IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Stephen Barbour
`In re Patent of:
`
`11,574,372 Attorney Docket No.: 54598-0001PS2
`U.S. Patent No.:
`February 7, 2023
`
`Issue Date:
`Appl. Serial No.: 16/484,728
`
`Filing Date:
`January 6, 2020
`
`Title:
`BLOCKCHAIN MINE AT OIL OR GAS FACILITY
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR POST-GRANT REVIEW OF UNITED STATES PATENT
`NO. 11,574,372 PURSUANT TO 37 C.F.R. §42.200 et seq.
`
`
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`REQUIREMENTS FOR PGR ......................................................................... 3
`A. Grounds for Standing and PGR Eligibility ............................................... 3
`B. Challenge and Relief Requested ............................................................... 3
`C. Level of Ordinary Skill in the Art ............................................................. 4
`III. THE ‘372 PATENT ......................................................................................... 4
`A. Brief Description of the ‘372 Patent Specification ................................... 4
`B. Prosecution History of the ‘372 Patent ..................................................... 7
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C § 112(a), 112(b) AND/OR 112(f) ....................................................... 10
`A. GROUND 1 (indefiniteness under 35 U.S.C § 112(b)) .......................... 10
`1.
`Legal Framework .......................................................................... 10
`2.
`“blockchain mining devices” ........................................................ 11
`3.
`“mining processor” ........................................................................ 21
`4.
`“adapted to mine transactions” ...................................................... 24
`B. GROUND 2 (written description under 35 U.S.C § 112(a)) .................. 27
`1.
`Legal Framework .......................................................................... 27
`2.
`“blockchain mining devices” ........................................................ 27
`C. GROUND 3 (indefiniteness under 35 U.S.C. § 112(f)) ......................... 29
`1.
`The “controller” term is a means-plus-function term and subject
`to § 112(f) ...................................................................................... 31
`“Controller” lacks sufficient disclosed structure in the ’372 Patent
`and, therefore, is indefinite. ........................................................... 37
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 46
`A. The Fintiv Factors ................................................................................... 46
`1.
`Factor 1: The District Court has stayed the case ........................... 46
`2.
`Factor 2: The Trial Schedule is Unclear ....................................... 46
`3.
`Factor 3: Petitioner’s Diligence and Investment in PGR Outweighs
`the Parties’ Minimal Investment in Litigation .............................. 47
`Factor 4: The Petition’s Grounds Are Materially Different .......... 47
`4.
`Factor 5: Party Overlap ................................................................. 47
`5.
`Factor 6: The Merits of this Petition Strongly Favor Institution .. 47
`6.
`B. Considerations Implicated by 35 U.S.C. § 325(d) .................................. 48
`C. Other Considerations Implicated by 35 U.S.C. § 314(a) ........................ 48
`1.
`a ranking of the petitions ............................................................... 51
`
`2.
`
`V.
`
`i
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`2.
`a succinct explanation of the differences between the petitions ... 51
`VI. CONCLUSION .............................................................................................. 53
`VII. PAYMENT OF FEES ................................................................................... 53
`VIII. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 53
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 53
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 53
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 53
`D. Service Information ................................................................................ 54
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`LIST OF EXHIBITS
`
`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”)
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`CryptoKube brochure from the WaybackMachine dated March 5,
`2016 (“CryptoKube Brochure”)
`
`[RESERVED]
`
`[RESERVED]
`
`Szmigielski, Albert. Bitcoin Essentials. Packt Publishing Ltd, 2016
`(“Szmigielski”)
`
`U.S. Patent Publication No. 2016/0125040 (“Kheterpal”)
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`US Patent Publication No. 2015/0368566 (“Young”)
`
`[RESERVED]
`
`[RESERVED]
`
`U.S. Patent Publication No. 2014/0096837 (“Belady-837”)
`
`iii
`
`EX1001
`
`
`EX1002
`
`
`EX1003
`
`EX1004
`
`EX1005
`
`EX1006
`
`
`EX1007
`
`EX1008
`
`EX1009
`
`
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`EX1014
`
`EX1015
`
`EX1016
`
`EX1017
`
`

`

`
`EX1018 U.S. Patent Publication No. 2018/0109541 (“Gleifchauf”)
`
`EX1019
`
`EX1020
`
`EX1021
`
`EX1022
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`“Crypto you can mine from a home computer in 2023,” Brave New
`Coin (bravenewcoin.com) (July 18, 2023)
`
`[RESERVED]
`
`Second Declaration of Vernon Kasdorf
`
`O’Dwyer, Karl J., and David Malone. "Bitcoin mining and its energy
`footprint." ISSC 2014, (2014): 280-285 ("O’Dwyer”)
`
`Kaplan, Steven. (2004). Wiley Electrical and Electronics Engineering
`Dictionary.
`
`
`EX1023
`
`EX1024
`
`EX1025
`
`
`EX1026
`
`
`EX1027
`
`
`EX1101
`
`
`
`
`EX1028-1099 [RESERVED]
`
`EX1100 Complaint for Patent Infringement, Upstream Data Inc. v. Crusoe
`Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo. May 18,
`2023)
`
`The IEEE Standard Dictionary of Electrical and Electronics Terms
`(6th ed) (1996). IEEE.
`
`ORDER GRANTING Agreed Motion to Stay Litigation and Extend
`Deadlines, Upstream Data Inc. v. Crusoe Energy Systems LLC, Case
`No. 1:23-cv-01252 (D. Colo. May 18, 2023)
`
`
`iv
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`CLAIM LISTING
`
`Limitation
`[1pre]
`
`[1a]
`
`[1b]
`[1c]
`[1c_i]
`
`[1c_ii]
`
`[1c_iii]
`
`[1c_iv]
`[1c_v]
`
`[1c_vi]
`
`[2.0]
`
`[3.0]
`
`[4.0]
`
`[7.0]
`
`Claim language
`
`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.
`The system of claim 1 isolated from a sales gas line and an external
`electrical power grid.
`The system of claim 1 in which: the source of combustible gas and
`the facility comprise a remote well selected from a group consisting
`of a remote oil or gas well; and the remote well is connected to
`produce the continuous flow of combustible gas to power the
`generator.
`The system of claim 3 further comprising a combustion engine
`connected to the source of combustible gas and connected to drive
`the generator.
`The system of claim 1 in which: the facility comprises a unit
`selected from a group consisting of an oil storage or processing
`unit; the source of combustible gas comprises the unit, which has a
`gas outlet connected to supply combustible gas to operate the
`
`v
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`generator; and the unit is connected to receive oil produced from a
`remote oil well.
`The system of claim 1 in which the generator and blockchain
`mining devices are located adjacent to the facility.
`The system of claim 1 in which the facility comprises a plurality of
`remote wells selected from a group consisting of remote oil or gas
`wells, and one or both of the following conditions are satisfied: the
`plurality of remote wells are located on a multi-well pad; or the
`plurality of remote wells include a satellite well.
`The system of claim 1 in which the system is configured to
`modulate a power load level exerted by the blockchain mining
`devices on the generator, by increasing or decreasing the mining
`activity of the mining processor.
`The system of claim 10 in which the system is configured to
`modulate the power load level by selecting one or more actions
`from a group of actions consisting of increasing or decreasing a
`maximum number of mining processors that are engaged in mining
`transactions.
`The system of claim 10 in which the system is configured to
`modulate the power load level in response to variations in a
`production rate of combustible gas from the hydrocarbon
`production well, storage, or processing facility.
`The system of claim 10 in which: a production rate of combustible
`gas from the hydrocarbon production well, storage, or processing
`facility varies between a daily minimum production rate and a daily
`maximum production rate; the controller is set to limit the power
`load level to above a power level producible by the generator when
`the production rate is at the daily minimum production rate; and a
`backup source, selected from a group consisting of fuel or
`electricity, is connected make up a shortfall in fuel or electricity,
`respectively, required to supply the blockchain mining devices with
`the power load level.
`The system of claim 1 in which a controller is connected to operate
`a cooling system to maintain the blockchain mining devices within
`a predetermined operating range of temperature.
`The system of claim 1 in which the blockchain mining devices are
`housed in a portable enclosure that is structured to one or more of
`form a skid or be mounted on a trailer.
`
`[8.0]
`
`[9.0]
`
`[10.0]
`
`[11.0]
`
`[12.0]
`
`[15.0]
`
`[16.0]
`
`[17.0]
`
`vi
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`[18.0]
`
`[19.0]
`
`[20.0]
`
`[21.0]
`
`[22.0]
`
`[23.0]
`
`The system of claim 17 in which the portable enclosure comprises a
`generator driven by an engine, which is connected to the source of
`combustible gas.
`The system of any claim 18 in which the engine comprises a
`turbine.
`The system of claim 17 in which the portable enclosure comprises
`an intermodal transport container.
`The system of claim 17 in which the portable enclosure has the
`form of a box with walls, a top, and a base, with one or more access
`doors formed in the walls.
`The system of claim 1 further comprising a combustible gas
`disposal device, at the facility, the combustible gas disposal device
`being connected to receive combustible gas from the source of
`combustible gas.
`The system of claim 22 further comprising a valve connected
`upstream of the generator to receive the continuous flow of gas
`from the source of combustible gas, and selectively supply the
`continuous flow of gas to the generator, the combustible gas
`disposal device, or both the generator and the combustible gas
`disposal device, to selectively divert the continuous flow of gas to
`the combustible gas disposal device, the generator, or both the
`generator and the combustible gas disposal device, respectively.
`[24pre] 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, and
`operating blockchain mining devices located at the 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 power the generator;
`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;
`
`[24d_i]
`
`[24a]
`
`[24b]
`
`[24c]
`
`[24d_ii]
`
`vii
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`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`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.
`The method of claim 24 further comprising, prior to using the
`source of combustible gas: one or both disconnecting or diverting
`the source of combustible gas from a combustible gas disposal
`device at the facility; and connecting the source of combustible gas
`to operate the blockchain mining devices.
`
`The method of claim 25 in which the combustible gas disposal
`device comprises one or more of a flare, a vent to the atmosphere,
`an incinerator, or a burner.
`The method of claim 24 further comprising: connecting the source
`of combustible gas to operate the blockchain mining devices; and
`diverting gas from a combustible gas disposal device to operate the
`blockchain mining devices.
`The method of claim 24 in which the facility is selected from a
`group consisting of an oil or gas well that is isolated from a sales
`gas line and an external electrical power grid.
`The method of claim 24 in which the source of combustible gas is a
`remote well selected from a group consisting of a remote oil or gas
`well.
`The method of claim 24 in which producing further comprises
`supplying combustible gas to a combustion engine that is connected
`to drive the generator.
`The method of claim 29 further comprising operating the
`blockchain mining devices to: mine transactions with the
`blockchain mining devices; and communicate wirelessly through
`the internet to communicate with a blockchain database.
`The method of claim 34 further comprising modulating a power
`load level exerted by the blockchain mining devices on the
`generator, by selecting an action from a group of actions consisting
`
`[24d_iii]
`
`[24d_iv]
`[24d_v]
`
`[24d_vi]
`
`[25.0]
`
`[26.0]
`
`[27.0]
`
`[28.0]
`
`[29.0]
`
`[30.0]
`
`[34.0]
`
`[35.0]
`
`viii
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`of increasing or decreasing, a mining activity of the blockchain
`mining devices.
`The method of claim 35 in which: modulating comprises
`modulating the power load level by increasing or decreasing a
`maximum number of mining processors that are engaged in mining
`transactions.
`The method of claim 36 in which modulating comprises modulating
`the power load level in response to variations in a production rate of
`combustible gas from the hydrocarbon production well, storage, or
`processing facility.
`The method of claim 35 in which: a production rate of combustible
`gas from the hydrocarbon production well, storage, or processing
`facility varies between a daily minimum production rate and a daily
`maximum production rate; modulating comprises limiting the
`power load level to above a power level produced by the generator
`when the production rate is at the daily minimum production rate;
`and supplying from a backup source, which is selected from a
`group consisting of a backup fuel or electricity source a shortfall in
`fuel or electricity, respectively, required to supply the blockchain
`mining devices with the power load level.
`
`[36.0]
`
`[37.0]
`
`[40.0]
`
`ix
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`Crusoe Energy Systems, LLC (“Petitioner”) petitions for Post-Grant Review
`
`(“PGR”) of claims 1-41 (“Challenged Claims”) of U.S. Patent 11,574,372 (“‘372
`
`patent”), assigned to Upstream Data Inc. (“Upstream” or “Patent Owner”).
`
`INTRODUCTION
`I.
`The Challenged Claims are directed to systems and methods that include two
`
`main components: (1) a generator that runs on a combustible gas, and (2) a
`
`plurality of blockchain mining devices connected to the generator. Of course, by
`
`Upstream’s earliest possible priority date (February 8, 2017), neither blockchain
`
`mining devices nor generators were new.1 The alleged novelty in Upstream’s so-
`
`called “invention” was co-locating the two devices at an oil facility in order to
`
`utilize combustible gas produced at the facility (for example, stranded natural gas
`
`that—if allowed by regulation—might otherwise be vented into the atmosphere or
`
`burned via flaring).
`
`In a previously filed Post Grant Petition (PGR2023-00039), the present
`
`Petitioner explained in detail why at least claims 1-4, 7-12, 15-30, 34-37, and 40 of
`
`the ‘372 patent are unpatentable as obvious under 35 U.S.C. § 103, and why all 41
`
`claims of the ‘372 patent are unpatentable under 35 U.S.C. § 101 as directed to
`
`ineligible subject matter. The present petition explains why all 41 claims of the
`
`
`1 Petitioner does not concede that Patent Owner is entitled to this priority date.
`
`1
`
`

`

`‘372 patent also are unpatentable under 35 U.S.C. §§ 112(a), 112(b), and/or
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`112(f).2
`
`For example, as described below, the claim term “blockchain mining
`
`devices” (plural) is indefinite, as it may be construed to refer to either (i) multiple
`
`mining servers (e.g., spondooliestech SP35 servers, such as used in CryptoKube’s
`
`mobile Bitcoin data center [EX1006, 4]) housed together in a single mobile data
`
`center (e.g., in a portable shipping container), or (ii) multiple mobile data centers
`
`(e.g., CryptoKube’s mobile Bitcoin data center, which is constructed as a standard
`
`shipping container housing various components and electronics [EX1006, 4]), each
`
`containing a plurality of mining servers. As such, a person of ordinary skill in the
`
`art (“POSITA”) would not have been able to determine the meets and bounds of
`
`the claims with reasonable certainty. Further, this term lacks written description
`
`support as it was first introduced by attorney during prosecution.
`
`Similarly, the term “mining processor” is indefinite because it is unclear
`
`whether the term refers to (1) a chip within a mining server (e.g., an ASIC inside a
`
`spondooliestech SP35 server), or (2) the mining server itself.
`
`
`2 These section 112 challenges would have been asserted in the first petition but for
`
`the fact that attempting to do so would have surpassed the word count limit by a
`
`significant amount.
`
`2
`
`

`

`Further, the term “adapted to mine transactions” is indefinite because it is
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`unclear whether the term requires any specific hardware change to a generic
`
`computer, and, if so, what exactly that specific change would be.
`
`Additionally, the term “controller” is used as a black box to perform a
`
`number of disparate claimed functions. “Controller” as used in the ‘372 Patent
`
`connotes no definite structural meaning to a POSITA but rather is used as means-
`
`plus-function term. Consequently, the “controller” term is indefinite because the
`
`Patent fails to disclose sufficient structure to perform all the claimed functions.
`
`Crusoe respectfully submits that PGR should be instituted, and that the
`
`Challenged Claims should be canceled as unpatentable.
`
`II. REQUIREMENTS FOR PGR
`A. Grounds for Standing and PGR Eligibility
`Petitioner certifies that the ‘372 Patent is available for PGR. Petitioner is not
`
`barred or estopped from requesting review, has not filed a civil action regarding
`
`the ‘372 patent, and this Petition is being filed within nine months of the ‘372
`
`patent’s issuance. 37 CFR 42.201-202.
`
`B. Challenge and Relief Requested
`Petitioner requests PGR of the Challenged Claims for patent ineligible and
`
`obvious, as explained below. Mr. Vernon Kasdorf provides supporting
`
`explanations in his declaration cited throughout this petition.
`
`3
`
`

`

`Ground
`
`Claims
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`Invalidity Basis
`
`1-41
`
`1-41
`
`Indefiniteness under 35 U.S.C. §112(b)
`
`Written description under 35 U.S.C. §112(a)
`
`10-16, 23, 35-41
`
`Indefiniteness under 35 U.S.C. §112(f)
`
`1
`
`2
`
`3
`
`
`C. Level of Ordinary Skill in the Art
`A POSITA would have a degree in chemical engineering, petroleum
`
`engineering, process engineering, mechanical engineering, or a similar field with
`
`1-2 years of experience in designing power generation systems, Blockchain mining
`
`systems, or other comparable hands-on experience. [EX1024, ¶15]. Alternatively, a
`
`person having 3-5 years of experience in the Blockchain mining industry would
`
`also qualify as a POSITA. Id. Additional education could substitute for
`
`professional experience, or vice versa. Id.
`
`III. THE ‘372 PATENT
`A. Brief Description of the ‘372 Patent Specification
`The ‘372 Patent is directed to “operating a blockchain mining device using
`
`natural gas produced at a hydrocarbon production, storage, or processing
`
`site/facility.” [EX1001, Abstract]; [EX1024, ¶¶28-34]. By way of background,
`
`the ‘372 Patent explains that “[a]t remote oil and gas facilities, excess natural gas is
`
`often wasted, for example vented to atmosphere or burned via flaring.” [EX1001,
`
`4
`
`

`

`1:11-13].
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`Figures 1 and 2 illustrate systems for “powering a blockchain [mining device (12)]
`
`at a remote oil well [14],” with a generator (28). [EX1001, 5:53-62; 8:35-48].
`
`Figure 1 shows “a generator [28] retrofitted to a prime mover [24], which operates
`
`a drivehead to pump oil up from the reservoir.” [EX1001, 5:53-56]. That is, the
`
`blockchain mining device (12) is connected to a generator (28), which is retrofitted
`
`to an engine (24).
`
`[EX1001, FIG. 1]
`
`Figure 2 is similar to Figure 1, but this embodiment includes two engines—
`
`
`
`5
`
`

`

`one that (with a generator) powers the blockchain mining device, and one that
`
`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`operates the drive head. [EX1001, 5:57-62].
`
`
`
`[EX1001, FIG. 2]
`
`In another embodiment, depicted in Figure 3, “a generator and engine are
`
`connected to be powered by combustible gas taken off an oil storage unit to power
`
`the blockchain main.” [EX1001, 5:63-67].
`
`6
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`
`
`[EX1001, FIG. 3]
`
`The commonality is that in each case, a blockchain mining device is
`
`connected to a generator that runs on combustible gas, namely, natural gas at an oil
`
`well or oil storage unit. [EX1024, ¶32].
`
`B.
`Prosecution History of the ‘372 Patent
`The ‘372 Patent was filed with 41 claims. [EX1002, 686-691]. Before any
`
`office actions had been mailed, a third-party submission cited a prior art Reddit
`
`posting. [EX1016; EX1002, 439-447]. According to the submitter, the Reddit
`
`posting “discloses a source of combustible gas, a generator that generate[s]
`
`7
`
`

`

`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`electricity from combustion of the gas, and a blockchain mining device.” [EX1002,
`
`440]. In response, the Office informed Upstream that the Reddit submission “reads
`
`adequately on the independent claims,” and suggested that “[m]oving forward,
`
`[applicant should] draft[] independent claims that clearly unite the combustible gas
`
`production elements and the block chain mining elements.” [EX1002, 348].
`
`Regarding 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
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`be] required.” [EX1002, 348].
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`Subsequently, the Office issued an Office Action rejecting the claims as
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`obvious over Belady-837 and Gleifchauf. [EX1002, 336]. The Office took the
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`position that Belady-837 disclosed using a gas generator to power a data center,
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`and Gleifchauf disclosed using servers for blockchain mining and verification.
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`[EX1002, 336-337]. The Office noted that combining the two would have been
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`obvious because Belady-837 discloses that “data centers are being located in areas
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`where natural resources, from which electrical power can be derived, are abundant
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`and can be obtained inexpensively. For example, natural gas is a byproduct of oil
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`drilling operations and is often considered a waste byproduct since it cannot be
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`economically captured and brought to the market.” [EX1002, 336-337 (quoting
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`EX1017, [0004])].
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`To overcome the obviousness rejection, Upstream amended the claims to
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`8
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`their present form, and argued that its system uses “flare gas” as opposed to “sales
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`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
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`gas.” [EX1002, 222-223]. Upstream also argued that blockchain mining is different
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`from traditional data-processing because it requires more energy. [EX1002, 222-
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`223]. Upstream argued that its “discovery amounts to a new use for previously
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`known individual components (a common precursor for patentability), and may
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`provide numerous benefits including the reduction of greenhouse gas emissions
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`and capture of revenue where gas disposal is otherwise a capital loss (for example
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`paragraphs 33, 34, 48, and 73). [EX1002, 223].
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`This Office Action also included an indefiniteness rejection against claim 24
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`for being written as a “use” claim. [EX1002, 334]. In response, claim 24 was
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`amended to recite active steps delimiting how this use is supposedly practiced.
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`[EX1002, 220].
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`This Office Action also included an indefiniteness rejection against claims 1,
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`3, 7, 9, 13, 14, 18, 20, 21, 24-29, 35, and 40 for improperly using the term “or.”
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`[EX1002, 334]. In response, as suggested by the Office, claim 1 was amended to
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`conform to the Markush form. [EX1002, 221].
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`On August 31, 2022, a notice of allowance was mailed. [EX1002, 4-9]. In
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`the “Reasons for Allowance,” the Office indicated that:
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`The assertions and arguments provided by the Applicant credibly
`declare and make clear that the independent claims and the limitations
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`9
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`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
`
`
`contained therein are allowable either in part or taken as a whole over
`the prior art of record. None of the art of record, taken individually or
`combination, disclose at least the method step or system components
`contained within the independent claims.… Moreover, even though the
`individual references applied in the prior art may teach each individual
`limitation sufficiently, there does not appear to be sufficient grounds
`for combining or modifying the prior art of record to adequately arrive
`at the claimed invention.
`The ‘372 patent issued shortly after a Rule 312 amendment (amending
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`claims 15, 16, 18, 31, 37, 38, 40 to recite “hydrocarbon production well, storage, or
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`processing facility”). [EX1002, 20-29].
`
`
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`UNDER 35 U.S.C § 112(a), 112(b) AND/OR 112(f)
`A. GROUND 1 (indefiniteness under 35 U.S.C § 112(b))
`1.
`Legal Framework
`The Patent Act requires that a claim “particularly poin[t] out and distinctly
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`clai[m] the subject matter which the inventor . . . regards as his invention.” 35
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`U.S.C. §112(b). The Supreme Court has read section 112 “to require that a patent’s
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`claims, viewed in light of the specification and prosecution history, inform those
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`skilled in the art about the scope of the invention with reasonable certainty.”
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). The Federal
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`Circuit further clarified that a claim is indefinite under section 112 if the claim
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`language “might mean several different things and no informed and confident
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`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
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`choice is available among the contending definitions[.]” Interval Licensing LLC v.
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`AOL Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014); see also Ex Parte Miyazaki, 89
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`U.S.P.Q.2d 1207, 1211, 1221 (BPIA 2008) (“if a claim is amenable to two or more
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`plausible claim constructions,” it is ambiguous and thus indefinite); Bayer
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`CropScience LP v. Exosect Ltd., PGR2017-00018, Paper 9 at 16 (P.T.A.B. Oct. 11,
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`2017) (instituting on a 35 U.S.C. §112(b) challenge because the scope of the claim
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`was uncertain due to two possible meanings of the term “adheres more firmly”).
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`2.
`“blockchain mining devices”
`In an earlier petition against the ‘372 patent, Petitioner proposed to construe
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`the term “blockchain mining device” as “any computing device that is capable of
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`performing blockchain mining without regard to processor speed or power.” That
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`proposed definition was not an admission that the term “blockchain mining device”
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`was not indefinite. MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731
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`F.3d 1258, 1270 (Fed. Cir. 2013) (“We also note that the district court seems to
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`have relied heavily on the proposition that the claims ‘are amenable to construction
`
`because the parties have already stipulated to their meaning.’ This is not an
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`accurate statement of our law on indefiniteness.”). Rather, “[e]ven if a claim term’s
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`definition can be reduced to words, the claim is still indefinite if a person of
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`ordinary skill in the art cannot translate the definition into meaningfully precise
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`claim scope.” Haliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251
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`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
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`(Fed. Cir. 2008). As discussed below, the plural form of the term “blockchain
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`mining devices,” appearing in the ‘372 patent claims is indefinite for several
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`reasons.
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`First, element [1c] recites “blockchain mining devices connected to the
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`generator.” Similarly, element [24b] recites “operating blockchain mining devices
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`located at the facility.” These elements are indefinite because multiple different
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`interpretations of the term “blockchain mining devices” are possible, rendering it
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`indefinite. Specifically, 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
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`together (e.g., in a portable shipping container), or (2) a plurality of mobile data
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`centers (i.e., a plurality of shipping containers, each configured as a mobile data
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`center such as CryptoKube’s mobile Bitcoin data center) each containing a
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`plurality of mining servers housed together. [EX1024, ¶49]; [EX1006, 2]; Cap.
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`Sec. Sys., Inc. v. NCR Corp., 725 F. App’x 952, 959 (Fed. Cir. 2018) (“Indeed, we
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`find no rationale supporting the seemingly arbitrary definition of “transactional
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`operator” as a microprocessor and keyboard, while excluding the associated
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`display and keypads.”). In Cap. Sec. Sys., the patentee argued that the specification
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`described an “embodiment of a transactional operator.” The passage relied on by
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`the patentee described a microcomputer 21 that “responds to keystrokes on the user
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`keyboard 18” and “signals from other inputs devices.” That passage also explained
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`Attorney Docket No. 54598-0001PS2
`IPR of U.S. Patent No. 11,574,372
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`that the microcomputer 21 “drives the output display 20 in response to the software
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`it is executing and the various signals it receives from the input devices.” The
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`Federal Circuit found, however, that “[i]t is unclear from this passage, however,
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`w