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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CRUSOE ENERGY SYSTEMS, LLC,
`Petitioner,
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`v.
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`UPSTREAM DATA, INC.,
`Patent Owner.
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`Case PGR2023-00039
`Patent 11,574,372
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`PETITIONER’S REPLY TO
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`EX1001
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`EX1002
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
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`EXHIBIT LIST
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`U.S. Patent No. 11,574,372 to Stephen Barbour et al. (“the ‘372
`Patent”)
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`Excerpts from the Prosecution History of the ‘372 Patent (“the
`Prosecution History”)
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`Declaration and Curriculum Vitae of Michael Nikolaou
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`Declaration and Curriculum Vitae of Vernon Kasdorf
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`EX1003
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`EX1004
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`EX1005 WO2015123257A1 (Dickerson)
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`EX1006
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`CryptoKube brochure from the WaybackMachine dated March 5,
`2016 (“CryptoKube Brochure”)
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`CryptoKube Bitcoin Mining Data Center Tour(CC) (“CryptoKube
`Video-Part1”)
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`CryptoKube Bitcoin Mining Data Center Tour Transcript
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`Szmigielski, Albert. Bitcoin Essentials. Packt Publishing Ltd, 2016
`(“Szmigielski”)
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`U.S. Patent Publication No. 2016/0125040 (“Kheterpal”)
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`PCT Patent Publication No. WO2015072989 (“Belady-989”)
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`U.S. Patent No. 9,394,770 (“Boot”)
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`EX1007
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`EX1008
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`EX1009
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`EX1010
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`EX1011
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`EX1012
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`EX1013
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`Sanders, Gerald, and Johnson Space Center. "Gas Conversion
`Systems Reclaim Fuel for Industry." (“Sanders”)
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`US Patent Publication No. 2015/0368566 (“Young”)
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`EX1014
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`EX1015 Mining Container ~100kW by Polivka GmbH (“Bitcointalk Forum
`Post”)
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`i
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`EX1016 Mining with free natural gas _ r_Bitcoin (“Reddit”)
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`EX1017
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`EX1018 U.S. Patent Publication No. 2018/0109541 (“Gleichauf”)
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`EX1019
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`EX1020
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`EX1021
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`EX1022
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`Polivka Mining Container Setup on Vimeo (“Polivka Video”)
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`Declaration of June Ann Munford
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`U.S. Patent No. 6,161,386 (“Lokhandwala”)
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`“Crypto you can mine from a home computer,” Brave New Coin
`(bravenewcoin.com) (July 18, 2023)
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`U.S. Patent Publication No. 2014/0096837 (“Belady-837”)
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`EX1023
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`CryptoKube Bitcoin Mining Data Center Tour(CC) (“CryptoKube
`Video-Part2”)
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`EX1024-1099 [RESERVED]
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`EX1100 Complaint for Patent Infringement, Upstream Data Inc. v. Crusoe
`Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo. May 18,
`2023)
`Email from the Board dated November 15, 2023, authorizing
`Petitioner to file a response to Patent Owner’s Preliminary Response
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`EX1101
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`ii
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`Petitioner submits this reply to Patent Owner’s Preliminary Response
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`(“POPR”), as authorized by the Board’s email of November 15, 2023. EX1101.
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`In the Petition, the following references were asserted against the
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`independent claims: Dickerson (EX1005), CryptoKube (EX1006-1008, EX1023),
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`Sanders (aka MAGS) (EX1013-1014), and Polivka (EX1015, EX1019). Pet., 3.
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`The POPR alleges these references are substantially the same as certain file history
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`references, and argues that discretionary denial under Section 325(d) is thus
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`appropriate. POPR, 26-32, 58-62. PO is wrong. Discretionary denial under §325(d)
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`is inappropriate because (1) none of the foregoing references (Dickerson,
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`CryptoKube, MAGS, Polivka) were made of record, and (2) the same or
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`substantially the same prior art and arguments were not previously presented to the
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`Office.
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`During prosecution, the Examiner found that Belady-837 disclosed “using a
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`gas generator to power a data center” and that it was obvious to repurpose Belady-
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`837’s datacenter to mine crypto in view of Gleichauf. EX1002, 336-337. In
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`response, PO did not identify any claim limitation that was missing in the prior art.
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`Instead, PO attacked the motivation to combine and argued that “[b]lockchain
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`mining is not synonymous with regular data center processing and cannot be
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`compared as such.” EX1002, 222. The Examiner was persuaded, erroneously,
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`stating that “there does not appear to be sufficient grounds for combining or
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`1
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`modifying the prior art of record to adequately arrive at the claimed invention.”
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`EX1002, 7. Thus, the reason for allowance was not that a certain claim limitation
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`was missing, but rather that there was no good motivation to combine alledgedly.
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`I.
`The Prior Art and Arguments in the File History and Petition
`Differ Substantially
`A.
`Dickerson Is Not Cumulative of Belady-837
`For Dickerson, the POPR points to Belady-837. POPR, 26-30. However,
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`Dickerson and Belady-837 have important structural and functional differences.
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`For example, unlike Belady-837, Dickerson is a portable (i.e., mobile) container
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`system, leading to a new and stronger motivation to combine. IPR2019-00975,
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`Paper 15 at 16 (finding that, unlike a previously presented reference, the asserted
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`prior art’s implant screw grooves were located at a different portion of the screw,
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`providing a new motivation to combine).
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`Also, according to the POPR, a person skilled in the art allegedly would not
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`have been motivated to combine Belady-837 with a blockchain miner because
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`Belady-837’s “pressure regulating valve” supposedly would shut off the generator,
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`purportedly making it unfit for crypto mining. POPR, 68-69. But Dickerson does
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`not have this alleged deficiency and thus provides a stronger motivation to
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`combine.
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`Further, claims 17, 18, 19, 20, and 21 all require a portable containerized
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`system, which is disclosed by Dickerson, but not Belady-837.
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`2
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`CryptoKube / Polivka Is Not Cumulative of Gleichauf
`B.
`For CryptoKube / Polivka, the POPR points to Gleichauf. POPR, 30-32, 60-
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`61. However, unlike Gleichauf, CryptoKube / Polivka is a portable containerized
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`crypto miner, leading to a new and stronger motivation to combine. IPR2019-
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`00975, Paper 15 at 16. Also, in contrast to Gleichauf, CryptoKube, MAGS, and
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`Polivka were all commercially deployed systems, thereby providing a strong
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`reasonable expectation of success. Bos. Sci., Inc. v. Iancu, 811 F. App'x 618, 625
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`(Fed. Cir. 2020).
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`Further, claims 17, 18, 19, 20, and 21 all require a portable containerized
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`system, which is disclosed by CryptoKube/Polivka, but not Gleichauf.
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`MAGS Is Not Cumulative of the Youtube Video
`C.
`Regarding MAGS, the POPR points to a Youtube video that allegedly
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`discloses the MAGS system. POPR, 58-60. However, this Youtube video is just a
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`conceptual introduction and lacks important structural limitations required by
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`claim 1, such as “a generator connected to the source of combustible gas to receive
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`a continuous flow of combustible gas,” which is disclosed in Petitioner’s MAGS
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`references. Pet., 77-79; EX1013, 2; EX1014, [0198]. Also, in contrast to the
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`MAGS references in the Petition, the Youtube video does not show a system
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`isolated from a sales gas line and an external electrical power grid, as required by
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`claim 2. Pet., 86; EX1013, 2-3; EX1014, [0006], [0084], [0133], and [0146].
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`3
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`Further, because the Youtube video was merely made of record and not
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`actually applied in a rejection, it does not weigh in favor of denying institution.
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`IPR2019-01204, Paper 14 at 16; IPR2018-01216, Paper 14 at 35–36; IPR2017-
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`02137, Paper 9 at 9–10; IPR2017-00551, Paper 9 at 7–8; IPR2022-00353, Paper 8
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`at 10 (finding that when a reference is not the basis of rejection, and merely made
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`of record, it weighs “strongly against” exercising discretionary denial).
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`Polivka Is Not Cumulative of BlockBox
`D.
`For Polivka, the POPR points to BlockBox, which allegedly is similar to
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`Polivka. POPR, 61-62. However, Blockbox lacks important structural limitations
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`required by claim 1, such as a plurality of “blockchain mining devices,” each
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`having “a mining processor.” Pet., 79-81; EX1015, 17 and 31. Further, as
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`discussed above, BlockBox was merely cited in an IDS.
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`The Arguments are Different
`E.
`More importantly, in the Petition, it is Dickerson / MAGS and CryptoKube /
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`Polivka together (combined with the other asserted references) that surpass any
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`individual reference or set of references in the file history to render the claims
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`obvious. Pet., 19-21, 81-83. For example, the Petition explains many motivations
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`to combine Dickerson and CryptoKube including (1) both systems are
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`containerized portable systems that can be easily combined and deployed to a
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`remote location (Pet., 20); (2) Dickerson discloses generating free or cheap excess
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`4
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`electricity that otherwise would be wasted when a grid is not accessible (Pet. 19-
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`20); and (3) cheap electricity is the primary concern for crypto mining (Pet. 20).
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`These arguments were not evaluated during prosecution.
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`The POPR’s argument that the references are substantially the same cannot
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`be reconciled with the PO’s positions during prosecution. For example, during
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`prosecution PO distinguished Belady-837 and Gleichauf by arguing, incorrectly,
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`that “[b]lockchain mining is not synonymous with regular data center processing
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`and cannot be compared as such.” EX1002, 222. Now, facing a different
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`combination – namely the combinations asserted in the Petition – PO abandons the
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`“cannot be compared” argument, and instead argues that blockchain mining
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`requires a “reliable” energy source, a trial-inspired argument found nowhere in the
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`prosecution history. POPR, 15-17.
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`II. The Examiner Erred
`Among other errors, the examiner mistakenly relied on PO’s erroneous
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`argument that blockchain mining “cannot be compared” with regular data center
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`processing. EX1002, 7. As explained in the Petition (at 5), crypto mining does not
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`necessarily require any special hardware because, even today, a home computer
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`can be used to mine blockchains. EX1022, 1. Thus, the Examiner erred by relying
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`on this erroneous argument, which does not apply to the Petition’s grounds.
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`5
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
`Respectfully submitted,
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`/John C. Phillips/
`John Phillips, Reg. No. 35,322
`Jia Zhu, Limited Rec. No. L1372
`FISH & RICHARDSON P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 858-678-5070
`Fax: 877-769-7945
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`Attorneys for Petitioner
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`Dated: November 22, 2023
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`6
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`Proceeding No.: PGR2023-00039
`Attorney Docket: 54598-0001PS1
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on November 22, 2023, a complete and entire copy of this Petitioner’s Reply
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`to Patent Owner’s Preliminary Response and Exhibit 1101 were provided by email
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`to the Patent Owner by serving the correspondence address of record as follows:
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`James M. Heintz
`Clayton Thompson
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
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`Robert Anton Nissen
`Nissen Patent Law
`11044 82 Ave. N.W., Suite 401
`Edmonton, AB T6G 0T2
`CANADA
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`Email: jim.heintz@us.dlapiper.com
`clayton.thompson@us.dlapiper.com
`robbie@nissenlaw.ca
`DLA-Crusoe-Upstream-PGR@us.dlapiper.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 858-678-5667
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`7
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