IPR2023-00804
`Patent Owner’s Response
`
`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.
`
`Case No. IPR2023-00804
`U.S. Patent No. 10,976,016
`_____________________________________________________________
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,976,016
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`TABLE OF CONTENTS
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`Page
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`E.
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`INTRODUCTION .......................................................................................... 1
`I.
`II. OVERVIEW OF THE ’016 PATENT ........................................................... 3
`III. CLAIM CONSTRUCTION ........................................................................... 4
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 4
`V. MR. HAMDAN’S EXPERT OPINION SHOULD BE GIVEN
`LITTLE-TO-NO WEIGHT ............................................................................ 5
`A. Mr. Hamdan’s interest in the outcome of the case. .............................. 5
`B. Mr. Hamdan provides no factual support for his opinions. ................. 7
`C.
`The strength of any opposing evidence warrants affording Mr.
`Hamdan’s opinions little to no weight. ................................................ 9
`VI. GROUND 1 .................................................................................................... 9
`A. Gowanlock Overview ........................................................................... 9
`B. Gowanlock does not disclose a “crown deck.” .................................. 10
`C. Gowanlock does not disclose a “mounting pole.” ............................. 11
`D. Gowanlock does not disclose “a bracket configured to attach
`the mounting pole to the crown deck of the rig.” ............................... 13
`Gowanlock does not disclose “the bracket is connected to the
`crown deck of the rig using bolts.” .................................................... 16
`VII. GROUND 2 .................................................................................................. 17
`A.
`Swivelpole Overview ......................................................................... 17
`B.
`The combination does not disclose a “crown deck.” ......................... 19
`C.
`The combination does not disclose a “mounting pole.” ..................... 23
`D.
`The combination does not disclose “a bracket configured to
`attach the mounting pole to the crown deck of the rig.” .................... 24
`The combination does not disclose a “bracket [] connected to
`the crown deck of the rig using bolts.” .............................................. 26
`No motivation to combine the references with a reasonable
`expectation of success. ....................................................................... 27
`
`E.
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`F.
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`1.
`2.
`3.
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`Page
`Neither reference teaches a “crown deck,” as claimed. ........... 27
`Any alleged motivation to combine is based on hindsight. ..... 27
`A POSITA would never use Swivelpole at Gowanlock’s
`crown. ....................................................................................... 28
`4. Modifying Gowanlock to add Swivelpole would frustrate
`the purpose of each reference. ................................................. 30
`Combining the references would require a complete
`redesign, using little if anything from the references. ............. 33
`Petitioner’s provided “motivations” are non-sensical. ............ 34
`6.
`VIII. GROUND 3 .................................................................................................. 38
`A.
`Chinese ’413 Overview ...................................................................... 38
`B.
`“Admitted Prior Art” Overview ......................................................... 39
`C.
`The combination does not disclose a “crown deck.” ......................... 40
`D.
`The combination does not disclose “a bracket configured to
`attach the mounting pole to the crown deck of the rig.” .................... 44
`The combination does not disclose a “bracket [] connected to
`the crown deck of the rig using bolts.” .............................................. 46
`No motivation to combine the references with a reasonable
`expectation of success. ....................................................................... 47
`1.
`A POSITA would not be motivated to combine the
`references with a reasonable expectation of success. .............. 47
`Petitioner’s provided “motivations” are non-sensical. ............ 49
`2.
`IX. GROUND 4 .................................................................................................. 49
`A. Magnalight Overview ......................................................................... 49
`B.
`The combination does not disclose a “crown deck.” ......................... 50
`C.
`The combination does not disclose a “mounting pole.” ..................... 51
`D.
`The combination does not disclose a “a bracket configured to
`attach the mounting pole to the crown deck of the rig.” .................... 52
`
`E.
`
`F.
`
`TABLE OF CONTENTS
`(continued)
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`5.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`E.
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`F.
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`The combination does not disclose a “bracket [] connected to
`the crown deck of the rig using bolts.” .............................................. 53
`No motivation to combine the references with a reasonable
`expectation of success. ....................................................................... 54
`1.
`A POSITA would not be motivated to combine the
`references with a reasonable expectation of success. .............. 54
`Petitioner’s provided “motivations” are non-sensical. ............ 55
`2.
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............. 56
`A.
`There is a strong nexus. ...................................................................... 56
`B.
`Copying .............................................................................................. 61
`C.
`Industry Praise .................................................................................... 64
`D.
`Commercial Success........................................................................... 65
`E.
`Long-felt but unsolved need ............................................................... 66
`XI. CONCLUSION ............................................................................................. 68
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`X.
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`-iii-
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. AliveCor, Inc.,
`IPR2022-00873, Paper 7 ..................................................................................... 45
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281 (Fed. Cir. 1985) .......................................................................... 6, 8
`Charter Commc’ns v. Spring Commc’ns Co.,
`IPR2019-01137, Paper 9 (PTAB Dec. 9, 2019) ................................................. 53
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-CV-0911, 2015 WL 6956722 (E.D. TEx.Nov. 9, 2015) ..................... 42
`EC Data Sys. Inc., v. J2 Global, Inc.
`No. 2014-008203, 2014 WL 7171966 (PTAB Dec. 15, 2014) ............................ 6
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .............................................................. 57, 60, 61
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 65
`Iron Grip Barbell Co. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 62
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`IPR2014-00529, Paper 8 (PTAB Sept. 23, 2014) ............................................... 10
`KSR Int’l. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 29
`Ex Parte Magna Elecs., Inc.,
`No. 2013-004164, 2014 WL 2360424 (PTAB May 28, 2014) ........................ 6, 8
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 24
`NOF Corp. v. Nektar Therapeutics,
`IPR2019-01396, Paper 28 (PTAB Jun. 10, 2020) ................................................ 8
`-iv-
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`TABLE OF AUTHORITIES
`(continued)
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` Page(s)
`
`Cases
`Orexo AB v. Actavis Elizabeth LLC,
`903 F.3d 1265 (Fed. Cir. 2018) .................................................................... 29, 37
`Pungkuk Wire Mfg. Co. v. Seong,
`IPR2016-00763, 2017 WL 3535009 (PTAB Aug. 16, 2017) ....................... 14, 17
`Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc.,
`24 F.4th 1406 (Fed. Cir. 2022) ..................................................................... 57, 61
`Rockwell Automation, Inc. v. Automation Middleware Sols., Inc.,
`IPR2017-00469, Paper 10 (PTAB July 18, 2017) ........................................ 10, 11
`Roxane Labs., Inc. v. Novartis AG,
`IPR2016-01461, Paper 9, 10 (PTAB Feb. 13, 2017) ............................................ 8
`SEKO S.p.A. v. CM2W JSC,
`No. PGR2020-00006, Paper 16 (PTAB May 4, 2020) ......................................... 8
`Spinal Elements, Inc. v. Spectrum Spine IP Holdings, LLC,
`PGR2021-00050, Paper 47 ................................................................................... 6
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................ 8
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .............................................................. 61, 62, 66
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 63
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) ..................................... 9, 16, 53
`
`-v-
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`IPR2023-00804
`Patent Owner’s Response
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`I.
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`INTRODUCTION
`The Petition fails to establish a prima facie case of obviousness for any
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`ground. Notably, none of the cited references disclose a crown deck, as required by
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`the claims, and as defined by the parties.
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`Although the Board correctly found Gowanlock lacks a crown deck for
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`Ground 1, for Ground 2 it preliminarily found that Swivelpole discloses a crown
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`deck based on photographs showing a walking surface, a handrail, drawings
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`depicting walkways and platforms, and testimony from Mr. Hamdan. But such
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`general structures do not suffice.
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`As Mr. Hamdan recently admitted, Swivelpole “doesn’t literally disclose a
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`crown deck, but it literally discloses a pole that could be mounted to a handrail of a
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`deck.” This is a departure from the Petition, as if not explicitly disclosed by the
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`reference, it would need to be inherently disclosed, yet the Petition fails to take the
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`position that a crown deck is necessarily present in Swivelpole. Absent a teaching
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`of a crown deck in Swivelpole, Petitioner simply cannot meet its burden of proving
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`obviousness.
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`Additionally, Swivelpole’s long and slender design intended to illuminate a
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`walking surface of a general platform or stairwell makes it unsuitable for (i) the
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`extreme conditions on a 100-foot-high crown deck where the lighting system is used,
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`Patent Owner’s Response
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`and (ii) illuminating the wellsite at the ground 100+ feet below. This disconnect
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`highlights the Petition’s speculative combination rooted in hindsight, not evidence.
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`For Ground 3’s APA, the Board found that a POSITA “would have
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`understood from the depiction and description of Figure[] 2 in the ’016 patent [which
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`included the phrase “Existing Crown Deck 110”] that Figure 1 includes a crown
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`deck.” ID at 42. Respectfully, this is incorrect as (i) the term “existing” means
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`“current” not “conventional” or part of the prior art, (ii) the text is only found in
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`Figure 2, a figure depicting the invention not the prior art, (iii) the reference numeral
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`110 is only used in the specification once to describe the crown, not the crown deck,
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`and as such its inclusion in Figure 2, was clearly a typographical error, and (iv) the
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`WDTX recognized this explaining that using “110” to describe the crown in Figure
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`1 and the reference to “Existing Crown Deck 110” in Figure 2 is a “one-off labeling
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`oddity.” In any event, the Institution decision (“ID”) preliminary found that that
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`Petitioner did not show a reasonable likelihood of prevailing on its obviousness
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`challenge for Ground 3.
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`Ground 4 fares no better, as it too tries to combine disparate components in
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`illogical ways based again on hindsight reasoning.
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`Finally, the facts around the introduction and sales of Patent Owner (“PO”)’s
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`Crown Jewel lighting system provide compelling secondary considerations of non-
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`obviousness. The Crown Jewel system, which embodies and is coextensive with the
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`IPR2023-00804
`Patent Owner’s Response
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`patented invention, fulfilled a longstanding and unaddressed need in the drilling
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`industry. It has achieved remarkable commercial success, received substantial
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`industry praise, has been copied by competitors, including Petitioner.
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`In view of these irreparable deficiencies pervading the asserted grounds, the
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`claims must be confirmed as not being unpatentable.
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`II.
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`OVERVIEW OF THE ’016 PATENT
`The ’016 Patent generally relates to lighting systems used on drilling rigs.
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`Ex.1001, Abstract. These systems are “critical to ensure continuous and safe
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`operation of well sites.” Id., 1:13-14. The ’016 Patent explains that, “[t]o ensure
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`even and effective lighting of the well site, lighting systems have previously been
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`installed on the uppermost portion of the drilling rig, also referred to as the ‘crown’
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`of the rig.” Id., 1:14-17.
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`Unlike the prior art, the ’016 Patent claims, among other things, a modular
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`lighting system mounted on a rig where a plurality of light units are each separately
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`attached to a crown deck of the rig and comprise a mounting pole, a light fixture
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`having one or more lights, and a bracket configured to attach the mounting pole to
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`the crown deck. See, e.g., id., claim 1. Generally, these lights units 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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`Figures 6 and 7A (below) provide an overview of one embodiment. Id., 2:10-
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`IPR2023-00804
`Patent Owner’s Response
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`15, 3:5-8. Light fixture 248 (green) may be connected to light bracket 400 (orange).
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`Id., 4:31-40. Mounting pole 240 (light green) is attached to the crown deck using
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`brackets 300 and 310 (top and bottom, respectively) (purple) that attach to top rail
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`242 (red) and bottom rail 244 (red). Id., 3:38-59, 4:30-53.
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`III. CLAIM CONSTRUCTION
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`In the ID, the Board applied the claim constructions set forth in the Claim
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`Construction Order from the WDTX proceeding. ID at 8.
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`IV.
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`PERSON OF ORDINARY SKILL IN THE ART
`For this proceeding only, PO does not dispute Petitioner’s level of ordinary
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`skill in the art.
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`V. MR. HAMDAN’S EXPERT OPINION SHOULD BE GIVEN LITTLE-
`TO-NO WEIGHT
`In determining the probative value of an expert opinion, courts “consider three
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`factors: (1) the interest of the expert in the outcome of the case, (2) the presence or
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`absence of factual support for the expert’s opinion, and (3) the strength of any
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`opposing evidence. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
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`281, 294-295 (Fed. Cir. 1985).1
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`Applying those factors to the opinions of Petitioner’s expert Jake Hamdan,
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`the Board should afford them little to no weight. Spinal Elements, Inc. v. Spectrum
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`Spine IP Holdings, LLC, PGR2021-00050, Paper 47 at (PTAB Aug. 17, 2022)
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`(giving the expert’s “unsupported, conclusory opinion no weight.”); EC Data Sys.
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`Inc., v. J2 Global, Inc. No. 2014-008203, 2014 WL 7171966 at *4-5 (PTAB Dec.
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`15, 2014) (applying Ashland factors); Ex Parte Magna Elecs., Inc., No. 2013-
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`004164, 2014 WL 2360424 at *3-6 (PTAB May 28, 2014) (same).
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`A. Mr. Hamdan’s interest in the outcome of the case.
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`Mr. Hamdan is biased as having an outside interest in the challenged patent
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`being found unpatentable. Ensign Drilling Inc. has employed Mr. Hamdan since
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`1 An additional factor is the “nature of the matter sought to be established,” here,
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`obviousness. Ashland Oil, 776 F.2d at 294.
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`2018 as its Vice President of Engineering. Ex.1007 at 3. He works for “corporate”
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`or “the mother company” that owns Petitioner Ensign US Southern Drilling LLC.
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`Id.
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`Mr. Hamdan is responsible for “develop[ing] plans and goals for improving
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`equipment,” “new product development,” and “planning, execution and technical
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`support of all designs and equipment.” Id. Critically, as Ensign was losing market
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`share to PO, Mr. Hamdan was tasked with designing and developing a product to
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`compete with PO’s light system. Ex.2013. PO accuses the competing product of
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`infringement in the parallel district court action.
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`Mr. Hamdan gave “direction” on “how to design it.” Ex.2012 at 180:3-181:9.
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`And he did so after analyzing PO’s product that practices the challenged claims,
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`technical drawings for that product, “how things are fastened and secured” for that
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`product, “the means of fastening the system or connecting the system to the Ensign
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`rig for safety analysis,” “the weight of the assemblies and the brackets and what the
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`system would weigh,” and “how the assembly of fasteners are being used and assess
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`the risk of fall or DROPS.” Id., at 205:12-206:2. As discussed in Section X infra,
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`these activities are evidence of copying and objective indicia of secondary
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`considerations of non-obviousness of the challenged patent.
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`Moreover, Mr. Hamdan admitted that he is “obligated professionally to be”
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`“loyal” to Ensign. Ex.2012, 385:2-4. Although he insisted that his loyalty does not
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`“affect [his] professional judgment” and “ethical responsibilities,” he confirmed that
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`it was “absolutely,” i.e., with no qualifications or restrictions, “part of [his] job” to
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`look out for Ensign’s best interests “absolutely.” Id., 385:2-24.
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`The evidence establishes he “has a substantial interest in the outcome of the
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`case.” Magna, 2014 WL 2360424 at *3 (expert “employed by Patent Owner when
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`he provided the expert opinion…has a substantial interest in the outcome of the
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`case”). Thus, the Board should disregard, or at the very least afford little weight to,
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`Mr. Hamdan’s opinions. NOF Corp. v. Nektar Therapeutics, IPR2019-01396, Paper
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`28 at 6-7 (PTAB Jun. 10, 2020) (testimony less persuasive where expert was
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`employed by Petitioner).
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`B. Mr. Hamdan provides no factual support for his opinions.
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`Mr. Hamdan’s conclusory opinions should be afforded little weight because
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`they are unsupported by facts or technical analysis. Ashland Oil, 776 F.2d at 294-
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`295 (explaining “the presence or absence of factual support for the expert’s opinion”
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`should be analyzed in determining the probative value of an expert opinion); TQ
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`Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362-63 (Fed. Cir. 2019) (expert’s
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`conclusory opinions are “inadequate to support the Board’s fact finding”); SEKO
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`S.p.A. v. CM2W JSC, No. PGR2020-00006, Paper 16 at 13-14 (PTAB May 4, 2020)
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`(“Because [expert]’s conclusory testimony is not supported by the cited paragraphs,
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`we do not find it persuasive”.); Roxane Labs., Inc. v. Novartis AG, IPR2016-01461,
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`Paper 9, 10 (PTAB Feb. 13, 2017) (“As the Board has stated repeatedly, conclusory
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`expert testimony is entitled to little or no weight.”).
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`Here, as in Xerox, the only “evidence” Petitioner cites for certain of its key
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`arguments is the unsupported, conclusory opinions from its expert. Xerox Corp. v.
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`Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).
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`For example, regarding the limitation of claim 1 that recites “a plurality of light units,
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`each light unit separately attached to the crown deck of the rig,” Mr. Hamdan
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`provides the following conclusory statement for Ground 3: “A POSITA would
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`readily employ the lights, mounting poles, and brackets shown in the Swivelpole
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`catalog or Chinese ‘413 above to separately attach a plurality of light units to a crown
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`deck or a hand railing, i.e., guard rail, around the crown deck.” Ex.1008, p.70. As
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`in Xerox, this merely repeats verbatim the conclusory assertions for which it is
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`offered in support. Specifically, Petitioner states the same, citing page 70 of Mr.
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`Hamdan’s declaration. Pet. 78. As in Xerox, Mr. Hamdan does not cite any
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`additional supporting evidence or provide any technical reasoning to support his
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`statement. Ex.1008, p.70.
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`Thus, Mr. Hamdan’s testimony on this missing limitation and all others for
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`which he similarly offers conclusory statements should be entitled to little weight
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`because “the cited declaration testimony is conclusory and unsupported [and] adds
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`little to the conclusory assertion for which it is offered to support.” Xerox, Paper 9
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`at 15; Kinetic Techs., Inc. v. Skyworks Sols., Inc., IPR2014-00529, Paper 8 at 15
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`(PTAB Sept. 23, 2014).
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`C.
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`The strength of any opposing evidence warrants affording Mr.
`Hamdan’s opinions little to no weight.
`The strength of the opposing evidence also undermines the probative value of
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`Mr. Hamdan’s opinions. Rockwell Automation, Inc. v. Automation Middleware
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`Sols., Inc., IPR2017-00469, Paper 10 at 19-20 (PTAB July 18, 2017) (giving expert
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`testimony little weight when “the evidence of record introduced by Patent Owner
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`contradict[ed] Petitioner’s [and its expert’s] identification of [the invention] as a
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`primitive operation.”). The strong, opposing evidence includes (1) the opinions
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`offered by Dr. Wooley (Ex.2006) as discussed infra in Sections VI-IX; and (2) the
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`evidence of secondary considerations of non-obvious as discussed infra in Section
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`X.
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`VI. GROUND 1
`Petitioner has failed to show Gowanlock anticipates any challenged claim.
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`Gowanlock Overview
`A.
`WO 2018/042348A1 (“Gowanlock”) is titled “Drilling Rig with Attached
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`Lighting System and Method.” Ex.1003, (54). It discloses a “method of providing
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`lighting to a drilling rig site,” by attaching the light fixture “directly to the crown of
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`a drilling rig on each of at least two sides, wherein the light fixture contains a fixed
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`or removable light fixture attachment connecting the light fixture to the crown[.]”
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`Id., (57).
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`Gowanlock does not disclose a “crown deck.”
`B.
`Each challenged claim recites a “crown deck.” The term “crown deck” means
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`“a collection of structures within the crown that includes a walking surface, parts
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`supporting the walking surface, and any associated handrail.” Pet. 20. Gowanlock
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`discloses no such thing, as the Board correctly determined in the ID. ID at 17.
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`Figure 1A (below) shows “a lighting system mounted on a drilling rig.”
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`Ex.1003, [0012]. At most, Gowanlock discusses for this figure a “crown block 13”
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`and a crown, which is a “collection of structures at the uppermost portion of a drilling
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`rig.” Pet. 20. A POSITA would understand a “crown block” to be the “assembly of
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`sheaves and pulleys at the top of the derrick or mast over which a hoisting or drilling
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`line is reeved.” Ex.2006, ¶48. Figures 1B and 2 do not disclose a “crown deck”
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`either. Pet. 52-57. Instead, they disclose a “light fixture” (101, 203), “bracket” (102,
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`204), and “light fixture attachment” (103, 202). Ex.1003, [0013], [0014].
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`C.
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`Gowanlock does not disclose a “mounting pole.”
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`Gowanlock does not disclose a “mounting pole.”
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`Citing Figures 1A, 1B, and 2, Petitioner contends “Gowanlock discloses a
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`short mounting pole which it describes as a ‘light fixture attachment (103 and 202)’
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`in paragraph [0019].” Pet. 52. But a “light fixture attachment (103 and 202)” is not
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`a “mounting pole,” and Petitioner fails to provide an explanation to the contrary.
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`As shown in Figures 1B-2 (below), Gowanlock’s “light fixture attachment”
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`(red) is a short, singular component with a rectangular indention at one end that
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`hangs off the rig. Ex.2006, ¶53. Gowanlock discusses the “light fixture attachment”
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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, [0019].
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`Indeed, Mr. Hamdan admitted at deposition that he “wouldn’t say
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`[Gowanlock] literally discloses a mounting pole.” Ex.2012, 104:17-25. Instead,
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`changing course from his declaration, Mr. Hamdan testified Gowanlock “inherently
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`and visually discloses a mounting pole.” Id., 105:4-7. This opinion should be
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`rejected for three, independent reasons. First, the Petition controls, and Mr. Hamdan
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`failed to opine in his declaration that Gowanlock inherently discloses a “mounting
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`pole.” Second, when asked for his understanding of what an “inherent disclosure”
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`is, Mr. Hamdan indicated it meant “obvious or implied or common,” and he
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`confirmed that was the understanding he applied in rendering his new “inherency”
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`opinion. Id., 95:12-25. But the standard for inherent disclosure is not “obvious or
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`implied or common” and is much more stringent: “the missing characteristic” must
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`be “necessarily present, or inherent, in the single anticipating reference.” Pungkuk
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`Wire Mfg. Co. v. Seong, IPR2016-00763, 2017 WL 3535009, at *3 (PTAB Aug. 16,
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`2017) (citation omitted). Thus, even if this new position were considered, Mr.
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`Hamdan applied an incorrect understanding of inherent disclosures and, therefore,
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`his opinion that Gowanlock now “inherently” discloses a “mounting pole” must be
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`rejected. Third, Mr. Hamdan testified paragraphs 84-85 of his declaration provide
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`the basis for his opinion that Gowanlock inherently discloses a “mounting pole.”
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`Ex.2012, 105:4-18. But those paragraphs say nothing about Gowanlock inherently
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`disclosing a “mounting pole.” Ex.1008, ¶¶84-85.
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`D.
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`Gowanlock does not disclose “a bracket configured to attach the
`mounting pole to the crown deck of the rig.”
`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
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`1A, 1B, and 2 in support. Pet. 52. This is incorrect for at least three, key reasons:
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`First, as discussed, Gowanlock does not disclose a “crown deck.” Thus,
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`Gowanlock cannot disclose “a bracket configured to attach the mounting pole to the
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`crown deck of the rig.”
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`Second, as discussed, Gowanlock does not disclose a “mounting pole.” Thus,
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`Gowanlock cannot disclose “a bracket configured to attach the mounting pole to the
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`crown deck of the rig.”
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`Third, bracket 102 and 204 are not “configured to attach the mounting pole to
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`the crown deck of the rig.” Ex.1003, [0019]. Gowanlock explains: “[t]he light
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`fixture (101 and 203) as shown in this embodiment also in Figure 1B and in
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`perspective view in Figure 2 is held by a bracket (102 and 204) which permits the
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`light fixture to swivel both in a horizontal and vertical orientation.” Id. The “bracket
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`(102 and 204)” attaches the light to the “light fixture attachment” but not to anything
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`else. Id. In other words, Gowanlock’s alleged “bracket” is not “configured to attach
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`the mounting pole to the crown deck of the rig,” as claimed. Ex.2006, ¶64. The
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`Board confirmed the same: “We do not agree with Petitioner that either structure
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`102 or 204 attaches a mounting pole to a crown deck, as claim 1 requires.” ID at 17.
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`Ex.1003 at Figs. 1B, 2 (annotated).
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`Mr. Hamdan repeats Petitioner’s “summary chart,” and fails to identify where
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`Gowanlock discloses the limitation or provide any reasoning or other evidentiary
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`support, and thus should be given no weight. Xerox, Paper 9 at 15.
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`Petitioner’s “summary chart” does not compel a different result. As shown
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`below, the statements after the citation to Gowanlock’s [0019] are not statements
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`from [0019] at all, but rather Petitioner’s desired manifestation passed off as quotes
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`from Gowanlock. As explained, the words “crown deck,” “deck,” “mounting pole,”
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`“pole,” and “handrail” do not appear anywhere in Gowanlock.
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`Ex.1003, [0019] (in relevant part)
`Pet. 57
`“[0019] … The light fixture (101 and
`“[0019] The light fixture (101 and 203)
`203) as shown in this embodiment also
`as shown in this embodiment also in
`in Figure 1B and in perspective view in
`Figure IB and in perspective view in
`Figure 2 is held by a bracket (102 and
`Figure 2 is held by a bracket (102 and
`204) which permits the light fixture to
`204) which permits the light fixture to
`swivel both in a horizontal and vertical
`swivel both in a horizontal and vertical
`orientation. The brackets and mounting
`orientation. And in this embodiment,
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`poles also allow mounting or affixing
`the lights to differently configured,
`designed, or configured crown decks,
`including handrails.”
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`the light fixture is connected to the
`crown directly through the light fixture
`attachment (103 and 202) …”
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`Compare Pet. 57, and Ex.1008, pp.52-53, with Ex.1003, [0019].
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`Accordingly, the Board reached the correct conclusion: “We do not agree
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`with Petitioner that either structure 102 or 204 attaches a mounting pole to a crown
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`deck, as claim 1 requires.” ID at 17.
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`E.
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`Gowanlock does not disclose “the bracket is connected to the crown
`deck of the rig using bolts.”
`Knowing Gowanlock does not disclose bolts, Petitioner asserts “Gowanlock
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`discloses a bracket (102 and 204) which is inherently connected to the crown deck
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`of the rig using bolts.” Pet. 53; id., 57. Indeed, Mr. Hamdan admitted that
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`Gowanlock does not expressly disclose this limitation. Ex.2012, 120:16-19
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`(“Gowanlock does not literally disclose a bracket connected to the crown deck of
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`the rig using bolts, correct? A. Literally, no.”).
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`But for inherency, “the missing characteristic” must be “necessarily present.”
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`Pungkuk, 2017 WL 3535009, at *3. Nothing in Gowanlock indicates that bolts,
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`rather than some other way of attaching, like a weld, rivets, screws, pins, or clamps,
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`are necessarily present. Ex.2006, ¶¶68-71.
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`The Board correctly determined that “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. GROUND 2
`Petitioner fails to show this combination renders any challenged claim
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`obvious.
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`Swivelpole Overview
`A.
`The Swivelpole Catalog discloses a system, the “core” of which “is its unique
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`[] swivel mechanism.” Ex.1004, p.4. Its “swivel mechanism lets you lower – and
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`rotate – a light fitting to a safe working level in minutes” without “ladders,”
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`“scaffolding,” or “fall arrest systems.” Id., p.2. That mechanism “[a]llows one-
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`person” to “control[] lowering of the pole top section and luminaire.” Id., p.4.
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`Id., 3.
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`Applications for the products include “[w]alkway lighting, platforms,
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`stairways, spiral stairways, conveyors.” Ex.1