IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`PGR2023-00052
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`DECLARATION OF DR. FENGQI YOU
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 1
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`PGR2023-00052
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`DECLARATION OF DR. FENGQI YOU
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 1
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`I, Fengqi You, declare as follows:
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`1.
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`I have been retained on behalf of Upstream Data Inc. (“Upstream” or
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`“Patent Owner” or “PO”) to offer technical opinions relating to U.S. Patent No.
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`11,574,372 (the “’372 patent”). I understand that the ’372 patent is subject to a
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`petition by Crusoe Energy Systems, LLC (“Crusoe” or “Petitioner”) requesting the
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`Patent Trial and Appeal Board (“PTAB” or “Board”) to institute a post-grant
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`review (“PGR”).
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`2.
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`I was previously retained on behalf of PO in PGR2023-00039 where I
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`was asked to provide my independent analysis of the ’372 patent, Crusoe’s PGR
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`petition, the prior art cited therein and the arguments and analysis in the petition
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`and declarations submitted by Crusoe, in particular the declarations by Dr. Michael
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`Nikolaou (EX1003) and Mr. Vernon Kasdorf (EX1004) stating their opinions
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`regarding the validity of the ’372 patent. For that declaration I was asked to focus
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`on certain aspects of the petition and declarations, such as the motivation to
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`combine and whether the prior art in the petition was substantially similar to prior
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`art considered during ’372 patent prosecution. I also addressed patentability of the
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`challenged claims under 35 U.S.C. § 101 and the related opinions by Nikolaou and
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`Kasdorf.
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`3.
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`For this declaration I have been asked to provide my independent
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`analysis of Crusoe’s second PGR petition in PGR2023-00052, including the
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 2
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`arguments and analysis in the petition and the opinions expressed by Crusoe’s
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`expert Mr. Vernon Kasdorf in his declaration, EX1024. I understand that all three
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`grounds in PGR2023-00052 allege invalidity under 35 U.S.C. § 112. I have
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`addressed these grounds applying the legal principles set forth below.
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`4.
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`As with my first declaration, my opinions in this declaration are made
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`from the perspective of one of ordinary skill in the art at the time of the invention.
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`5.
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`I am not and never have been an employee of Upstream. I received no
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`compensation for this declaration beyond my normal hourly compensation for my
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`time actually spent preparing this declaration, including analysis of the petition and
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`materials cited therein. This compensation is not contingent on the nature of my
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`findings or the outcome of this PGR or any other proceeding or litigation related to
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`the ’372 patent.
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`I. QUALIFICATIONS
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`6.
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`I am a Professor at Cornell University, where I also hold the Roxanne
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`E. and Michael J. Zak Chair Professorship in the School of Chemical and
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`Biomolecular Engineering. Within Cornell, I also serve as the Chair of Ph.D.
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`Studies in Systems Engineering, Co-Director of the Cornell University AI for
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`Science Institute, Co-Lead of the Schmidt AI in Science Program, and Co-Director
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`of the Cornell Institute for Digital Agriculture. I also have teaching and research
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`appointments in eight other engineering and science departments at Cornell
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`University. These include Computer Science, Electrical and Computer
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`Engineering, Operations Research and Information Engineering, Systems
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`Engineering, Mechanical and Aerospace Engineering, Civil and Environmental
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`Engineering, Applied Information Systems, and Applied Mathematics. I actively
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`mentor over 30 graduate students across the aforementioned science and
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`engineering departments, guiding them in their original research projects and
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`assisting with their dissertations. I also routinely supervise 5 post-doctoral
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`scholars, in addition to dozens of undergraduate students.
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`7.
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`I earned a Bachelor of Engineering degree in Chemical Engineering
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`from Tsinghua University in Beijing, China, in 2005, followed by a PhD in
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`Chemical Engineering with a concentration on Process Systems Engineering and
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`Artificial Intelligence (AI) from Carnegie Mellon University in Pittsburgh,
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`Pennsylvania, in 2009. Before joining Cornell University in 2016, I spent two
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`years in the Mathematics and Computer Science Division at Argonne National
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`Laboratory. I also served for five years at Northwestern University as an Assistant
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`Professor of Chemical and Biological Engineering, and of Industrial Engineering
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`and Management Sciences.
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`8.
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`In my role as a Professor at Cornell University I teach both
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`undergraduate and graduate courses and give guest lectures every year for the
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`various engineering and science departments listed above. The courses and lectures
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`cover a wide range of topics, ranging from chemical engineering, energy systems,
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`process engineering, AI, renewable energy, sustainability, computational modeling,
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`computer science and engineering, process design, industrial manufacturing,
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`chemistry, physics, materials science and processing, biological engineering, life
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`sciences, food and agriculture, climate, automation and control, electrical and
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`electronic engineering, quantum computing, infrastructure, transportation,
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`buildings and architecture, among many others.
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`9.
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`I have authored over 250 refereed articles in high-impact journals
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`such as Science, Nature Sustainability, Nature Communications, Science Advances,
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`and Proceedings of the National Academy of Sciences of the United States of
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`America (PNAS). I have also published over 160 peer-reviewed conference
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`proceedings, one book and authored nine book chapters on various aspects of
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`science and engineering. Parts of my research have earned editorial highlights in
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`Science and Nature, features on dozens of journal covers (e.g., Energy &
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`Environmental Science, Environmental Science & Technology, ACS Sustainable
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`Chemistry & Engineering, AIChE Journal, Industrial & Engineering Chemistry
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`Research), and coverage in leading media outlets (e.g., New York Times, BBC,
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`Reuters, Washington Post, Wall Street Journal, Fortune, Daily Mail, Agence
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`France-Presse, Bloomberg, Scientific American, Newsweek, BusinessWeek, Hill,
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`Guardian, New Scientist, Popular Science, and National Geographic). I serve as an
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`editor of Computers & Chemical Engineering; associate editor of AAAS journal
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`Science Advances and IEEE Transactions on Control Systems Technology;
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`consulting editor of AIChE Journal; subject editor of Advances in Applied Energy;
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`guest editor of Energy, Journal of Cleaner Production, and Renewable &
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`Sustainable Energy Reviews; and is on the editorial boards of ACS Sustainable
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`Chemistry & Engineering, Industrial & Engineering Chemistry Research, PRX
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`Energy, and more. I have delivered over 100 plenary or keynote lectures at leading
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`academic conference domestically and abroad. I was invited by the USPTO’s
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`Patent Examiners Technical Training Program (PETTP) to present a lecture on the
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`topic of AI in process industries in the past spring.
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`10.
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`I serve regularly as a peer reviewer at dozens of major engineering
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`and scientific journals as well as at federal and international funding agencies,
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`including National Science Foundation (NSF), Department of Energy, ACS
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`Petroleum Research Fund, ETH Research Commission, Switzerland, Qatar
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`National Research Fund, Ontario Research Fund, Canada, Ministry of Education
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`and Science, Republic of Kazakhstan, Natural Sciences and Engineering Research
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`Council, Canada, Engineering and Physical Sciences Research Council, UK,
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`United Arab Emirates University Advanced Research Program, UAE, Swiss
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`National Science Foundation, Austrian Science Fund (FWF), Technology
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`Foundation STW, Netherlands, Fondazione Cariplo, Italy, Israeli Ministry of
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`Science, Technology and Space, Netherlands Organisation for Scientific Research
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`(NWO), Chilean National Science and Technology Commission (CONICYT –
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`Chile), São Paulo Research Foundation (FAPESP), Luxembourg National Research
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`Fund (FNR), French National Research Agency (ANR), Czech Science
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`Foundation, Italian Medicines Agency (AIFA), National Research Foundation of
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`Singapore, National Science Center, Poland, The Science Foundation Ireland (SFI),
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`Ministry of Earth Sciences (MoES) in India, Indian Council of Social Science
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`Research (ICSSR), among others.
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`11.
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`I have been recognized as an award-winning scholar and teacher,
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`earning over 20 major national and international accolades in the last six years.
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`These come from notable professional organizations and societies, such as the
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`American Institute of Chemical Engineers (AIChE), American Chemical Society
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`(ACS), Royal Society of Chemistry (RSC), American Society for Engineering
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`Education (ASEE), American Automatic Control Council (AACC), in addition to
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`multiple best paper awards. Selected ones include NSF CAREER Award (2016),
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`AIChE Environmental Division Early Career Award (2017), AIChE Research
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`Excellence in Sustainable Engineering Award (2017), Computing and Systems
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`Technology (CAST) Outstanding Young Researcher Award from AIChE (2018),
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`Cornell Engineering Research Excellence Award (2018), ACS Sustainable
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`Chemistry & Engineering Lectureship Award (2018), AIChE Excellence in Process
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`Development Research Award (2019), AIChE Innovations in Green Process
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`Engineering Award (2020), Mr. & Mrs. Richard F. Tucker Excellence in Teaching
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`Award (2020), ASEE Curtis W. McGraw Research Award (2020), O. Hugo Schuck
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`Award from AACC (2020), AIChE Sustainable Engineering Forum Education
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`Award (2021), AIChE George Lappin Award (2022), and Stratis V. Sotirchos
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`Lectureship Award by Foundation for Research & Technology – Hellas (FORTH)
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`(2022). Furthermore, I am an elected Fellow of the Royal Society of Chemistry
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`(FRSC), Fellow of the American Institute of Chemical Engineers (AIChE), and
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`Fellow of the American Association for the Advancement of Science (AAAS).
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`12. My research interests and broad research experience span multiple
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`disciplines across engineering, chemistry, physical sciences, and life sciences. For
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`instance, I have authored over 50 peer-reviewed publications in the realm of fuel
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`and natural gas processing in the last decade. My work encompasses a range of
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`topics, including modular chemical manufacturing for natural gas and energy
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`systems for blockchain mining. My research in energy systems for blockchain
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`mining has been published in high-impacts journals, including Proceedings of the
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`National Academy of Sciences (PNAS) [Lal and You, 2023], Energy &
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`Environmental Science [Niaz, Shams, Liu, and You, 2022], ACS Sustainable
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`Chemistry & Engineering [Lal, Zhu, and You, 2023], and Journal of Cleaner
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`Production [Niaz, Liu, and You, 2022]. The papers in Energy & Environmental
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`Science and ACS Sustainable Chemistry & Engineering have been featured on the
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`covers of these high-impact journals. The PNAS paper was reported by leading
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`media outlets, including Fortune, ScienceDaily, and Tech Xplore.
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`13. My curriculum vitae, which includes a complete list of my
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`publications, is included as Appendix A. I am being compensated at a rate of $700
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`per hour for my work in this case. This compensation is not contingent on the
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`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
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`have personal knowledge, or have developed knowledge, of the technologies
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`discussed in this declaration based upon my education, training, or experience with
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`the matters discussed herein.
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`II. SUMMARY OF OPINIONS
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`15. With regard to the three grounds asserting invalidity under 35 U.S.C.
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`§ 112:
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`! Ground 1: Challenged claims (1-41) are not indefinite at least
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`because the challenged claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of
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`the invention with reasonable certainty.
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`! Ground 2: Challenged claims (1-41) are supported by written
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`description at least because it reasonably conveys to those skilled in
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`the art that the inventor had possession of the claimed subject matter
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`as of the filing date.
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`! Ground 3: Challenged claims (10-16, 23, 35-41) are not indefinite
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`under 35 U.S.C. § 112, ¶ 6 at least because the term “controller” is
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`understood by a POSITA to denote a class of structures in the
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`pertinent art. Moreover, even if “controller” were considered
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`functional, the specification discloses sufficient structure.
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`III. PERSON OF ORDINARY SKILL IN THE ART
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`16. As in my first declaration, I have reviewed Petitioner’s proposal for a
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`POSITA definition and I disagree to the extent it implies that a POSITA did not
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`need to have experience in oil and gas industry, including with wellsite power
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`generation, and experience with crypto mining. The ’372 patent advanced the state
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`of the art by combining these two previously separate fields. While this
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`combination of casinghead gas power generation and crypto mining was beyond
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`the ordinary skill at the time, a POSITA would have needed at least a reasonable
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`grounding in both technologies.
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`17.
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`For purposes of forming my opinions expressed in this declaration I
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`assumed the definition proposed by Petitioner. My opinions and conclusions in this
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`declaration would not change if a POSITA had some experience in both
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`technologies.
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`IV. LEGAL PRINCIPLES
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`18.
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`I have been advised of the following legal standards and principles
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`which I have applied in forming my opinions.
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`1. Claim Construction
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`19.
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`Patent claim terms are construed by referring to intrinsic evidence,
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`which includes the claim language, the patent specification, and the prosecution
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`history and extrinsic evidence. The words of patent claims are to be given their
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`ordinary or customary meaning (also referred to as plain and ordinary meaning)
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`unless the inventor has defined them (acted as their own lexicographer) or used
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`them differently (i.e., in a manner inconsistent with the ordinary and customary
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`meaning). The prosecution history of a patent, and related patents and
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`applications, may limit the interpretation of the claim, especially if the patentee
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`disavowed or disclaimed any claim scope in order to obtain allowance of the claim.
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`2. Indefiniteness
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`20.
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`I understand that to determine whether one or more of a patent’s
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`claims are indefinite under section 112 requires an inquiry from the perspective of
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`a POSITA as to whether a patent’s claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of the invention
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`with reasonable certainty.
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`3. Written Description
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`21.
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`I understand that the four corners of a patent application must
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`reasonably convey to a POSITA that the inventor had possession of and actually
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`invented the claimed subject matter at the time the application was filed.
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`4. Indefiniteness Under 35 U.S.C. § 112, ¶ 6
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`22.
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`I understand that to determine whether a claim term is drafted in
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`means-plus-function format under 35 U.S.C. § 112, ¶ 6, the first step is to ask
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`whether the claim limitation employs the word “means.” If it does, the term is in a
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`means-plus-function format. If it does not, there is a rebuttable presumption that
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`the term conveys sufficiently definite structure and is not subject to § 112, ¶ 6. A
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`challenger can rebut the presumption by demonstrating that the claim term fails to
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`recite sufficiently definite structure or else recites function without reciting
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`sufficient structure for performing that function. Thus, the essential inquiry is not
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`merely the presence or absence of the word “means” but whether the words of the
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`claim are understood by persons of ordinary skill in the art to have a sufficiently
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`definite meaning as the name for structure.
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`23.
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`I understand that one way to demonstrate that a claim limitation fails
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`to recite sufficiently definite structure is to show that, although not employing the
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`word “means,” the claim limitation uses a similar nonce word that can operate as a
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`substitute for ‘means’ in the context of § 112, ¶ 6. Nonce words are generic terms
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`or black box recitations of structure or abstractions that do not convey a
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`sufficiently definite structure to a POSITA.
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`24.
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`I understand that, in each case, a critical question is whether the claim
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`term is used in common parlance or by persons of skill in the pertinent art to
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`designate structure, including either a particular structure or a class of structures.
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`For example, even a broad term can be structural rather than functional where it
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`represents a structure or a class of structures in the pertinent art.
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`25.
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`I understand that for a claim term that is a means-plus-function term
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`subject to § 112(f) the specification must disclose sufficient corresponding
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`structure to perform all of the functions; if sufficient corresponding structure is not
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`disclosed, the claim may be indefinite. Thus, if a term is determined to be a means-
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`plus-function term, a two-step analysis is performed. First, the functions are
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`identified. Second, the specification is consulted to identify structure
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`corresponding to each function. I understand, in the case of computer implemented
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`means-plus-function terms, an algorithm must be disclosed to provide sufficient
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`structure. I understand that an algorithm can be recited in any understandable terms
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`to a POSITA such as a mathematical formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure. I understand that sufficient
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`structure need not include conventional subject matter that is known in the field of
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`the invention.
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`V. OVERVIEW OF ’372 PATENT
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`26.
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` I refer to my initial declaration in PGR2023-00039. EX2001, ¶¶ 29-
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`37.
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`VI. CLAIM CONSTRUCTION
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`27.
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`I refer to my initial declaration in PGR2023-00039. EX2001, ¶¶ 38-
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`46. In addition, I address below various issues relating to the meaning of certain
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`claim terms challenged by Petitioner as indefinite or subject to 35 U.S.C. § 112, ¶
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`6.
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`VII. GROUND 1
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`28.
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`The sections below express my opinions regarding Petitioner’s
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`arguments relating to alleged indefiniteness of certain claim terms as set forth in
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`Ground 1 of the petition.
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`1. “Blockchain Mining Devices”
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`a. “Blockchain Mining Devices” is Not Indefinite Because Intrinsic
`Evidence Provides Reasonable Certainty
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`29.
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`For purposes of streamlining my discussion, I refer to this limitation
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`as it appears in claim 1, but my opinions apply to all challenged claims.
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`30.
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`I have reviewed the Petition corresponding portions of the Kasdorf
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`declaration (EX1024). I note that the Kasdorf declaration is virtually identical for
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`this and the other grounds and closely tracks the Petition. Accordingly, for ease of
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`reference I will cite to the Petition unless I am specifically addressing the
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`declaration. For the following reasons it is my opinion that Petitioner and Mr.
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`Kasdorf have not shown that the claims are indefinite to a POSITA, which I
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`understand it is their burden to demonstrate.
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`31.
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`In my opinion, the ’372 patent claims read in light of the specification
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`inform a POSITA about the scope of the invention with reasonable certainty. For
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`example, claim 1 recites that blockchain mining devices are connected to a
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`generator and comprise a mining processor and a network interface connected to
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`receive and transmit data through the internet to a network that stores or has access
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`to a blockchain database. EX1001, 19:59-65. The specification teaches that “each
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`blockchain mining device 12 may be composed of suitable components” including
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`“a network interface” and “one or a plurality of mining processors.” EX1001,
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`15:21-25. The use of the word “each” informs a POSITA that there may be more
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`than one blockchain mining device but each comprises mining processor(s) and a
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`network interface, consistent with the independent claims.
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`32.
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`The specification further informs a POSITA that a blockchain mining
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`device illustrated in, e.g., Fig. 4, can comprise a number of additional components,
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`such as a power meter 72, a step-down transformer 80, “a controller 86, network
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`equipment 88 such as a modem and a network switch.” EX1001, 16:32-39, see
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`also 17:23-29. This is “an example layout” with components that “may make up a
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`mining device 12.” EX1001, 16:32-33.
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`33. An exemplary system may also include a “portable enclosure 98
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`suitable for transporting blockchain mining device 12 between locations” where
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`“[t]he blockchain mining device 12 may be located in a portable enclosure 98, for
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`example an intermodal transport container as shown.” EX1001, 15:41-47. A
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`containerized version of a blockchain mining device is illustrated in Fig. 6. Id. An
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`enclosure is not recited in the independent claims but there are dependent claims,
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`e.g., claim 17, directed to this aspect of the invention. EX1001, claim 17.
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`34.
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`Petitioner argues that “it is unclear whether the blockchain mining
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`device includes the mining server (e.g., spondooliestech SP35 servers), the
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`controller, the cooling system, the intermodal transport container, or a subset
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`thereof.” Petition, 13. I disagree because in my opinion there is no lack of clarity in
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`the claims or the specification to a POSITA. The plain claim language of the
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`independent claims informs a POSITA that a blockchain mining device comprises
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`a mining processor and a specialized network interface that communicates with a
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`blockchain database. EX1001, claim 1. Thus, to the extent Petitioner’s term
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`“mining server” refers to the recited “mining processor,” the claim language does
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`require each blockchain mining device to have a mining processor. EX1001, claim
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`1. To the extent Petitioner has something else in mind for “mining server,” the
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`claim language does not require it. In fact, this argument glosses over the fact that
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`the term “mining server” appears nowhere in the claims or specification of the ’372
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`patent. Dependent claims recite additional blockchain mining device components
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`such as a controller and a cooling system (e.g., claim 16), and a container (e.g.,
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`claim 20) but these are not required by the independent claims. Thus, in each
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`instance the claim language is clear as to what the blockchain mining device
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`includes.
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`35.
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`This claiming structure delineates the scope of the invention for each
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`claim with reasonable certainty. Contrary to Petitioner, it is not at all “unclear”
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`what the blockchain mining device comprises in each claim. For example, it is
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`clear that the blockchain mining device in independent claim 1 is not required to
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`have a controller or to be housed in an intermodal transport container, though the
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`claim would cover that configuration if all the claim requirements are satisfied.
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`When a dependent claim recites a container then it is required. Likewise, where a
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`dependent claim recites a controller (e.g., claim 16), a POSITA understands that the
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`metes and bounds of that claim include this limitation while the independent
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`claims are not so limited.
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`b. The Two “Alternative” Constructions Are Inconsistent with Claim
`Language and Rely on Extrinsic Evidence
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`36.
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`In view of the clarity provided by the intrinsic record, a POSITA
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`would not consider either of the two supposed “different interpretations” proposed
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`by Petitioner. Petition, 12. In fact, as I further discuss below, these “interpretations”
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`of Petitioner’s own faulty construction in co-pending PGR2023-00039 create
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`ambiguity where there is none.
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`37.
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`It is my understanding from review of the Petition and declaration that
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`the two “interpretations” are of Petitioner’s own claim construction in PGR2023-
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`00039 rather than the claim language informed by the specification. Petition, 11-
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`12. However, as I explained in my initial declaration in PGR2023-00039, that
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`construction - “any computing device that is capable of performing blockchain
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`mining without regard to processor speed or power” - is incorrect because it
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`conflates a “blockchain mining device” with a mere processor (“any computing
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`device”) and adds an unsupported limitation “without regard to processor speed or
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`power.” EX2001, ¶¶ 39-42. Accordingly, Petitioner’s indefiniteness theory is
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`flawed because its “alternative interpretations” are of its incorrect claim
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`construction rather than the claim language in view of the specification.
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`38. Moreover, Petitioner’s “alternative interpretations” of its own
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`construction are unsupported by the ’372 patent’s intrinsic record discussed above.
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`Petitioner’s first “alternative” is “a plurality of mining servers (e.g.,
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`spondooliestech SP35 servers) housed together (e.g., in a portable shipping
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`container).” Petition, 12. Notably, this “interpretation” or “construction” recites
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`language such as “mining servers” that is not used in the claims. Other
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`terminology, such as “spondooliestech SP35 servers,” is not recited anywhere in
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`the ’372 patent.
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`39.
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`In fact, Petitioner does not justify its “first construction” as based on
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`the intrinsic record. Rather, Petitioner relies on EX1006, a document describing an
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`alleged prior art system called CryptoKube, as its sole source of support for
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`“mining server,” “spondooliestech SP35 servers,” and “mobile data center” (a term
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`Petitioner uses in its “second construction”). Petition, 12-14.
`
`40. Moreover, the “housed together (e.g., in a portable shipping
`
`container)” language appears nowhere in the independent claims but is the subject
`
`matter of certain dependent claims such as claim 16. On the other hand, the “first
`
`construction” omits elements of the claimed “blockchain mining devices” that are
`
`recited in the independent claims such as a specialized network interface that
`
`communicates with a blockchain database. EX1001, 19:59-65.
`
`41.
`
`For these reasons, a POSITA would disagree with the first
`
`“interpretation” or “construction” because it:
`
`! recites terms not used in claims or specification;
`
`! is overinclusive (reciting elements from dependent claims);
`
`! is underinclusive (ignoring express claim language in independent
`
`claims);
`
`18
`
`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 19
`
`
`
`! is “interpreting” an incorrect claim construction rather than the
`
`actual claim language in view of the specification.
`
`c. “First Construction” Does Not Consider Claims in View of
`
`Specification
`
`42. Aside from extrinsic evidence, Petitioner relies on dependent claims
`
`16 and 17 to support the “first construction.” Petition, 14-15. However, Petitioner
`
`then shows that this “construction” is contrary to the specification: “both the
`
`specification and prosecution history demand the second construction.” Petition,
`
`16.
`
`43.
`
`Petitioner misinterprets these two dependent claims because it
`
`disregards the intrinsic record. Claim 16 recites “a controller is connected to
`
`operate a cooling system to maintain the blockchain mining devices within a
`
`predetermined operating range of temperature.” EX1001, claim 16. As established
`
`above, the specification describes embodiments of blockchain mining devices
`
`where “each” device comprises a network interface and one or more mining
`
`processors and may further comprise a controller. See e.g., EX1001, 15:21-25,
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`16:32-39. The controller “may be connected to at least a thermistor 90
`
`(temperature sensor) within the mining device 12, to allow the controller 86 to
`
`control the ventilation and chilling loads.” EX1001, 17:3-6. These disclosures
`
`inform a POSITA that claim 16 is directed to blockchain mining devices of claim
`
`1.
`
`19
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 20
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`
`
`44.
`
`In view of the specification’s teachings, a POSITA would understand
`
`that the indefinite article “a” in front of “controller” and “cooling system” in claim
`
`16 is referring to “one or more” such controllers and cooling systems to service
`
`their respective blockchain mining devices. I have been informed that interpreting
`
`“a” as “one or more” is also consistent with the general legal standard in open-
`
`ended “comprising” claims. Here, claim 16 depends on the open-ended
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`“comprising” claim 1.
`
`45.
`
`Therefore, the claim language in view of the specification does not
`
`require “the plurality of blockchain mining devices to share the same cooling
`
`system.” Petition, 15. A POSITA would understand that claim 16 includes
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`configurations where each blockchain mining device has its own controller (as
`
`illustrated in Fig. 4) and cooling system, though sharing of controllers and cooling
`
`systems is also possible.
`
`46. Because Petitioner’s premise – that claim 16 requires a single shared
`
`cooling system – is incorrect, its conclusion is also in error. There is simply no
`
`requirement in claim 16 that “the plurality of mining servers are housed together,
`
`for example, in a modular shipping container” even if “mining servers” (a term not
`
`used in the claims) was equated, arguendo, to the claimed “blockchain mining
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`devices.” Petition, 15.
`
`20
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 21
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`
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`47.
`
`In my opinion, dependent claim 17 also does not support the “first
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`construction.” This claim depends on claim 1 and requires that “the blockchain
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`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.” EX1001, claim 17. As with claim 16, a
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`POSITA would interpret the indefinite article “a” in “a portable enclosure” as “one
`
`or more.” This is consistent with the specification’s teaching that “each blockchain
`
`mining device” comprises “a network interface” and “one or a plurality of mining
`
`processors,” as recited in the independent claims, and that an exemplary device
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`may further be housed in a “portable enclosure 98.” EX1001, 15:21-25, 15:41-47.
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`Thus, the specification informs a POSITA that claim 17 is not limited to housing
`
`multiple blockchain mining devices in a single enclosure. Rather, the claim is
`
`directed to configurations where blockchain mining devices are housed in one or
`
`more enclosures.
`
`48. As claims 16 and 17 are not limited to a single shared controller or
`
`cooling system for all of the blockchain mining devices (claim 16) or the same
`
`enclosure (claim 17), a POSITA would not conclude that the blockchain mining
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`devices recited in those claims are mere “mining servers” housed in the same
`
`enclosure as alleged by Petitioner. While “mining server” is not a claim term,
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`Petitioner’s example of a spondooliestech SP 35 mining server in a CryptoKube
`
`21
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 22
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`
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`Bitcoin miner (Petition, 14; EX1006) indicates that Petitioner incorrectly conflates
`
`two separate claim terms – blockchain mining device and mining processor.
`
`49.
`
`This needless confusion is of Petitioner’s own making. As I discuss
`
`above, the claim language and the specification teach that a blockchain mining
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`device comprises one or more mining processors as well as other components such
`
`as a specialized network interface, controller, cooling system and others. See e.g.,
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`EX1001, 16:32-39, 17:23-29, claims 1, 16. The mining processor(s) in a
`
`blockchain mining device are “adapted to mine transactions” (claim 1) and are
`
`disclosed in the specification as having various embodiments and components.
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`EX1001, 17:9-22. For example, “[e]ach mining processor may have a power
`
`supply, a controller board and mining circuitry, such as an ASIC circuit.” EX1001,
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`17:9-12. The relationship between a blockchain mining device (in this embodiment
`
`the system within enclosure 98) and its mining processors 92 is illustrated in Fig.
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`4:
`
`22
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`IPR2023-00052 - Upstream Data
`Ex. 2101 - Page 2
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