IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Patent of:
`Stephen Barbour
`U.S. Patent No.:
`11/574,372
`Issue Date:
`February 7, 2023
`Appl. Serial No.:
`16/484,728
`Filing Date:
`January 6, 2020
`Title:
`BLOCKCHAIN MINE AT OIL OR GAS FACILITY
`
`Attorney Docket No.: 54598-0001PS2
`
`SECOND DECLARATION OF VERNON KASDORF
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`CRUSOE 1024
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`I, Vernon Kasdorf, declare as follows:
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`I.
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`ASSIGNMENT
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`1.
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`I have been retained on behalf of Crusoe Energy Systems, LLC. (“Crusoe” or
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`“Petitioner”) to offer technical opinions related to U.S. Patent No. 11/574,372 (“The ’372 patent”),
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`assigned to Upstream Data Inc. (“Upstream” or “Patent Owner”). I understand that Crusoe is
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`requesting the Patent Trial and Appeal Board (“PTAB” or “Board”) to institute a post-grant review
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`(“PGR”) proceeding of the ’372 patent.
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`2.
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`I have been asked to provide my independent analysis of the ’372 patent. Crusoe
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`has specifically asked for my analysis from the perspective of a POSITA in the bitcoin mining
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`industry.
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`3.
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`I am not and never have been, an employee of Crusoe. I received no compensation
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`for this declaration beyond my normal hourly compensation based on my time actually spent
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`analyzing the ’372 patent and issues related thereto, and I will not receive any added compensation
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`based on the outcome of this PGR or other proceeding involving the ’372 patent.
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`II.
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`QUALIFICATIONS
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`4.
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`My name is Vernon Kasdorf. I am the CEO of KubeData Systems Inc. and have
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`held that position since 2013.
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`5.
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`I have a Bachelor’s Degree in business administration from Trinity Western
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`University.
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`6.
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`I have extensive experience in building industrial cryptocurrency mining data
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`centers, including data centers for mining Bitcoin. I have over 25 years of experience in the IT
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`sector, with my career heavily focused on mining within the oil, gas, mineral, and cryptocurrency
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`industries.
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`7.
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`KubeData Systems Inc., my company, primarily, provides senior, strategic IT
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`consulting services to mining companies, IoT companies, and large Enterprise organizations. I was
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`also the owner and partner in KubeData Systems Inc. from 2013 to present.
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`8.
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`My company developed and commercialized the CryptoKube mobile bitcoin miner
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`system, to address the demand for an industrial cryptocurrency mining mobile data center. It was
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`also our first 100% free-cooled data center. KubeData Systems Inc. designed and built three
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`generations of CryptoKube mining data centers, servicing the Canadian and United States market.
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`9.
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`I have provided IT Strategic Consulting to many companies, including Goldcorp
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`(the world’s largest gold miner).
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`10.
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`I am fully familiar with the CryptoKube brochure dated March 5, 2016 (“CryptoKube
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`brochure”) and CryptoKube Bitcoin mining Data center tour(CC) (“CryptoKube video”).
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`The CryptoKube brochure is EX1006, and the CryptoKube video is EX1007. I am able to
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`authenticate both and declare that both the CryptoKube brochure and the CryptoKube
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`video were published before February 8, 2017 – which I understand to be the earliest
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`claimed priority date of the ’372 patent.
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`11.
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`I have personal knowledge that the CryptoKube brochure was originally published
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`(distributed online, at trade show, and via emails to customers) in 2014 and the CryptoKube
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`video was published on YouTube on December 18, 2014.
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`12. My curriculum vitae, which includes a complete list of my publications, is included
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`as Appendix A.
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`13.
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`I am being compensated at a rate of $350 per hour for my work in this case. This
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`compensation is not contingent on the nature of my findings or the outcome of this litigation.
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`14.
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`I am over the age of 18 and am competent to write this declaration. I have personal
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`knowledge, or have developed knowledge, of the technologies discussed in this declaration
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`based upon my education, training, or experience with the matters discussed herein.
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`III.
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`PERSON OF ORDINARY SKILL IN THE ART
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`15.
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`In my opinion, a person of ordinary skill in the art of the ’372 patent would have a
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`degree in chemical engineering, petroleum engineering, process engineering, mechanical
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`engineering, or a similar field with 1-2 years of experience in designing power generation systems,
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`Bitcoin mining systems, or other comparable hands-on experience. Alternatively, a person having
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`3-5 years of experience in the Bitcoin mining industry would also qualify as a POSITA. Additional
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`education could substitute for professional experience, or vice versa.
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`IV.
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`LEGAL PRINCIPLES
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`16.
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`I am not a lawyer and I will not provide any legal opinions in this PGR. Although
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`I am not a lawyer, I have been advised that certain legal standards are to be applied by technical
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`experts in forming opinions regarding the meaning and validity of patent claims.
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`A.
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`Claim Construction
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`17.
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`I understand that claim terms are generally given their plain and ordinary meaning
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`in light of the patent’s specification and file history as understood by a person of ordinary skill in
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`the art at the time of the purported invention. In that regard, I understand that the best indicator of
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`claim meaning is its usage in the context of the patent specification as understood by a POSITA.
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`I further understand that the words of the claims should be given their plain meaning unless that
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`meaning is inconsistent with the patent specification or the patent’s history of examination before
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`the Patent Office. I also understand that the words of the claims should be interpreted as they
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`would have been interpreted by a POSITA at the time of the invention was made (not today).
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`B.
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`Indefiniteness
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`18.
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`I understand that a claim is indefinite under § 112 if a POSITA, viewing the claim in light
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`of the specification and prosecution history, cannot determine the full scope of the
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`invention with reasonable certainty. I understand that, if a claim term is amenable to two
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`or more plausible constructions, any claim containing that term is indefinite.
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`19.
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`I understand that a claim that depends from an indefinite claim is itself indefinite unless
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`additional limitations resolve any indefiniteness.
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`C. Written Description
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`20.
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`I understand that the four corners of a patent application must reasonably convey to a
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`POSITA that the inventor had possession of and actually invented the claimed subject
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`matter at the time the application was filed.
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`D.
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`Indefiniteness for Means-Plus-Function Terms
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`21.
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`I understand that a claim term that does not use the word “means” is presumed not to be a
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`means-plus-function term subject to §112(f). I understand that the presumption is
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`overcome if it is shown that a claim term (1) recites function without sufficient structure,
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`as understood by a POSITA, for performing the function, or (2) does not recite sufficiently
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`definite structure. I understand that reciting “sufficiently definite structure” means whether
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`the words of the claim, as understood by a POSITA, have definite meaning as the name of
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`for the structure.
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`22.
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`I understand that in the case of a claim term that is associated with performing multiple
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`functions, the claim term must have sufficient definite structure capable of performing all
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`of the recited functions. I understand that in assessing the meaning of the term, it is done
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`in view of the functions it is claimed to perform in light of the specification and claims.
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`23.
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`I understand that a claim term that is a means-plus-function term subject to § 112(f) is
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`indefinite if the specification fails to disclose sufficient structure to perform all of the
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`claimed functions. I understand, in the case of computer implemented means-plus-function
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`terms, an algorithm must be disclosed to provide sufficient structure. I understand that an
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`algorithm can be recited in any understandable terms to a POSITA including in prose.
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`V. MATERIALS CONSIDERED
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`24.
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`In forming my opinion, I considered the following documents:
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`
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`EX1001
`EX1002
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`EX1006
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`EX1009
`
`EX1010
`EX1014
`EX1017
`EX1018
`EX1022
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`EX1025
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`EX1026
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`EX1027
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`EX1100
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`
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`U.S. Patent No. 11,574,372 to Stephen Barbour et al. (“the ’372 Patent”)
`Excerpts from the Prosecution History of the ’372 Patent (“the
`Prosecution History”)
`CryptoKube brochure from the WaybackMachine dated March 5, 2016
`(“CryptoKube brochure”)
`Szmigielski, Albert. Bitcoin Essentials. Packt Publishing Ltd, 2016
`(“Szmigielski”)
`U.S. Patent Publication No. 2016/0125040 (“Kheterpal”)
`US Patent Publication No. 2015/0368566 (“Young”)
`U.S. Patent Publication No. 2014/0096837 (“Belady-837”)
` U.S. Patent Publication No. 2018/0109541 (“Gleifchauf”)
`“Crypto you can mine from a home computer in 2023,” Brave New
`Coin (bravenewcoin.com) (July 18, 2023)
`O’Dwyer, Karl J., and David Malone. ISSC 2014, "Bitcoin mining and
`its energy footprint." (2014): 280-285 ("O’Dwyer”)
`Kaplan, Steven. (2004). Electrical and Electronics Engineering
`Dictionary.
`The IEEE Standard Dictionary of Electrical and Electronics Terms (6th
`ed) (1996). IEEE.
`Complaint for Patent Infringement, Upstream Data Inc. v. Crusoe
`Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo. May 18, 2023)
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`25.
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`In addition to the documents and materials cited in this declaration, I also relied
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`on my knowledge, education, skills, experience, and training in forming my opinions.
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`VI.
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`BACKGROUND – BITCOIN/BLOCKCHAIN MINING
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`26.
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`The following paragraphs regarding Bitcoin mining are based on prior art to the
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`’372 patent. As stated above, for the purposes of this declaration, I have been asked to assume that
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`the earliest priority date of the ’372 patent is February 8, 2017.
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`27.
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`The Bitcoin protocol defines a system in which the creation and distribution of the
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`bitcoin cryptocurrency is governed by consensus among a peer-to-peer network. EX1010, [0004].
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`The network maintains a public ledger (e.g., bitcoin database) in which new transactions are
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`verified and recorded by members of the network via cryptography. Id. The operations of verifying
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`and recording transactions of cryptocurrencies such as transactions in the bitcoin cryptocurrency
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`are sometimes referred to as mining, because completion of each mining operation typically
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`rewards the miner with newly created cryptocurrency (e.g., bitcoins). Id. Verified transactions and
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`newly created bitcoins are recorded in the public ledger. Id. The public ledger serves as an official
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`history of transactions. Id. The amount of cryptocurrency owned by any entity may be determined
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`from the public ledger. Id.
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`VII. OVERVIEW OF THE ’372 PATENT
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`28.
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`The ’372 patent relates to “operating a blockchain mining device using natural gas
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`produced at a hydrocarbon production, storage, or processing site/facility.” EX1001, Abstract. By
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`way of background to its technology, the ’372 Patent explains that “[a]t remote oil and gas
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`facilities, excess natural gas is often wasted, for example vented to atmosphere or burned via
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`flaring.” EX1001, 1:11-13. Figures 1 and 2 are schematics illustrating systems for “powering a
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`blockchain [mining device (12)] at a remote oil well [14],” with a generator (28). EX1001, 5:53-
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`62; 8:35-48.
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`29.
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`Figure 1 (shown below) shows “a generator [28] retrofitted to a prime mover [24],
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`which operates a drivehead to pump oil up from the reservoir.” EX1001, 5:53-56. That is, in this
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`case, the blockchain mining device (12) is connected to a generator (28), which is retrofitted to a
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`prime mover.
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`’372 Patent, EX1001, Fig. 1
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`30.
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`Figure 2 (shown below) is similar to Figure 1, but this embodiment includes two
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`engines—one that (with a generator) powers the blockchain mining device (12), and one that
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`operates the drive head. See EX1001, 5:57-62.
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`’372 Patent, EX1001, Fig. 2
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`31.
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`Figure 3 (shown below) is a schematic illustrating another embodiment of a system
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`for powering a blockchain mine, in which “a generator and engine are connected to be powered
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`by combustible gas taken off of an oil storage unit to power the blockchain main.”
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`’372 Patent, EX1001, Fig. 3
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`32.
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`Common among these three embodiments is that, in each case, a blockchain mining
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`device is connected to a generator that runs on combustible gas – in particular, natural gas at an
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`oil well or oil storage unit.
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`33.
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`I understand that the ’372 patent lists Stephen Barbour as the inventor, Upstream
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`Data Inc. (“Upstream”) as the applicant and assignee, and has the title: “Blockchain Mine at Oil
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`or Gas Facility.” For purposes of this declaration, I have been asked to assume that February 8,
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`2017, the filing date of US provisional application No. 62/456,380, is the earliest possible priority
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`date for the ’372 patent.
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`34.
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`Generally, the ’372 patent discusses systems and methods for using a source
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`combustible gas to power bitcoin mining. I understand that in the related Complaint, Upstream
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`has relied specifically on claims 1 and 2 of the ’372 patent.
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`VIII. OVERVIEW OF THE PROSECUTION HISTORY
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`35.
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`The application that led to the ’372 patent was filed as U.S. Patent Application No.
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`16/484,728 on February 6, 2018. EX1002.
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`36.
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`I understand that the ’372 patent was filed with 41 claim, two of which were
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`independent claims.
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`A system comprising:
`1.
`a source of combustible gas produced from an oil production, storage, or processing
`facility;
`a generator connected to the source of combustible gas; and
`a blockchain mining device connected to the generator.
`
`A method comprising using a source of combustible gas produced at a
`24.
`hydrocarbon production well, storage, or processing facility, to produce electricity
`to operate a blockchain mining device located at the hydrocarbon production well,
`storage, or processing facility, respectively.
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`EX1002, 686-691. I further understand that before examination, the claims were amended to
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`“remove all multiple dependencies and reduce excess claim fees.” EX1002, 543-550. Claims 1
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`and 24 were not amended.
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`37.
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`I understand that on August 9, 2021, before any office actions had been mailed, a
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`third-party submission was made to cite a Reddit posting dated July 3, 2016. EX1002, 439-447.
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`According to the third-party submitter, the Reddit posting “discloses a source of combustible gas,
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`a generator that generate (sic) electricity from combustion of the gas, and a blockchain mining
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`device.” EX1002, 440.
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`38.
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`I understand that the Office initiated and conducted an interview with the
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`Upstream’s representative on April 15, 2022, “to gain insight and a better understand (sic) the
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`claimed invention as well as the oil/natural gas industry as it applies to block chain mining.”
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`EX1002, 348. The Office concluded that the third-party submission “reads adequately on the
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`independent claims,” and suggested that “[m]oving forward, [] drafting independent claims that
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`clearly unite the combustible gas production elements and the block chain mining elements.”
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`EX1002, 348. With respect to the dependent claims, the Office indicated that “[a]llowable subject
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`matter may reside in dependent claims 12–18,” but that “further searching [would be] required.”
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`EX1002, 348. The Office’s initial search revealed little in the way of qualified prior art, but did
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`reveal Belady-837 (US20140096837A1). EX1002, 348.
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`39.
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`I understand that on April 19, 2022, before Upstream amended the claims, the
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`Office mailed an Office Action. EX1002, 329-347. Claims 1 and 24, as well as dependent claims,
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`were rejected for obviousness over Belady-837 and Gleifchauf (US20180109541A1). EX1002,
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`336. No anticipation rejections were made, despite the Office having indicated in the April 15
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`interview that the Reddit Post reads on the independent claims.
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`40.
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`I understand that, in making the obviousness rejection, the Office took the position
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`that Belady-837 discloses using a gas generator to power a data center (blockchain mining device),
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`and Gleifchauf discloses using servers for blockchain mining and verification. EX1002, 336-337.
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`According to the Office, it would have been obvious to combine Belady-837 and Gleifchauf
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`because Belady-837 discloses “data centers are being located in areas where natural resources,
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`from which electrical power can be derived, are abundant and can be obtained inexpensively. For
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`example, natural gas is a byproduct of oil drilling operations and is often considered a waste
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`byproduct since it cannot be economically captured and brought to the market.” EX1002, 336-337
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`(quoting EX1017, [0004]).
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`41.
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`I understand that subsequent to receiving the obviousness rejection, Upstream
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`amended the independent claims to recite:
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`11
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`12
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`A system comprising:
`1.
`a source of combustible gas produced from [[an oil]]a facility selected from a group
`consisting of a hydrocarbon production, storage, or processing facility;
`a generator connected to the source of combustible gas to receive a continuous flow
`of combustible gas to power the generator; and
`[[a]] blockchain mining devices connected to the generator;
`in which
`the blockchain mining devices each have a mining processor and are
`connected to a network interface;
`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;
`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;
`the network is a peer-to-peer network;
`the blockchain database is a distributed database stored on plural nodes in
`the peer-to-peer network; and
`the blockchain database stores transactional information for a digital
`currency.
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`24.
`
`A method comprising:
`Producing electricity using a generator and a source of combustible gas
`produced at a facility selected from the group consisting of a hydrocarbon
`production well, storage, or processing facility, to produce electricity to and
`operating[[e a]] blockchain mining devices located at the hydrocarbon production
`well, storage, or processing facility, respectively, using the electricity, in which:
`the generator is connected to the source of combustible gas, in which the
`facility is connected to produce a continuous flow of combustible gas to the
`generator;
`the blockchain mining devices [. . . ].1
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`I understand that, to overcome the obviousness rejection, Upstream argued that its
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`42.
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`system uses “flare gas” as opposed to “sales gas.” EX1002, 222-223. I understand that Upstream
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`also argued that blockchain mining is different from traditional data-processing because it requires
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`more energy. EX1002, 222-223. Upstream argued that its “discovery amounts to a new use for
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`1 The remainder of the amendments to claim 24, with respect to the block chain mining devices, are identical to those
`made in claim 1. CRUSOE-1002 209-224.
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`12
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`13
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`previously known individual components (a common precursor for patentability), and may provide
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`numerous benefits including the reduction of greenhouse gas emissions and capture of revenue
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`where gas disposal is otherwise a capital loss (for example paragraphs 33, 34, 48, and 73), EX1002,
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`223.
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`43.
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`I understand that on August 31, 2022, a notice of allowance was mailed. EX1002,
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`4-9. In the “Reasons for Allowance,” the Office indicated that:
`
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`I understand that the ’372 patent issued shortly after a Rule 312 amendment
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`44.
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`(amending claims 15, 16, 18, 31, 37, 38, 40 to recite “hydrocarbon production well, storage, or
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`13
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`14
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`processing facility”). EX1002, 20-29.
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`IX.
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`45.
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`THE CHALLENGED CLAIMS
`
`I understand that for purposes of this proceeding, Petitioner is challenging the validity of
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`claims 1-41 (“the Challenged Claims”) of the ’372 patent.
`
`46.
`
`Claim 1 of the ’372 patent is representative of the Challenged Claims and is shown below:
`
`1. A system comprising:
`a source of combustible gas produced from a facility selected from a group
`consisting of a hydrocarbon production, storage, or processing facility;
`a generator connected to the source of combustible gas to receive a
`continuous flow of combustible gas to power the generator; and
`blockchain mining devices connected to the generator;
`in which:
`the blockchain mining devices each have a mining processor and are
`connected to a network interface;
`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;
`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;
`the network is a peer-to-peer network;
`the blockchain database is a distributed database stored on plural
`nodes in the peer-to-peer network; and
`the blockchain database stores transactional information for a digital
`currency.
`
`
`X.
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`ANALYSIS OF THE CLAIMS OF THE ’372 PATENT (INDEFINITENESS)
`
`47.
`
`Based on my knowledge and experience and my reading of the ‘372 patent, I
`
`believe that the Challenged Claims are indefinite.
`
`i.
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`“blockchain mining devices”
`
`48.
`
`As discussed below, the plural form of the term “blockchain mining devices,”
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`appearing in the ‘372 patent claims is indefinite for several reasons.
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`49.
`
`All independent claims of the ‘372 patent recites the term “blockchain mining
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`devices.” Independent claim 1 recites “blockchain mining devices connected to the generator.”
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`14
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`15
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`Independent claim 24 recites “operating blockchain mining devices located at the facility.” These
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`claims are indefinite because multiple different interpretations of the term “blockchain mining
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`devices” are possible. In my opinion, the term “blockchain mining devices” could refer to either
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`(1) a plurality of mining servers (e.g., spondooliestech SP35 servers) housed together (e.g., in a
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`portable shipping container), or (2) a plurality of mobile data centers (i.e., a plurality of shipping
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`containers, each configured as a mobile data center such as CryptoKube’s mobile Bitcoin data
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`center) each containing a plurality of mining servers housed together.
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`50.
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`For example, as shown below in EX1006, the grey metal enclosure is a standard
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`shipping container that has been modified to serve as a portable mobile data center housing various
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`components and electronics, including a plurality of mining servers. Thus, a mining server is very
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`different from a mobile data center.
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`[EX1006, 2 (annotated)].
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`15
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`16
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`51.
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`Consistent with the first construction (a plurality of mining servers housed
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`together), claim 17 requires that “the blockchain mining devices are housed in a portable enclosure
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`that is structured to one or more of form a skid or be mounted on a trailer.”2 [EX1001, claim 17].
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`Thus, this dependent claim supports the construction that the term “blockchain mining devices”
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`refers to a plurality of mining servers housed together. Similarly, dependent claim 16 requires “a
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`controller is connected to operate a cooling system to maintain the blockchain mining devices
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`within a predetermined operating range of temperature.” [EX1001, claim 16]. In my opinion, a
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`POSITA would have understood that for the plurality of blockchain mining devices to share the
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`same cooling system, the term “blockchain mining devices” should mean the plurality of mining
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`servers are housed together, for example, in a modular shipping container. Thus, both dependent
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`claims 16 and 17 require the first construction (a plurality of mining servers housed together).
`
`52.
`
`Other claims of the ‘372 patent use the term “blockchain mining devices” in a more
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`ambiguous manner and may be interpreted to support either construction. For example, claim 1
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`recites “[a] system comprising: … blockchain mining devices connected to the generator; in
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`which: the blockchain mining devices each have a mining processor and are connected to a
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`network interface.” Claim 8 recites “the generator and blockchain mining devices are located
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`adjacent to the facility.” Claim 10 recites “the system is configured to modulate a power load level
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`exerted by the blockchain mining devices on the generator, by increasing or decreasing the
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`mining activity of the mining processor.” Claim 15 recites “a backup source, selected from a group
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`consisting of fuel or electricity, is connected make up a shortfall in fuel or electricity, respectively,
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`required to supply the blockchain mining devices with the power load level.” Claim 24 recites
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`“[a] method comprising: … operating blockchain mining devices located at the facility,
`
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`2 All emphases added unless otherwise noted
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`16
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`17
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`respectively, using the electricity, in which: … the blockchain mining devices each have a mining
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`processor and are connected to a network interface.” Claim 25 recites “connecting the source of
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`combustible gas to operate the blockchain mining devices.” Claim 27 recites “connecting the
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`source of combustible gas to operate the blockchain mining devices; and diverting gas from a
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`combustible gas disposal device to operate the blockchain mining devices.” Claim 34 recites
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`“operating the blockchain mining devices to: mine transactions with the blockchain mining
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`devices; and communicate wirelessly through the internet to communicate with a blockchain
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`database.” Claim 35 recites “modulating a power load level exerted by the blockchain mining
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`devices on the generator, by selecting an action from a group of actions consisting of increasing
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`or decreasing, a mining activity of the blockchain mining devices.” Claim 40 recites “supplying
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`from a backup source, which is selected from a group consisting of a backup fuel or electricity
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`source a shortfall in fuel or electricity, respectively, required to supply the blockchain mining
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`devices with the power load level.”
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`53.
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`Despite the teachings of the dependent claims, both the specification and
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`prosecution history demand the second construction (a plurality of mobile data centers, each
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`containing a plurality of mining servers). First, consistent with the second construction, the
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`specification teaches that “[t]he blockchain mining device comprises an intermodal transport
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`container.” [EX1001, 3:51-52]. Thus, according to the specification, the plurality of “blockchain
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`mining devices” refers to multiple mobile data centers, each containing a plurality of mining
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`servers.
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`54.
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`Further, as shown in FIG. 4 below, the specification teaches that each “blockchain
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`mining device 12 may have a network interface, such as network equipment 88, and one or a
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`plurality of mining processors 92 (92A-92E for example).” [EX1001, 15:21-25]. Further, the
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`17
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`18
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`specification teaches that “[e]ach mining processor 92 may be positioned on racks or shelving
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`units,” suggesting that “mining processor 92,”3 as opposed to blockchain mining device 12, refers
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`to the mining server (e.g., spondooliestech SP35 server). [EX1001, 17:21-22]. As annotated below,
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`FIG. 4 illustrate a “blockchain mining device 12,” which contains a plurality of mining processors
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`92, and network equipment 88.
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`[EX1001, FIG. 4 (annotated)].
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`
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`3 As discussed in Section IV.A.3 below, to make things worse, the term “mining processor” is also indefinite because
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`it is not clear whether it refers to (1) a mining server (e.g., a spondooliestech SP35 server) containing a plurality of
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`application-specific integrated circuits (ASICs)), or (2) a chip within the mining server (e.g., an ASIC inside of a
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`spondooliestech SP35 server).
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`18
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`19
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`55.
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`Further, consistent with the second construction (a plurality of mobile data centers),
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`the specification teaches “[t]he blockchain mining device may be replaced by a suitable mining
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`device or data center.” [EX1001, 4:55-56]. Thus, the specification teaches that the term
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`“blockchain mining device” is interchangeable with the term “data center.” Thus, a POSITA would
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`have understood that the claim limitation “blockchain mining devices” requires a plurality of
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`mobile data centers, each of which contains multiple mining servers housed together. Other parts
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`of the specification use the term in a more ambiguous manner and may support either construction.
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`For example, the specification states “the generator 28 and blockchain mining device 12 may be
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`positioned at a suitable location relative to the hydrocarbon well, storage site, or processing
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`facility, such as remote oil well 14.” [EX1001, 9:14-17].
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`56.
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`Further, during prosecution, to overcome prior art rejections, claims 1 and 24 were
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`amended to recite a plurality of “blockchain mining devices” (plural) as opposed to “a blockchain
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`mining device” (singular). [EX1002, 210 and 213]. In the remarks accompanying the amendment,
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`Upstream argued that “Belady teaches a [singular] gas-powered data center.” [EX1002, 223].
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`Upstream explained that independent claims 1 and 24 were amended to “clarify that there are
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`plural blockchain mining devices.” [EX1002, 218]. Thus, Upstream relied on the requirement of
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`multiple “blockchain mining devices” to distinguish over prior art containing a single data center,
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`thereby indicating that the term requires a plurality of data centers.
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`57.
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`Thus, while the dependent claims support the first construction (plurality of mining
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`servers housed together within a single data center), both the specification and the prosecution
`
`history support the second construction (multiple data centers, each housing a plurality of mining
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`servers). Given the resulting ambiguity, a POSITA would have had no guidance on what
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`constitutes a plurality of “blockchain mining devices.”
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`19
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`20
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`58.
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`As such, it is my opinion that a POSITA would not understand what is claimed by
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`“blockchain mining devices” in each of independent claims 1 and 24, and, through their
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`dependence thereon, each of dependent claims 2-23 and 25-41.
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`ii.
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`“mining processor”
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`59.
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`It is my opinion that the claim term “mining processor” is also indefinite. Both
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`independent claims 1 and 24 require that “the blockchain mining devices each have [sic] a mining
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`processor.” But for essentially the same reasons that “blockchain mining devices” is indefinite, it
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`is equally unclear whether the term “mining processor” refers to (1) a mining server (e.g., a
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`spondooliestech SP35 server) containing a plurality of application-specific integrated circuits
`
`(ASICs)), or (2) an individual chip within the mining server (e.g., an ASIC inside of a
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`spondooliestech SP35 server).
`
`60.
`
`As discussed above, claim 17 requires that “the blockchain mining devices are
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`housed in a portable enclosure that is structured to one or more of form a skid or be mounted on a
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`trailer,” suggesting that the term “blockchain mining devices” refers to mining servers (e.g.,
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`spondooliestech SP35 servers). If the term “blockchain mining devices" refers to the mining
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`servers, then the term "mining processor" cannot also mean mining servers. By inference, the term
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`“mining processor” should refer to a chip inside the mining server. Thus, claim 17 suggests that
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`the term “mining processor” refers to a chip inside the mining server. However, the specification
`
`teaches:
`
`The components of an ASIC mining processor include the hash boards (each board has
`numerous chips that is [sic] doing the hashing), a controller (to communicate with the
`network and optimize the mining processors chip frequency and fans for cooling), and a
`power supply (typically converts AC input power to DC power for the ASIC). Each
`mining processor 92 may be positioned on racks or shelving units.
`
`
`[EX1001, 17:15-22]. A POSITA would have understood the foregoing passage as meaning that
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`the mining processor 92 was not a chip (or a circuit or a hash board) within a mining server, but
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`20
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`21
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`rather was a device of sufficient size and form that it could be “positioned on racks or shelving
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`units,” which suggests that the mining processor 92 was a standalone object. Thus, the
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`specification requires the term “mining processor” to mean a mining server.
`
`61.
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`Further, claim 10 requires “increasing or decreasing the m