Figures 1B, 2, and 3 (below), Gowanlock’s “light fixture
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`attachment” (red) is a short, singular component with a rectangular indention at one
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`end that hangs off the rig. Gowanlock discusses the “light fixture attachment” just
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`once: “[a]nd in this embodiment, the light fixture is connected to the crown directly
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`through the light fixture attachment (103 and 202).” Ex. 1003 at [0019]. In my
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`opinion, a POSITA would not recognize such a structure as a “mounting pole”
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`because it is explicitly referred to as an “attachment.”
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`54.
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`Second, citing Mr. Hamdan’s Declaration, Petitioner asserts that
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`“Gowanlock discloses a short mounting pole which it describes as a ‘light fixture
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`attachment (103 and 202)’ in paragraph [0019].” Pet. 52. But again, Mr. Hamdan
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`repeats the Petition’s “summary chart” for the “mounting pole” limitations. Ex.
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`1008 ¶ 81. Mr. Hamdan offers no analysis or evidence beyond the following
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`statement: “FIGS. 1A, 1B, and 2 above show a mounting pole for light fixtures 29.
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`For example see 202 in Figure 1B.” Id.
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`55.
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`Third, Mr. Hamdan admitted at deposition that he “wouldn’t say
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`[Gowanlock] literally discloses a mounting pole.” Ex. 2012 at 104:20-21. Instead,
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`changing course from his declaration, Mr. Hamdan testified that Gowanlock
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`“inherently and visually discloses a mounting pole.” Id. at 105:4-7. In my opinion,
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`the Board should reject Mr. Hamdan’s contradicting opinions.
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`56. Mr. Hamdan did not opine in his declaration that Gowanlock inherently
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`discloses a “mounting pole.”
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`57. When asked for his understanding of what an “inherent disclosure” is,
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`Mr. Hamdan indicated it meant “obvious or implied or common,” and he confirmed
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`that was the understanding he applied in rendering his opinions in this case. Id. at
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`95:20-21. However, the standard for inherency provided to me by Patent Owner’s
`
`counsel requires that an element is necessarily present in the prior art reference.
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`58. Mr. Hamdan testified that paragraphs 84 and 85 of his declaration
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`PUBLIC VERSION - REDACTED
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`provide the basis for his opinion that Gowanlock inherently discloses a “mounting
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`pole.” Ex. 2012 at 105:16-17. But those paragraphs say nothing about Gowanlock
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`inherently disclosing a “mounting pole.”
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`59.
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`In my opinion, regardless of whether express or inherent, a POSITA
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`would not consider Gowanlock’s “light fixture attachment” to be a “mounting pole”
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`as claimed. As I explained above, a POSITA would understand Gowanlock to teach
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`away from the use of a “mounting pole” because it expressly (and only) uses the
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`“light fixture attachment” for an underslung connection directly to the crown. There
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`would be no reason for a POSITA to consider this reference when dealing with a
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`mounting pole attached to handrails on the crown deck.
`
`D. Gowanlock does not disclose “a bracket configured to attach the
`mounting pole to the crown deck of the rig.”
`A POSITA would not interpret Gowanlock to disclose a “bracket
`
`60.
`
`configured to attach the mounting pole to the crown deck of the rig.”
`
`61.
`
`Petitioner contends “Gowanlock discloses a bracket (102 and 204)
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`configured to attach the mounting pole to the crown deck of the rig,” citing Figures
`
`1A, 1B, and 2 in support. Pet. 52. In my opinion, this is wrong for at least three,
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`key, reasons:
`
`62.
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`First, as I explained above, Gowanlock does not disclose a “crown
`
`deck.” As such, Gowanlock cannot disclose “a bracket configured to attach the
`
`mounting pole to the crown deck of the rig,” as the claims require.
`
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`22
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`PUBLIC VERSION - REDACTED
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`63.
`
`Second, I also explained above that Gowanlock does not disclose a
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`“mounting pole.” As such, Gowanlock cannot disclose “a bracket configured to
`
`attach the mounting pole to the crown deck of the rig,” as the claims require.
`
`64.
`
`Third, bracket 102 and 204 in Gowanlock’s Figures 1B and 2 is not
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`“configured to attach the mounting pole to the crown deck of the rig.” See Ex. 1003
`
`at [0019]. Gowanlock explains: “[t]he light fixture (101 and 203) as shown in this
`
`embodiment also in Figure 1B and in perspective view in Figure 2 is held by a
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`bracket (102 and 204) which permits the light fixture to swivel both in a horizontal
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`and vertical orientation.” Ex. 1003 at [0019]. The “bracket (102 and 204)” attaches
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`the light to the “light fixture attachment” but not to anything else, let alone a crown
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`deck. Id. This configuration with a “bracket” (green) is also shown in Figures 1B
`
`and 2 below. Thus, a POSITA would recognize that Gowanlock’s “bracket” is not
`
`“configured to attach the mounting pole to the crown deck of the rig” because it is
`
`explicitly configured to attach a light fixture directly to the light fixture attachment.
`
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`PUBLIC VERSION - REDACTED
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`Ex. 1003 at Figs. 1B, 2 (annotated).
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`65.
`
`Petitioner’s citation to the expert declaration fares no better, as I noted
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`previously for other limitations, Mr. Hamdan repeats the Petition’s “summary
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`chart,” and fails to identify where Gowanlock discloses the limitation or provide any
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`technical reasoning or other evidentiary support. Pet. 52; Ex. 1008 ¶ 81.
`
`66.
`
`In my opinion, Petitioner’s “summary chart” does not compel a
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`different result either. As shown below, the statements after the citation to
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`Gowanlock’s [0019] are not statements from [0019] at all, but rather Petitioner’s
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`desired manifestation passed off as quotes from Gowanlock. Based on my review
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`of the reference, the words “crown deck,” “deck,” “mounting pole,” “pole,” and
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`“handrail” do not appear anywhere in Gowanlock.
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`Pet. 57
`“[0019] The light fixture (101 and 203)
`as shown in this embodiment also in
`Figure IB and in perspective view in
`Figure 2 is held by a bracket (102 and
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`Ex. 1003 at [0019] (in relevant part)
`“[0019] … The light fixture (101 and
`203) as shown in this embodiment also
`in Figure 1B and in perspective view in
`Figure 2 is held by a bracket (102 and
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`204) which permits the light fixture to
`swivel both in a horizontal and vertical
`orientation. The brackets and mounting
`poles also allow mounting or affixing
`the lights to differently configured,
`designed, or configured crown decks,
`including handrails.”
`
`204) which permits the light fixture to
`swivel both in a horizontal and vertical
`orientation. And in this embodiment,
`the light fixture is connected to the
`crown directly through the light fixture
`attachment (103 and 202). …”
`
`Compare Pet. 57, and Ex. 1008 at pp. 52-53, with Ex. 1003 at [0019].
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`67.
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`Thus, I believe the Board reached the correct conclusion in its
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`Institution Decision when it did not find this limitation to be disclosed. ID at 17.
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`E. Gowanlock does not disclose “the bracket is connected to the crown
`deck of the rig using bolts.”
`In my opinion, Gowanlock does not disclose that “the bracket is
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`68.
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`connected to the crown deck of the rig using bolts,” as claim 2 requires.
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`69.
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`Knowing Gowanlock does not literally disclose any bolts (let alone
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`bolts connecting “the bracket” “to the crown deck of the rig”), Petitioner asserts
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`“Gowanlock discloses a bracket (102 and 204) which is inherently connected to the
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`crown deck of the rig using bolts.” Pet. 53; see id. at 57 (“FIGs. 1B and 2 above
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`inherently employ bolts to connect the bracket to the crown deck.”); Ex. 2012 at
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`119:2-7 (“Q. Is it your opinion that figures 1B and 2 inherently show bolts employed
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`to connect the bracket to the crown deck or literally shows bolts employed to connect
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`the bracket to the crown deck? A. Inherently shows bolts.”), 120:16-19 (“Q. …
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`Gowanlock does not literally disclose a bracket connected to the crown deck of the
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`rig using bolts, correct? A. Literally, no.”).
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`70.
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`Under the standard explained to me by Patent Owner’s counsel, for an
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`inherent disclosure, the missing characteristic must be necessarily present, or
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`inherent, in the single anticipating reference. Yet, Petitioner does not—and
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`cannot—point to any disclosure in Gowanlock indicating that the bolts are
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`necessarily used. See Pet. 53, 57. In my opinion, a POSITA would recognize that
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`the underslung lights of Gowanlock don’t have to be attached to the crown with
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`bolts. The same functionality can be achieved by using, for example, rivets, screws,
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`pins, clamps, or by welding or gluing the light fixture attachments to the crown.
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`71.
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`The Board correctly determined in “Petitioner has not demonstrated the
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`Gowanlock’s bracket is connected to the crown deck using bolts, or that bolts are
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`necessarily present in Gowanlock’s structure.” ID at 18. Petitioner does not and
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`cannot show evidence to the contrary.
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`VII. GOWANLOCK IN VIEW OF SWIVELPOLE DOES NOT RENDER
`THE CHALLENGED CLAIMS OBVIOUS
`In my opinion, Petitioner has failed to show that Gowanlock in view of
`72.
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`Swivelpole renders claims 1, 2, or 23 obvious.
`
`A.
`73.
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`Swivelpole Overview
`A POSITA would recognize the Swivelpole Catalog (“Swivelpole”) to
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`disclose a lighting system, the “core” of which “is its unique [] swivel mechanism.”
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`Ex. 1004 at 4. Its “swivel mechanism lets you lower – and rotate – a light fitting to
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`a safe working level in minutes” without “ladders,” “scaffolding,” or “fall arrest
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`systems.” Id. at 2. This mechanism “[a]llows one-person” to “control[] lowering of
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`the pole top section and luminaire.” Ex. 1004 at 4. I find this ease of installation
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`and versatility to be the front-and-center of the Swivelpole catalog.
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`74. Mr. Hamdan also confirmed Swivelpole’s “main feature” being
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`“advertis[ed]" and “emphasize[d
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