Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`Paper 8
`Entered: October 26, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENSIGN US SOUTHERN DRILLING LLC,
`Petitioner,
`
`v.
`
`C&M OILFIELD RENTALS, LLC
`D/B/A C-MOR ENERGY SERVICES,
`Patent Owner.
`____________
`
`IPR2023-00804
`Patent 10,976,016 B2
`____________
`
`Before NORMAN H. BEAMER, KEVIN C. TROCK, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: October 26, 2023
`
`
`
`
`
`
`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.
`____________
`
`IPR2023-00804
`Patent 10,976,016 B2
`____________
`
`Before NORMAN H. BEAMER, KEVIN C. TROCK, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2023-00804
`Patent 10,976,016 B2
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`
`I.
`
`INTRODUCTION
`Ensign US Southern Drilling LLC (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1, 2, and 23 of U.S. Patent
`No. 10,976,016 B2 (Ex. 1001, “the ’016 patent”). Paper 2 (“Petition” or
`“Pet.”). C&M Oilfield Rentals, LLC d/b/a C-Mor Energy Services (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon
`consideration of the Petition, the Preliminary Response, and the evidence of
`record, we determine that Petitioner has established a reasonable likelihood
`that it would prevail in showing the unpatentability of at least one claim
`challenged in the Petition. Accordingly, we institute an inter partes review
`of all claims and all grounds asserted in the Petition.1
`
`Related Proceedings
`A.
`The parties identify the following litigation involving the ’016 patent:
`C&M Oilfield Rentals, LLC D/B/A C-Mor Energy Services v. Ensign US
`Southern Drilling LLC, Civil Action No. 4:22-cv-00965, Southern District
`of Texas, Houston Division (served April 1, 2022) and C&M Oilfield
`Rentals, LLC v. Apollo Lighting Solutions, Inc. and Cleantek Industries,
`Inc., Civil Action No. 6:21-CV-00544-ADA, Western District of Texas,
`
`
`1 Guidance on the Impact of SAS on AIA Trial Proceedings (Apr. 26, 2018),
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial; see also SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348, 1359–60 (2018).
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`Waco Division. Pet. 93; Paper 4, 1. Patent Owner notes that this litigation
`was dismissed on December 8, 2022. Id.
`Petitioner also identifies the following litigation involving the ’016
`patent: Nabors v. C&M, Case No. 4:22-cv-02140, Southern District of
`Texas, Houston Division. Pet. 93.
`
`The ’016 patent
`B.
`The ’016 patent, titled “Elevated Structure-Mounted Lighting
`System,” describes lighting systems that may be used on drilling rigs to
`ensure safe and continuous operation of well sites. Ex. 1001, code (54),
`1:12–14. The ’016 patent explains that, in order “[t]o ensure even and
`effective lighting of the well site, lighting systems have previously been
`installed on the uppermost portion of the drilling rig, also referred to as the
`‘crown’ of the rig.” Id. at 1:14–17. The ’016 patent further explains that
`“[p]rior art lighting systems for drilling rigs are fixed, monolithic structures
`that are typically crown or frame systems, with a single size and layout
`accommodating one type of light and rig.” Id. at 1:23–26.
`According to the ’016 patent, a prior art “single structural unit” is
`“heavy and typically require[s] cranes along with multiple workers for
`installation, removal, and adjustments.” Id. at 2:26–28. The ’016 patent
`describes that “[a] typical rig lighting frame system may require between 6
`and 12 hours for installation.” Id. at 1:29–30. According to the ’016 patent,
`“before a derrick can be moved, the lighting systems must be removed—
`again with all of the necessary equipment and personnel—and a similar
`amount of time may be required for uninstallation.” Id. at 1:30–33.
`Figure 1 from the ’016 patent, reproduced below, depicts “a prior art
`crown-mounted frame-based lighting system.” Id. at 1:63–64.
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`Figure 1 above shows a prior art lighting system 100 built from a
`single frame 120, which includes multiple frame lights 130 rigidly fixed
`onto the frame 120. Id. at 2:25–29. The ’016 patent explains that “frame
`120 may be installed on the crown 110, or top, of a drilling rig such that the
`ground around the drilling rig is illuminated when in use.” Id. at 2:30–32.
`The ’016 patent describes a purportedly improved light system 200,
`which is modular and assembled using multiple standalone pieces that may
`be configured to different structures. Id. at 2:53–55. Figure 3 from the ’016
`patent, reproduced below, is an elevation view of three embodiments of an
`improved elevated structure mounted lighting system shown in relation to a
`crown deck. Id. at 2:1–3.
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`Figure 3 above shows light units 210, 220, and 230, which may
`include mounting pole 240, bracket for a top rail 242, bracket for a bottom
`rail 244, cap 246, and light fixture 248. Id. at 2:63–65. The bracket for top
`rail 242 and bracket for bottom rail 244 may be used to attach light
`mounting pole 240 to rails 205 of a crown deck (dashed lines) of a drilling
`rig using U-shaped bolts or straps. Id. at 2:63–3:1.
`
`The Challenged Claims
`C.
`Petitioner challenges claims 1, 2, and 23 (“the challenged claims”) of
`the ’016 patent. Pet. 7. Claim 2 depends from claim 1. Claims 1 and 23,
`reproduced below, are illustrative of the subject matter of the challenged
`claims:
`1. A modular lighting system mounted on a rig, the modular
`lighting system comprising:
`a plurality of light units, each light unit separately attached to a
`crown deck of the rig, and each light unit comprising:
`a mounting pole;
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`a light fixture comprising one or more lights; and
`a bracket configured to attach the mounting pole to the crown
`deck of the rig.
`Ex. 1001, 7:31–39.
`23. A rig comprising:
`a derrick;
`a crown deck at the top of the derrick; and
`a plurality of light units, each light unit separately attached to
`the crown deck, each light unit comprising:
`a mounting pole, wherein each light unit comprises a separate
`mounting pole, such that the system comprises a plurality of
`mounting poles; and
`a light fixture comprising one or more lights, the light fixture
`coupled to the mounting pole.
`Ex. 1001, 8:39–48.
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability:
`Challenged Claim(s)
`35
`Reference(s)/Basis
`U.S.C. 2
`§ 102(b) Gowanlock3
`§ 103
`Gowanlock, Swivelpole4
`
`1, 2, 23
`1, 2, 23
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the ’016
`patent issued from an application filed after March 16, 2013, we apply the
`AIA versions of the statutory bases for unpatentability.
`3 PCT Pub. No. WO 2018/0423348 A1 to Gowanlock, published Feb. 13,
`2003 (Ex. 1003).
`4 SwivelpoleTM Product Catalogue NEC V2–4, 1–28, Mar. 2014 (Ex. 1004).
`6
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`Challenged Claim(s)
`
`Reference(s)/Basis
`
`35
`U.S.C. 2
`§ 103
`
`1, 2, 23
`
`Chinese ’413, 5 Swivelpole,
`Admitted Prior Art
`(“APA”)6
`Magnalight Video,7 APA
`§ 103
`1, 2, 23
`Pet. 11. Petitioner relies on the Declaration of Jake Hamdan (Ex. 1008).
`
`II. ANALYSIS
`Claim Construction
`A.
`We apply the same claim construction standard that would be used to
`construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.100(b). Under that standard, claim terms “are generally given their
`ordinary and customary meaning” as understood by a person of ordinary
`skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of
`the disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner argues no claim term needs “to be expressly construed for
`purposes of this IPR because the plain and ordinary meaning applies.” Pet.
`
`
`5 CN 203215413 to Dai Haifeng et al., published Sept. 15, 2013 (Ex. 1005).
`6 US Patent No. 10,976,016 B2, 1:14–17; 1:23–39; 2:25–32; Fig. 1
`(Ex. 1001).
`7 Larson Electronics/Magnalight YouTube video available at
`https://www.youtube.com/watch?v=EWXJeKNRs00 (copyright 2004–
`2012) (Ex. 1006).
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`20. Petitioner proposes, however, that we apply the constructions which
`were adopted by the court in the related Western District of Texas
`proceeding (see supra Section I.A) of the following claim terms:
`• “crown deck” (claims 1, 2, and 23),
`• “mounting pole” (claims 1 and 23),
`• “bracket” (claims 1 and 2),
`• “attached” (claims 1 and 23),
`• “connected” (claim 2), and
`• “coupled” (claim 23)
` Pet. 20–22. Patent Owner also proposes that the Board apply these claim
`constructions. Prelim. Resp. 6, fn.1.
`In view of the parties’ agreement with regard to construction of the
`claim terms listed above, we apply the constructions set forth in the Claim
`Construction Order and Memorandum dated April 7, 2022, from the related
`Western District of Texas proceeding (Ex. 1009, 17–18) in our analysis of
`Petitioner’s challenges below. We note that the agreed constructions of all
`of the above terms are essentially ordinary meaning and we do not discuss
`them further in our analysis of Petitioner’s challenges, except for the term
`“crown deck.” The construction of “crown deck” is:
`A “crown” is the collection of structures at the uppermost
`portion of a drilling rig, and the “crown deck” is a collection of
`structures within the crown that includes a walking surface,
`parts supporting the walking surface, and any associated
`handrail.
`Ex. 1009, 17.
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`Level of Ordinary Skill in the Art
`B.
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case. Id.
`Petitioner argues a person of ordinary skill in the art at the time of the
`invention “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.” Pet. 19 (citing Ex. 1008 ¶¶ 42–43).
`Petitioner further argues that “[a]dditional practical experience would
`substitute for lack of a formal degree.” Pet. 19 (citing Ex. 1008 ¶ 44).
`Patent Owner does not dispute the level of ordinary skill in the art.
`See generally Prelim. Resp. For purposes of this decision, we adopt
`Petitioner’s definition of the level of ordinary skill in the art because it is
`consistent with the ’016 patent and the asserted prior art.
`
`Principles of Law
`C.
`“Anticipation requires that every limitation of the claim in issue be
`disclosed, either expressly or under principles of inherency, in a single prior
`
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`art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
`F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be
`“arranged or combined in the same way as recited in the claim[ ],” Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`However, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) when available, evidence such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550 U.S.
`at 407 (“While the sequence of these questions might be reordered in any
`particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. Reaching this conclusion, however, requires more than merely
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`showing that the prior art includes separate references covering each
`separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex,
`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`additionally requires that a person of ordinary skill at the time of the
`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.”
`Id.
`
`D. Ground 1: Alleged Anticipation Based on Gowanlock
`Petitioner contends Gowanlock anticipates claims 1, 2, and 23. Pet.
`51. In support, Petitioner and Mr. Hamdan provide a limitation-by-
`limitation analysis of claims 1, 2, and 23 with specific citations to
`Gowanlock. Pet. 51–58; Ex. 1008 ¶ 81.
`1. Overview of Gowanlock (Ex. 1003)
`Gowanlock is titled “Drilling Rig With Attached Lighting System and
`Method.” Ex. 1003, code (54). Gowanlock describes a “method of
`providing lighting to a drilling rig site,” by attaching any number of light
`fixtures “directly to the crown of a drilling rig.” Id., code (57). Gowanlock
`explains that “the light fixture contains a fixed or removable light fixture
`attachment connecting the light fixture to the crown.” Id. Gowanlock
`describes that a drilling rig may include “a derrick or mast and crown.” Id.
`¶ 8.
`
`Figure 1A from Gowanlock, reproduced below, depicts “a lighting
`system mounted on a drilling rig.” Id. ¶ 12.
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`Figure 1A above shows a conventional drilling rig 40 having, inter
`alia, a plurality of lights 29 attached to the top of derrick 14 surrounding
`crown block 13. Id. ¶¶ 16, 17. Gowanlock explains that “[t]he light fixtures
`described herein (29) are shown attached directly to the crown.” Id. ¶ 19.
`Figures 1B and 2 from Gowanlock, reproduced below, depict a side
`view and a perspective view of one embodiment of a light fixture,
`respectively. Id. ¶¶ 13, 14.
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`Figures 1B and 2 above shows that “light fixture (101 and 203) . . . is
`held by a bracket (102 and 204), which permits the light fixture to swivel
`both in a horizontal and vertical orientation.” Id. ¶ 19.
`2. Analysis
`Claims 1 and 23
`Petitioner argues that Gowanlock discloses every limitation of
`claims 1 and 23. Petitioner presents a claim chart, reproduced below,
`identifying each limitation it asserts Gowanlock discloses:
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`Claim Language
`W0O2018/042348
`1. A modular lighting system mounted|FIG. 1A shows a modularlighting
`on a rig, the modularlighting system
`system with each light unit
`comprising:
`independently mounted ona rig.
`
`
`
`
`
`a plurality of light units. each light unit|FIGs. 1A, 1B. and 2 illustrate a
`separately attached to a crown deck of|plurality of light units wherein each
`the rig, and eachlight unit comprising:|light unit is separately attached to a
`crowndeck ofthe rig.
`
`
`FIG. 1A,
`
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`14
`14
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`Pic. 1A
`
`FIGIB
`
`
`
`
`
`a mounting pole:
`
`FIGs. 1A, 1B, and 2 above showa
`mounting pole for light fixtures 29.
`For example see 202 in Figure 1B.
`
`
`a light fixture comprising one or more
`lights: and
`
`FIGs. 1A, 1B, and 2 aboveillustrate a
`light fixture comprising one or more
`lights. See, for example, 29, in FIG.
`1A above.
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`15
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`a bracket configured to attach the
`mounting pole to the crown deck of the
`rig.
`
`FIGs. 1A, 1B, and 2 aboveillustrate a
`bracket configured to attach the
`mounting pole to the crown deck of the
`rig.
`
`[0019] The light fixture (101 and 203)
`as shownin this embodiment also in
`Figure IB and in perspective viewin
`Figure 2 is held by a bracket (102 and
`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 crowndecks,
`
`Claim Language
`23. A rig comprising:
`FIG. 1A above showsa rig.
`
`
`A derrick 14 is shown in FIG.1A
`a derrick:
`above.
`a crowndeck at the top of the derrick:
`A crown deck is shown at the top of the
`and
`derrick in FIG.1A above.
`
`including handrails.
`
` a plurality of light units, each light unit
`
`separately attached to the crowndeck.
`eachlight umit comprising:
`
`FIGs. 1A, 1B, and 2 above of
`W0O2018/042348 illustrate a plurality
`of light units wherein eachlight unit is
`separately attached to a crown deck of
`the rig..
`
`FIGs. 1A, 1B, and 2 above showa unit comprises a separate mounting
`
`a mounting pole. wherein eachlight
`separate mounting pole for each light
`
`pole, such that the system comprises a
`plurality of mounting poles: and
`
`unit. For example see 202 in Figure
`1B.
`
`a light fixture comprising one or more
`lights, the light fixture coupled to the
`mounting pole.
`
`coupled to the mounting pole. See, for example. 29, in FIG. 1A above.
`
`FIGs. 1A, 1B, and 2 aboveillustrate a
`light fixture comprising one or more
`lights wherein the light fixture is
`
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`16
`16
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`Pet. 51–57; Ex. 1008 ¶ 81.
`Patent Owner contends Gowanlock does not anticipate claims 1 and
`23 because it does not disclose: (1) a “‘crown deck,’ which is . . . a
`‘collection of structures within the crown that includes a walking surface,
`parts supporting the walking surface, and any associated handrail” (Prelim.
`Resp. 12 (citing Pet. 19–20; Ex. 1008 ¶ 20)); (2) a mounting pole (Prelim.
`Resp. 14); and (3) “a bracket configured to attach the mounting pole to the
`crown deck of the rig,” because Gowanlock does not disclose either the
`recited “crown deck” or “mounting pole.” Id. at 16–17.
`We agree with Patent Owner that Gowanlock does not disclose a
`crown deck, as required by claims 1 and 23. Patent Owner correctly sets
`forth the construction of “crown deck” the parties agree to apply here (see
`Section II.A above), which requires a walking surface. None of the figures
`of Gowanlock’s rig relied upon by Petitioner, i.e., Figures 1A, 1B, and 2,
`depict a walking surface.
`The language of claim 1 also requires that a bracket “attach the
`mounting pole to the crown deck of the rig.” Petitioner asserts that Figure
`1B depicts bracket 102, and Figure 2 depicts bracket 204. We do not agree
`with Petitioner that either structure 102 or 204 attaches a mounting pole to a
`crown deck, as claim 1 requires. According to Gowanlock, brackets 102 and
`204 each connect a light fixture (101 and 203) to a light fixture attachment
`(103 and 202). Ex. 1003 ¶ 19. Therefore, Petitioner does not sufficiently
`show that Gowanlock discloses the recited bracket.
`Having considered the evidence and arguments presented by both
`parties, we determine Petitioner has not shown a reasonable likelihood of
`prevailing on its anticipation challenge to claims 1 and 23.
`
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`Claim 2
`Petitioner argues that Gowanlock discloses every limitation of claim
`2, as follows:
`
`
`
`Pet. 57; Ex. 1008 ¶ 81.
`Patent Owner asserts Gowanlock does not disclose bolts. Prelim.
`Resp. 19. Patent Owner argues nothing in Gowanlock shows that bolts are
`necessarily present or the natural result of Gowanlock’s disclosure, and
`therefore Gowanlock does not inherently use bolts to connect the bracket to
`the crown deck. Id. Patent Owner further argues Mr. Hamdan’s declaration
`does not identify bolts in Gowanlock’s Figures 1B and 2. Id. at 20 (citing
`Ex. 1008 ¶ 75).
`Petitioner has not demonstrated that Gowanlock’s bracket is
`connected to the crown deck using bolts, or that bolts are necessarily present
`in Gowanlock’s structure. Having considered the evidence and arguments
`presented by both parties, we determine Petitioner has not shown a
`reasonable likelihood of prevailing on its anticipation challenge to claim 2,
`based on Gowanlock.
`
`E. Ground 2: Alleged Obviousness Based on Gowanlock and
`Swivelpole
`Petitioner contends the combination of Gowanlock and Swivelpole
`renders claims 1, 2, and 23 obvious. Pet. 58–69. In support, Petitioner and
`Mr. Hamdan explain where each limitation of the challenged claims is
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`disclosed in the references, and the reasons a person of ordinary skill would
`have been motivated to combine the disclosures of the references. See, e.g.,
`id. at 33–38; Ex. 1008 ¶¶ 83–91.
`1. Overview of Swivelpole (Ex. 1004)
`Swivelpole is product literature that discloses a “High-Safety
`Luminaire Support System” for walkway lighting, platforms, stairways, etc.
`Ex. 1004, 6. 8 Swivelpole discloses a light fixture on a pole that may be
`mounted in various configurations, and provides “mounting solutions for all
`applications.” Id. at 2. Models S1 and S3 of Swivelpole, reproduced below,
`depict mounting configurations.
`
`
`8 We refer to the page numbers applied to Exhibit 1004 by Petitioner.
`19
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`IPR2023-00804
`Patent 10,976,016 B2
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`Swivelpole depicts Models S1 and S3, shown above, that may be
`mounted “free of handrail” using commercially available “Mounting Kits”
`and “Multi-Purpose Mounts.” Id. at 6. Swivelpole discloses that the pole
`can be mounted to a column because “[i]t features a sturdy right-angle
`bracket which simply bolts to an existing structure.” Id. at 18.
`2. The Parties’ Positions
`Petitioner argues that the combination of Gowanlock and Swivelpole
`discloses every limitation of independent claims 1 and 23. Petitioner
`presents the claim charts reproduced below:
`
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`20
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` FIG. 1A shows a modular lighting
`
`A POSITA would readily employ
`lights. mounting poles. and brackets
`shown in the Swivelpole catalog to
`make a modular lighting system
`mounted on a rig.
`
`
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`PIG. 14
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`Claim Language W0O2018/042348 and Swivelpole
`1. A modular lighting system mounted
`on a rig. the modular lighting system
`comprising:
`
`system with each light unit
`independently mounted on a rig.
`
`
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`21
`21
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`a plurality of light units, each light unit
`separately attached to a crown deck of
`the rig. and eachlight unit comprising:
`
`Gowanlock FIGs. 1A. 1B, and 2 below
`illustrate a plurality of light units
`wherein each light unit is separately
`attached to a crown deck of the rig.
`
`
`
`
`
`FIG. 1A
`
`AWny
`
`FIGIB
`
`A POSITA would readily employ the
`lights. mounting poles. and brackets
`shownin the Swivelpole catalog above
`to separately attach a plurality of light
`units to a crown deck or a hand railing.
`1.e., guard rail, around the crown deck.
`
`
`
`
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`22
`22
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`Swivelpole catalog figure
`
`
`a mounting pole:
`
`Gowanlock FIGs. 1A, 1B. and 2 above
`show a mounting pole for light fixtures
`29. For example see 202 in Figure 1B.
`
`A POSITA would readily employ the
`lights. mounting poles. and brackets
`shown in the Swivelpole catalog figure
`above.
`
`
`the rig.
`
`a light fixture comprising one or more|FIGs. 1A. 1B, and 2 aboveillustrate a
`lights: and
`light fixture comprising one or more
`lights. See. for example, 29, in FIG.
`1A above.
`
`The Swivelpole catalog figure above
`showsa light fixture comprising one or
`more lights.
`
`Gowanlock FIGs. 1A. 1B, and 2 above
`a bracket configured to attach the
`mounting pole to the crown deck ofthe|illustrate a bracket configured to attach
`rig.
`the mounting pole to the crown deck of
`
`Gowanlock [0019] states “The light
`fixture (101 and 203) as shown in this
`embodimentalso in Figure IB and in
`
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`perspective viewin Figure 2 is held by
`a bracket (102 and 204) which permits
`the light fixture to swivel both in a
`horizontal and vertical orientation.”
`
`The Swivelpole catalog figure above
`shows a bracket configured to attach
`the mounting pole to the crown deck or
`a handrailing, 1.e.. guard rail, around
`the crowndeck.
`
`
`
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`
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`Pet. 65–68.
`Pet. 65-68.
`
`Claim Language
`23. A rig comprising:
`FIG. 1A above showsa rig.
`
`a derrick:
`A derrick 14 is shown in FIG.1A
`above.
`A crowndeck is shownat the top of the
`derrick in FIG.1A above.
`
` a crowndeckat the top of the derrick:
`
`and
`
`
`
`24
`24
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`Pet. 65–69; Ex. 1008 ¶ 83.
`Petitioner presents a claim chart for dependent claim 2, reproduced
`below:
`
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`Pet. 68; Ex. 1008 ¶ 83.
`Petitioner contends a person of ordinary skill in the art would have
`been motivated to combine the teachings of Gowanlock and Swivelpole for
`several reasons: (1) combining Swivelpole’s separately attached pole
`mounted lights with brackets to Gowanlock’s crown deck or the crown
`deck’s hand railing would have been a simple combination of known
`elements to obtain predictable results; (2) replacing Gowanlock’s separately
`attached crown deck lights with Swivelpole’s lights would have been a
`simple substitution of known elements for another to obtain predictable
`results; (3) “the Swivelpole products, which swivel to allow installation,
`adjustment, and maintenance of the light [fixtures], provide functionality and
`flexibility to the rig lighting envisaged by Gowanlock”; (4) “the combination
`addresses the known problems . . . with certain types of rig lighting that used
`heavy frames that added weight and were potentially difficult to install
`
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`because cranes were required”; and (5) the use of the known techniques of
`attaching lights with brackets and poles to a crown deck or the hand rail
`around a crown deck would have improved similar devices in the same way.
`Pet. 35–36. Petitioner contends a person of ordinary skill in the art would
`have reasonably expected the combination to succeed because lights with
`mounting poles attached with brackets have been attached to many items
`such as guardrails for years. Id. at 36.
`Patent Owner argues Petitioner has not demonstrated a reasonable
`likelihood of prevailing on its obviousness challenge based on Gowanlock
`and Swivelpole. Prelim. Resp. 20–37. Patent Owner argues that neither
`reference discloses “a crown deck” “a mounting pole,” or “a bracket
`configured to attach the mounting pole to the crown deck of the rig,” as
`required by claims 1 and 23. Id. at 14, 23–27.
`Patent Owner contends that the Petitioner fails to identify with
`particularity the proposed combination because “nearly every claim
`limitation is rendered obvious based on either (i) Gowanlock, ‘and/or’ (ii)
`Swivelpole, ‘and/or’ (iii) knowledge of a POSITA, ‘and/or’ (iv) common
`knowledge, and (vi) any combination of these.” Prelim. Resp. 22 (citing,
`e.g., Pet. 59–69).
`Patent Owner argues that Petitioner does not adequately identify a
`crown deck in Swivelpole. Prelim. Resp. 23–24. Patent Owner further
`argues Swivelpole is not intended for the demands of a rig’s crown deck,
`subject to vibrations from rig operation and the weather. Id. at 24. Later in
`its Preliminary Response, Patent Owner acknowledges that Petitioner
`identifies a crown deck in Swivelpole (see Prelim. Resp. 26–27 (citing Ex.
`1008, 57) but argues Petitioner’s assertion is ambiguous and unsupported.
`
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`Patent Owner similarly argues that Petitioner’s identification of a bracket in
`Swivelpole is ambiguous and unsupported. Id. at 27.
`Patent Owner argues Petitioner fails to explain how Gowanlock’s
`heavy light fixture “could be combined atop Swivelpole’s long, slender
`pole.” Prelim. Resp. 25. Patent Owner argues the combination “would be
`impractical and unsafe.”9 Id.
`Patent Owner argues that Petitioner fails to show that Swivelpole
`discloses bolts connecting the bracket to the crown deck. Prelim. Resp. 28–
`29. Patent Owner argues that Petitioner’s identification of bolts in
`Swivelpole is ambiguous, and further argues that Mr. Hamdan’s testimony
`that bolts were well-known is insufficient. Id. at 29. Patent Owner further
`argues Mr. Hamdan’s declaration should be given little to no weight because
`it “parrots the petition without providing any supporting evidence or
`technical reasoning.” Id.
`Patent Owner argues that Petitioner’s “purported motivations to
`combine” are merely based on “unsupported catchphrases from” KSR, 550
`U.S. at 416. Prelim. Resp. 29–34. For example, Patent Owner argues that
`Petitioner fails to explain how a person of ordinary skill would install the
`proposed lighting system resulting from the combination on a rig’s crown
`deck (id. at 30), ignores problems faced in the field, including the height and
`location of installation and harsh environmental conditions (id. at 33–34),
`and refers to known problems in the industry by pointing solely to benefits
`described in the ’016 patent. Id. at 33.
`
`
`9 We note that a figure purportedly illustrating this assertion is missing from
`page 25 of the Preliminary Response, which includes an empty box with no
`figure inside.
`
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`Patent Owner further argues that none of Petitioner’s purported
`motivations to combine “are credible, supported, or free of hindsight.”
`Prelim. Resp. 34. For example, Patent Owner argues Mr. Hamdan’s opinion
`that lights with mounting poles attached with brackets have for years been
`commonly fabricated in oil field equipment is unsupported. Id. at 34.
`Patent Owner further argues Petitioner fails to establish that a person
`of ordinary skill in the art would have had a reasonable expectation of
`success in combining Gowanlock and Swivelpole, because Petitioner “does
`not explain how Gowanlock could be combined with Swivelpole.” Prelim.
`Resp. 37. Patent Owner points to various features of the references, such as
`Gowanlock’s swivel bracket and Swivelpole’s “long slender pole” and
`argues Petitioner fails to explain how the distinct structures of Gowanlock
`and Swivelpole “could be physically combined, modified for combination,
`or how any specific combination would operate.” Id. at 37–38.
`3. Analysis
`Having considered the evidence and arguments presented by both
`parties, we determine on this prelimin
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