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 SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`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 SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`1. Petitioner Does Not Identify Material Differences
`a. Dickerson
`Petitioner’s reply does not undercut PO’s showing that the Petition should be
`
`discretionarily denied under §325(d). Petitioner argues that Dickerson’s alleged
`
`mobility “lead[s] to a new and stronger motivation to combine.” Reply, 2. First,
`
`this is attorney argument, unsupported by any evidentiary citation. Second, it is
`
`undisputed that Examiner’s finding of a lack of motivation to combine Belady-837
`
`during prosecution did not rest on whether Belady-837 was mobile. Reply, 1.
`
`Third, the Examiner credited Belady-837’s teaching that data centers “are being
`
`located in areas in areas where natural resources, from which electrical power can
`
`be derived, are abundant and can be located inexpensively” in discussing the
`
`motivation to combine a data center with Belady-837. EX1002, 336. Therefore,
`
`contrary to the argument in Petitioner’s Reply, the Examiner understood that
`
`Belady-837 and data center components could be transported to remote sites.
`
`Petitioner also points to Belady-837’s pressure regulating valve as a
`
`“deficiency” absent in Dickerson. Reply at 2. However, this deficiency was not
`
`noted by the Examiner and did not influence his analysis and therefore is not a
`
`material difference or error during examination. Moreover, Petitioner ignores that a
`
`POSITA would not have combined Dickerson. POPR, 10-21.
`
`Finally, Petitioner asserts that “claims 17, 18, 19, 20, and 21 all require a
`
`portable containerized system, which is disclosed by Dickerson, but not Belady-
`
`1
`
`
`
`837.” Reply, 2. However, the Examiner found these claims obvious in view of
`
`Belady-837 and Gleifchauf. EX1002, 343-44. Accordingly, this is not a material
`
`difference and did not lead to any error during examination.
`
`b. CryptoKube / Polivka
`
`Petitioner does not identify any limitation that the Petition attributes to these
`
`references which was not found by the Examiner in Gleifchauf. Instead, Petitioner
`
`once again resorts to unsupported attorney argument that the “portable
`
`containerized” nature of these references somehow leads to a “new and stronger
`
`motivation to combine.” Reply, 3. However, as conceded by Petitioner, portability
`
`and containerization are only relevant to certain claims (17, 18, 19, 20, and 21) that
`
`were rejected over Belady-837 and Gleifchauf. Moreover, as established in the
`
`POPR, the Examiner considered containerized miners such as the BlockBox that
`
`are substantially similar to CryptoKube and Polivka. POPR, 61-62; EX1002, 361;
`
`EX2007. Contrary to Petitioner, BlockBox discloses blockchain mining devices
`
`each having a mining processor, e.g., 16nm BitFury ASICs. Reply, 4; EX2007, 1-2;
`
`EX2001, ¶¶110-11.
`
`Petitioner also improperly uses the Reply to mitigate its failure to address
`
`reasonable expectation of success by arguing, without any evidentiary support, that
`
`“a strong reasonable expectation of success” existed because CryptoKube, MAGS
`
`and Polivka were “commercially deployed systems.” Reply, 3. However, there was
`
`2
`
`
`
`no reasonable expectation of success for the reasons established in the POPR.
`
`POPR, 18-21, 39-42, 45-49, 55-56, 68-70. Bos. Sci., Inc. v. Iancu, 811 F. App'x
`
`618, 625 (Fed. Cir. 2020) cited by Petitioner is inapposite. That case found a
`
`reasonable expectation of success based on extensive proof, with commercial
`
`availability merely one of many factors, that is absent here. See, id. at 624-626.
`
`c. MAGS
`
`Contrary to Petitioner, EX2006 discloses “a generator connected to the source
`
`of combustible gas.” The Petition appears to rely on MAGS generators that “run
`
`the drilling operation” to satisfy this claim limitation.” Petition, 84. EX2006
`
`likewise teaches “using one [gas] stream to power a generator to replace local
`
`diesel consumption.” POPR, 59-60; EX2001, ¶107; EX2006 (00:45-2:20 min.).
`
`Also contrary to Petitioner, EX2006 at approximately 00:06-00:33 teaches that
`
`there is no sales gas line because the gas mixture is unusable for sales. Regarding
`
`the “electrical power grid” limitation of claim 2, the Petition did not rely on
`
`express disclosure in MAGS of this limitation but argued that a “POSITA would
`
`have understood that diesel-powered generators are needed because the system is
`
`isolated from an external power grid.” Petition, 86. The same reasoning applies to
`
`EX2006 which teaches MAGS replacing diesel generators. EX2001, ¶107.
`
`Finally, Petitioner is incorrect that “because the Youtube video was merely
`
`made of record and not actually applied in a rejection, it does not weigh in favor of
`
`3
`
`
`
`denying institution.” EX2006 was found by the Examiner at the time of the non-
`
`final rejection, indicating that he considered it with due care. EX1002, 346.
`
`Moreover, PTAB decisions cited by Petitioner do not support the broad proposition
`
`asserted by Petitioner. For example, Petitioner characterizes IPR2022-00353 Paper
`
`8 as “finding that when a reference is not the basis of rejection, and merely made
`
`of record, it weighs ‘strongly against; exercising discretionary denial.” In that
`
`proceeding, the examiner did not issue any rejection (aside from double-patenting)
`
`even though the reference demonstrated all claim elements. IPR2022-00353 Paper
`
`8, 8. That is not the case here – the Examiner rejected the claims and Petitioner has
`
`not shown that MAGS is (1) not cumulative and (2) that the examiner erred.
`
`2. Arguments are Not Substantially Different
`As established in the POPR and herein, the motivation to combine proffered in
`
`the Petition is not substantially different from the art considered during
`
`examination. Petitioner’s three examples don’t show otherwise: (1)
`
`containerization was both (a) disclosed and (b) not relevant to Examiner’s analysis;
`
`(2) Belady-837 disclosed that “natural gas is available for free” at oil drilling
`
`facilities and “can be utilized to generate electrical power” (EX1002, 336-37) such
`
`that Dickerson’s disclosure is merely cumulative; and (3) Examiner understood
`
`that “cost-effective” electricity was important because it is a “primary determinant
`
`of success” (EX1002, 336).
`
`Contrary to Petitioner, PO’s arguments are consistent with the prosecution.
`
`4
`
`
`
`Reply, 5. The POPR argued that energy reliability is important because “crypto
`
`mining operations are highly computationally and energy intensive by design,”
`
`unlike “typical data center computing.” POPR, 17; EX2001, ¶58. Applicant
`
`presented the same argument during prosecution, explaining that blockchain
`
`mining cannot be compared to regular data processors because it “is known to be
`
`energy-intensive.” EX1002, 222; POPR, 36.
`
`3. No Examiner Error
`Section 325(d) analysis is rooted in a commitment to deference to previous
`
`Office evaluations. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte
`
`GmbH, IPR2019-01469, Paper 6 at 8–9 (PTAB Feb. 13, 2020) (precedential).
`
`Here, Petitioner at best has alleged that it disagrees with that evaluation. “If
`
`reasonable minds can disagree regarding the purported treatment of the art or
`
`arguments, it cannot be said that the Office erred in a manner material to
`
`patentability.” Advanced Bionics, Paper 6 at 9. Petitioner alleges error in
`
`Examiner’s reliance on the argument that blockchain mining cannot be compared
`
`with regular data centers. Reply, 5. However, as established in the POPR and
`
`above, this argument is not only correct but supported by Petitioner’s own
`
`references (e.g., Szhmigielski). POPR, 17, 36; EX2001, ¶58. Petitioner also argues
`
`that “a home computer can be used to mine blockchains.” Reply, 5. However, none
`
`of the references are home computers; rather, each uses specialized crypto mining
`
`components. See, e.g., EX1015, 17 (SP31 and Bitmain Antminer S19).
`
`5
`
`
`
`December 4, 2023
`
`Respectfully Submitted,
`
`By: /James M. Heintz, 41,828/
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Phone: 703-773-4148
`Fax: 703-773-5200
`jim.heintz@dlapiper.com
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) and agreement by the
`
`attorneys listed below and the undersigned, the undersigned certifies that on
`
`December 4, 2023, a complete and entire copy of this Patent Owner’s Sur-Reply,
`
`together with all supporting documents, were served on Petitioner electronically by
`
`emailing a copy of the same to the following attorney for the Petitioner:
`
`John Phillips
`Jia Zhu
`PGR54598-0001PS1@fr.com
`
`By:
`
`/James M. Heintz, 41,828/
`James M. Heintz, Reg. No. 41,828
`
`6
`
`
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