PTAB

IPR2024-00005

Ensign US Southern Drilling LLC v. C&M Oilfield Rentals LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Elevated Structure-Mounted Lighting System
  • Brief Description: The ’626 patent discloses a lighting system for drilling rigs where a plurality of individual light units are attached to the handrail of the rig’s crown deck. Each light unit consists of a light fixture coupled to a dedicated mounting pole, which is in turn attached to the handrail.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gowanlock 1 and Swivelpole - Claims 9 and 19 are obvious over Gowanlock 1 in view of the Swivelpole catalog.

  • Prior Art Relied Upon: Gowanlock 1 (WO 2018/042348) and Swivelpole catalog (Swivelpole Product Catalogue NEC V2-4, Mar. 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gowanlock 1 discloses the foundational elements of the challenged claims: a drilling rig with a derrick, a crown deck at the top of the derrick, and an associated handrail. Gowanlock 1 also teaches a modular lighting system with a plurality of lights, each with its own mounting attachment, affixed to the crown deck. The Swivelpole catalog, which is expressly marketed to the oil and gas industry, discloses mounting poles with attached lights that are specifically designed to be affixed to handrails (referred to as "guardrails").
    • Motivation to Combine: Petitioner asserted that the ’626 patent’s own background provides the motivation to combine. The patent criticizes prior art monolithic lighting systems as heavy, difficult to install, and unsafe. A person of ordinary skill in the art (POSITA), seeking to solve these known problems, would look to known, lighter, and more modular lighting solutions. The Swivelpole catalog provides such a solution. A POSITA would combine the handrail-mounted pole lights of Swivelpole with the rig structure of Gowanlock 1 to achieve the predictable result of a lighter, safer, and more easily maintained lighting system. The swiveling feature of the Swivelpole product would further motivate its use to improve accessibility for maintenance.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because attaching pole-mounted lights to handrails using brackets and common tools is a simple, well-known mechanical task.

Ground 2: Obviousness over Gowanlock 2 and Swivelpole - Claims 9 and 19 are obvious over Gowanlock 2 in view of the Swivelpole catalog.

  • Prior Art Relied Upon: Gowanlock 2 (Patent 9,316,390) and Swivelpole catalog (Swivelpole Product Catalogue NEC V2-4, Mar. 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground is similar to Ground 1, but uses Gowanlock 2 as the primary reference. Petitioner argued Gowanlock 2 also discloses a drilling rig with a crown deck (base 105) and an associated handrail (horizontal frame member 120). Gowanlock 2 further teaches a lighting frame with a "plurality of light support posts" arranged around its perimeter, which is analogous to the monolithic system described in the ’626 patent. As in Ground 1, the Swivelpole catalog teaches the missing element of attaching individual light units via mounting poles directly to a handrail.
    • Motivation to Combine: The motivation is identical to that in Ground 1. A POSITA, aware of the problems with heavy, frame-based lighting systems like the one in Gowanlock 2, would be motivated to substitute that system with the lighter, safer, and more flexible handrail-mounted solution shown in the Swivelpole catalog. This simple substitution of known elements would yield predictable improvements in installation time, cost, and safety.
    • Expectation of Success: The expectation of success is based on the same reasoning as in Ground 1: the combination involves applying a known technique (mounting lights to handrails) to a known structure (a rig's crown deck) to achieve a predictable improvement.

Ground 3: Obviousness over Gowanlock 1/2 and Magnalight - Claims 9 and 19 are obvious over Gowanlock 1 or Gowanlock 2 in view of the Magnalight YouTube video.

  • Prior Art Relied Upon: Gowanlock 1 (WO 2018/042348) or Gowanlock 2 (Patent 9,316,390) in view of Magnalight (Larson Electronics / Magnalight YouTube video, published Apr. 18, 2012).
  • Core Argument for this Ground:
    • Prior Art Mapping: Gowanlock 1 or Gowanlock 2 again provides the foundational rig, crown deck, and handrail structure. The Magnalight YouTube video, from a known supplier of oil and gas lighting equipment, demonstrates a light on a pole with an adjustable bracket. The video and its accompanying text explicitly state the mount can be attached to "hand rails, catwalks and scaffolding." This directly teaches attaching a pole-mounted light unit to a handrail.
    • Motivation to Combine: The motivation is again rooted in solving the problems identified in the ’626 patent’s background. A POSITA seeking a modular, easy-to-install lighting solution would readily substitute the complex systems of Gowanlock 1 or Gowanlock 2 with the simple, commercially available, handrail-mountable light unit shown in the Magnalight video. This represents a simple substitution of one known lighting system for another to obtain the predictable benefits of modularity and ease of installation.
    • Expectation of Success: Success would be reasonably expected as the Magnalight video demonstrates the simplicity of the attachment mechanism, which uses basic components and tools widely available in the industry.

4. Key Claim Construction Positions

  • "mounting pole": Petitioner argued this is the only term in dispute in parallel litigation. Petitioner’s proposed construction is “A pole used for mounting something,” asserting the plain and ordinary meaning should apply. The Patent Owner proposed a more limiting construction: “elongated structure fixed at one end and for mounting where the length of the structure far exceeds the width.” Petitioner contended that the claims are obvious over the prior art regardless of which construction is adopted, as the poles shown in both the Swivelpole catalog and the Magnalight video meet even the Patent Owner’s more restrictive definition.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is inappropriate. It asserted that all factors weigh in favor of institution, highlighting that: (1) it intends to file a motion to stay the parallel district court litigation; (2) the district court trial date is unreliable and close to the Final Written Decision (FWD) deadline, a situation where the PTAB has previously declined to deny institution; (3) investment in the parallel litigation has been minimal, with no claim construction ruling issued and discovery not yet in earnest; and (4) Petitioner stipulated that, if IPR is instituted, it will not pursue in district court the same grounds raised in the petition or any grounds that reasonably could have been raised.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 9 and 19 of Patent 10,900,626 as unpatentable.