PGR2023-00039
`Patent Owner’s Preliminary Response
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CRUSOE ENERGY SYSTEMS, LLC
`Petitioner
`
`v.
`
`UPSTREAM DATA INC.
`Patent Owner
`
`Case PGR2023-00039
`Patent No. 11,574,372
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`FOR POST GRANT REVIEW
`U.S. PATENT NO. 11,574,372
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`INTRODUCTION ......................................................................................... 1
`I.
`OVERVIEW OF ’372 PATENT ................................................................... 1
`II.
`III. CLAIM CONSTRUCTION .......................................................................... 4
`A.
`Petitioner’s Construction Of “Blockchain Mining Devices” And
`“Mining Processor” Is Not Supported By The Intrinsic Record .......... 4
`Petitioner’s Construction Of A “A Continuous Flow Of
`Combustible Gas” Is Inconsistent With The Intrinsic Record ............. 7
`Level of Ordinary Skill in the Art ........................................................ 9
`C.
`IV. NON-OBVIOUSNESS GROUNDS ........................................................... 10
`Ground 1. ............................................................................................10
`A.
`1.
`No Motivation to Combine ......................................................10
`Ground 1 is based on hindsight ........................................................... 10
`Prior art teaches away from proposed combination ............................ 17
`Petition does not address reasonable expectation of success .............. 18
`Petitioner’s own patents illustrate nonobviousness ............................ 21
`Petitioner’s experts demonstrate hindsight of alleged motivation to
`combine .............................................................................................. 23
`2.
`Board Should Exercise Discretion Under 325(d) to Deny
`Institution .................................................................................24
`Becton-Dickinson Factor One: the similarities and material
`differences between the asserted art and the prior art involved during
`examination........................................................................................ 26
`Becton-Dickinson Factor Two: the cumulative nature of the asserted
`art and the prior art evaluated during examination............................ 33
`Becton-Dickinson Factor Three: the extent to which the asserted art
`was evaluated during examination, including whether the prior art
`was the basis for rejection ................................................................. 34
`Becton-Dickinson Factor Four: the extent of the overlap between the
`arguments made during examination and the manner in which
`
`a.
`b.
`c.
`d.
`e.
`
`d.
`
`i
`
`B.
`
`a.
`
`b.
`
`c.
`
`

`

`e.
`
`f.
`
`g.
`B.
`
`C.
`
`D.
`
`IPR2023-00039
`Petition for Inter Partes Review
`Petitioner relies on the prior art or Patent Owner distinguishes the
`prior art .............................................................................................. 34
`Becton-Dickinson Factor Five: whether Petitioner has pointed out
`sufficiently how the Examiner erred in its evaluation of the asserted
`prior art .............................................................................................. 36
`Becton-Dickinson Factor Six: the extent to which additional evidence
`and facts presented in the Petition warrant reconsideration of prior art
`or arguments ...................................................................................... 37
`Petitioner has not demonstrated material error by examiner .............. 38
`Ground 2 .............................................................................................39
`1.
`No Motivation to Combine or Reasonable Expectation of
`Success .....................................................................................39
`Board Should Exercise Discretion Under Section 325(d)
`to Deny Institution ...................................................................43
`Ground 3 .............................................................................................45
`1.
`No Motivation to Combine or Reasonable Expectation of
`Success .....................................................................................45
`Board Should Exercise Discretion Under Section 325(d)
`to Deny Institution ...................................................................50
`Ground 4 .............................................................................................51
`1.
`No Motivation to Combine or Reasonable Expectation of
`Success .....................................................................................51
`a. Motivation to combine is based on hindsight and is contradicted by
`references ........................................................................................... 51
`Petition fails to establish reasonable expectation of success .............. 55
`Szmigielski teaches away .................................................................... 56
`Petitioner’s own patents support nonobviousness .............................. 57
`2.
`Board Should Exercise Discretion Under Section 325(d)
`to Deny Institution ...................................................................58
`
`b.
`c.
`d.
`
`2.
`
`2.
`
`ii
`
`

`

`1.
`
`3.
`
`4.
`
`IPR2023-00039
`Petition for Inter Partes Review
`Becton-Dickinson Factor One: the similarities and
`material differences between the asserted art and the
`prior art involved during examination .....................................58
`a. MAGS.................................................................................................. 58
`b.
`Polivka ................................................................................................. 60
`2.
`Becton-Dickinson Factor Two: the cumulative nature of
`the asserted art and the prior art evaluated during
`examination ..............................................................................62
`Becton-Dickinson Factor Three: the extent to which the
`asserted art was evaluated during examination, including
`whether the prior art was the basis for rejection ......................63
`Becton-Dickinson Factor Four: 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 ..................................64
`Becton-Dickinson Factor Five: whether Petitioner has
`pointed out sufficiently how the Examiner erred in its
`evaluation of the asserted prior art ...........................................65
`Becton-Dickinson Factor Six: the extent to which
`additional evidence and facts presented in the Petition
`warrant reconsideration of prior art or arguments ...................66
`Petitioner has not demonstrated material error by
`examiner ...................................................................................66
`Ground 5 .............................................................................................67
`1.
`No Motivation to Combine or Reasonable Expectation of
`Success .....................................................................................67
`Board Should Exercise Discretion Under Section 325(d)
`to Deny Institution ...................................................................70
`THE CLAIMS RECITE PATENT ELIGIBLE SUBJECT MATTER ....... 72
`V.
`VI. CONCLUSION ............................................................................................ 85
`
`E.
`
`5.
`
`6.
`
`7.
`
`2.
`
`iii
`
`

`

`IPR2023-00039
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 14
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb.13,2020) ...........................................passim
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ........................................passim
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 20
`CSL Behring GMBH v. Shire Viropharma Inc.,
`IPR2019- 00459, Paper 8 ((PTAB Jul. 2, 2019) ................................................. 38
`
`In re Cyclobenzaprine Hydrochloride Extended–Release Capsule
`Patent Litig.,676 F.3d 1063 (Fed. Cir. 2012) ..................................................... 12
`Edge Endo, LLC v. Maillefer Instruments Holding, S.A.R.L.,
`IPR2018-01349, Paper 15 (PTAB Jan. 14, 2019) .............................................. 39
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`8 F.4th 1331 (Fed. Cir. 2021) ....................................................................... 40, 68
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 21
`InTouch Technologies, Inc. v. VGO Communications, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ........................................................ 13, 18, 23, 58
`Juniper Networks, Inc., v. Correct Transmission, LLC,
`IPR2021-000682, Paper 26 (PTAB Oct. 3, 2022) ........................................ 40, 68
`
`iv
`
`

`

`IPR2023-00039
`Petition for Inter Partes Review
`
`In re Kahn,
`441 F.3d 977 (Fed.Cir.2006) ............................................................ 13, 39, 45, 67
`KSR Int’l Co. v. Teleflex, Inc.,
`550 US 398 (2007) .............................................................................................. 13
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66 (2012) .................................................................................. 73, 74, 75
`Regents of the University of California v. Eli Lilly & Co.,
`119 F.3d 1559 (Fed. Cir. 1997) .......................................................................... 33
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
`Ltd.,
`853 F.3d 1370 (Fed. Cir. 2017) .................................................................... 18, 56
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................... 14
`Statutes
`35 U.S.C. § 101 .................................................................................................... 1, 73
`35 U.S.C. § 312(a)(3) ................................................................................... 40, 45, 68
`35 U.S.C. § 324(a) ................................................................................................... 24
`35 U.S.C. § 325(d) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 42.65(a) ........................................................................................... 14, 85
`84 Fed. Reg. 50 (Jan. 7, 2019) ................................................................................. 76
`MPEP § 2106 ........................................................................................................... 76
`MPEP § 2106.03, subsection III .............................................................................. 73
`MPEP § 2106.04(a) .................................................................................................. 76
`MPEP § 2106.4(a)(1) ............................................................................................... 77
`MPEP § 2106.04(d), subsection III.......................................................................... 78
`
`v
`
`

`

`IPR2023-00039
`Petition for Inter Partes Review
`MPEP § 2106.04, subsection II ................................................................................ 74
`MPEP § 2106.05 ................................................................................................ 74, 80
`MPEP § 2143.01 (V) .......................................................................................... 20-21
`
`vi
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Exhibit No.
`Exhibit 2001 Declaration of Dr. Fengqi You and Curriculum Vitae
`Exhibit 2002 U.S. Patent No. 10,862,307
`Exhibit 2003 Excerpt from the Prosecution History of U.S. Patent No.
`10,862,307
`Exhibit 2004 U.S. Patent Application Publication 2014/0096837 A1,
`Publication Date: April 10, 2014
`Exhibit 2005 U.S. Patent Application Publication 2018/0109541 A1,
`Publication Date: April 19, 2018
`Exhibit 2006 Opto Video. “Why is Natural Gas Flared?” Temecula, CA: Opto
`Video, 2015.
`Exhibit 2007 BitFury Group Limited. BlockBox AC – Air Cooled Mobile
`Datacenter. Amsterdam, The Netherlands: BitFury, 2017
`Exhibit 2008 Declaration of Sylvia Hall-Ellis, Ph.D. and Curriculum Vitae
`
`Unless indicated otherwise, all emphasis and annotations herein are added by
`Patent Owner.
`
`i
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`
`I.
`
`INTRODUCTION
`The Board should deny institution of the Post Grant Review trial sought by
`
`Crusoe Energy System, Inc (“Crusoe”) because the grounds rehash obviousness
`
`arguments that were addressed and resolved during examination of United States
`
`No. 11,574,372. Further, Crusoe and its experts demonstrably engage in hindsight
`
`to present tenuous obviousness grounds that thinly address any reason to make the
`
`combination of references sought by Crusoe. Finally, Crusoe’s final challenge to
`
`the claims under 35 U.S.C. § 101 is facially inadequate to support institution
`
`because it depends on misreading of the claims and does not apply the correct legal
`
`test. For the reasons provided herein, Patent Owner Upstream Data Inc.
`
`(“Upstream”) respectfully requests that Crusoe’s Petition be denied.
`
`II. OVERVIEW OF ’372 PATENT
`The ’372 patent claims priority to provisional application 62/456,380, filed
`
`on February 8, 2017. EX1001. The patent “relates to blockchain mining at an oil or
`
`gas facility.” Id., 1:6-7. The ’372 patent explains that “[i]n upstream production of
`
`oil and gas, natural gas may be produced … as a by-product of oil production, for
`
`example from an oil well.” Id., 6:51-54. This form of natural gas is referred to as
`
`undesirable casinghead gas, casing gas or simply raw gas. Id., 4:62-63, 8:66-9:3.
`
`The prior art knew some ways to utilize casinghead gas. For example, it was
`
`known to consume it as “on-site fuel for equipment or for instrumentation
`
`1
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`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`pressure.” EX1001, 6:56-58. If there was a significant gas volume beyond what
`
`could be consumed onsite, gas could be sold to market through a connection to a
`
`pipeline network or liquified for transportation. Id., 6:59-64. If a grid connection
`
`was available, casinghead gas could be used to generate electricity for sale to the
`
`power grid. Id., 6:63-67.
`
`However, gas “may be located at a remote oil and gas site” that lacks
`
`“accessible infrastructure such as an external pipeline network (sales line) or
`
`external power grid to sell into” and may be “hundreds of kilometers outside of the
`
`nearest town.” Id., 7:46-49, 8:20-23. In such cases “it may not be economically
`
`feasible” to take the gas or electricity to market, “for example due to significant
`
`capital expense required or when the volume of gas is insufficient to pay out the
`
`investment.” Id., 7:49-54, 8:11-23. As is known in the art, the gas is “stranded.”
`
`Id., 7:54-56; EX2001, ¶31.
`
`In such cases, a common solution is to vent or flare (burn) the stranded gas.
`
`EX1001, 1:11-13, 7:61-8:10. However, this solution creates greenhouse gas
`
`emissions, wastes the potential energy of the gas, requires capital expenditure, and
`
`may pose health risks. Id.
`
`The novel solution taught by the ’372 patent used stranded gas to power a
`
`portable blockchain mining device instead of flaring the gas. Id., 2:18-24.
`
`“A blockchain is a form of database, which may be saved as a distributed ledger in
`
`2
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`a network of nodes that maintains a continuously-growing list of records called
`
`blocks.” Id., 11:45-47. “The administration of BITCOIN currency is currently the
`
`primary use for blockchain technology.” Id., 11:57-60. “Maintaining a blockchain
`
`database is referred to as mining, which refers to the distributed computational
`
`review process performed on each block of data in a block-chain.” Id., 13:5-7.
`
`“Those involved in BITCOIN mining are rewarded for their effort with newly
`
`created BITCOINs and transaction fees.” Id., 13:9-13.
`
`Blockchain mining (also referred to as crypto mining) differs from many
`
`other types of computing as it is “intentionally designed to be resource-intensive
`
`and difficult so that the number of blocks found each day by miners remains
`
`steady.” Id., 13:29-33, 13:44-48. This intentionally energy-intensive problem
`
`comprises “a cryptographic hashing algorithm.” Id., 13:49-52. Since the energy
`
`cost of crypto mining is the primary operating cost, the prior art mines were
`
`located primarily in places with low-cost hydroelectric power such as China or the
`
`Pacific Northwest in the United States. Id., 14:4-20; EX1009, 105; EX2001, ¶36.
`
`Decentralizing crypto mining away from hydroelectric power to make use of
`
`stranded gas at remote oil and gas production facilities required innovative
`
`solutions disclosed in the ’372 patent. For example, unlike existing crypto mines
`
`which could depend on reliable power sources (e.g., a hydroelectric power plant),
`
`the ’372 patent’s bitcoin mine had to solve the problem of variable casehead gas
`
`3
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`production. EX2001, ¶37. The ’372 patent discloses solving this problem by, for
`
`example, the mining controller modulating the mining power load (also referred to
`
`as the hashrate) in real time to respond “to variations in a supply or production rate
`
`of natural gas.” EX1001, 17:61-18:15; EX2001, ¶37. In addition, crypto mining
`
`power levels may be adjusted to a daily minimum or maximum gas production rate
`
`as different strategies to mitigate the variable production. EX1001, 18:34-19:13;
`
`EX2001, ¶37.
`
`III. CLAIM CONSTRUCTION
`A.
`Petitioner’s Construction Of “Blockchain Mining Devices” And
`“Mining Processor” Is Not Supported By The Intrinsic Record
`The intrinsic evidence of the ’372 patent does not support Petitioner’s
`
`constructions. First, Petitioner nearly equates the meaning of a “blockchain mining
`
`devices” with a “mining processor.” Pet. 4-6. But, the specification makes clear
`
`(including with reference to Figure 4) that the “mining device 12” is made of up of
`
`many components, such as a power meter 72, a step-down transformer 80, “a
`
`controller 86, network equipment 88 such as a modem and a network switch, …
`
`and one or more mining processors 92 such as processors 92A-E.” EX1001,
`
`16:32-39 (emphasis added); see also 17:23-29; EX2001, ¶39. With respect to the
`
`mining processors 92, the ’372 patent details that “[e]ach mining processor 92 may
`
`have a variety of configurations, but generally may include at least a power supply,
`
`a controller board and mining circuity, such an ASIC circuit. Various mining
`
`4
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`circuitry examples include CPU (central processing unit), GPU (graphics
`
`processing unit), FPGA (Field-Programmable Gate Array), and ASIC (application
`
`specific integrated circuit). The components of an ASIC mining processor include
`
`the hash boards (each board has numerous chips that is doing the hashing), a
`
`controller (to communicate with the network and optimize the mining processors
`
`chip frequency and fans for colling), and a power supply (typically converts AC
`
`input power to DC power for the ASIC).” EX1001, 17:9-21. A person of ordinary
`
`skill in the art, therefore, would understand that at a minimum a mining processor
`
`is “a processor with blockchain mining circuitry.” EX2001, ¶39.
`
`Second, Petitioner primarily relies on disclosure pertaining to a “network of
`
`nodes” to reach its conclusion regarding the terms “blockchain mining devices”
`
`and “mining processor.” Petitioner, however, confuses the existence of nodes
`
`within a network of nodes that “maintain … records” with mining processors that
`
`include “circuitry for mining blockchain blocks.” EX2001, ¶40. For example,
`
`while the nodes are described as “stor[ing] a copy of the global ledger” within the
`
`blockchain database (EX1001,14:22-43), the ’372 patent specification describes
`
`the mining processor as providing the “require[d] computational effort” measured
`
`by the “hashrate.” EX1001,13:49-58;EX2001, ¶40. As the specification makes
`
`plain, a simple node may be “desktop computers, laptop computers, tablet
`
`computers, cellular telephones, servers, or other suitable devices” used for storing
`
`5
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`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`already computed blocks within a blockchain. EX1001,14:30-33. But, the
`
`“[m]ining circuitry 130, for example integrated circuit chip, may be used to
`
`perform data mining operations, for example verifying cryptocurrency
`
`transactions.” Id., 14:57-63; see also 17:9-21.
`
`Accordingly, a node that simply stores a copy or partial copy of the
`
`blockchain database may or may not have a mining processor. EX2001, ¶41. The
`
`specification’s teaching is consistent with the language of the independent claims
`
`of the ’372 patent that describe “blockchain mining devices” as “each hav[ing] a
`
`mining processor” and a “connection to a network interface.” EX1001, claims 1
`
`and 24; EX2001, ¶41. Because the claim language itself informs a person of
`
`ordinary skill as to the meaning of the “blockchain mining devices,” no
`
`construction of that term is necessary. Id.
`
`Finally, Petitioner offers no support whatsoever for its proposal to attach the
`
`negative limitation “without regard to processor speed or power” to either
`
`identified claim term. There is simply no claim language in the ’372 patent, no
`
`specification support within the ’372 patent, and no reason to be gleaned from the
`
`prosecution history to graft the notion of “any processor … without regard to
`
`processor speed or power” into the claims. Id., ¶42. To the contrary, the
`
`specification repeatedly teaches that the “computation effort” is important, so
`
`much so that the ’372 patent teaches optimizing the hashrate by, for example,
`
`6
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`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`“changing … the clock rate of the processor.” EX1001, 13:49-54; EX2001, ¶42. A
`
`person of ordinary skill in the art would find no support for a requirement that the
`
`“blockchain mining devices” or “mining processors” exist “without regard to
`
`processor speed or power.” Id.
`
`B.
`
`Petitioner’s Construction Of A “A Continuous Flow Of
`Combustible Gas” Is Inconsistent With The Intrinsic Record
`Petitioner’s construction of “continuous flow of combustible gas” similarly
`
`divorces the claim term from the surrounding claim language, the specification’s
`
`description of the source of combustible gas, and ignores the prosecution history.
`
`Pet. at 6. Petitioner’s proposal renders superfluous the word “continuous” in the
`
`claim because it suggests that any “time period” where “a flow” is present, no
`
`matter how small the time period may be, is “continuous.” EX2001, ¶43. Under a
`
`literal reading of Petitioner’s proposal, a flow of combustible gas that occurred for
`
`a few minutes and then disappeared would meet the limits of “a flow of
`
`combustible gas that is continuous for at least a time period.” Id. Thus, Petitioner’s
`
`proposal is inconsistent with the plain meaning of the claim language requiring a
`
`continuous flow. Id.
`
`The ’372 patent specification confirms that the “continuous” character of the
`
`natural gas in the ’372 patent derives from the fact the natural gas is a by-product
`
`of hydrocarbon (oil) production, storage, or processing, and cannot be avoided
`
`during production. EX1001, 6:35-39 (“Natural gas may naturally separate from
`
`7
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`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`the oil stream as it is produced up the well …”); id., 6:48-51 (“Natural gas may
`
`also be liberated out of solution from the oil as it is treated …”); EX2001, ¶44. In
`
`remote areas, where an oil field operator is confronted with this continuous source
`
`of natural gas, “the operator is forced to do something with the excess or stranded
`
`gas and is left with few options” such as “venting … flar[ing], … or ceasing
`
`production….” EX1001, 7:54-60. The natural gas that is the focus of the ’372
`
`patent is “[c]asing gas, also known as casinghead gas, [that] is gas produced as a
`
`byproduct from a producing oil well ….” Id., 8:66-9:1; 9:63-66; EX2001, ¶44. The
`
`recitation of a “continuous flow of combustible gas” reflects that the combustible
`
`gas is continuous (albeit at varying production rates) as a byproduct of
`
`“hydrocarbon production, storage, or processing.” Id. This is consistent with the
`
`ordinary meaning of a “continuous flow of combustible gas” that would be applied
`
`by a person of ordinary skill in the field. Id.
`
`Petitioner identifies a portion of the ’372 patent specification describing an
`
`aspect of the invention that uses a controller to modulate the blockchain mine load
`
`in relationship to a varying gas supply. EX1001, 17:47-60. The portion of the
`
`specification identified by Petitioner teaches the advantageous use of controller
`
`settings to deliver a stable and consistent load from the mining processors
`
`throughout the day, even during periods of time where the production rate of
`
`combustible gas exceeds the minimum production rate. EX1001, 18:16-27;
`
`8
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`EX2001, ¶45. Contrary to Petitioner’s proposed construction, the implementation
`
`of these controller settings does not disclose a supply of combustible gas present
`
`for merely “a time period,” but instead describes a varying production rate between
`
`a minimum and maximum production rate. EX2001, ¶45.
`
`Finally, Petitioner and its expert opine that “the gas supply from any given
`
`oil field is limited, and will eventually dry up” to support the proposal that requires
`
`a supply of combustible gas during “any time period.” Pet. at 6. Petitioner’s
`
`expert’s opinion is not only disputable, it does not find support in the specification
`
`and is not pertinent to the problem of casinghead gas that is a byproduct of oil
`
`production described in the ’372 patent. EX2001, ¶46. That a well may at some
`
`point stop producing hydrocarbons does not justify the “any time period” language
`
`because the ’372 patent is directed to a problem that exists while casehead gas is
`
`produced. Id. Thus, a person of ordinary skill in the art would not accept
`
`Petitioner’s proposed construction for the “continuous flow of combustible gas.”
`
`Id.
`
`Level of Ordinary Skill in the Art
`C.
`The 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. While Patent
`
`Owner disagrees with the Petition’s treatment of the level of ordinary skill in the
`
`9
`
`

`

`PGR2023-00039
`Patent Owner’s Preliminary Response
`art, the Patent Owner and Dr. You 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. EX2001, ¶¶15-16. Similarly, Patent
`
`Owner applied Petitioner’s proposed claim constructions when analyzing the prior
`
`art and confirmed that the analysis would not change whether or not Petitioner’s
`
`proposed constructions are applied.
`
`IV. NON-OBVIOUSNESS GROUNDS
`A.
`Ground 1.
`1.
`No Motivation to Combine
`Petitioner fails to demonstrate that a POSITA would have been motivated to
`
`combine references for this Ground for at least the following reasons.
`
`Ground 1 is based on hindsight
`a.
`Petitioner asserts that the claimed invention had “been done before,”
`
`(Petition, 1), but Ground 1 relies on four references even for the independent
`
`claims. Petitioner ignores the pioneering nature of the ’372 invention which
`
`materially advanced the knowledge in the art (see EX2001, ¶48.), and engages in
`
`hindsight reconstruction of the claims using references that a POSITA would not
`
`have combined. Tellingly, the two primary references – Dickerson and the so-
`
`called “CryptoKube system” – are from what a POSITA would have considered as
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`disparate and unrelated fields of art before the invention of the ’372 patent (id.):
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` Dickerson relates to a “mobile apparatus… for processing and using raw
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`PGR2023-00039
`Patent Owner’s Preliminary Response
`natural gas that is normally flared at the site of oil and gas field operation
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`facilities” comprising “a membrane separation unit for separating useful
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`fuel gas from raw natural gas” and a “gas engine that uses the fuel gas to
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`generate electricity that is returned to the facility.” EX1005, ¶¶2,6.
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`Petitioner does not dispute that Dickerson never mentions datacenters or
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`cryptocurrency mining, let alone discloses any use of its apparatus to
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`mine cryptocurrency.
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` The CryptoKube system purportedly discloses “a commercialized
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`industrial Bitcoin mining system.” EX1004, ¶63. The CryptoKube
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`Brochure discloses that “CryptoKube can run inside a large warehouse,
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`outside in a parking lot or in a server pod farm where the power is
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`cheapest.” EX1006, 4. Yet there is no indication in the CryptoKube
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`references of any actual or even hypothetical use of CryptoKube with a
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`generator at an oil or gas production facility which “are typically located
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`in remote areas where no utility power is available” as explained by
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`Dickerson. EX1005, ¶24. Nor does Petitioner’s declarant Mr. Kasdorf –
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`identified as “the owner and partner in KubeData Systems Inc.” – provide
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`even a single instance of CryptoKube powered by flare gas at a remote
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`oil or gas production facility.
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`Given this lack of any connection between Dickerson and CryptoKube,
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`PGR2023-00039
`Patent Owner’s Preliminary Response
`Petitioner cannot rely on the primary references to supply the motivation to
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`combine. Instead, Petitioner turns to a third reference – the Szmigielski book on
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`cryptocurrency mining – for the purported motivation to combine. See EX1009;
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`Petition, 19-20. This use of yet another reference to supply the missing motivation
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`to combine underscores that before the ’372 invention a POSITA would not have
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`considered generators utilizing flared gas at remote oil and gas facilities as suitable
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`to power a cryptocurrency miner like CryptoKube. EX2001, ¶49. See In re
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`Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d
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`1063, 1072 (Fed. Cir. 2012) (“This hindsight analysis is inappropriate because
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`obviousness must be assessed at the time the invention was made.”). Rather, before
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`the ’372 invention, a POSITA considered crypto mining and power generation
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`from flare gas at remote oil production facilities as two disparate and unrelated
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`fields. EX2001, ¶49.
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`Petitioner relies on Szmigielski’s statement that “[o]ne of the biggest costs
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`for Bitcoin miners is the cost of electricity” as the motivation to combine
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`Dickerson and CryptoKube. Petition, 20; EX1009, 105.1 Szmigielski describes his
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`1 The Petition appears to cite to EX1009 using original pagination rather than
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`exhibit page numbers. For consistency with other exhibits, this POPR cites to
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`EX1009 exhibit page numbers.
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`PGR2023-00039
`Patent Owner’s Preliminary Response
`book as “show[ing] you how to mine for yourself” and “explain[ing] step by step
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`what is necessary and how to do it.” EX1009, 12. Yet this 2016 how-to
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`cryptocurrency mining volume that post-dates both primary references never
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`identifies remote oil and gas facilities as a suitable location or power source;
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`rather, it identifies other electricity sources such as “inexpensive hydroelectric
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`power.” EX2001, ¶50; EX1009, 105.
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`Petitioner asserts in a conclusory manner that, based on the statement in
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`Szmigielski, a “POSITA would have been motivated to couple a device capable of
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`digital currency mining to Dickerson’s system to utilize the free excess electricity.”
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`Petition, 20. This is insufficient as a matter of law given the disparate fields of th