Trials@uspto.gov
`571-272-7822
`
`Paper 14
`
`Entered: January 22, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CRUSOE ENERGY SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`UPSTREAM DATA INC.,
`Patent Owner.
`____________
`
`PGR2023-00039
`Patent 11,574,372 B2
`____________
`
`
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`

`

`PGR2023-00039
`Patent 11,574,372 B2
`
`Crusoe Energy Systems, LLC (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting post-grant review of claims 1–4, 7–12, 15–30, 34–37, and
`40 (“the challenged claims”) of U.S. Patent No. 11,574,372 B2 (Ex. 1001,
`“the ’372 patent”). Upstream Data Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”). With our authorization (Ex. 1101),
`Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response
`(Paper 12, “Prelim. Reply”) to address § 325(d) issues raised in the
`Preliminary Response. Patent Owner filed a Preliminary Sur-reply thereto
`(Paper 13, “Prelim. Sur-reply”).
`We have authority to determine whether to institute a post-grant
`review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”). Section 324(a) provides that a post-
`grant review may not be instituted “unless . . . the information presented in
`the petition . . . , if such information is not rebutted, would demonstrate that
`it is more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.” Upon consideration of the evidence and arguments
`in the Petition (including its supporting testimonial evidence), the evidence
`and arguments in the Preliminary Response (including its supporting
`testimonial evidence), the Preliminary Reply, and the Preliminary Sur-reply,
`we determine that the information presented shows that it is more likely than
`not that Petitioner would prevail with respect to at least one of the
`challenged claims. Accordingly, we institute post-grant review on all
`challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a)
`(“When instituting post-grant review, the Board will authorize the review to
`proceed on all of the challenged claims and on all grounds of unpatentability
`2
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`PGR2023-00039
`Patent 11,574,372 B2
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`asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018).
`
`BACKGROUND
`I.
`A. Real Parties-in-Interest
`Petitioner identifies that Crusoe Energy Systems, LLC is the real
`party-in-interest. Pet. 124. Patent Owner indicates Upstream Data Inc. is
`the patent owner and real party-in-interest in this proceeding. Paper 4, 2.
`B. Related Proceedings
`The parties state that the ’372 patent is at issue in Upstream Data Inc.
`v. Crusoe Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo.) (filed
`May 18, 2023). Pet. 123; Paper 4, 2.
`C. The ’372 Patent
`The ’372 patent is titled “Blockchain Mine at Oil or Gas Facility.”
`Ex. 1001, code (54). Figure 1, reproduced below, is a schematic of a system
`for power a blockchain mine at a remote oil well, using a generator.
`
`3
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`PGR2023-00039
`Patent 11,574,372 B2
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`
`
`Figure 1 illustrates blockchain mining device 12, oil well 14, and
`generator 28. Id. at 8:35–40.
`According to the ’372 patent, “[a]t remote oil and gas facilities, excess
`natural gas is often wasted, for example vented to atmosphere or burned via
`flaring.” Ex. 1001 at 1:11–13. The ’372 patent identifies that this is because
`“[i]n many locations it may not be economically feasible to build the
`infrastructure required to take the produced gas, or resultant electricity
`generated by combustion of the gas, to market.” Id. at 7:49–52. The ’372
`patent discloses that the “cheaper the electricity the more reward the miner
`will receive relative to competition.” Id. at 13:20–21. The ’372 patent
`further discloses that reliance on “low-cost hydroelectric power” has led to a
`“centralization of blockchain miners in specific countries with abundant
`hydroelectric power.” Id. at 14:4–11. This, according to the ’372 patent, is
`counter to the idea of decentralization and distribution inherent in the
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`PGR2023-00039
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`blockchain model, so the ’372 patent identifies a “need to further
`decentralize BITCOIN and other blockchain mining through a more
`decentralized source of low-cost power.” Id. at 14:13–20. To this end, the
`’372 patent describes positioning a generator and blockchain mining device
`“at a suitable location relative to the hydrocarbon well, storage site, or
`processing facility,” such as located adjacent to a remote oil well. Id. at
`9:14–19.
`
`D. Illustrated Claims
`The ’372 patent includes 41 claims, and Petitioner challenges
`claims 1–4, 7–12, 15–30, 34–37, and 40. Of the challenged claims, claims 1
`and 24 are independent. Claim 1 is illustrative and reads as follows1:
`[1pre] A system comprising:
`[1a] a source of combustible gas produced from a facility
`selected from a group consisting of a hydrocarbon
`production, storage, or processing facility;
`[1b] a generator connected to the source of combustible gas to
`receive a continuous flow of combustible gas to power the
`generator; and
`[1c] blockchain mining devices connected to the generator; in
`which:
`[1c_i] the blockchain mining devices each have a mining
`processor and are connected to a network interface;
`[1c_ii] the network interface is connected to receive and
`transmit data through the internet to a network that
`stores or has access to a blockchain database;
`[1c_iii] the mining processors are connected to the network
`interface and adapted to mine transactions associated
`with the blockchain database and to communicate
`with the blockchain database;
`
`1 We utilize Petitioner’s annotations. Pet. i.
`5
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`PGR2023-00039
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`[1c_iv] the network is a peer-to-peer network;
`[1c_v] the blockchain database is a distributed database
`stored on plural nodes in the peer-to-peer network;
`and
`[1c_vi] the blockchain database stores transactional
`information for a digital currency.
`Ex. 1001, 19:52–20:7.
`
`6
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`PGR2023-00039
`Patent 11,574,372 B2
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–4, 7–12, 15–30, 34–37, and 40 of the
`’372 patent are unpatentable on the following grounds (Pet. 32, 12–119):
`Claim(s) Challenged 35 U.S.C. §
`Reference(s)
`1–4, 8, 16–30, 34
`1033
`Dickerson,4 CryptoKube,5
`Szmigielski,6 and Kheterpal7
`Dickerson, CryptoKube, Belady-
`989, 8 Szmigielski, and Kheterpal
`Dickerson, CryptoKube, Belady-
`989, Boot, 9 Szmigielski, and
`Kheterpal
`
`1–4, 8, 10–12, 15–30,
`34–37, 40
`1–4, 7–12, 15–30,
`34–37, 40
`
`103
`
`103
`
`
`2 Petitioner omits listing its patent-eligibility challenge to claims 1–4, 7–12,
`15–30, 34–37, and 40 in its summary of grounds presented. See Pet. 3.
`However, Petitioner provides a detailed analysis of this challenge in the
`Petition. See Pet. 112–119. We understand this to be typographical error.
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’372 patent have an effective filing date (Feb. 8, 2017) after the
`effective date of the applicable AIA amendments, we refer to the AIA
`version of 35 U.S.C. § 103 in this Decision.
`4 Dickerson, WO 2015/123257 A1, pub. Aug. 20, 2015 (Ex. 1005).
`5 “Launch your own Bitcoin Data Center,” (last retrieved July 17, 2023 at
`https://web.archive.org/web/20160305044934/http://www.cryptokube.com:
`80/home/4586398583) (Ex. 1006, “CryptoKube”). Petitioner also references
`“CryptoKube Bitcoin Mining Data Center Tour” video, (last retrieved
`November 28, 2023 at
`https://web.archive.org/web/20150511223850/https://www.youtube.com/
`watch?v=5bDtgIcVb3s) (Ex. 1007, “CryptoKube video”; transcription in Ex.
`1008).
`6 Szmigielski, Albert, “Bitcoin Essentials,” Packt Publishing Ltd.,
`Birmingham, UK, ISBN 978-1-78528-197-6, February 2016 (Ex. 1009).
`7 Kheterpal et al., US 2016/0125040 A1, pub. May 5, 2016 (Ex. 1010).
`8 Belady, et al., WO 2015/072989 A1, pub. May 21, 2015 (Ex. 1011).
`9 Boot, et al., US 9,394,770 B2, iss. July 19, 2016 (Ex. 1012).
`7
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`PGR2023-00039
`Patent 11,574,372 B2
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`Claim(s) Challenged 35 U.S.C. §
`1–4, 8, 16–22, 24–30,
`103
`34
`1–4, 8, 10–12, 15–30,
`34–37, 40
`1–4, 7–12, 15–30,
`34–37, 40
`Petitioner also relies on the declarations of Michael Nikolaou, Ph.D.
`(Ex. 1003) and Vernon Kasdorf (Ex. 1004) to support its arguments.
`
`Reference(s)
`MAGS, 10 Polivka,11, 12
`Szmigielski, and Kheterpal
`MAGS, Polivka, Belady-989,
`Szmigielski, and Kheterpal
`Eligibility
`
`103
`
`101
`
`ELIGIBILITY FOR POST-GRANT REVIEW
`II.
`As a threshold matter, we must determine whether the ’372 patent is
`eligible for post-grant review. The post-grant review provisions in section
`6(d) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (September 16, 2011) (“AIA”) apply only to patents that “contain[] or
`contained at any time . . . a claim to a claimed invention that has an effective
`filing date . . . that is on or after [March 16, 2013].” AIA §§ 3(n)(1), 6(d),
`6(f)(2)(A), 125 Stat. 284, 293, 305–312 (2011).
`
`
`10 “Gas Conversion Systems Reclaim Fuel for Industry,” Spinoff 2015,
`National Aeronautics and Space Administration, Technology Transfer
`Program, pp. 104–107 (last retrieved Nov. 28, 2023 at
`https://spinoff.nasa.gov/Spinoff2015/ee_3.html) (Ex. 1013).
`11 “Mining Container ~ 100kW by Polivka GmbH,” Bitcoin Forum, (last
`retrieved June 29, 2023 at
`https://web.archive.org/web/20150520015416/https://bitcointalk.org/
`index.php?topic=948523.0;all) (Ex. 1015).
`12 Petitioner also cites to a video, “Polivka Mining Container Setup on
`Vimeo,” in Ex. 1019 (last retrieved in July 2023 at
`https://vimeo.com/119105477). Pet. iv, 79; Ex. 1020, 11 (refers to video as
`Exhibit 1017).
`
`8
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`Each petitioner for post-grant review must certify that the challenged
`patent is available for post-grant review. 37 C.F.R. § 42.204(a). In addition,
`“[a] petition for a post-grant review may only be filed not later than the date
`that is 9 months after the date of the grant of the patent or of the issuance of
`a reissue patent (as the case may be).” 35 U.S.C. § 321(c). Petitioner has
`the burden to demonstrate eligibility for post-grant review. See Mylan
`Pharms. Inc. v. Yeda Res. & Dev. Co., PGR2016-00010, Paper 9 at 10
`(PTAB Aug. 15, 2016).
`Petitioner certifies under 37 C.F.R. § 42.204(a) that the ’372 patent is
`available for post-grant review. Pet. 2. Petitioner also contends that it “is
`not barred or estopped from requesting review, has not filed a civil action
`regarding the ‘372 patent, and this Petition is being filed within nine months
`of the ‘372 patent’s issuance.” Id. (citing 37 C.F.R. §§ 42.201–202). Patent
`Owner does not address post-grant-review eligibility of the ’372 patent in its
`Preliminary Response.
`On this record, we determine that the ’372 patent is eligible for post-
`grant review. The ’372 patent’s earliest effective filing date is February 8,
`2017 (the filing date of a provisional application to which the ’372 patent
`claims priority), which is after March 16, 2013. Ex. 1001, code (60). In
`addition, the Petition’s filing date, July 20, 2023 (Paper 3, 1), is not later
`than the date that is nine months after the ’372 patent’s grant date of
`February 7, 2023. Ex. 1001, code (45). Finally, we accept Petitioner’s
`certification that it had not filed a civil action challenging the validity of a
`claim of the ’372 patent before the Petition was filed.
`
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`III. DISCRETIONARY DENIAL - § 325(D)
`
`Principles of Law
`1.
`Under § 325(d), in determining whether to institute an inter partes
`review, “the Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” In evaluating whether the same or
`substantially the same prior art or arguments were previously presented to
`the Office, the Board has identified several non-exclusive factors for
`consideration. Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to
`§ III.C.5, first paragraph) (“the Becton, Dickinson factors”). Those factors
`are as follows:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of the prior art or arguments.
`
`
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`Id. (footnote omitted); see also Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 62–63 (Nov. 2019).13
`We further apply the following two-part framework in determining
`whether to exercise its discretion under § 325(d), specifically:
`
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”). Becton, Dickinson factors (a), (b), and (d) relate to
`the first step, and Becton, Dickinson factors (c), (e), and (f) relate to the
`second step. Id. at 10.
`We turn to the parties’ contentions regarding § 325(d). For the
`reasons given below, we are not persuaded to discretionarily deny the
`Petition based on § 325(d).
`
`Advanced Bionics Part One: Whether the Prior Art and
`2.
`Arguments are the Same or Substantially the Same
`Beginning with the first part of the Advanced Bionics framework, we
`consider whether Becton, Dickinson factors (a), (b), and (d) indicate that
`“the same or substantially the same art previously was presented to the
`Office” or that “the same or substantially the same arguments previously
`
`13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`were presented to the Office.” Previously presented art includes art made of
`record by the Examiner, and art provided to the Office by an applicant, such
`as on an Information Disclosure Statement (“IDS”), in the prosecution
`history of the challenged patent. Becton, Dickinson, Paper 8 at 7–8.
`Petitioner acknowledges that Kheterpal and Belady-989 were, in some
`manner, previously presented to the Office. See, e.g., Prelim. Reply 1
`(arguing that “none of the foregoing references (Dickerson, CryptoKube,
`MAGS, Polivka) were made of record”). We need not determine whether
`the first part of the Advanced Bionics framework is satisfied based on these
`disclosures, however, as the second part of the analysis, which we address
`below, is dispositive.
`
`3.
`
`Advanced Bionics Part Two: Whether Petitioner has
`Demonstrated Material Error
`Under the second part of the Advanced Bionics framework, we
`consider “whether the petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims.” Advanced
`Bionics, Paper 6 at 8. “An example of a material error may include
`misapprehending or overlooking specific teachings of the relevant prior art
`where those teachings impact patentability of the challenged claims.” Id. at
`8 n.9.
`Petitioner argues that the Office erred in manner material to the
`patentability of the challenged claims because the “the ’372 patent should
`not have been issued in the first place.” Pet. 123; see also Prelim. Reply 5
`(“[T]he examiner mistakenly relied on PO’s erroneous argument that
`
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`blockchain mining ‘cannot be compared’ with regular data center
`processing.”). According to Petitioner,
`[d]uring prosecution, the Office allowed the amended claims
`because (1) Applicant argued that blockchain mining is
`meaningfully different from traditional data-processing because
`it requires more energy; [EX1002, 222–223] and (2) Applicant
`argued that its “discovery amounts to a new use for previously
`known individual components (a common precursor for
`patentability), and may provide numerous benefits including the
`reduction of greenhouse gas emissions and capture of revenue
`where gas disposal is otherwise a capital loss (for example
`paragraphs 33, 34, 48, and 73).
`Pet. 123 (citing Ex. 1002, 223). On the current record, Petitioner contends
`Szmigielski establishes that “there is no fundamental difference between a
`traditional data center and a digital currency miner” and “using flare gas to
`generate power to reduce greenhouse gas emission was known to the public
`well before the priority date of the ’372 patent.” Id.
`Patent Owner disagrees and argues that “Petitioner has not adequately
`identified any error by the Examiner.” Prelim. Resp. 36. Patent Owner
`argues that Petitioner’s contention that “there is no fundamental difference
`between a traditional data center and a digital currency miner” is incorrect
`because it ignores Szmigielski’s disclosure that the power to run a crypto
`mine operation must be both “inexpensive and reliable.” Id. (citing Ex.
`1009, 90). Consequently, Patent Owner argues that Petitioner has not shown
`“error in Examiner’s reliance on the argument that blockchain mining cannot
`be compared with regular data centers.” Prelim. Sur-reply 5 (citing Prelim.
`Reply 5). Rather, “Petitioner at best has alleged that it disagrees with that
`evaluation,” which is not enough to establish that the Office erred in a
`
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`manner material to patentability. Id. (citing Advanced Bionics, Paper 6 at 9).
`We disagree.
`Instead, we agree with Petitioner that the Office erred in a manner
`material to the patentability of challenged claims. Pet. 123; Prelim. Reply 5.
`Petitioner argues that the Petition’s explanation for why a person having
`ordinary skill in the art would have been motivated to combine the
`references is more detailed than the motivation provided by the Examiner
`with reference to Szmigielski. Pet. 123. More particularly, Petitioner asserts
`that Szmigielski teaches that “there is no fundamental difference between a
`traditional data center and a digital currency miner.” Id. (citing Ex. 1009,
`88).
`
`Patent Owner responds that Szmigielski actually discloses that
`“[i]ndustrial miners face almost the same issues as data centers: access to
`relatively cheap power, good network access, access to latest hardware, and
`stable political climate.” Prelim. Resp. 36 (citing Ex. 1009, 88). Patent
`Owner asserts Szmigielski’s disclosure regarding the similarities between
`miners and datacenters is adequate to motivate one of ordinary skill in the art
`to combine the references because crypto miners being “almost the same” as
`datacenters is not the same as having “no fundamental differences.” Prelim.
`Resp. 36. According to Patent Owner, the Szmigielski reference
`“emphasizes that power must be both ‘inexpensive and reliable’ to run the
`mining ‘hardware and the associated cooling systems.’” Id. (citing
`Ex. 1009, 90). Patent Owner adds that crypto mining operations are “highly
`energy-intensive,” and argues that this is “the very difference cited by
`Applicant and presumably accepted by examiner.” Id. (citing Ex. 1002,
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`222).
`However, for the reasons given below (see §§ IV.C–F), we
`preliminarily find that Petitioner has articulated sufficiently persuasive
`reasoning, based on the evidence of record, as to why one of ordinary skill in
`the art would have made Petitioner’s proposed combinations. See, e.g.,
`Pet. 19–20, 50–51. We discuss this reasoning in greater detail below, but in
`one example Dr. Nikolaou explains that one of ordinary skill in the art
`would have made been motivated to combine Petitioner’s proposed
`combinations based on Szmigielski’s disclosure “that ‘[i]ndustrial miners
`face almost the same issues as data centers: access to relatively cheap power,
`good network access.” Ex. 1003 193–195 (citing Ex. 1009, 88).
`We also consider the teachings of Belady-989 in conjunction with
`Szmigielski’s disclosure. Belady-989 is directed to a datacenter that also
`generates power using energy generated by natural gas as a byproduct of oil
`drilling operations. Ex. 1011, Abstract. Belady-989 discloses that remote
`“data centers often consume large quantities of electrical power” and “the
`cost of obtaining such electrical power is becoming a primary determinant in
`the economic success of a data center.” Id. ¶ 4. Belady-989 further
`discloses that “data centers are being located in areas where the data centers
`can obtain electrical power in a cost-effective manner” because the need for
`advanced computing services requires “massive amounts of computing
`processing capability.” Id. 3–4.
`Based on the record before us at this early stage, we find that
`Petitioner has shown that the Examiner erred in failing to appreciate that a
`person having ordinary skill in the art would have combined the teachings in
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`the manner recited in the claims. See, e.g., Pet. 19–20 (citing Ex. 1003
`¶¶ 91–99; Ex. 1004 ¶¶ 89–97), 50–51 (citing Ex. 1003 ¶¶ 187–195; Ex. 1004
`¶¶ 166–174). As a result, on this record, Petitioner demonstrates that the
`Office erred in a manner material to the patentability of challenged claims.
`
`IV. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including: “(1) the 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 active workers in the field.” Best
`Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`omitted). “The patent’s purpose can also be informative.” Id. (citation
`omitted).
`Petitioner asserts that one of ordinary skill in the art (“POSITA”)
`would have had “a degree in chemical engineering, petroleum engineering,
`process engineering, mechanical engineering, or a similar field with 1–2
`years of experience in designing power generation systems, Blockchain
`mining systems, or other comparable hands-on experience.” Pet. 7 (citing
`
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`Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5
`years of experience in the Blockchain mining industry would also qualify as
`a POSITA” and “[a]dditional education could substitute for professional
`experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).
`Patent Owner disagrees with Petitioner’s articulation of the level of
`ordinary skill in the art, but does not offer a definition of its own. Prelim.
`Resp. 9–10. According to Patent Owner, “[t]he Petition and related
`declarations propose two alternative levels of ordinary skill in the art, where
`the second alternative does not require any formal education or any
`experience in the field of oil or gas production.” Id. at 9. While Patent
`Owner disagrees with Petitioner’s characterization of the level of ordinary
`skill in the art, Patent Owner does not explain how a different level of skill is
`likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it
`“applied Petitioner’s articulation and confirmed the prior art analysis
`detailed below would not change based on disagreements over the level of
`ordinary skill in the art.” Id. at 9–10 (citing Ex. 2001 ¶¶ 15–16).
`To the extent necessary, and for purposes of this Decision, we accept
`Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co.
`v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of
`problems encountered in the art, prior art solutions to those problems, and
`the sophistication of the technology as factors that may be considered in
`determining the level of ordinary skill in the art). The prior art itself may be
`sufficient to demonstrate the level of skill in the art at the time of the
`invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings
`regarding ordinary skill level are not required “where the prior art itself
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`
`reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
`
`B. Claim Construction
`In a post-grant review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.200(b). “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention” and “after reading the entire patent.” Phillips v. AWH Corp., 415
`F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc). In addition to the
`specification and prosecution history, we also consider use of the terms in
`other claims and extrinsic evidence including expert and inventor testimony,
`dictionaries, and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Id. at 1312–17. Usually, the
`specification is dispositive, and it is the single best guide to the meaning of a
`disputed term. Id. at 1315.
`Petitioner proposes express constructions for four claim terms,
`“blockchain mining device,” “mining processor,” “a continuous flow of
`combustible gas,” and “sales gas line.” Pet. 4–7. Patent Owner disputes
`Petitioner’s proposed constructions for the terms “blockchain mining
`device,” “mining processor,” and “a continuous flow of combustible gas.”
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`Prelim. Resp. 4–9. Patent Owner notes that no construction is necessary for
`the term “blockchain mining devices” “[b]ecause the claim language itself
`informs a person of ordinary skill as to [its] meaning.” Id. at 6.
`For purposes of this Decision, and based on the record before us, we
`do not discern any claim-construction issue affecting Petitioner’s
`demonstration that it is more likely than not to prevail. Thus, at this stage,
`we do not find it necessary to construe expressly any language of the
`challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We note that this determination
`does not preclude the parties from arguing their proposed constructions of
`the claims during trial. Indeed, the parties are hereby given notice that claim
`construction, in general, is an issue to be addressed at trial. A final
`determination as to claim construction will be made at the close of the
`proceeding, after any hearing, based on all the evidence of record.
`
`C. Alleged Obviousness over Dickerson and CryptoKube, Szmigielski, and
`Kheterpal (Ground 1: Claims 1–4, 8, 16–30, and 34)
`Petitioner asserts that claims 1–4, 8, 16–30, and 34 are unpatentable as
`obvious over Dickerson, CryptoKube, Szmigielski, and Kheterpal.
`Pet. 12–48. Petitioner also relies on the declaration testimony of Dr.
`Nickolaou and Mr. Kasdorf to support its arguments. Id. (citing Exs. 1003,
`1004). Patent Owner’s arguments on the merits are limited to disputing
`Petitioner’s contentions regarding the proposed the proposed motivation to
`
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`combine the asserted references. Prelim. Resp. 10–24. We address
`Petitioner’s contentions and Patent Owner’s arguments below, beginning
`with the motivation to combine Dickerson CryptoKube, Szmigielski, and
`Kheterpal. We first provide a brief overview of the asserted references.
`
`Overview of Dickerson (Ex. 1005)
`1.
`Dickerson is directed to “processing and using raw natural gas that is
`normally flared at the site of oil and gas field operation facilities.” Ex. 1005
`¶ 2. Dickerson’s Figure 1, which is reproduced below, illustrates “a
`schematic view of a combined gas conditioning and power generation
`system.” Id. ¶ 8.
`
`Figure 1 depicts a feed gas feeding into gas conditioning unit 100, which
`supplies gas to gas engine genset 102, which includes gas engine 110 and
`generator 112 to provide electrical energy via cable 126. Ex. 1005 ¶ 26.
`Dickerson discloses that “large amounts of raw natural gas are flared
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`because of the lack of gas pipeline takeaway capacity.” Ex. 1005 ¶ 3.
`Dickerson also discloses that “a number of oil and gas field facilities where
`gas is being flared rely on diesel-powered electrical generating units for
`electricity needed to run the facilities.” Id. ¶ 4. As an alternative, Dickerson
`discloses that its apparatus may be delivered “to an oil or gas production
`facility, connecting and operating the apparatus while the facility is
`generating raw natural gas.” Id. ¶ 7. Dickerson’s apparatus includes a
`“membrane separation unit for separating useful fuel gas from raw natural
`gas produced at an oil or gas production facility,” because of the presence
`“of contaminants and uneven qualities, the raw natural gas is often
`unsuitable for use in electric power generators.” Id. ¶¶ 4, 6. The apparatus
`also includes “a gas engine that uses the fuel gas to generate electricity that
`is returned to the facility.” Id. ¶ 6.
`
`Overview of CryptoKube (Ex. 1006–1008)
`2.
`CryptoKube14 products include a variety of “entry level data center”
`models for the small or medium-sized industrial bitcoin miner or investor.
`Ex. 1006, 1–2. 15 The data-centers include an enclosure, cooling, internal
`power distribution, and are ready for the introduction of computers for use in
`bitcoin mining or investing. Id. The models are designed to be built and
`delivered so that the buyer need only hook up electrical service to the unit,
`because “[e]verything you need is already inside and ready to go.” Id.
`
`
`14 Petitioner references all of Exhibits 1006–1008 collectively as
`“CryptoKube,” in that each Exhibit documents various aspect of the
`CryptoKube product.
`15 We reference Petitioner’s pagination in this reproduction of a web page.
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`(“JUST ADD POWER!”).
`
`Overview of Szmigielski (Ex. 1009)
`3.
`Szmigielski is a book titled “Bitcoin Essentials.” Ex. 1009, Title
`Page. 16 Szmigielski describes various aspects related to the mining of
`Bitcoin, including instructions on how to mine bitcoin, how tran