Trials@uspto.gov
`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 DATAINC.,
`Patent Owner.
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY,and
`MATTHEWS. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`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 DATAINC.,
`Patent Owner.
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`Before HYUN J. JUNG, JAMES J. MAYBERRY,and
`MATTHEWS. 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 (Paper2,
`
`“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 (Paper7,
`
`“Prelim. Resp.”).
`
`Wehave authority to determine whetherto 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 notbe instituted “unless .
`
`.
`
`. the information presented in
`
`the petition ... , if such information is not rebutted, would demonstrate that
`
`itis 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 showthatit is more likely than
`
`not that claim 1 is unpatentable.
`
`I.
`
`BACKGROUND
`
`A. Real Parties-in-Interest
`
`Petitioner identifies that Crusoe Energy Systems, LLC is the real
`
`party-in-interest. Pet. 53. Patent Owner indicates Upstream DataInc. is the
`
`patent ownerandreal party-in-interest in this proceeding. Paper5, 2.
`
`B. Related Proceedings
`
`The parties state that the °372 patentis at issue in PGR2023-00039,
`
`filed July 20, 2023 (“the ’039 PGR”) and Upstream Data Inc. v. Crusoe
`
`
`
`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.
`
`C. The ’372 Patent
`
`The °372 patent is titled “Blockchain Mineat Oil or Gas Facility.”
`
`Ex. 1001, code (54). Figure 1, reproduced below,is a schematic of a system
`
`for powera blockchain mine at a remote oil well, using a generator.
`
`50-
`
`a
`
`Figure | illustrates blockchain mining device 12, oil well 14, and
`generator 28. /d. at 8:35—40.
`
`According to the 372 patent, “[a]t remote oil and gasfacilities, 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 1s because
`
`“JiJn manylocations it may not be economically feasible to build the
`
`infrastructure required to take the producedgas, or resultant electricity
`
`generated by combustion of the gas, to market.” Jd. 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.” /d. 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.” /d. 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 BITCOIN™andother blockchain mining through a more
`
`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, storage site, or
`
`processing facility,” such as located adjacent to a remote oil well.
`
`/d. at
`
`9:14-19.
`
`D. Illustrative Claim
`
`The ’372 patent includes 41 claims, and Petitioner challenges
`
`claims 1-41. Of the challenged claims, claims | and 24 are independent.
`
`Claim 1 is illustrative and readsas follows!:
`
`[lpre] A system comprising:
`
`[la] 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 continuousflow of combustible gas to powerthe
`generator; and
`[lc] blockchain mining devices connected to the generator; in
`which:
`
`' We utilize Petitioner’s annotations. Pet. v.
`4
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`[lci] the blockchain mining devices each have a mining
`processor and are connected to a network interface;
`[1c11] 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;
`[1cii] 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;
`[1c_iv] the network is a peer-to-peer network;
`[lc_v] the blockchain database is a distributed database
`stored on plural nodes in the peer-to-peer network;
`and
`stores
`[lcvi]
`the blockchain database
`information for a digital currency.
`
`transactional
`
`Ex. 1001, 19:52—20:7.
`
`E. 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):
`
`1-41
`112(b)?
`Indefiniteness
`
`
`Written Description
`112(a)
`1-41
`
`
`10-16, 23, and 41 112(f)/112(b)|112(f Indefiniteness
`
`
`
`? The Leahy-Smith America Invents 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.
`
`Il.
`
`ELIGIBILITY FOR POST-GRANT REVIEW
`
`As athreshold matter, we must determine whether the ?372 patent 1s
`
`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).
`
`Eachpetitioner 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,
`
`“Ta] petition for a post-grant review may only befiled not later than the date
`
`that is 9 monthsafter 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 contendsthat it “1s
`
`not barred or estopped from requesting review, has notfiled 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
`
`Ownerdoes not address post-grant-review eligibility of the ’372 patentin its
`
`Preliminary Response.
`
`
`
`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
`
`claimspriority), which 1s after March 16, 2013. Ex. 1001, code (60). In
`
`addition, the Petition’s filing date, September 26, 2023 (Paper 3, 1), 1s 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 wasfiled.
`
`Il. ANALYSIS
`
`A. Level ofOrdinary Skill in the Art
`
`The level of ordinary skill in the art is “a prism or lens” through which
`
`weview 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 knownthe relevantart at the time of
`
`the invention. [n re 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 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 workersin the field.” Best
`
`Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`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,
`
`process engineering, mechanical engineering, or a similar field with 1-2
`
`years of experience in designing powergeneration systems, Blockchain
`
`mining systems, or other comparable hands-on experience.” Pet. 4 (citing
`
`Ex. 1024 4 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.” /d. (citing Ex. 1024 4 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 twoalternative 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.” /d. While Patent Owner disagrees with
`
`Petitioner’s characterization of the level of ordinary skill in the art, Patent
`
`Ownerdoes not explain how a different level of skill is likely to alter
`
`Petitioner’s analysis. Instead, Patent Owner contendsthat it “applied
`
`Petitioner’s articulation and confirmed the analysis detailed below would not
`
`change based on disagreements overthe level of ordinary skill in the art.”
`
`Id. (citing Ex. 2101 4 16-17).
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`To the extent necessary, and for purposesof 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 “wherethe priorart 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)).
`
`B. 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 evidenceis less
`
`significant than the intrinsic record.
`
`/d. at 1312-17. Usually, the
`
`specification is dispositive, and it is the single best guide to the meaning of a
`
`disputed term. /d. at 1315.
`
`In conjunction with its indefiniteness assertions, Petitioner provides
`99 66.
`
`constructions for the terms “blockchain mining devices,”
`
`“mining
`
`processor,” and “‘adapted to mine transactions.” Pet. 11-26. Petitioner also
`
`contendsthat 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). Patent
`
`Owneralso disagrees with Petitioner’s assertions regarding 35 U.S.C.
`
`§ 112(f). Id. at 42-61.
`
`> Patent Ownerdirects our attention to whereit “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 languageitself
`informs a person of ordinary skill as to [its] meaning.” PGR2023-00039,
`Paper 6 at 6. And, with respect to “mining processor,” Patent Ownerstated
`that one of ordinary skill in the art “would understand that at a minimum a
`mining processoris ‘a processor with blockchain miningcircuitry.’” /d. 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 7039 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 meaningsof the claim terms “blockchain mining
`99 66
`
`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 INE. 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
`299
`to the extent necessary to resolve the controversy’”’) (quoting Vivid Techs.,
`
`Inc. vy. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`C. 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.
`
`1.
`
`Applicable Law
`
`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 AJA Post-Grant Proceedings (Jan.
`
`6, 2021).4
`
`Under Nautilus, “a patent is invalid for indefinitenessif 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 whatis
`
`claimed, thereby apprising the public of whatis still open to them,” but the
`
`present standard recognizesthat “absolute precision is unattainable.” /d. at
`
`909-10 (internal quotation marks and brackets omitted).
`
`2.
`
`Analysis
`
`a.
`
`“blockchain mining devices”
`
`Petitioner asserts that claims | 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 (1.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 4 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.” /d. 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.” /d. (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.’” /d. at 15
`
`(citing Ex. 1001, 21:18—21) (emphasis original). From this, Petitioner
`
`concludesthat 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.” /d. (citing Ex. 1024 4 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 4 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
`
`PONStp
`
`
`
`
`
`OPELELLEEELEELEEECEEEEECEELEEECEECEEECEELEEECEELEEECEELEEECEELEEECEELEEECEELEEECEELEEECEELEEECEELECECEELEEECEEEL, ALLLEEDELLEEELLLELEEELELEELEEELEEELLELEELEEELEELEEELEELEELEEELEEEEELLLEEEELLELEEELEEEEPELELLEEELELLEEELELEELss
`
`¥¥444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444444
`Ze44.4weOe44444444444444444444444444444444444444444444~4“
`
`
`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 oneor a plurality of mining
`
`processors 92 (92A—92Efor 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 bepositioned on racks or
`
`shelving units” suggests that “mining processor 92” doesnot refer to
`
`“blockchain mining device 12”; but rather, “to the mining server(e.g.,
`
`spondooliestech SP35 server).” /d. at 16—17 (citing Ex. 1001, 17:21-22; Ex.
`
`1024 4 54). In addition, Petitioner contends that the Specification “teaches
`
`14
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`that the term “blockchain mining device’ 1s interchangeable with the term
`
`‘data center.’” Jd. at 17; see also Ex. 1001, 4:55—56 (“The blockchain
`
`mining device may be replaced by a suitable mining deviceor 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.” /d. at 18 (citing Ex. 1002, 210, 213,
`
`218, 223). Thus, Petitioner concludes that one of ordinary skill in theart
`
`“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.” /d. at 16-17 (citing Ex. 1024
`
`455).
`
`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 4 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
`
`innocentactivity.” /d. at 21 (citing Nautilus, 572 U.S. at 909). Petitioner,
`
`thus, concludes that the Challenged Claimsare 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 |
`
`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 arguesthat the claims are not indefinite
`
`because, when readin light of the Specification, claims | 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 claimsor the [S]pecification. The
`plain claim language of the independentclaims 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, clam 1; Ex. 2101 934]. 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].
`
`Td. at 11.
`
`Instead, based on “the clarity provided by the intrinsic record,” Patent
`
`Ownertakes 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 4 36). Patent Owner
`
`contendsthat
`
`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.”
`
`Td. at 14.
`
`With respect to Petitioner’s first construction, Patent Ownerasserts
`
`that, in addition to being based on extrinsic evidence, Petitioner’s “first
`
`16
`
`
`
`PGR2023-00052
`Patent 11,574,372 B2
`
`construction” incorporates language from dependentclaim 16 and “omits
`
`elements of the claimed ‘blockchain mining devices’ that are recited in the
`
`independentclaimssuch as a specialized network interface that
`
`communicates with a blockchain database.” /d. at 15 (citing Ex. 1001,
`
`19:59-65; Ex. 2101 4 41). Patent Owner arguesthat 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.” /d. (citing
`
`Nautilus, 572 U.S. at 910). Patent Owner explainsthat “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 949). Thus,
`
`Patent Ownertakes the position that “when read in view of the claim
`
`language and [S]pecification, there is no ambiguity thatit is blockchain
`
`mining devices and not somethingelse that’s located adjacent to the
`
`facility.” /d. at 21 (citing Ex. 2101 451).
`
`Patent Ownerargues nextthat 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 452). 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.
`
`/d. at 22 (citing Ex. 2101
`
`4] 54); see also id. at 21-22 (citing Ex. 1001, 13:29-33, 13:44-48) (arguing
`
`that it was knownin the art that blockchain miningis “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
`knownenergy-intensive nature of bitcoin mining.”
`
`Id. at 24. Thus, Patent Owner concludesthat “[t]he intrinsic record does not
`
`support Petitioner’s ‘second construction.’” /d.
`
`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 showsthatit is more likely than not that Petitioner would prevail
`
`in demonstrating that the term “blockchain mining devices,” as recited by
`
`independentclaims | and 24, is indefinite.
`
`Asan initial matter, we agree with Patent Ownerthat “Petitioner’s
`
`indefiniteness theory is flawed becauseits ‘alternative interpretations’ are of
`
`its incorrect claim construction rather than the claim language in view ofthe
`
`specification as required by Nautilus.” Prelim. Resp. 13. Wefind 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 informsus 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 processorand are
`
`connected to a network interface.” /d. 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.
`
`/d. 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
`
`Ownerthat Petitioner’s “first construction” 1s flawed, at least becauseit
`
`analyzes claims 16 and 17 in isolation from the language of claim | 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 housedin a portable
`
`enclosure.” Ex. 1001, 21:18-24. Patent Owneridentifies 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
`
`least a thermistor 90
`controller “may be connected to at
`(temperature sensor) within the mining device 12, to allow the
`controller 86 to control the ventilation and chilling loads.” [/d.
`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 4 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 9 47)). We also agree with Patent
`
`Ownerthat 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.” /d. (citing Ex. 2101
`
`448). 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 | and the Specification.
`
`See also Pet. 12—15 (arguing with support only from claim language and
`
`declarant testimony); cf. Ex. 1024 49 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 Ownerthat Petitioner’s
`
`“second construction” is also flawed, at least becauseit:
`
`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 452). Instead, as discussed above, we
`
`find the intrinsic record makesclear that an ordinarily skilled artisan would
`
`have understood “blockchain mining devices” to mean a device composed
`
`of, for example, a network interface and one or moreprocessors, with
`
`reasonable certainty. Here, the Specification and the claims both convey to
`
`the skilled artisan what subject matter falls within the metes and bounds of
`
`the term “blockchain mining devices.” See, e.g., Ex. 1001, 15:22—25 (“The
`
`blockchain mining device 12 may have a ne
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
