`571-272-7822
`
`Paper 9
`
`Entered: March 29, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CRUSOE ENERGY SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`UPSTREAM DATA INC.,
`Patent Owner.
`____________
`
`PGR2023-00052
`Patent 11,574,372 B2
`____________
`
`
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Crusoe Energy Systems, LLC (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting post-grant review of claims 1–41 (“the challenged
`claims”) of U.S. Patent No. 11,574,372 B2 (Ex. 1001, “the ’372 patent”).
`Upstream Data Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”).
`We have authority to determine whether to institute a post-grant
`review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”). Section 324(a) provides that a post-
`grant review may not be instituted “unless . . . the information presented in
`the petition . . . , if such information is not rebutted, would demonstrate that
`it is more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.” Upon considering the Petition, Preliminary
`Response, and the cited evidence, we conclude that Petitioner has not
`satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than
`not that claim 1 is unpatentable.
`
`BACKGROUND
`I.
` Real Parties-in-Interest
`Petitioner identifies that Crusoe Energy Systems, LLC is the real
`party-in-interest. Pet. 53. Patent Owner indicates Upstream Data Inc. is the
`patent owner and real party-in-interest in this proceeding. Paper 5, 2.
` Related Proceedings
`The parties state that the ’372 patent is at issue in PGR2023-00039,
`filed July 20, 2023 (“the ’039 PGR”) and Upstream Data Inc. v. Crusoe
`
`2
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo.) (filed May 18,
`2023). Pet. 1–2, 53; Paper 5, 2.
` The ’372 Patent
`The ’372 patent is titled “Blockchain Mine at Oil or Gas Facility.”
`Ex. 1001, code (54). Figure 1, reproduced below, is a schematic of a system
`for power a blockchain mine at a remote oil well, using a generator.
`
`
`
`Figure 1 illustrates blockchain mining device 12, oil well 14, and
`generator 28. Id. at 8:35–40.
`According to the ’372 patent, “[a]t remote oil and gas facilities, excess
`natural gas is often wasted, for example vented to atmosphere or burned via
`flaring.” Ex. 1001 at 1:11–13. The ’372 patent identifies that this is because
`“[i]n many locations it may not be economically feasible to build the
`infrastructure required to take the produced gas, or resultant electricity
`generated by combustion of the gas, to market.” Id. at 7:49–52. The ’372
`patent discloses that the “cheaper the electricity the more reward the miner
`
`3
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`will receive relative to competition.” Id. at 13:20–21. The ’372 patent
`further discloses that reliance on “low-cost hydroelectric power” has led to a
`“centralization of blockchain miners in specific countries with abundant
`hydroelectric power.” Id. at 14:4–11. This, according to the ’372 patent, is
`counter to the idea of decentralization and distribution inherent in the
`blockchain model, so the ’372 patent identifies a “need to further
`decentralize BITCOINTM and other blockchain mining through a more
`decentralized source of low-cost power.” Id. at 14:13–20. To this end, the
`’372 patent describes positioning a generator and blockchain mining device
`“at a suitable location relative to the hydrocarbon well, storage site, or
`processing facility,” such as located adjacent to a remote oil well. Id. at
`9:14–19.
`
` Illustrative Claim
`The ’372 patent includes 41 claims, and Petitioner challenges
`claims 1–41. Of the challenged claims, claims 1 and 24 are independent.
`Claim 1 is illustrative and reads as follows1:
`[1pre] A system comprising:
`[1a] a source of combustible gas produced from a facility
`selected from a group consisting of a hydrocarbon
`production, storage, or processing facility;
`[1b] a generator connected to the source of combustible gas to
`receive a continuous flow of combustible gas to power the
`generator; and
`[1c] blockchain mining devices connected to the generator; in
`which:
`
`
`1 We utilize Petitioner’s annotations. Pet. v.
`4
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`[1c_i] the blockchain mining devices each have a mining
`processor and are connected to a network interface;
`[1c_ii] 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;
`[1c_iii] 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;
`[1c_iv] the network is a peer-to-peer network;
`[1c_v] the blockchain database is a distributed database
`stored on plural nodes in the peer-to-peer network;
`and
`[1c_vi]
`the blockchain database stores
`information for a digital currency.
`Ex. 1001, 19:52–20:7.
` Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–41 of the ’372 patent are unpatentable
`on the following grounds (Pet. 3–4, 10–46):
`Claim(s) Challenged
`35 U.S.C. §
`1–41
`112(b)2
`
`Reference(s)/Basis
`Indefiniteness
`
`transactional
`
`1–41
`
`112(a)
`
`Written Description
`
`10–16, 23, and 41
`
`112(f)/112(b) 112(f) Indefiniteness
`
`
`
`
`2 The Leahy-Smith America lnvents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
`on March 16, 2013, before the filing of the applications to which the ’372
`patent claims priority. Therefore, we apply the AIA versions of Section 112.
`5
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Petitioner also relies on the declaration of Mr. Vernon Kasdorf
`(Ex. 1024) to support its arguments.
`
`ELIGIBILITY FOR POST-GRANT REVIEW
`II.
`As a threshold matter, we must determine whether the ’372 patent is
`eligible for post-grant review. The post-grant review provisions in section
`6(d) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (September 16, 2011) (“AIA”) apply only to patents that “contain[] or
`contained at any time . . . a claim to a claimed invention that has an effective
`filing date . . . that is on or after [March 16, 2013].” AIA §§ 3(n)(1), 6(d),
`6(f)(2)(A), 125 Stat. 284, 293, 305–312 (2011).
`Each petitioner for post-grant review must certify that the challenged
`patent is available for post-grant review. 37 C.F.R. § 42.204(a). In addition,
`“[a] petition for a post-grant review may only be filed not later than the date
`that is 9 months after the date of the grant of the patent or of the issuance of
`a reissue patent (as the case may be).” 35 U.S.C. § 321(c). Petitioner has
`the burden to demonstrate eligibility for post-grant review. See Mylan
`Pharms. Inc. v. Yeda Res. & Dev. Co., PGR2016-00010, Paper 9 at 10
`(PTAB Aug. 15, 2016).
`Petitioner certifies under 37 C.F.R. § 42.204(a) that the ’372 patent is
`available for post-grant review. Pet. 3. Petitioner also contends that it “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.” Id. (citing 37 C.F.R. §§ 42.201–202). Patent
`Owner does not address post-grant-review eligibility of the ’372 patent in its
`Preliminary Response.
`
`6
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`On this record, we determine that the ’372 patent is eligible for post-
`grant review. The ’372 patent’s earliest effective filing date is February 8,
`2017 (the filing date of a provisional application to which the ’372 patent
`claims priority), which is after March 16, 2013. Ex. 1001, code (60). In
`addition, the Petition’s filing date, September 26, 2023 (Paper 3, 1), is not
`later than the date that is nine months after the ’372 patent’s grant date of
`February 7, 2023. Ex. 1001, code (45). Finally, we accept Petitioner’s
`certification that it had not filed a civil action challenging the validity of a
`claim of the ’372 patent before the Petition was filed.
`
`
`III. ANALYSIS
`
` Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including: “(1) the educational level of the inventor; (2) type of
`problems encountered in the art; (3) prior art solutions to those problems; (4)
`rapidity with which innovations are made; (5) sophistication of the
`technology; and (6) educational level of active workers in the field.” Best
`Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`
`7
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`omitted). “The patent’s purpose can also be informative.” Id. (citation
`omitted).
`Petitioner asserts that one of ordinary skill in the art (“POSITA”)
`would have had “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.” Pet. 4 (citing
`Ex. 1024 ¶ 15). Petitioner adds that “[a]lternatively, a person having 3–5
`years of experience in the Blockchain mining industry would also qualify as
`a POSITA” and “[a]dditional education could substitute for professional
`experience, or vice versa.” Id. (citing Ex. 1024 ¶ 15).
`Patent Owner disagrees with Petitioner’s articulation of the level of
`ordinary skill in the art, but does not offer a definition of its own. Prelim.
`Resp. 5. According to Patent Owner, “[t]his Petition and related declaration
`propose two alternative levels of ordinary skill in the art, where the second
`alternative does not require any formal education or any experience in the
`field of oil or gas production.” Id. While Patent Owner disagrees with
`Petitioner’s characterization of the level of ordinary skill in the art, Patent
`Owner does not explain how a different level of skill is likely to alter
`Petitioner’s analysis. Instead, Patent Owner contends that it “applied
`Petitioner’s articulation and confirmed the analysis detailed below would not
`change based on disagreements over the level of ordinary skill in the art.”
`Id. (citing Ex. 2101 ¶¶ 16–17).
`
`
`8
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`To the extent necessary, and for purposes of this Decision, we accept
`Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co.
`v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of
`problems encountered in the art, prior art solutions to those problems, and
`the sophistication of the technology as factors that may be considered in
`determining the level of ordinary skill in the art). The prior art itself may be
`sufficient to demonstrate the level of skill in the art at the time of the
`invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings
`regarding ordinary skill level are not required “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
`
` Claim Construction
`In a post-grant review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.200(b). “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention” and “after reading the entire patent.” Phillips v. AWH Corp., 415
`F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc). In addition to the
`specification and prosecution history, we also consider use of the terms in
`other claims and extrinsic evidence including expert and inventor testimony,
`9
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`dictionaries, and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Id. at 1312–17. Usually, the
`specification is dispositive, and it is the single best guide to the meaning of a
`disputed term. Id. at 1315.
`In conjunction with its indefiniteness assertions, Petitioner provides
`constructions for the terms “blockchain mining devices,” “mining
`processor,” and “adapted to mine transactions.” Pet. 11–26. Petitioner also
`contends that several terms are means-plus-function limitations, and as such,
`subject to 35 U.S.C. § 112(f). Pet. 29–46.
`Patent Owner disputes each of Petitioner’s constructions while
`addressing Petitioner’s indefinite assertions (Prelim. Resp. 9–38), but does
`not proffer any of its own constructions in this proceeding (id. at 5).3 Patent
`Owner also disagrees with Petitioner’s assertions regarding 35 U.S.C.
`§ 112(f). Id. at 42–61.
`
`
`3 Patent Owner directs our attention to where it “addressed claim
`construction of terms proposed for construction by Petitioner” in the ’039
`PGR. Prelim. Resp. 5 (citing PGR2023-00039, Paper 6 at 4–9). In the ’039
`PGR, Patent Owner took the position that no construction is necessary for
`the term “blockchain mining devices” “[b]ecause the claim language itself
`informs a person of ordinary skill as to [its] meaning.” PGR2023-00039,
`Paper 6 at 6. And, with respect to “mining processor,” Patent Owner stated
`that one of ordinary skill in the art “would understand that at a minimum a
`mining processor is ‘a processor with blockchain mining circuitry.’” Id. at 5
`(citing PGR2023-00039, Ex. 2001 ¶ 39). Patent Owner did not provide any
`express claim construction arguments regarding the term “adapted to mine
`transactions” in the ’039 PGR. To the extent that Patent Owner incorporates
`these arguments from PGR2023-00039, we do not consider them. See 37
`C.F.R. § 42.6(3).
`
`10
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Because the meanings of the claim terms “blockchain mining
`devices,” “mining processor,” and “adapted to mine transactions” are
`inextricably linked with Petitioner’s indefiniteness grounds, we will address
`the meaning of those terms in the context of the parties’ arguments to the
`extent necessary to resolve the controversy as set forth below in
`Section III.C. Similarly, we will address the parties’ arguments regarding
`the disputed means-plus-function limitations in our discussion of 35 U.S.C.
`§ 112(f) as set forth below in Section III.E. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(noting that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
` Asserted Indefiniteness (Ground 1: Claims 1–41)
`Petitioner asserts that the terms “blockchain mining device,” “mining
`processor,” and “adapted to mine transactions” render claims 1–41 of the
`’372 patent indefinite. Pet. 10–26 (citing Ex. 1024). Patent Owner disputes
`Petitioner’s assertions. Prelim. Resp. 5–38 (citing Ex. 2101). We address
`arguments for each term below.
`
`Applicable Law
`1.
`Patent claims must “particularly point[] out and distinctly claim[] the
`subject matter which the inventor or a joint inventor regards as the
`invention.” 35 U.S.C. § 112(b). In post-grant reviews, we apply the same
`indefiniteness standard as used in federal courts and the U.S. International
`Trade Commission under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
`898 (2014), and its progeny. See USPTO Memorandum on the Approach to
`11
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan.
`6, 2021).4
`Under Nautilus, “a patent is invalid for indefiniteness if its claims,
`read in light of the specification delineating the patent, and the prosecution
`history, fail to inform, with reasonable certainty, those skilled in the art
`about the scope of the invention.” Nautilus, 572 U.S. at 901 (emphasis
`added). “[A] patent must be precise enough to afford clear notice of what is
`claimed, thereby apprising the public of what is still open to them,” but the
`present standard recognizes that “absolute precision is unattainable.” Id. at
`909–10 (internal quotation marks and brackets omitted).
`
`Analysis
`2.
`a. “blockchain mining devices”
`Petitioner asserts that claims 1 and 24 are indefinite because “multiple
`different interpretations of the term ‘blockchain mining devices’ are
`possible.” Pet. 12. According to Petitioner, the term “blockchain mining
`devices” could be construed as
`either (1) a plurality of mining servers (e.g., spondooliestech
`SP35 servers) housed together (e.g., in a portable shipping
`container), or (2) a plurality of mobile data centers (i.e., a
`plurality of shipping containers, each configured as a mobile data
`center such as CryptoKube’s mobile Bitcoin data center) each
`containing a plurality of mining servers housed together.
`Id. (citing Ex. 1024 ¶ 49; Ex. 1006, 2). Petitioner argues that when the term
`“blockchain mining devices” is read together with dependent claims 16 and
`
`4 Available at https://www.uspto.gov/sites/default/files/documents/
`IndefinitenessMemo.pdf.
`
`12
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`17, the term could be construed to mean “a plurality of mining servers
`housed together.” Id. at 14. For example, Petitioner notes that “claim 17
`requires that ‘the blockchain mining devices are housed in a portable
`enclosure that is structured to one or more [to] form a skid or be mounted on
`a trailer.” Id. (citing Ex. 1001, 21:22–24) (emphasis original). Similarly,
`Petitioner points out that “dependent claim 16 requires [that] ‘a controller is
`connected to operate a cooling system to maintain the blockchain mining
`devices within a predetermined operating range of temperature.’” Id. at 15
`(citing Ex. 1001, 21:18–21) (emphasis original). From this, Petitioner
`concludes that one of ordinary skill in the art “would have understood that
`for the plurality of blockchain mining devices to share the same cooling
`system, the term ‘blockchain mining devices’ should mean the plurality of
`mining servers are housed together, for example, in a modular shipping
`container.” Id. (citing Ex. 1024 ¶ 51).
`Alternatively, Petitioner argues that the Specification and prosecution
`history suggest that the term “blockchain mining devices” could be
`construed to mean “a plurality of mobile data centers, each containing a
`plurality of mining servers.” Pet. 16 (citing Ex. 1024 ¶ 53). Petitioner
`argues that this construction is consistent with Figure 4’s illustration of a
`blockchain mining device. Petitioner provides the following copy of Figure
`4 of the ’372 patent, annotated to identify, among several items, mining
`device 12, mining processors 92, and network equipment 88.
`
`13
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`
`Figure 4, annotated, “is a schematic depicting a blockchain mining device
`with a plurality of mining processors and associated control and network
`equipment housed within a portable enclosure.” Ex. 1001, 6:1–4.
`Pet. 17 (citing Ex. 1001, Fig. 4). Petitioner points out that the Specification
`discloses “that each ‘blockchain mining device 12 may have a network
`interface, such as network equipment 88, and one or a plurality of mining
`processors 92 (92A–92E for example).’” Pet. 16 (citing Ex. 1001,
`15:21–25) (emphasis in original). Petitioner asserts that the Specification’s
`disclosure “that ‘[e]ach mining processor 92 may be positioned on racks or
`shelving units” suggests that “mining processor 92” does not refer to
`“blockchain mining device 12”; but rather, “to the mining server (e.g.,
`spondooliestech SP35 server).” Id. at 16–17 (citing Ex. 1001, 17:21–22; Ex.
`1024 ¶ 54). In addition, Petitioner contends that the Specification “teaches
`
`
`14
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`that the term ‘blockchain mining device’ is interchangeable with the term
`‘data center.’” Id. at 17; see also Ex. 1001, 4:55–56 (“The blockchain
`mining device may be replaced by a suitable mining device or data center.”).
`Petitioner also contends that during prosecution, Applicant “relied on
`the requirement of multiple ‘blockchain mining devices’ to distinguish over
`prior art containing a single data center, thereby indicating that the term
`requires a plurality of data centers.” Id. at 18 (citing Ex. 1002, 210, 213,
`218, 223). Thus, Petitioner concludes that one of ordinary skill in the art
`“would have understood that the claim limitation ‘blockchain mining
`devices’ requires a plurality of mobile data centers, each of which contains
`multiple mining servers housed together.” Id. at 16–17 (citing Ex. 1024
`¶ 55).
`In light of the above, Petitioner argues that one of ordinary skill in the
`art “would have had no guidance on what constitutes a plurality of
`‘blockchain mining devices.’” Pet. 19 (citing Ex. 1024 ¶ 57). According to
`Petitioner, “the [S]pecification does not provide sufficient guidance about
`the meaning of the claimed system comprising multiple blockchain mining
`devices to give notice to the public of the boundaries between infringing and
`innocent activity.” Id. at 21 (citing Nautilus, 572 U.S. at 909). Petitioner,
`thus, concludes that the Challenged Claims are indefinite under 35 U.S.C.
`§ 112(b) because one of ordinary skill in the art “would not understand what
`is claimed by ‘blockchain mining devices’ in each of independent claims 1
`and 24, and, through their dependence thereon, each of dependent claims
`2–23 and 25–41.” Pet. 21 (citing Ex. 1024 ¶ 58).
`
`
`15
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`In response, Patent Owner argues that the claims are not indefinite
`because, when read in light of the Specification, claims 1 and 24 inform one
`of ordinary skill in the art about the scope of the invention with reasonable
`certainty. Prelim. Resp. 10 (citing Nautilus, 572 U.S. at 910). Contrary to
`Petitioner’s assertions, Patent Owner contends
`there is no lack of clarity in the claims or the [S]pecification. The
`plain claim language of the independent claims informs [one of
`ordinary skill in the art] that a blockchain mining device
`comprises a mining processor and a specialized network
`interface that communicates with a blockchain database. [Ex.
`1001, claim 1; Ex. 2101 ¶ 34]. Thus, to the extent Petitioner’s
`term “mining server” refers to the recited “mining processor,”
`the claim language does require each blockchain mining device
`to have a mining processor. [Ex. 1001, claim 1].
`Id. at 11.
`Instead, based on “the clarity provided by the intrinsic record,” Patent
`Owner takes the position that one of ordinary skill in the art “would not
`consider either of the two supposed ‘different interpretations’ proposed by
`Petitioner.” Prelim. Resp. 12–13 (citing Ex. 2101 ¶ 36). Patent Owner
`contends that
`Petitioner’s “alternative interpretations” of its own construction
`are divorced from the intrinsic record discussed above.
`Petitioner’s first “alternative” is “a plurality of mining servers
`(e.g., spondooliestech SP35 servers) housed together (e.g., in a
`portable shipping container).” [Pet. 12]. Notably, this
`“interpretation” or “construction” recites extrinsic terminology
`such as “mining servers” and “spondooliestech SP35 servers.”
`Id. at 14.
`With respect to Petitioner’s first construction, Patent Owner asserts
`that, in addition to being based on extrinsic evidence, Petitioner’s “first
`16
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`construction” incorporates language from dependent claim 16 and “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.” Id. at 15 (citing Ex. 1001,
`19:59–65; Ex. 2101 ¶ 41). Patent Owner argues that Petitioner’s “first
`construction” is at odds with “Nautilus’s holding that ‘a patent’s claims [are]
`viewed in light of the specification and prosecution history.” Id. (citing
`Nautilus, 572 U.S. at 910). Patent Owner explains that “the claim language
`and the [S]pecification teach that a blockchain mining device comprises one
`or more mining processors as well as other components such as a specialized
`network interface, controller, cooling system and others.” Prelim. Resp. 19
`(citing Ex. 1001, 16:32–39, 17:23–29, claims 1, 16; Ex. 2101 ¶ 49). Thus,
`Patent Owner takes the position that “when read in view of the claim
`language and [S]pecification, there is no ambiguity that it is blockchain
`mining devices and not something else that’s located adjacent to the
`facility.” Id. at 21 (citing Ex. 2101 ¶ 51).
`Patent Owner argues next that Petitioner’s “second construction” is
`flawed because
`it is contrary to the independent claim language which (1) does
`not include a “mobile” limitation; (2) does not recite “data
`centers;” and (3) does not require that each blockchain mobile
`device comprise a plurality of mining processors (assuming that
`Petitioner’s “mining server” is equivalent to claimed mining
`processors).
`Prelim. Resp. 21 (citing Ex. 1001, claim 1; Ex. 2101 ¶ 52). According to
`Patent Owner, one of ordinary skill in the art would not recognize
`blockchain mining devices, to be equivalent to, or interchangeable with,
`17
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`datacenters in light of the ’372 patent’s disclosure. Id. at 22 (citing Ex. 2101
`¶ 54); see also id. at 21–22 (citing Ex. 1001, 13:29–33, 13:44–48) (arguing
`that it was known in the art that blockchain mining is “intentionally designed
`to be resource-intensive and difficult so that the number of blocks found
`each day by miners remains steady”). And, contrary to Petitioner’s assertion
`regarding the prosecution history,
`“the [A]pplicant did not rely on the plurality of blockchain
`mining devices to distinguish the prior art. [Ex. 1002], 222–223.
`Rather, as explained above, the [A]pplicant argued that [one of
`ordinary skill in the art] would not have combined Belady’s
`generic data center with a bitcoin mining system because of the
`known energy-intensive nature of bitcoin mining.”
`Id. at 24. Thus, Patent Owner concludes that “[t]he intrinsic record does not
`support Petitioner’s ‘second construction.’” Id.
`To satisfy the definiteness requirement of § 112(b), a patent’s claims
`must, when “viewed in light of the specification and prosecution history,
`inform those skilled in the art about the scope of the invention with
`reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that
`the Petition shows that it is more likely than not that Petitioner would prevail
`in demonstrating that the term “blockchain mining devices,” as recited by
`independent claims 1 and 24, is indefinite.
`As an initial matter, we agree with Patent Owner that “Petitioner’s
`indefiniteness theory is flawed because its ‘alternative interpretations’ are of
`its incorrect claim construction rather than the claim language in view of the
`specification as required by Nautilus.” Prelim. Resp. 13. We find the
`Specification informs, with reasonable certainty, those skilled in the art
`about the meaning of the term “blockchain mining devices.” The
`18
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Specification informs us that “each blockchain mining device 12 may be
`composed of suitable components. The blockchain mining device 12 may
`have a network interface, such as network equipment 88, and one or a
`plurality of mining processors 92 (92A-92E for example).” Ex. 1001,
`15:21–25. And, claim 1 recites that the “blockchain mining devices [are]
`connected to the generator” and “each have a mining processor and are
`connected to a network interface.” Id. at 19:59–62. Thus, reading the term
`“blockchain mining devices” in light of the language of the claim and the
`Specification, an ordinarily skilled artisan would have understood
`“blockchain mining devices” to mean a device composed of, for example, a
`network interface and one or more processors. Id. at 15:21–25, 19:59–62.
`Petitioner argues that dependent claims 16 and 17 require that the
`term “blockchain mining devices” be construed to mean “a plurality of
`mining servers housed together” (Pet. 14–15), but we agree with Patent
`Owner that Petitioner’s “first construction” is flawed, at least because it
`analyzes claims 16 and 17 in isolation from the language of claim 1 and the
`Specification. In this regard, claim 16 recites that “a controller is connected
`to operate a cooling system to maintain the blockchain mining devices” and
`claim 17 recites that “the blockchain mining devices are housed in a portable
`enclosure.” Ex. 1001, 21:18–24. Patent Owner identifies that
`the [S]pecification 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., [Ex. 1001], 15:21–25, 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.” The
`19
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`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.” [Id.
`at] 17:3–6.
`Prelim. Resp. 16. In view of the Specification, we agree with Patent Owner
`that one of ordinary skill in the art would have recognized that “each” of the
`“blockchain mining devices” may “further comprise a temperature-
`regulating controller and cooling system” (id. (citing Ex. 2101 ¶ 43)) and
`“may further be housed in a ‘portable enclosure 98’” (id. at 18 (citing
`Ex. 1001, 15:21–25, 15:41–47; Ex. 2101 ¶ 47)). We also agree with Patent
`Owner that one of ordinary skill in the art “would not conclude that the
`blockchain mining devices recited in those claims are mere ‘mining servers’
`housed in the same enclosure as alleged by Petitioner.” Id. (citing Ex. 2101
`¶ 48). Thus, we find that Petitioner’s first proposed interpretation of
`“blockchain mining devices” views the language of claims 16 and 17 in
`isolation without considering the language of claim 1 and the Specification.
`See also Pet. 12–15 (arguing with support only from claim language and
`declarant testimony); cf. Ex. 1024 ¶¶ 49–52 (opining only on claim
`language).
`Petitioner argues alternatively that the Specification and the
`prosecution history require the term “blockchain mining devices” be
`construed to mean “multiple data centers, each housing a plurality of mining
`servers” (Pet. 16–19), but we agree with Patent Owner that Petitioner’s
`“second construction” is also flawed, at least because it:
`is contrary to the independent claim language which (1) does not
`include a “mobile” limitation; (2) does not recite “data centers;”
`and (3) does not require that each blockchain mobile device
`20
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`comprise a plurality of mining processors (assuming that
`Petitioner’s “mining server” is equivalent to claimed mining
`processors).
`Prelim. Resp. 21 (citing Ex. 2101 ¶ 52). Instead, as discussed above, we
`find the intrinsic record makes clear that an ordinarily skilled artisan would
`have understood “blockchain mining devices” to mean a device composed
`of, for example, a network interface and one