IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PGR2023-00039
`
`DECLARATION OF DR. FENGQI YOU
`
`
`
`
`
`
`
`1
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 1
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 1
`
`
`
`PGR2023-00039
`
`DECLARATION OF DR. FENGQI YOU
`
`
`
`
`
`
`
`1
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 1
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 1
`
`
`
`I, Fengqi You, declare as follows:
`
`1.
`
`I have been retained on behalf of Upstream Data Inc. (“Upstream” or
`
`“Patent Owner” or “PO”) to offer technical opinions relating to U.S. Patent No.
`
`11,574,372 (the “’372 patent”). I understand that the ’372 patent is subject to a
`
`petition by Crusoe Energy Systems, LLC (“Crusoe” or “Petitioner”) requesting the
`
`Patent Trial and Appeal Board (“PTAB” or “Board”) to institute a post-grant
`
`review (“PGR”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’372
`
`patent, Crusoe’s PGR petition, the prior art cited therein and the arguments and
`
`analysis in the petition and declarations submitted by Crusoe, in particular the
`
`declarations by Dr. Michael Nikolaou (EX1003) and Mr. Vernon Kasdorf
`
`(EX1004) stating their opinions regarding the validity of the ’372 patent. For this
`
`declaration I was asked to focus on certain aspects of the petition and declarations,
`
`such as the motivation to combine and whether the prior art in the petition was
`
`substantially similar to prior art considered during ’372 patent prosecution. I also
`
`address patentability of the challenged claims under 35 U.S.C. § 101 and the
`
`related opinions by Nikolaou and Kasdorf.
`
`3. My opinions in this declaration are made from the perspective of one
`
`of ordinary skill in the art at the time of the invention.
`
`
`
`2
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 2
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 2
`
`
`
`4.
`
`I am not and never have been an employee of Upstream. I received no
`
`compensation for this declaration beyond my normal hourly compensation for my
`
`time actually spent preparing this declaration, including analysis of the petition and
`
`materials cited therein. This compensation is not contingent on the nature of my
`
`findings or the outcome of this PGR or any other proceeding or litigation related to
`
`the ’372 patent.
`
`I. QUALIFICATIONS
`5.
`I am a Professor at Cornell University, where I also hold the Roxanne
`
`E. and Michael J. Zak Chair Professorship in the School of Chemical and
`
`Biomolecular Engineering. Within Cornell, I also serve as the Chair of Ph.D.
`
`Studies in Systems Engineering, Co-Director of the Cornell University AI for
`
`Science Institute, Co-Lead of the Schmidt AI in Science Program, and Co-Director
`
`of the Cornell Institute for Digital Agriculture. I also have teaching and research
`
`appointments in eight other engineering and science departments at Cornell
`
`University. These include Computer Science, Electrical and Computer
`
`Engineering, Operations Research and Information Engineering, Systems
`
`Engineering, Mechanical and Aerospace Engineering, Civil and Environmental
`
`Engineering, Applied Information Systems, and Applied Mathematics. I actively
`
`mentor over 30 graduate students across the aforementioned science and
`
`engineering departments, guiding them in their original research projects and
`
`
`
`3
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 3
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 3
`
`
`
`assisting with their dissertations. I also routinely supervise 5 post-doctoral
`
`scholars, in addition to dozens of undergraduate students.
`
`6.
`
`I earned a Bachelor of Engineering degree in Chemical Engineering
`
`from Tsinghua University in Beijing, China, in 2005, followed by a PhD in
`
`Chemical Engineering with a concentration on Process Systems Engineering and
`
`Artificial Intelligence (AI) from Carnegie Mellon University in Pittsburgh,
`
`Pennsylvania, in 2009. Before joining Cornell University in 2016, I spent two
`
`years in the Mathematics and Computer Science Division at Argonne National
`
`Laboratory. I also served for five years at Northwestern University as an Assistant
`
`Professor of Chemical and Biological Engineering, and of Industrial Engineering
`
`and Management Sciences.
`
`7.
`
`In my role as a Professor at Cornell University I teach both
`
`undergraduate and graduate courses and give guest lectures every year for the
`
`various engineering and science departments listed above. The courses and lectures
`
`cover a wide range of topics, ranging from chemical engineering, energy systems,
`
`process engineering, artificial intelligence (AI), renewable energy, sustainability,
`
`computational modeling, computer science and engineering, process design,
`
`industrial manufacturing, chemistry, physics, materials science and processing,
`
`biological engineering, life sciences, food and agriculture, climate, automation and
`
`
`
`4
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 4
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 4
`
`
`
`control, electrical and electronic engineering, quantum computing, infrastructure,
`
`transportation, buildings and architecture, among many others.
`
`8.
`
`I have authored over 250 refereed articles in high-impact journals
`
`such as Science, Nature Sustainability, Nature Communications, Science Advances,
`
`and Proceedings of the National Academy of Sciences of the United States of
`
`America (PNAS). I have also published over 160 peer-reviewed conference
`
`proceedings, one book and authored nine book chapters on various aspects of
`
`science and engineering. Parts of my research have earned editorial highlights in
`
`Science and Nature, features on dozens of journal covers (e.g., Energy &
`
`Environmental Science, Environmental Science & Technology, ACS Sustainable
`
`Chemistry & Engineering, AIChE Journal, Industrial & Engineering Chemistry
`
`Research), and coverage in leading media outlets (e.g., New York Times, BBC,
`
`Reuters, Washington Post, Wall Street Journal, Fortune, Daily Mail, Agence
`
`France-Presse, Bloomberg, Scientific American, Newsweek, BusinessWeek, Hill,
`
`Guardian, New Scientist, Popular Science, and National Geographic). I serve as an
`
`editor of Computers & Chemical Engineering; associate editor of AAAS journal
`
`Science Advances and IEEE Transactions on Control Systems Technology;
`
`consulting editor of AIChE Journal; subject editor of Advances in Applied Energy;
`
`guest editor of Energy, Journal of Cleaner Production, and Renewable &
`
`Sustainable Energy Reviews; and is on the editorial boards of ACS Sustainable
`
`
`
`5
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 5
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 5
`
`
`
`Chemistry & Engineering, Industrial & Engineering Chemistry Research, PRX
`
`Energy, and more. I have delivered over 100 plenary or keynote lectures at leading
`
`academic conference domestically and abroad. I was invited by the USPTO’s
`
`Patent Examiners Technical Training Program (PETTP) to present a lecture on the
`
`topic of AI in process industries in the past spring.
`
`9.
`
`I serve regularly as a peer reviewer at dozens of major engineering
`
`and scientific journals as well as at federal and international funding agencies,
`
`including National Science Foundation (NSF), Department of Energy, ACS
`
`Petroleum Research Fund, ETH Research Commission, Switzerland, Qatar
`
`National Research Fund, Ontario Research Fund, Canada, Ministry of Education
`
`and Science, Republic of Kazakhstan, Natural Sciences and Engineering Research
`
`Council, Canada, Engineering and Physical Sciences Research Council, UK,
`
`United Arab Emirates University Advanced Research Program, UAE, Swiss
`
`National Science Foundation, Austrian Science Fund (FWF), Technology
`
`Foundation STW, Netherlands, Fondazione Cariplo, Italy, Israeli Ministry of
`
`Science, Technology and Space, Netherlands Organisation for Scientific Research
`
`(NWO), Chilean National Science and Technology Commission (CONICYT –
`
`Chile), São Paulo Research Foundation (FAPESP), Luxembourg National Research
`
`Fund (FNR), French National Research Agency (ANR), Czech Science
`
`Foundation, Italian Medicines Agency (AIFA), National Research Foundation of
`
`
`
`6
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 6
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 6
`
`
`
`Singapore, National Science Center, Poland, The Science Foundation Ireland (SFI),
`
`Ministry of Earth Sciences (MoES) in India, Indian Council of Social Science
`
`Research (ICSSR), among others.
`
`10.
`
`I have been recognized as an award-winning scholar and teacher,
`
`earning over 20 major national and international accolades in the last six years.
`
`These come from notable professional organizations and societies, such as the
`
`American Institute of Chemical Engineers (AIChE), American Chemical Society
`
`(ACS), Royal Society of Chemistry (RSC), American Society for Engineering
`
`Education (ASEE), American Automatic Control Council (AACC), in addition to
`
`multiple best paper awards. Selected ones include NSF CAREER Award (2016),
`
`AIChE Environmental Division Early Career Award (2017), AIChE Research
`
`Excellence in Sustainable Engineering Award (2017), Computing and Systems
`
`Technology (CAST) Outstanding Young Researcher Award from AIChE (2018),
`
`Cornell Engineering Research Excellence Award (2018), ACS Sustainable
`
`Chemistry & Engineering Lectureship Award (2018), AIChE Excellence in Process
`
`Development Research Award (2019), AIChE Innovations in Green Process
`
`Engineering Award (2020), Mr. & Mrs. Richard F. Tucker Excellence in Teaching
`
`Award (2020), ASEE Curtis W. McGraw Research Award (2020), O. Hugo Schuck
`
`Award from AACC (2020), AIChE Sustainable Engineering Forum Education
`
`Award (2021), AIChE George Lappin Award (2022), and Stratis V. Sotirchos
`
`
`
`7
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 7
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 7
`
`
`
`Lectureship Award by Foundation for Research & Technology – Hellas (FORTH)
`
`(2022). Furthermore, I am an elected Fellow of the Royal Society of Chemistry
`
`(FRSC), Fellow of the American Institute of Chemical Engineers (AIChE), and
`
`Fellow of the American Association for the Advancement of Science (AAAS).
`
`11. My research interests and broad research experience span multiple
`
`disciplines across engineering, chemistry, physical sciences, and life sciences. For
`
`instance, I have authored over 50 peer-reviewed publications in the realm of fuel
`
`and natural gas processing in the last decade. My work encompasses a range of
`
`topics, including modular chemical manufacturing for natural gas and energy
`
`systems for blockchain mining. My research in energy systems for blockchain
`
`mining has been published in high-impacts journals, including Proceedings of the
`
`National Academy of Sciences (PNAS) [Lal and You, 2023], Energy &
`
`Environmental Science [Niaz, Shams, Liu, and You, 2022], ACS Sustainable
`
`Chemistry & Engineering [Lal, Zhu, and You, 2023], and Journal of Cleaner
`
`Production [Niaz, Liu, and You, 2022]. The papers in Energy & Environmental
`
`Science and ACS Sustainable Chemistry & Engineering have been featured on the
`
`covers of these high-impact journals. The PNAS paper was reported by leading
`
`media outlets, including Fortune, ScienceDaily, and Tech Xplore.
`
`12. My curriculum vitae, which includes a complete list of my
`
`publications, is included as Appendix A. I am being compensated at a rate of $700
`
`
`
`8
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 8
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 8
`
`
`
`per hour for my work in this case. This compensation is not contingent on the
`
`nature of my findings or the outcome of this litigation.
`
`13.
`
`I am over the age of 18 and am competent to write this declaration. I
`
`have personal knowledge, or have developed knowledge, of the technologies
`
`discussed in this declaration based upon my education, training, or experience with
`
`the matters discussed herein.
`
`II. SUMMARY OF OPINIONS
`14. With regard to the five grounds asserting obviousness:
`
` Ground 1: Challenged claims (1-4, 8, 16-30, and 34) are not obvious
`
`over Dickerson and CryptoKube in view of Szhmigielski and
`
`Kheterpal at least because a person of ordinary skill in the art (or
`
`“POSITA”) would not have motivation to combine said references and
`
`would not expect a reasonable expectation of success.
`
` Ground 2: Challenged claims (1-4, 8, 10-12, 15-30, 34-37, and 40)
`
`are not obvious over Dickerson, CryptoKube, and Belady-989 in view
`
`of Szhmigielski and Kheterpal at least because a POSITA would not
`
`have motivation to combine said references and would not expect a
`
`reasonable expectation of success.
`
` Ground 3: Challenged claims (1-4, 7-12, 15-30, 34-37, and 40) are
`
`not obvious over Dickerson, CryptoKube, Belady-989, and Boot in
`
`
`
`9
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 9
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 9
`
`
`
`view of Szmigielski and Kheterpal at least because a POSITA would
`
`not have motivation to combine said references and would not expect
`
`a reasonable expectation of success.
`
` Ground 4: Challenged claims (1-4, 8, 16-30, and 34) are not obvious
`
`over MAGS system and the Polivka miner at least because a POSITA
`
`would not have motivation to combine said references and would not
`
`expect a reasonable expectation of success.
`
` Ground 5: Challenged claims (1-4, 8, 10-12, 15-30, 34-37, and 40)
`
`are not obvious over MAGS system, the Polivka miner, and Belady-
`
`989 at least because a POSITA would not have motivation to combine
`
`said references and would not expect a reasonable expectation of
`
`success.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`15.
`I have reviewed Petitioner’s proposal for a POSITA definition and I
`
`disagree to the extent it implies that a POSITA did not need to have experience in
`
`oil and gas industry, including with wellsite power generation, and experience with
`
`crypto mining. The ’372 patent advanced the state of the art by combining these
`
`two previously separate fields. While this combination of casinghead gas power
`
`generation and crypto mining was beyond the ordinary skill at the time, a POSITA
`
`would have needed at least a reasonable grounding in both technologies.
`
`
`
`10
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 10
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 10
`
`
`
`16. For purposes of forming my opinions expressed in this declaration I
`
`assumed the definition proposed by Petitioner. My opinions and conclusions in this
`
`declaration would not change if a POSITA had some experience in both
`
`technologies.
`
`IV. LEGAL PRINCIPLES
`17.
`I have been advised of the following legal standards and principles
`
`which I have applied in forming my opinions.
`
`1. Claim Construction
`18. Patent claim terms are construed by referring to intrinsic evidence,
`
`which includes the claim language, the patent specification, and the prosecution
`
`history and extrinsic evidence. The words of patent claims are to be given their
`
`ordinary or customary meaning (also referred to as plain and ordinary meaning)
`
`unless the inventor has defined them (acted as their own lexicographer) or used
`
`them differently (i.e., in a manner inconsistent with the ordinary and customary
`
`meaning). The prosecution history of a patent, and related patents and
`
`applications, may limit the interpretation of the claim, especially if the patentee
`
`disavowed or disclaimed any claim scope in order to obtain allowance of the claim.
`
`2. Obviousness
`19.
`I understand that a patent claim is rendered obvious if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art as of the
`
`
`
`11
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 11
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 11
`
`
`
`date of invention. A determination of obviousness is made after weighing the
`
`following factors: (1) level of ordinary skill in the pertinent art; (2) the scope and
`
`content of the prior art; (3) the differences between the prior art as a whole and the
`
`claim at issue; and (4) as appropriate, secondary considerations of non-
`
`obviousness.
`
`20.
`
`In evaluating obviousness, both the prior art and claimed invention
`
`should be viewed through the knowledge and understanding of a person of
`
`ordinary skill in the art at the time of the invention – one should not use his or her
`
`own insight or hindsight in deciding whether a claim is obvious. A claim may be
`
`rendered obvious if a person of ordinary skill in the art would understand the
`
`claimed invention as a predictable variation of a prior art reference. I further
`
`understand that an obviousness evaluation can be made on a single reference or a
`
`combination of several prior art references. I understand that where the claim is an
`
`obvious variant of a prior art product or system, any modification of the prior art
`
`product or system must be supported by a suggestion, motivation, or reason to
`
`make the modification. I further understand that obviousness analysis recognizes
`
`that market demand often drives innovation, and that a motivation to modify a
`
`product or system may be supplied by the direction of the marketplace.
`
`
`
`12
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 12
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 12
`
`
`
`21. On the other hand, I further understand that a claim may not be
`
`obvious if a person of ordinary skill would not be motivated to combine or modify
`
`the prior art, or would not have a reasonable expectation of success in doing so.
`
`22. A particular modification of a prior art system or product may be
`
`made by showing that it was obvious to try the modification. For example,
`
`common sense is a good reason for a person of ordinary skill to pursue known
`
`options when there is a design need or market pressure to solve a problem and
`
`there are a finite number of identified, predictable solutions. I understand that
`
`obviousness analysis may take into account the inferences and creative steps that a
`
`person of ordinary skill in the art would employ under the circumstances. I
`
`understand that the combination of familiar elements according to known methods
`
`is likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market
`
`forces can prompt variations of it. If a person of ordinary skill in the art can
`
`implement a predictable variation, then the patent claim may be obvious.
`
`23.
`
`I understand that at least the following rationales may support a
`
`finding of obviousness: (1) combining prior art elements according to known
`
`methods to yield predictable results; (2) simple substitution of one known element
`
`for another to obtain predictable results; (3) use of a known technique to improve
`
`similar devices (methods, or products) in the same way; (4) applying a known
`
`
`
`13
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 13
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 13
`
`
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (5) “obvious to try”—choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success; (6) a
`
`predictable variation of work in the same or a different field of endeavor if a
`
`person of ordinary skill would be able to implement the variation; (7) there existed
`
`a known problem for which there was an obvious solution encompassed by the
`
`patent’s claims at the time of the claimed invention; (8) known work in one field
`
`may prompt variations of it for use in either the same field or a different one based
`
`on design incentives or other market forces if the variations would have been
`
`predictable to one of ordinary skill in the art; and (9) some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`24.
`
`I have been informed that one or more so-called “secondary
`
`considerations of non-obviousness” may impact the obviousness analysis if they
`
`are present. I have been informed that secondary considerations may include: (1)
`
`whether the invention proceeded in a direction contrary to accepted wisdom in the
`
`field; (2) whether there was a long felt but unresolved need in the art that was
`
`satisfied by the invention; (3) whether others had tried but failed to make the
`
`invention; (4) whether others copied the invention; (5) whether the invention
`
`
`
`14
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 14
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 14
`
`
`
`achieved unexpected results; (6) whether the invention was praised by others; (7)
`
`whether others have taken licenses to use the invention; (8) whether experts or
`
`those skilled in the art at the making of the invention expressed surprise or
`
`disbelief regarding the invention; and (9) whether products incorporating the
`
`invention have achieved commercial success that is attributable to the invention.
`
`25.
`
`I also understand that another indication of obviousness may be that
`
`others having ordinary skill in the field independently made the claimed invention
`
`at about the same time the inventor made the invention.
`
`26.
`
`I also understand that for any such secondary consideration to be
`
`relevant, there must be a connection or “nexus” between the secondary
`
`consideration and the claimed invention. For example, commercial success of a
`
`product is relevant to obviousness only if the success of the product is attributable
`
`to the patented features of the claimed invention. If, on the other hand, commercial
`
`success is due to features of the product not claimed in the patent, due to claimed
`
`features that existed in the prior art, and/or due to advertising, promotion,
`
`salesmanship or the like, then any commercial success should not be considered an
`
`indication of non-obviousness.
`
`3. Section 101
`27.
`I understand that a two-step framework is used to determine whether
`
`patent claims are directed towards patent-eligible subject matter. First, a
`
`
`
`15
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 15
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 15
`
`
`
`determination must be made as to whether the claims are directed towards one of
`
`the three patent-ineligible subjects: laws of nature, natural phenomena, and abstract
`
`ideas. If the claims do not fall within one of these three patent-ineligible subjects, I
`
`understand that the claims satisfy 35 U.S.C. § 101 and there is no need to proceed
`
`to the second step. However, if the claims are determined to be directed towards
`
`one of these patent-ineligible subjects, then the analysis must proceed to step two. I
`
`further understand that the examination of whether a claim is directed to an
`
`abstract idea may also weigh whether the claim recites the practical application of
`
`the subject matter of the claim.
`
`28. At step two, I am informed that the inquiry is whether an inventive
`
`concept such as an element or combination of elements is recited that is sufficient
`
`to ensure that the patent in practice amounts to significantly more than a patent
`
`upon the abstract idea itself. At step two, I understand it is also necessary to
`
`consider whether the claim elements or the claimed combination are well-
`
`understood, routine, conventional.
`
`V. OVERVIEW OF ’372 PATENT
`29. The following is a brief summary of the ’372 patent based on my
`
`review. The ’372 patent claims priority to provisional application 62/456,380, filed
`
`on February 8, 2017. See EX1001. The patent is “related to blockchain mining at
`
`an oil or gas facility.” EX1001, 1:6-7. The ’372 patent explains that “[i]n upstream
`
`
`
`16
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 16
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 16
`
`
`
`production of oil and gas, natural gas may be produced … as a by-product of oil
`
`production, for example from an oil well.” EX1001, 6:51-54. This form of natural
`
`gas is referred to as undesirable casinghead gas, casing gas or simply raw
`
`gas. EX1001, 4:62-63, 8:66-9:3.
`
`30. The prior art knew some ways to utilize casinghead gas. For example,
`
`it was known to consume it as “on-site fuel or for instrumentation pressure.”
`
`EX1001, 6:56-58. If there was a significant gas volume beyond what could be
`
`consumed onsite, gas could be sold to market through a connection to a pipeline
`
`network, compression, or liquefaction to transportable LNG. EX1001, 6:59-64. If a
`
`grid connection was available, casinghead gas could be used to generate electricity
`
`for sale to the power grid. EX1001, 6:63-67.
`
`31. However, gas “may be located at a remote oil and gas site” that lacks
`
`“accessible infrastructure such as an external pipeline network (sales line) or
`
`external power grid to sell into” and may be “hundreds of kilometers outside of the
`
`nearest town.” EX1001, 7:46-49, 8:20-23. In such cases “it may not be
`
`economically feasible … to take the gas, or resultant electricity … to market, for
`
`example due to significant capital expense required or when the volume of gas is
`
`insufficient to pay out the investment.” EX1001, 7:49-54, 8:11-23. As is known in
`
`the art, the gas is “stranded.” EX1001, 7:54-56.
`
`
`
`17
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 17
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 17
`
`
`
`32.
`
`In such cases, a common solution is to vent or flare (burn) the
`
`stranded gas. EX1001, 1:11-13, 7:61-8:10. However, this prior art solution is
`
`undesirable because it creates greenhouse gas emissions, wastes the potential
`
`energy of the gas, requires capital expenditure, and may pose health risks. Id.
`
`33. The novel solution taught by the ’372 patent is to use stranded gas to
`
`power a portable blockchain mining device instead of flaring the gas. EX1001,
`
`2:18-24.
`
`34. As discussed in the ’372 patent, “[a] blockchain is a form of database,
`
`which may be saved as a distributed ledger in a network of nodes that maintains a
`
`continuously-growing list of records called blocks.” EX1001, 11:45-47. “The
`
`administration of BITCOIN currency is currently the primary use for blockchain
`
`technology.” EX1001, 11:57-60. “Maintaining a blockchain database is referred to
`
`as mining, which refers to the distributed computational review process performed
`
`on each block of data in a block-chain.” EX1001, 13:5-7. “Those involved in
`
`BITCOIN mining are rewarded for their effort with newly created BITCOINs and
`
`transaction fees.” EX1001, 13:9-13.
`
`35. Blockchain mining (also referred to as crypto mining) differs from
`
`many other types of computing in that it is “intentionally designed to be resource-
`
`intensive and difficult so that the number of blocks found each day by miners
`
`remains steady.” EX1001, 13:29-33, 13:44-48. This is unlike most other
`
`
`
`18
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 18
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 18
`
`
`
`computational loads (such as those running in a conventional data center) which
`
`are typically designed to be as efficient and computationally economical as
`
`possible. This intentionally energy-intensive problem comprises “a cryptographic
`
`hashing algorithm.” EX1001, 13:49-52.
`
`36. Since the energy cost of crypto mining is the primary operating cost,
`
`the prior art mines were located primarily in places with low-cost hydroelectric
`
`power such as China or the Pacific Northwest in the United States. EX1001, 14:4-
`
`20; EX1009, 105.
`
`37. Decentralizing crypto mining away from hydroelectric power to make
`
`use of stranded gas at remote oil and gas production facilities required innovative
`
`thinking and solutions disclosed in the ’372 patent. For example, unlike existing
`
`crypto mines which could depend on reliable power sources (e.g., a hydroelectric
`
`power plant connected to the grid), the ’372 patent’s bitcoin mine had to solve the
`
`problem of variable casinghead gas production. The ’372 patent discloses solving
`
`this problem by, for example, the mining controller modulating the mining power
`
`load (also referred to as the hashrate) in real time to respond “to variations in a
`
`supply or production rate of natural gas.” EX1001, 17:61-18:15. In addition, crypto
`
`mining power levels may be adjusted to a daily minimum or maximum gas
`
`production rate as different strategies to mitigate the variable production. EX1001,
`
`18:34-19:13.
`
`
`
`19
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 19
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 19
`
`
`
`VI. CLAIM CONSTRUCTION
`
`38.
`I have considered Petitioner’s proposals for construction of certain
`
`claim terms from the perspective of one of ordinary skill at the time of the
`
`invention, taking into account the ’372 patent’s teachings, the prosecution file
`
`history, and the knowledge of a POSITA. For the following reasons, I disagree with
`
`the Petitioner’s proposals regarding the meaning of the claim terms addressed
`
`below.
`
`4. “Blockchain Mining Devices” and “Mining Processor”
`39.
`In my opinion, the intrinsic evidence of the ’372 patent (that is, the
`
`’372 patent specification, including claims, and the prosecution file history) does
`
`not support Petitioner’s constructions. First, Petitioner nearly equates the meaning
`
`of a “blockchain mining devices” with a “mining processor.” Pet. 4-6. However,
`
`the specification makes clear (including with reference to Figure 4) that the
`
`“mining device 12” is made of up of many components, such as a power meter 72,
`
`a step-down transformer 80, “a controller 86, network equipment 88 such as a
`
`modem and a network switch, … and one or more mining processors 92 such as
`
`processors 92A-E.” EX1001, 16:32-39 (emphasis added); see also 17:23-29. With
`
`respect to the mining processors 92, the ’372 patent details that “[e]ach mining
`
`processor 92 may have a variety of configurations, but generally may include at
`
`least a power supply, a controller board and mining circuity, such an ASIC circuit.
`
`
`
`20
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 20
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 20
`
`
`
`Various mining circuitry examples include CPU (central processing unit), GPU
`
`(graphics processing unit), FPGA (Field-Programmable Gate Array), and ASIC
`
`(application specific integrated circuit). The components of an ASIC mining
`
`processor include the hash boards (each board has numerous chips that is doing the
`
`hashing), a controller (to communicate with the network and optimize the mining
`
`processors chip frequency and fans for colling), and a power supply (typically
`
`converts AC input power to DC power for the ASIC).” EX1001, 17:9-21. A
`
`person of ordinary skill in the art, therefore, would understand that a mining
`
`processor is “a processor with blockchain mining circuitry.”
`
`40. Second, Petitioner primarily relies on disclosure pertaining to a
`
`“network of nodes” to reach its conclusion regarding the terms “blockchain mining
`
`devices” and “mining processor.” Petitioner, however, appears to confuse the
`
`existence of nodes within a network of nodes that “maintain … records” with
`
`mining processors that include “circuitry for mining blockchain blocks.” For
`
`example, while the nodes are described as “stor[ing] a copy of the global ledger”
`
`within the blockchain database (EX1001, 14:22-43), the ’372 patent specification
`
`describes the mining processor as providing the “require[d] computational effort”
`
`measured by the “hashrate” (EX1001, 13:49-58). As the specification makes plain,
`
`a simple node may be “desktop computers, laptop computers, tablet computers,
`
`cellular telephones, servers, or other suitable devices” used for storing already
`
`
`
`21
`
`PGR2023-00039 - Upstream Data
`Ex. 2001 - Page 21
`
`PGR2023-00052 - Upstream Data
`Ex. 2103 - Page 21
`
`
`
`computed blocks within a blockchain. EX1001, 14:30-33. But, the “[m]ining
`
`circuitry 130, for example integrated circuit chip, may be used to perform data
`
`mining operations, for example verifying cryptocurrency transactions.” EX1001,
`
`14:57-63; see also 17:9-21.
`
`41. Accordingly, a node that simply stores a copy or partial copy of the
`
`blockchain database may or may not have a mining processor. The teaching of the
`
`specification is consistent with the language of the independent claims of the ’372
`
`patent that describe “blockchain mining devices” as “each hav[ing] a mining
`
`processor” and a “connection to a network interface.” EX1001, claims 1 and 24.
`
`Because the claim language itself informs a person of ordinary skill as to the
`
`meaning of the “blockchain mining devices,” in my opinion no construction of that
`
`term is necessary.
`
`42. Finally, Petitioner offers no support for its proposal to attach the
`
`negative limitation “without regard to pr
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
