Trials@uspto. gov
`571-272-7822
`
`Paper 14
`Entered: January 22, 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.
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY,and
`MATTHEWS. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`DECISION
`Granting Institution ofPost-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`Paper 14
`Entered: January 22, 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.
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY,and
`MATTHEWS. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`DECISION
`Granting Institution ofPost-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`Crusoe Energy Systems, LLC (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting post-grant review of claims 1—4, 7-12, 15—30, 34-37, and
`
`40 (“the challenged claims”) ofU.S. Patent No. 11,574,372 B2 (Ex. 1001,
`
`“the °372 patent”). Upstream DataInc. (“Patent Owner’) filed a Preliminary
`
`Response (Paper6, “Prelim. Resp.”). With our authorization (Ex. 1101),
`
`Petitionerfiled a Preliminary Reply to Patent Owner’s Prelimimary Response
`
`(Paper 12, “Prelim. Reply’’) to address § 325(d) issues raised in the
`
`Preliminary Response. Patent Ownerfiled a Preliminary Sur-reply thereto
`
`(Paper 13, “Prelim. Sur-reply”).
`
`Wehave authority to determine whetherto institute a post-grant
`
`review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Boardinstitutes
`
`the trial on behalf ofthe Director.”). Section 324(a) providesthat a post-
`
`grant review may notbeinstituted “unless. .
`
`. the information presented in
`
`the petition... , if such informationis not rebutted, would demonstrate that
`
`it is more likely than not that at least 1 ofthe claims challenged in the
`
`petition is unpatentable.’’ Upon consideration ofthe evidence and arguments
`
`in the Petition (including its supporting testimonial evidence), the evidence
`
`and argumentsin the Preliminary Response (including its supporting
`
`testimonial evidence), the Preliminary Reply, andthe Preliminary Sur-reply,
`
`we determine that the information presented showsthatit is more likely than
`
`not that Petitioner would prevail with respect to at least one ofthe
`
`challenged claims. Accordingly, we institute post-grant review onall
`
`challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a)
`
`(“Wheninstituting post-grant review, the Board will authorizethe review to
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`proceedonall of the challenged claims andonall grounds ofunpatentability
`
`2
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`PGR2023-00039
`Patent 11,574,372 B2
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`asserted for each claim.”); see also SAS Inst. Inc. v. lancu, 138 S. Ct. 1348,
`
`1359-60 (2018).
`
`IL.
`
`BACKGROUND
`
`A. Real Parties-in-Interest
`
`Petitioner identifies that Crusoe Energy Systems, LLC 1s thereal
`
`party-in-interest. Pet. 124. Patent Ownerindicates Upstream Data Inc. is
`
`the patent ownerandreal party-in-interest in this proceeding. Paper4, 2.
`
`B. RelatedProceedings
`
`The parties state that the ’372 patentis at issue in Upstream Data Inc.
`
`v. Crusoe Energy Systems LLC, Case No. 1:23-cv-01252 (D. Colo.) (filed
`
`May18, 2023). Pet. 123; Paper4, 2.
`
`C. The ’372 Patent
`
`The *372 patentis titled “Blockchain Mine at Oil or Gas Facility.”
`
`Ex. 1001, code (54). Figure 1, reproduced below,is a schematic ofa system
`
`for power a blockchain mine at a remote oil well, usinga generator.
`
`
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`PGR2023-00039
`
`Patent 11,574,372 B2
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`Figure 1 illustrates blockchain mining device 12, oil well 14, and
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`generator 28.
`
`/d. at 8:35—40.
`
`Accordingto the *372 patent, “[a]t remote oil and gasfacilities, excess
`
`natural gas is often wasted, for example ventedto atmosphere or burned via
`
`flaring.” Ex. 1001 at 1:11—-13. The ’372 patent identifies that this is because
`
`“Ti]n many locations it may not be economically feasible to build the
`
`infrastructure required to take the producedgas, or resultant electricity
`
`generated by combustion ofthe gas, to market.” /d. at 7:49-52. The °372
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`patent discloses that the “cheaperthe electricity the more reward the miner
`
`will receive relative to competition.” /d. at 13:20-21. The ’372 patent
`
`further discloses that reliance on “low-cost hydroelectric power”has led toa
`
`“centralization ofblockchain miners in specific countries with abundant
`
`hydroelectric power.” /d. at 14:4-11. This, according to the ’372 patent, is
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`counter to the idea of decentralization and distribution inherent in the
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`4
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`PGR2023-00039
`Patent 11,574,372 B2
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`blockchain model, so the ’372 patent identifies a “need to further
`
`decentralize BITCOINand other blockchain mining through a more
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`decentralized source of low-cost power.” /d. 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, storagesite, or
`
`processing facility,” such as located adjacent to aremote oil well.
`
`/d. at
`
`9:14-19.
`
`D. Illustrated Claims
`
`The *372 patent includes 41 claims, and Petitioner challenges
`
`claims 1-4, 7-12, 15-30, 34-37, and40. Ofthechallenged claims, claims 1
`
`and 24 are independent. Claim1is illustrative and reads as follows!:
`
`[1pre] A system comprising:
`
`[la] a source of combustible gas produced from a facility
`selected from a group consisting of a hydrocarbon
`production,storage, or processingfacility;
`[1b] a generator connected to the source of combustible gas to
`receive a continuousflow of combustible gas to power the
`generator; and
`[1c] blockchain mining devices connected to the generator; in
`which:
`[1ci] the blockchain mining devices each have a mining
`processor and are connected to a networkinterface;
`[1cii] the network interface is connected to receive and
`transmit data through the intemet to a network that
`stores or has accessto a blockchain database;
`[1c_111] the mining processors are connected to the network
`interface and adapted to minetransactions associated
`with the blockchain database and to communicate
`with the blockchain database;
`
`' Weutilize Petitioner’s annotations. Pet.i.
`5
`
`
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`PGR2023-00039
`Patent 11,574,372 B2
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`[1c_iv] the networkis a peer-to-peer network;
`[1c_v] the blockchain database is a distributed database
`stored on plural nodesin the peer-to-peer network;
`and
`[lcvi] the blockchain database stores transactional
`informationfor a digital currency.
`
`Ex. 1001, 19:52—20:7.
`
`
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`PGR2023-00039
`Patent 11,574,372 B2
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`E.. Asserted Grounds ofUnpatentability
`
`Petitioner asserts that claims 1-4, 7-12, 15—30, 34-37, and 40 ofthe
`
`°372 patent are unpatentable on the following grounds(Pet. 37, 12-119):
`
` Szmigielski,° and Kheterpal’
`
`34-37, 40
`1-4, 7-12, 15-30
`34-37, 40
`
`Dickerson, CryptoKube, Belady-
`989,* Szmigielski, and Kheterpal
`Dickerson, CryptoKube, Belady-
`989, Boot,’ Szmigielski, and
`Kheterpal
`
`* Petitioner omitslisting its patent-eligibility challenge to claims 1-4, 7-12,
`15-30, 34-37, and 40 in its summary of grounds presented. See Pet. 3.
`However, Petitioner provides a detailed analysis ofthis challenge in the
`Petition. See Pet. 112-119. We understandthis to be typographicalerror.
`> The Leahy-Smith AmericaInvents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011)AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’372 patent havean effectivefiling date (Feb. 8, 2017) after the
`effective date ofthe applicable AIA amendments, werefer to the AIA
`version of 35 U.S.C. § 103 in this Decision.
`4 Dickerson, WO 2015/123257 A1, pub. Aug. 20, 2015 (Ex. 1005).
`> “Taunch your own Bitcoin Data Center,”(last retrieved July 17, 2023 at
`https://web.archive.org/web/20 160305044934/http:/Awww. cryptokube.com:
`80/home/45 86398583) (Ex. 1006, “CryptoKube”). Petitioner also references
`“CryptoKube Bitcoin Mining Data Center Tour” video,(last retrieved
`November28, 2023 at
`https://web.archive.org/web/20 1505 11223850/https://www.youtube.com/
`watch?v—SbDtgIcVb3s) (Ex. 1007, “CryptoKube video”; transcription in Ex.
`1008).
`° Szmigielski, Albert, “Bitcoin Essentials,” Packt Publishing Ltd.,
`Birmingham, UK, ISBN 978-1-78528-197-6, February 2016 (Ex. 1009).
`7 Kheterpalet al., US 2016/0125040 A1, pub. May 5, 2016 (Ex. 1010).
`® Belady,et al., WO 2015/072989 A1, pub. May 21, 2015 (Ex. 1011).
`? Boot, et al., US 9,394,770 B2,iss. July 19, 2016 (Ex. 1012).
`7
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`PGR2023-00039
`Patent 11,574,372 B2
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`1-4, 8, 16-22, 24-30,
`34
`
`MAGS, !° Polivka,!! !?
`Szmigielski, and Kheterpal
`
`
`3437, 40cpr—ig—
`
`34—37 40.
`
`Petitioner also relies on the declarations ofMichael Nikolaou, Ph.D.
`
`(Ex. 1003) and Vernon Kasdorf (Ex. 1004) to support its arguments.
`
`IW.
`
`ELIGIBILITY FOR POST-GRANT REVIEW
`
`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) ofthe 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 aclaimed invention that hasan effective
`
`filing date... thatis on or after [March 16, 2013].” AIA §§ 3(n)(1), 6(d),
`
`6(f)(2)(A), 125 Stat. 284, 293, 305-312 (2011).
`
`'0 “Gas Conversion Systems Reclaim Fuel for Industry,” Spinoff2015,
`National Aeronautics and Space Administration, Technology Transfer
`Program, pp. 104—107(last retrieved Nov. 28, 2023 at
`https://spinoff. nasa. gow/Spinoff2015/ee_3.html) (Ex. 1013).
`'l “Mining Container ~ 100kW byPolivka GmbH,” Bitcoin Forum,(last
`retrieved June 29, 2023 at
`https://web.archive.org/web/20 1505200154 16/https://bitcointalk.org/
`index. php?topic=948523.0;all) (Ex. 1015).
`' Petitioneralso cites to a video, “Polivka Mining Container Setupon
`Vimeo,” in Ex. 1019 (last retrievedin July 2023 at
`https://vimeo.com/119105477). Pet. iv, 79; Ex. 1020, 11 (refers to video as
`Exhibit 1017).
`
`8
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`
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`PGR2023-00039
`Patent 11,574,372 B2
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`Each petitioner for post-grant review must certify that the challenged
`
`patent is available for post-grantreview. 37 C.F.R. § 42.204(a). In addition,
`
`“[a] petition for a post-grant review mayonly befiled not later than the date
`
`thatis 9 monthsafter the date ofthe grant ofthe patent or ofthe issuance of
`
`a reissue patent (as the case may be).” 35 U.S.C. §321(c). Petitionerhas
`
`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 patentis
`
`available for post-grant review. Pet. 2. Petitioneralso contendsthatit “is
`
`not barred or estopped from requesting review,hasnot filed a civil action
`
`regarding the ‘372 patent, and this Petition is being filed within nine months
`
`of the ‘372 patent’s issuance.” /d. (citing 37 C.F.R. §§ 42.201—202). Patent
`
`Ownerdoesnot addresspost-grant-review eligibility ofthe °372 patent in its
`
`Preliminary Response.
`
`On this record, we determinethat the ’372 patentis eligible for post-
`
`grant review. The’372 patent’s earliest effective filing date is February 8,
`
`2017 (the filing date ofa 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, July 20, 2023 (Paper3, 1), 1s not later
`
`than the date that is nine monthsafter 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 ofa
`
`claim ofthe *372 patent before the Petition wasfiled.
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`
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`PGR2023-00039
`Patent 11,574,372 B2
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`I. DISCRETIONARY DENIAL-§ 325(D)
`
`1.
`
`Principles ofLaw
`
`Under§ 325(d), in determining whetherto institute an interpartes
`
`review,“the Director may take into account whether, and reject the petition
`
`or request because, the same or substantially the same priorart or arguments
`
`previously were presentedto the Office.” In evaluating whether the same or
`
`substantially the same prior art or arguments were previously presented to
`
`the Office, the Board has identified several non-exclusive factors for
`
`consideration. Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) (precedentialas to
`
`§ IILC.5, first paragraph) (“the Becton, Dickinson factors’). Those factors
`
`are as follows:
`
`(a) the similarities and material differences between the asserted
`art and the priorart involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`
`(d) the extent ofthe overlap between the arguments made during
`examination and the manner in whichPetitioner relies on the
`prior art or Patent Ownerdistinguishestheprior art;
`
`(e) whether Petitioner has pointed out sufficiently how the
`Examinererredin its evaluation ofthe asserted prior art; and
`
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration ofthe prior art or arguments.
`
`10
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`PGR2023-00039
`Patent 11,574,372 B2
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`Id. (footnote omitted); see a/so Patent Trial and Appeal Board Consolidated
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`Trial Practice Guide 62—63 (Nov.2019).'3
`
`Wefurther apply the following two-part framework in determining
`
`whetherto exercise its discretion under § 325(d), specifically:
`
`(1) whetherthe sameor substantially the sameart previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`
`AdvancedBionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`
`(“AdvancedBionics”). Becton, Dickinson factors(a), (b), and (d) relate to
`
`the first step, and Becton, Dickinson factors(c), (e), and (f) relate to the
`
`second step. /d. at 10.
`
`Weturn tothe parties’ contentions regarding § 325(d). For the
`
`reasons given below,weare not persuadedto discretionarily deny the
`
`Petition based on § 325(d).
`
`Advanced Bionics Part One: Whether the Prior Art and
`2.
`Arguments are the Same or Substantially the Same
`Beginningwith the first part ofthe AdvancedBionics framework, we
`
`consider whether Becton, Dickinson factors(a), (b), and (d) indicate that
`
`“the same or substantially the same art previously was presented to the
`
`Office”or that “the sameor substantially the same arguments previously
`
`'S Available at https:/Avww.uspto.gov/TrialPracticeGuideConsolidated.
`1]
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`PGR2023-00039
`Patent 11,574,372 B2
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`were presentedto the Office.” Previously presented art includes art made of
`
`record by the Exammer, and art provided to the Office by an applicant, such
`
`as on an Information Disclosure Statement (“IDS”), in the prosecution
`
`history ofthe challenged patent. Becton, Dickinson, Paper 8 at 7-8.
`
`Petitioner acknowledges that Kheterpal and Belady-989 were, in some
`
`manner, previously presented to the Office. See, e.g., Prelim. Reply 1
`
`(arguing that “none ofthe foregoing references (Dickerson, CryptoKube,
`
`MAGS, Polivka) were made ofrecord”). We need not determine whether
`
`the first part ofthe AdvancedBionics framework1s satisfied based on these
`
`disclosures, however,as the second part ofthe analysis, which we address
`
`below,1s dispositive.
`
`3.
`
`AdvancedBionics Part Two: Whether Petitioner has
`DemonstratedMaterial Error
`
`Under the second part ofthe AdvancedBionics framework, we
`
`consider “whetherthe petitioner has demonstrated that the Office erred in a
`
`manner material to the patentability of challenged claims.” Advanced
`
`Bionics, Paper 6 at 8. “An exampleofa material error may include
`
`misapprehending or overlooking specific teachings ofthe relevantprior art
`
`wherethose teachings impact patentability ofthe challenged claims.” /d. at
`
`8n.9.
`
`Petitioner argues that the Office erred in manner material to the
`
`patentability ofthe challengedclaims because the “the ’372 patent should
`
`not have been issuedinthefirst place.” Pet. 123; see also Prelim. Reply 5
`
`(“[T]he examiner mistakenly relied on PO’s erroneous argumentthat
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`12
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`PGR2023-00039
`Patent 11,574,372 B2
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`blockchain mining ‘cannot be compared’ with regular data center
`
`processing.”). According to Petitioner,
`
`[dJuring prosecution, the Office allowed the amendedclaims
`because (1) Applicant argued that blockchain mining 1s
`meaningfully different from traditional data-processing because
`it requires more energy; [EX1002, 222—223] and (2) Applicant
`argued that its “discovery amounts to a new usefor previously
`known individual components (a common precursor
`for
`patentability), and may provide numerousbenefits including the
`reduction of greenhouse gas emissions and capture of revenue
`where gas disposal is otherwise a capital loss (for example
`paragraphs 33, 34, 48, and 73).
`Pet. 123 (citing Ex. 1002, 223). On the current record, Petitioner contends
`
`Szmigielski establishes that “there is no fundamental difference between a
`
`traditional datacenter and a digital currency miner” and “usingflare gas to
`
`generate powerto reduce greenhouse gas emission was known to the public
`
`well before the priority date ofthe 372 patent.” /d.
`
`Patent Ownerdisagrees and arguesthat “Petitioner has not adequately
`
`identified any error by the Examiner.” Prelim. Resp. 36. Patent Owner
`
`arguesthat Petitioner’s contention that “there is no fundamental difference
`
`between a traditional data center and a digital currency miner”is incorrect
`
`becauseit ignores Szmigielski’s disclosure that the power to runacrypto
`
`mine operation must be both “inexpensive andreliable.” /d. (citing Ex.
`
`1009, 90). Consequently, Patent Ownerarguesthat Petitioner has not shown
`
`“error in Examiner’s reliance on the argumentthat blockchain mining cannot
`
`be compared with regular data centers.” Prelim. Sur-reply 5 (citing Prelim.
`
`Reply 5). Rather, “Petitioner at best has alleged that it disagrees with that
`
`evaluation,’ which is not enough to establish that the Office erred in a
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`manner material to patentability. /d. (citing AdvancedBionics, Paper6 at 9).
`
`Wedisagree.
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`Instead, we agree with Petitioner that the Office erred in a manner
`
`material to the patentability of challenged claims. Pet. 123; Prelim. Reply 5.
`
`Petitioner argues that the Petition’s explanation for why a person having
`
`ordinary skill in the art would have been motivated to combinethe
`
`references is more detailed than the motivation provided by the Examiner
`
`with reference to Szmigielski. Pet. 123. More particularly, Petitionerasserts
`
`that Szmigielski teachesthat “there is no fundamental difference between a
`
`traditional datacenter and a digital currency miner.” /d. (citing Ex. 1009,
`
`88).
`
`Patent Ownerrespondsthat Szmigielski actually discloses that
`
`[i|ndustrial miners face a/most the sameissues as datacenters: access to
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`relatively cheap power, good network access, accessto latest hardware, and
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`stable political climate.” Prelim. Resp. 36 (citing Ex. 1009, 88). Patent
`
`Ownerasserts Szmigielski’s disclosure regarding the similarities between
`
`miners and datacenters is adequate to motivate one of ordinary skill in the art
`
`to combine the references because crypto miners being “almost the same”as
`
`datacenters is not the same ashaving “no fundamentaldifferences.” Prelim.
`
`Resp. 36. According to Patent Owner, the Szmigielskireference
`
`“emphasizes that power mustbe both ‘inexpensive and reliable’ to run the
`
`mining ‘hardware and the associated cooling systems.”/d. (citing
`
`Ex. 1009, 90). Patent Owner addsthat crypto mining operationsare “highly
`
`energy-intensive,” andarguesthatthis is “the very difference citedby
`
`Applicant and presumably accepted by examiner.” /d. (citing Ex. 1002,
`
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`222).
`
`However, for the reasons given below (see §§ [V.C—F), we
`
`preliminarily find that Petitioner has articulated sufficiently persuasive
`
`reasoning, based on the evidence ofrecord, as to why oneofordinary skill in
`
`the art wouldhave made Petitioner’s proposed combinations. See, e.g.,
`
`Pet. 19-20, 50-51. Wediscussthis reasoning in greater detail below, but in
`
`one example Dr. Nikolaou explains that one of ordinary skill in the art
`
`would have made been motivated to combine Petitioner’s proposed
`
`combinations based on Szmigielski’s disclosure “that ‘[i]ndustrial miners
`
`face almost the sameissuesasdata centers: access to relatively cheap power,
`
`good networkaccess.” Ex. 1003 193-195 (citing Ex. 1009, 88).
`
`Wealso consider the teachings ofBelady-989 in conjunction with
`
`Szmigielski’s disclosure. Belady-989is directed to a datacenter that also
`
`generates power using energy generated by natural gas as a byproductofoil
`
`drilling operations. Ex. 1011, Abstract. Belady-989 discloses that remote
`
`“data centers often consume large quantities of electrical power” and “the
`
`cost of obtaining such electrical power is becoming a primary determinantin
`
`the economic success ofa data center.” /d. 94. Belady-989 further
`
`discloses that “data centers are being located in areas where the data centers
`
`can obtain electrical powerin a cost-effective manner” because the need for
`
`advanced computing services requires “massive amounts of computing
`
`processing capability.” /d. 3-4.
`
`Basedon the record before us at this early stage, we find that
`
`Petitioner has shownthat the Examinererredin failing to appreciate that a
`
`person having ordinary skill in the art would have combined the teachingsin
`
`15
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`the mannerrecited in the claims. See, e.g., Pet. 19-20 (citing Ex. 1003
`
`44 91-99; Ex. 1004 49 89-97), 50-51 (citing Ex. 1003 ff] 187-195; Ex. 1004
`
`{| 166-174). Asaresult, on this record, Petitioner demonstrates that the
`
`Office erred in a manner material to the patentability of challenged claims.
`
`IV. ANALYSIS
`
`A. Level ofOrdinary Skill in the Art
`
`The level of ordinary skill in theart is “a prism or lens” through which
`
`weview theprior 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 therelevant art at the time of
`
`the invention. Inre GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`
`determining the level of ordinary skill in the art, we may considercertain
`
`factors, including: “(1) the educational level ofthe inventor; (2) type of
`
`problems encounteredin theart; (3) prior art solutions to those problems; (4)
`
`rapidity with which innovations are made;(5) sophistication ofthe
`
`technology; and (6) educational level of active workersin thefield.” Best
`
`Med. Int’l, Inc. v. Elekta Inc. , 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`
`omitted). “The patent’s purpose can also be informative.” /d. (citation
`
`omitted).
`
`Petitioner asserts that one of ordinary skill in the art (“POSITA”)
`
`would have had “a degree in chemical engineering, petroleum engineering,
`
`processen gineering, 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. 7 (citing
`
`16
`
`
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`PGR2023-00039
`Patent 11,574,372 B2
`
`Ex. 1003 4 19). Petitioner addsthat “[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.” /d. at 7—8 (citing Ex. 1003 ¢ 19).
`
`Patent Ownerdisagrees with Petitioner’s articulation ofthe level of
`
`ordinary skill in the art, but does not offer a definition of Its own. Prelim.
`
`Resp. 9-10. According to Patent Owner, “[t]he Petition and related
`
`declarations propose twoaltemative levels of ordinary skill in the art, where
`
`the second alternative does not require any formal education or any
`
`experiencein the field of oil or gas production.” /d. at 9. While Patent
`
`Ownerdisagrees with Petitioner’s characterization ofthe level of ordinary
`
`skill in the art, Patent Owner does not explain how a different level of skill 1s
`
`likely to alter Petitioner’s analysis. Instead, Patent Owner contendsthatit
`
`“applied Petitioner’s articulation and confirmedthepriorart analysis
`
`detailed below would not change based on disagreements overthe level of
`
`ordinary skill in the art.” /d. at 9-10 (citing Ex. 2001 4 15-16).
`
`To the extent necessary, and for purposes ofthis Decision, we accept
`
`Petitioner’s statement on the level of skillin the art. See Daiichi Sankyo Co.
`
`v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)(listing the type of
`
`problems encounteredin theart, prior art solutions to those problems, and
`
`the sophistication ofthe technology as factors that may be considered in
`
`determining the level of ordinary skill in the art). Thepriorart itselfmay be
`
`sufficient to demonstrate the level of skill in the art at the time ofthe
`
`invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings
`
`regarding ordinary skill level are not required “wherethe priorart itself
`
`17
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`
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`PGR2023-00039
`Patent 11,574,372 B2
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`reflects an appropriate level and a needfor testimony is not shown’”’)
`
`(quotingLitton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`
`163 (Fed. Cir. 1985)).
`
`B. Claim Construction
`
`In a post-grant review, claims are construed using the same claim
`
`construction standard that would be used to construe the claimsin 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
`
`understoodby oneof 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 aclaim term is the meaning that the term would have
`
`toa person of ordinary skill in the art in question at the time ofthe
`
`invention” and “after reading theentire 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 ofthe termsin
`
`other claims and extrinsic evidence including expert and inventortestimony,
`
`dictionaries, and learnedtreatises, although extrinsic evidencesless
`
`significant than the intrinsic record. /d. at 1312-17. Usually, the
`
`specification is dispositive, andit is the single best guide to the meaning ofa
`
`disputedterm. /d. at 1315.
`
`Petitioner proposes express constructionsfor four claim terms,
`99: ¢¢
`99 ¢¢
`
`“blockchain mining device,”
`
`“mining processor,”
`
`“a continuous flow of
`
`combustible gas,” and “sales gas line.” Pet. 4-7. Patent Owner disputes
`
`Petitioner’s proposed constructions for the terms “blockchain mining
`99: ¢¢
`
`device,”
`
`“mining processor,’ and “a continuous flow of combustible gas.”
`
`18
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`PGR2023-00039
`Patent 11,574,372 B2
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`Prelim. Resp. 4—9. Patent Ownernotes that no construction is necessary for
`
`the term “blockchain mining devices” “[b]ecause the claim lan guageitself
`
`informsa person ofordinary skill as to [its] meaning.” /d. at 6.
`
`For purposesofthis Decision, and based on the record before us, we
`
`do not discern any claim-construction issue affecting Petitioner’s
`
`demonstration that it is more likely than not to prevail. Thus, at this stage,
`
`we do notfind it necessary to construe expressly any language ofthe
`
`challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
`
`construeterms‘that are in controversy, and only to the extent necessary to
`299
`resolve the controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We note that this determination
`
`does not preclude the parties from arguing their proposed constructions of
`
`the claims duringtrial. Indeed, the parties are hereby given notice that claim
`
`construction, in general, is an issue to be addressedat trial. A final
`
`determination as to claim construction will be madeat the close ofthe
`
`proceeding, after any hearing, based on all the evidenceofrecord.
`
`C. Alleged Obviousness over Dickerson and CryptoKube, Szmigielski, and
`Kheterpal (Ground 1: Claims 1-4, 8, 16—30, and 34)
`
`Petitioner asserts that claims 1-4, 8, 16-30, and 34 are unpatentable as
`
`obvious over Dickerson, CryptoKube, Szmigielski, and Kheterpal.
`
`Pet. 12-48. Petitioner also relies on the declaration testimonyofDr.
`
`Nickolaou and Mr. Kasdorfto support its arguments.
`
`/d. (citing Exs. 1003,
`
`1004). Patent Owner’s arguments on the merits are limited to disputing
`
`Petitioner’s contentions regarding the proposed the proposed motivation to
`
`19
`
`
`
`PGR2023-00039
`Patent 11,574,372 B2
`
`combine the asserted references. Prelim. Resp. 10-24. We address
`
`Petitioner’s contentions and Patent Owner’s arguments below, beginning
`
`with the motivation to combine Dickerson CryptoKube, Szmigielski, and
`
`Kheterpal. Wefirst provide a brief overview ofthe asserted references.
`
`Overview ofDickerson (Ex. 1005)
`l.
`Dickersonis directed to “processing and using raw natural gas thatis
`
`normally flared at the site of oil and gasfield operation facilities.” Ex. 1005
`
`4,2. Dickerson’s Figure 1, which is reproduced below,illustrates “a
`
`schematic view of a combined gas conditioning and powergeneration
`
`system.” /d. 48.
`OVER HEAC
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`sn
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`GAS TO FLARE
`
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`
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`FEED
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`6
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`GAS
`{OPRON}
`
`
`
`
`| Pubes
`
`
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`|MEMBRANE|
`Wiper
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`Pe oceeeeeeneensee
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`
`SEPARATOR
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`
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`“Dee CONDENSATE!
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`aS CONDITIONING
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`ow”
`“SYSTEM
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`GENSET
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`
`LIQUIDS TO
`PAPELINE
`
`®
`
`|
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`Fig.
`
`Figure | depicts a feed gas feeding into gas conditioning unit 100, which
`supplies gas to gas engine genset 102, which includes gas engine 110 and
`generator 112 to provide electrical energy via cable 126. Ex. 1005 § 26.
`
`Dickerson discloses that “large amounts ofraw natural gas are flared
`
`20
`
`
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`PGR2023-00039
`Patent 11,574,372 B2
`
`becauseofthe lack of gas pipeline takeaway capacity.” Ex. 1005 43.
`
`Dickerson also discloses that “a numberof oil and gasfield facilities where
`
`gas is beingflared rely on diesel-poweredelectrical generating units for
`
`electricity needed to run thefacilities.” /d. 94. Asan alternative, Dickerson
`
`discloses that its apparatus maybe delivered “to an oil or gas production
`
`facility, connecting and operating the apparatus while thefacility is
`
`generating raw natural gas.” Jd. 477. Dickerson’s apparatus includes a
`
`“membraneseparation unit for separating useful fuel gas from raw natural
`
`gas producedat an oil or gas production facility,” because ofthe presence
`
`“of contaminants and unevenqualities, the raw natural gas1s often
`
`unsuitable for use in electric power generators.” /d. §§4, 6. The apparatus
`
`also includes“a gas engine that uses the fuel gas to generate electricity that
`
`is returnedto the facility.” Jd. 4 6.
`
`Overview ofCryptoKube (Ex. 1006-1008)
`2.
`CryptoKube" products includea variety of“entry level data center”
`
`models for the small or medium-sized industrial bitcoin mineror investor.
`
`Ex. 1006, 1—2.!° The data-centers include an enclosure, cooling, internal
`
`powerdistribution, and are ready for the introduction of computersfor use in
`
`bitcoin mining or investing. /d. The models are designed to be built and
`
`delivered so that the buyer need only hook upelectrical service to the unit,
`
`because “[e]verything you need is already inside and ready to go.” /d.
`
`'4 Petitionerreferencesall ofExhibits 1006—1008 collectively as
`“CryptoKube,”in that each Exhibit documents various aspect ofthe
`CryptoKubeproduct.
`'S Wereference Petitioner’s pagination in this reproduction ofa web page.
`21
`
`
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`PGR2023-00039
`Patent 11,574,372 B2
`
`(“JUST ADD POWER!”).
`
`3.
`
`Overview ofSzmigielski (Ex. 1009)
`
`Szmigielski is a book titled “Bitcoin Essentials.” Ex. 1009, Title
`
`Page.'®© Szmigielskidescribes various aspects related to the mining of
`
`Bitcoin, including instructions on how to mine bitcoin, how transactions are
`
`recorded on the blockchain, and also discusses the pros and cons ofmining
`
`using CPUs, GPUs, FPGAs, and ASICs. /d. atv. Szmigielski explains
`
`bitcoin wallets (pages 1-14), mining software (pages 14—24), and other
`
`aspects ofmining (pages 25—107). /d. at 1-1v.
`
`Szmigielski describes compute powerand resources needed to
`
`accomplish mining outcomes, and notes that “costs can add up quickly and
`
`electricity is a big part ofit. It is very important to set up your mining
`
`operation where electricity is cheap or perhapsevenfree.” Ex. 1009, 71.
`
`Szmigielski describes thatit 1s a benefit to mine bitcoin at a location with
`
`with low electricity ratesand acooler climate. /d. at 72. This is because
`
`“[o|ne ofthe biggest costs for Bitcom minersis the cost of electricity.” Jd.
`
`at 90.
`
`4.
`
`Overview ofKheterpal (Ex. 1010)
`
`Kheterpalis a patent appl
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