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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FLEX LOGIX TECHNOLOGIES INC.,
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`Petitioner
`
`V.
`
`VENKAT KONDA,
`
`Patent Owner
`
`____________
`
`Case IPR2020-00261
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`Patent 8,269,523 B2
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`_________
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`
`
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`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`UNDER 37 C.F.R. § 42.121
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`

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`IPR2020-00261
`Patent 8,269,523
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`
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ..... 1
`
`II.
`
`BACKGROUND ............................................................................................ 4
`
`A. The ‘523 Patent ................................................................................................................. 5
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S
`CHALLENGES .............................................................................................. 5
`
`A. Contingency ........................................................................................................................ 6
`
`IV. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS ................................................................................................... 7
`
`A. The Proposed Contingent Amendments Include A Reasonable Number Of
`Substitute Claims .............................................................................................................. 7
`
`B. The Contingent Substitute Claims Do Not Enlarge The Scope Of The Claims Or
`Introduce New Subject Matter ........................................................................................ 8
`
`C. The Proposed Contingent Amendments Respond To A Ground Of Unpatentability
`Alleged By The Petitioner ................................................................................................ 8
`
`D. Explanation Of Contingent Substitute Claims And Support In The Original
`Disclosure And Earlier-Filed Disclosure ........................................................................ 9
`
`V. CLAIM CONSTRUCTION ........................................................................ 16
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`VI. PATENTABILITY OF THE CONTINGENT SUBSTITUTE CLAIMS
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`17
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`VII. CONCLUSION ............................................................................................ 18
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`APPENDIX OF CONTINGENT SUBSTITUTE CLAIMS................................. 1
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`Page ii of 45
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`IPR2020-00261
`Patent 8,269,523
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`
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`Prior to filing this motion, Patent Owner Venkat Konda (“Patent Owner”)
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`complied with 37 C.F.R. § 42.121(a) by sending an email requesting a conference
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`call with the Board. In response, the Board issued an Order stating: “Based on the
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`information provided by Patent Owner, we determine that a conference call is not
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`necessary, and the conference requirement is deemed satisfied.” (Paper 33)
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`In the Order, the Board directed the parties to the Board’s order in Lectrosonics,
`
`Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019)
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`(precedential), Amazon.com Inc. v. Uniloc Luxembourg S.A., IPR2017-00948,
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`Paper 34 (PTAB Jan. 18, 2019) (precedential), and the Office’s November 2019
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`Consolidated Trial Practice Guide, which provide information and guidance on
`
`motions to amend, and to the Notice Regarding a New Pilot Program Concerning
`
`Motion to Amend Practice and Procedures in Trial Proceedings under the America
`
`Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15,
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`2019). Accordingly, Patent Owner is submitting this paper by following those
`
`directions.
`
`Patent Owner respectfully files this Contingent Motion to Amend under 37
`
`C.F.R. §42.121 and requests that new claims 49-96 be treated as a contingent
`
`substitution for claims 1-48. See Lectrosonics, Paper 15 at 3. Consequently, this
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`Page 1 of 45
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`Contingent Motion to Amend is contingent upon a finding in a final written
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`decision by the Board that the challenged claims 1-48 are unpatentable. Therefore,
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`this Motion to Amend under 37 C.F.R. § 42.121 is made on a contingent basis and
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`is made in addition to Patent Owners’ Response under 37 C.F.R. § 42.120, which
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`is filed concurrently.
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`Patent Owner also respectfully requests preliminary guidance from the
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`Board concerning this Motion, in accordance with the New Pilot Program
`
`Concerning Motion to Amend Practice. See 84 Fed. Reg. 9,497 (Mar. 15, 2019).
`
`This Contingent Motion to Amend includes proposed substitute claims in place
`
`of the previously presented substitute claims and includes amendments and
`
`arguments. This Motion satisfies the requirements for a Contingent Motion to
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`Amend. Claims 2-7, and 11 (the “Challenged Claims”) are the challenged claims
`
`of U.S. Patent No. 8,269,523 (Ex. 1001, “the ‘523 Patent”) in the Petition1 filed by
`
`
`1 In addition to this IPR, the Board instituted another IPR2020-00260 filed
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`by the same Petitioner concurrently on the ‘523 Patent. Patent Owner indicates to
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`the Board that he intends to move for the same contingent amendments to the
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`claims in both proceedings. Accordingly, the same contingent claims are submitted
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`in both the proceedings, i.e. IPR2020-00260 and IPR2020-00261.
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`Page 2 of 45
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`Flex Logix Technologies Inc. (“Flex Logix” or “Petitioner”) on December 16,
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`2019 Paper 1 (“Petition”). Claim 1 is the only independent claim in the ‘523 Patent
`
`and Claims 2–48 are either directly or indirectly dependent on Claim 1.
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`Patent Owner proposes forty eight substitute claims (numbered 49-96),
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`which are set forth below in the Appendix. Substitute claims 49-96 correspond,
`
`respectively, to original claims 1-48 of the ‘523 Patent. Substitute claim 49 is the
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`only independent claim (like original claim 1 of the patent). Remaining substitute
`
`claims 50-96 depend, directly or indirectly, from substitute independent claim 49
`
`in the same respective manner that original claims 2-48 depend from claim 1 of the
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`‘523 Patent.
`
`As a result of this Contingent Motion set forth below, acceptance of all forty-
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`eight proposed substitute claims would result in the cancellation of the forty-eight
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`original claims (claims 1-48). This constitutes a “reasonable number of substitute
`
`claims.” 35 U.S.C. § 326(d)(1)(B). Additionally, the substitute claims: (1) do not
`
`“enlarge the scope of the claims;” (2) do not “introduce new [subject] matter;” and
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`(3) “respond to [the] ground[s] of unpatentability involved in the trial.” 35 U.S.C. §
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`326(d)(3); 37 C.F.R. § 42.121(a)(2)(i), (ii). Patent Owner has therefore satisfied his
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`burden of production.
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`Page 3 of 45
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`In the present case, the sole inventor, Venkat Konda, holds a Ph.D.
`
`degree in Computer Science and Engineering and had experience in designing,
`
`developing, researching and teaching different types of interconnection networks
`
`for over two decades at the time of the effective priority date of the ‘523 Patent and
`
`submits this Contingent Motion to Amend together with Venkat Konda’s
`
`declaration. See Ex. 2029.
`
`II. BACKGROUND
`
`The ‘523 Patent along with several other families of patents and patent
`
`applications incorporated by reference in their entirety in the ‘523 Patent disclose
`
`layouts for integrated circuits including Field Programmable Gate Arrays
`
`(“FPGAs”) comprising 2D-Mesh-like 2D layouts for multi-stage networks such as
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`Benes Networks, Butterfly Fat Tree networks and various other multi-stage
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`networks with isomorphic transformations, having 2D-layouts as simple as those of
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`2D-Mesh networks so that all the wires are horizontal or vertical. This layout is
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`based on alternate vertical and horizontal wires and replicability of the partial
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`multi-stage network corresponding to each computational block of an FPGA
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`regardless of the size of the FPGA.
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`Page 4 of 45
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`IPR2020-00261
`Patent 8,269,523
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`A. The ‘523 Patent
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`
`
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`Petitioner has sought inter partes review of claims 2-7, and 11 of the ‘523
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`Patent. The ‘523 Patent (Ex. 1001) issued from patent application No. 12/601,275
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`(“the ‘275 application”), (Ex. 1004) filed on November 22, 2009. (The ‘523 Patent
`
`has only one independent claim, i.e. Claim 1. The ‘523 Patent is a national stage
`
`application of international application PCT Application No. PCT/US2008/064605
`
`(“the ‘605 PCT application”), (Ex. 1007), filed May 22, 2008 which in turn is a
`
`continuation-in-part and claims priority to U.S. Provisional Patent Application
`
`Serial No. 60/940,394, filed May 25, 2007 (“the ‘394 Provisional application”),
`
`(Ex. 1026). No new subject matter was added to the specification of the ‘275
`
`application which issued as the ‘523 Patent. Thus, the effective filing date of the
`
`‘523 Patent is the earliest application for which priority was claimed, namely, May
`
`25, 2007.
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`III. PATENT OWNER’S RESPONSE TO PETITIONER’S CHALLENGES
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`Petitioner contends in its Petition that “said routing network comprising a
`
`plurality of stages y, in each said sub-integrated circuit block, starting from the
`
`lowest stage of 1 to the highest stage of y, where y=1” in Claim 1 does not have
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`written support in the ‘394 Provisional application and so the effective filing date
`
`of the ‘523 Patent is the filing date of the ‘275 application which is November 22,
`
`2009. That is, Petitioner contends that the effective filing date of the ‘523 Patent is
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`
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`not the filing date of the ‘394 Provisional application which is May 25, 2007 even
`
`though the ‘523 Patent claims the benefit of the ‘394 Provisional application.
`
`In the concurrently filed Patent Owner’s Response (Paper 34), Patent Owner
`
`submits that the named inventor was in possession of the subject matter
`
`recited in claim 1 of the ‘523 Patent, particularly with respect to “said routing
`
`network comprising a plurality of stages y, in each said sub-integrated circuit
`
`block, starting from the lowest stage of 1 to the highest stage of y, where y≧1”,
`
`with the support of Dr. Chaudhary’s Declaration (Exhibit 2025 at ¶¶30-39).
`
`Accordingly, Patent Owner respectfully requests the Board to consider Dr.
`
`Chaudhary’s declaration and confirm that the challenged claims in the ‘523 Patent
`
`are entitled to the benefit of the May 25, 2007 filing date of the ‘394 Provisional
`
`application, and confirm the patentability of the challenged claims of the ‘523
`
`Patent.
`
`A. Contingency
`
`In the event that original claim 1 is found unpatentable, Patent Owner
`
`present Motion moves to (i) add substitute claims 49, 55, 59, 72, 76, 87, and 91
`
`and (ii) cancel original claims 1, 7, 11, 24, 28, 39, and 43. Patent Owner does not
`
`propose any changes with respect to the original claims 2-6, 8-10, 12-23, 25-27,
`
`29-38, 40-42, and 44-48. Alternatively, substitute claims 50-54, 56-58, 60-71, 73-
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`75, 77-86, 88-90, and 92-96 are identical to original claims 2-6, 8-10, 12-23, 25-
`
`27, 29-38, 40-42, and 44-48.
`
`Specifically, Patent Owner contingent amendment amends claim 1 by replacing
`
`y≧1 with y>1. That is, the case y = 1 is deleted. To be consistent with the
`
`amendments made in Claim 1, a similar contingent amendment is made in claims
`
`8, 11, 24, 28, 39, and 43, i.e. by replacing
`
` with
`
` in all these claims.
`
`With this contingent amendment, Claim 1 and all the challenged claims in the
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`‘523 Patent are entitled to the benefit of the May 25, 2007 filing date of the ‘394
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`Provisional application. As a result, the PCT Publication No WO 2018/109756 A1
`
`(the “Konda ‘756 PCT”) is not prior art to the ‘523 Patent.
`
`IV. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS
`
`A. The Proposed Contingent Amendments Include A Reasonable Number Of
`Substitute Claims
`
`Pursuant to 37 C.F.R. § 42.121(b), the proposed contingent amendments are
`
`presented in the Appendix attached hereto. Patent Owner cancels claims 1-48 and
`
`proposes contingent substitute claims, namely, claims 49-96. Because the
`
`challenged claims would be cancelled and substitute claims are proposed, this
`
`constitutes a “reasonable number of substitute claims.” 37 C.F.R. § 42.121(a)(3).
`
`As shown in the Appendix, claims 49-96 include all of the limitations of original
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`Page 7 of 45
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`1N
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`3N
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`claims 1-48. Contingent amendments in claim 1, 7, 11, 24, 28, 39, and 43 are
`
`shown by underlining for additions and brackets for deletions.
`
`B. The Contingent Substitute Claims Do Not Enlarge The Scope Of The
`Claims Or Introduce New Subject Matter
`
`Contingent substitute claims 49-96 are based on cancelled claims 1-48 and
`
`are not broader than original claims 1–48.
`
`Patent Owner has also strictly adhered to Lectrosonics which states that it is
`
`not required “that every word added to or removed from a claim in a motion to
`
`amend be solely for the purpose of overcoming an instituted ground” and that a
`
`Patent Owner “may include additional limitations to address potential § 101 or §
`
`112 issues” in a proposed claim once the proposed claim “includes amendments to
`
`address a prior art ground in [a] trial,” because such an amendment “serves the
`
`public interest by helping to ensure the patentability of amended claims.”
`
`Lectrosonics, Paper 15 at 5-6.
`
`Because contingent substitute claims 49-96 do not enlarge the scope of
`
`claims 1-48, the substitute claims do not expand the scope of the patent and thus
`
`comply with the requirements of 37 C.F.R. § 42.121(a)(2)(ii).
`
`C. The Proposed Contingent Amendments Respond To A Ground Of
`Unpatentability Alleged By The Petitioner
`
`The proposed contingent substitute claims respond to an asserted ground of
`
`unpatentability. The substitute claims respond to Petitioner’s argument that
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`
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`independent claim 1 is unpatentable under AIA 35 U.S.C. § 112(a) as failing to
`
`satisfy the written description requirement.
`
`D. Explanation Of Contingent Substitute Claims And Support In The
`Original Disclosure And Earlier-Filed Disclosure
`
`Support for the contingent substitute claims is found in “the original
`
`disclosure of the patent.” See 37 C.F.R. § 42.121(b)(1)-(2). The ‘523 Patent (Ex.
`
`1001) issued from the ‘275 application (Ex. 1004) filed November 22, 2009. The
`
`‘523 Patent has only one independent claim, i.e. Claim 1. The ‘523 Patent is a
`
`national stage application of the ’605 PCT application (Ex. 1007) filed May 22,
`
`2008 which in turn is a continuation-in-part and claims priority to the ‘394
`
`Provisional application filed May 25, 2007 (Ex. 1026). No new subject matter was
`
`added to the specification of the ‘275 application which issued as the ‘523 Patent.
`
`Accordingly, the entirety of the subject matter disclosed in the ‘275
`
`application claims priority to the filing date of the ‘394 Provisional application
`
`filed on May 25, 2007, excepting 4 diagrams, namely, FIG. 500A1, FIG. 500A2,
`
`FIG. 500A3, and FIG. 500A4 which claim priority to the ‘605 PCT application
`
`filed May 22, 2008.
`
`Exemplary support for the contingent substitute claims is provided in the
`
`following table with reference to the above-identified patent applications and/or
`
`patents. To save space, in the first column of the following table, parts of or
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`
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`complete claim language of each claim is referred to by corresponding page and
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`line number(s) of the complete amendments shown with respect to the substitute
`
`claims in the Appendix.
`
`
`
`
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`Exemplary Support in Priority Documents
`
`Reference to the
`
`The ‘275
`
`The ‘605 PCT
`
`The ‘394
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`pages:lines to the
`
`application (Ex:
`
`Application
`
`Provisional
`
`Contingent
`
`1004)
`
`(Ex. 1007)
`
`Application
`
`Substitute Claim
`
`(Ex. 1026)
`
`Language in
`
`Appendix
`
`(Claim 49)
`
`173:23-199:19
`
`14:18-40:10
`
`10:24-35:15
`
` 3:13 - 5:16
`
`(Claim 50)
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` 6:1 - 8
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`183:23-184:26,
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`24:16-25:18,
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`20:13-21:16,
`
`185:27-188:6
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`26:19-28:26
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`22:16-24:22
`
`(Claim 51)
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`183:23-184:26,
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`24:16-25:18,
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`20:13-21:16,
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` 6:9-12
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`185:27-188:6
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`26:19-28:26
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`22:16-24:22
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`IPR2020-00261
`Patent 8,269,523
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`Paper No. 35
`Patent Owner’s Motion to Amend
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`(Claim 52)
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`183:4-22
`
`23:27-24:15
`
`19:25-20:12
`
` 6:13-18
`
`(Claim 53)
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`183:23-184:16
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`24:16-25-8
`
`20:13-24:6
`
` 7:1-6
`
`(Claim 54)
`
`183:23-184:26,
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`24:16-25:18,
`
`20:13-21:16,
`
` 7:7-14
`
`185:27-188:6
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`26:19-28:26
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`22:16-24:22
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`(Claim 55)
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`183:20-22
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`24:13-15
`
`20:10-12
`
` 7:15- 8:2
`
`(Claim 56)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 8:3-8
`
`(Claim 57)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 8:9-16
`
`(Claim 58)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 8:17-9:5
`
`(Claim 59)
`
`183:20-22
`
`24:13-15
`
`20:10-12
`
` 9:6-15
`
`(Claim 60)
`
` 9:16-10:3
`
`
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
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`(Claim 61)
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` 10:4-11
`
`(Claim 62)
`
` 10:12- 18
`
`
`
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`Paper No. 35
`Patent Owner’s Motion to Amend
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
`
`(Claim 63)
`
`221:1-2
`
`61:1 - 2
`
` 11:1-3
`
`N/A2
`
`
`
`(Claim 64)
`
`213:11-14
`
`53:29-54:3
`
`N/A
`
` 11:4- 7
`
`(Claim 65)
`
`221:6-7
`
`61:6-7
`
`N/A
`
` 11:8-9
`
`(Claim 66)
`
`163:21-25
`
`4:13-17
`
`20:8-10
`
` 11:10-14
`
`(Claim 67)
`
`213:14-17
`
`54:3-6
`
`N/A
`
` 11:15-17
`
`
`2 N/A in the entire column of this table means “not applicable,” as this falls
`
`under the 4 diagrams, namely, FIG. 500A1, FIG. 500A2, FIG. 500A3, and FIG.
`
`500A4, that are not disclosed in the ‘394 Provisional application and so these 4
`
`diagrams do not claim priority to the ‘394 Provisional application.
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`Paper No. 35
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`(Claim 68)
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`221:15-16
`
`61:15-16
`
`N/A
`
` 12:1-3
`
`(Claim 69)
`
`221:17-19
`
`61:17-19
`
`N/A
`
` 12:4-7
`
`(Claim 70)
`
`214:20-215:23,
`
`55:9-56-11,
`
`N/A
`
` 12:8-11
`
`221:20-22
`
`61:20-22
`
`(Claim 71)
`
`221:23-25
`
`61:23-25
`
`N/A
`
` 11:12-15
`
`(Claim 72)
`
`183:20-22
`
`24:13-15
`
`20:10-12
`
` 12:16-13:3
`
`172:3-173:7
`
`12:23-14:2
`
`9:10-10:15
`
`(Claim 73)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 13:4-10
`
`(Claim 74)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 13:11-18
`
`(Claim 75)
`
`172:3-10
`
`12:23-13:2
`
`9:10-17
`
` 14:1- 7
`
`(Claim76)
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`183:20-22
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`24:13-15
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`20:10-12
`
` 14:8 –16
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`
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`(Claim 77)
`
` 14:17- 15:5
`
`(Claim 78)
`
` 15:6-13
`
`(Claim 79)
`
`15:14-16:2
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
`
`172:3-6,
`172:11-14
`
`12:23-26,
`13:3-7
`
`9:10-13,
`9:18-22
`
`(Claim 80)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`16:3-8
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 81)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`16:9-15
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 82)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`16:16 - 17:5
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 83)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`17:6-12
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`
`
`Page 14 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`(Claim 84)
`
`183:20-22
`
`24:13-15
`
`20:10-12
`
`17:13-19
`
`(Claim 85)
`
`18:1-8
`
`(Claim 86)
`
`18:9-15
`
`172:3-6,
`172:21-24
`
`
`172:3-6,
`172:21-24
`
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`(Claim 87)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`18:16-19:2
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 88)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`19:3-9
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 89)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`19:10-17
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`(Claim 90)
`
`172:3-6,
`
`12:23-26,
`
`9:10-13,
`
`20:1-7
`
`172:15-20,
`
`13:8-13,
`
`9:23-28,
`
`172:25-173:7
`
`13:19-14:2
`
`10:6-15
`
`
`
`Page 15 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`(Claim 91)
`
`20:8-16
`
`(Claim 92)
`
`20:17-21:5
`
`(Claim 93)
`
`21:6-13
`
`(Claim 94)
`
`21:14-22:2
`
`172:3-6,
`172:21-24
`
`
`172:3-6,
`172:21-24
`
`
`172:3-6,
`172:21-24
`
`
`172:3-6,
`172:21-24,
`
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`12:23-26,
`13:14-18
`
`9:10-13,
`9:18-22
`
`(Claim 95)
`
`213:18-20
`
`54:7-9
`
`N/A
`
`22:3-7
`
`(Claim 96)
`
`227:9-10
`
`67:9-10
`
`N/A
`
`22:8-10
`
`
`
`
`
`V. CLAIM CONSTRUCTION
`
`Since Petitioner submitted that for purposes of this proceeding, no term requires
`
`construction, Patent Owner reserves his rights at this time to contest any claim
`
`construction position that may be asserted by Petitioner at a later time.
`
`
`
`
`
`Page 16 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`VI. PATENTABILITY OF THE CONTINGENT SUBSTITUTE CLAIMS
`
`With the deletion of the y=1 limitation in independent Claim 1 of the ‘523
`
`Patent, the challenged claims in the ‘523 Patent is entitled to the benefit of the May
`
`25, 2007 filing date of the ‘394 Provisional application, and as a result, the ‘756
`
`PCT published on September 12, 2008 which incorporated by reference the ‘394
`
`Provisional application is not prior art to the ‘523 Patent. Therefore, the contingent
`
`substitute claims 49-96 remedy the issues raised by the Petition with respect to
`
`original claims 1-48.
`
`The burden is on Petitioner to demonstrate that the amended claims proposed
`
`by Patent Owner are unpatentable. See Aqua Prods., Inc. v. Matal, 872 F.3d 1290,
`
`1307 (Fed. Cir. 2017) (“Congress’s choice reflects its intention that the burden of
`
`proof be placed on the petitioner for all propositions of unpatentability arising
`
`during IPRs, whether related to originally challenged or entered amended
`
`claims.”). Patent Owner’s proposed amendments need only meet the requirements
`
`of 35 U.S.C. § 326(d) and 37 C.F.R. § 42.121, and the Board will proceed to
`
`determine whether the contingent substitute claims are unpatentable by a
`
`preponderance of the evidence based on the entirety of the record. See Western
`
`Digital Corp., IPR2018-00082, Paper 13 at 3-4. Here, the proposed contingent
`
`substitute claims 49-96 satisfy the statutory and regulatory requirements for the
`
`reasons discussed above and are patentable for the reasons set forth above.
`
`
`
`Page 17 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`VII. CONCLUSION
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`Dr. Chaudhary’s Declaration (Exhibit 2025) establishes that the challenged
`
`claims in the ‘523 Patent are entitled to the benefit of the ‘394 Provisional
`
`application filed May 25, 2007, and as a result, the ‘756 PCT published on
`
`September 12, 2008 which incorporated by reference the ‘394 Provisional
`
`application is not prior art to the ‘523 Patent as submitted in the concurrently filed
`
`Patent Owner’s Response.
`
`Otherwise, this Contingent Motion to Amend, for the reasons set forth
`
`above, which deletes the y=1 limitation in Claim 1, results in the challenged claims
`
`in the ‘523 Patent being entitled to the benefit of the May 25, 2007 filing date of
`
`the ‘394 Provisional application. Consequently, the ‘756 PCT published on
`
`September 12, 2008, which incorporated by reference the ‘394 Provisional
`
`application, is not prior art to the ‘523 Patent.
`
`Therefore, Patent Owner respectfully requests that, should the Board find
`
`claim 1 of the ’523 Patent to be unpatentable, the Board should grant this
`
`Contingent Motion to Amend and substitute contingent claims 49-96 for original
`
`claims 1-48.
`
`
`
`Dated: October 26, 2020
`
`Respectfully submitted,
`
`
`
`Page 18 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
`6278 Grand Oak Way
`San Jose, CA 95135
`
`
`
`
`Page 19 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`1
`
`2
`
`CLAIMS
`
`APPENDIX OF CONTINGENT SUBSTITUTE CLAIMS
`
`3
`
`What is claimed is:
`
`4
`
`1.
`
`cancelled
`
`5
`
`2.
`
`cancelled
`
`6
`
`3.
`
`cancelled
`
`7
`
`4.
`
`cancelled
`
`8
`
`5.
`
`cancelled
`
`9
`
`6.
`
`cancelled
`
`10
`
`7.
`
`cancelled
`
`11
`
`8.
`
`cancelled
`
`12
`
`9.
`
`cancelled
`
`13
`
`10.
`
`cancelled
`
`14
`
`11.
`
`cancelled
`
`15
`
`12.
`
`cancelled
`
`16
`
`13.
`
`cancelled
`
`17
`
`14.
`
`cancelled
`
`18
`
`15.
`
`cancelled
`
`19
`
`16.
`
`cancelled
`
`
`
`Appendix - Page 1 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`1
`
`17.
`
`cancelled
`
`2
`
`18.
`
`cancelled
`
`3
`
`19.
`
`cancelled
`
`4
`
`20.
`
`cancelled
`
`5
`
`21.
`
`cancelled
`
`6
`
`22.
`
`cancelled
`
`7
`
`23.
`
`cancelled
`
`8
`
`24.
`
`cancelled
`
`9
`
`25.
`
`cancelled
`
`10
`
`26.
`
`cancelled
`
`11
`
`27.
`
`cancelled
`
`12
`
`28.
`
`cancelled
`
`13
`
`29.
`
`cancelled
`
`14
`
`30.
`
`cancelled
`
`15
`
`31.
`
`cancelled
`
`16
`
`32.
`
`cancelled
`
`17
`
`33.
`
`cancelled
`
`18
`
`34.
`
`cancelled
`
`19
`
`35.
`
`cancelled
`
`20
`
`36.
`
`cancelled
`
`
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`Appendix - Page 2 of 45
`
`
`

`

`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`IPR2020-00261
`Patent 8,269,523
`
`1
`
`37.
`
`cancelled
`
`2
`
`38.
`
`cancelled
`
`3
`
`39.
`
`cancelled
`
`4
`
`40.
`
`cancelled
`
`5
`
`41.
`
`cancelled
`
`6
`
`42.
`
`cancelled
`
`7
`
`43.
`
`cancelled
`
`8
`
`44.
`
`cancelled
`
`9
`
`45.
`
`cancelled
`
`10
`
`46.
`
`cancelled
`
`11
`
`47.
`
`cancelled
`
`12
`
`48.
`
`cancelled
`
`13
`
`49.
`
`(Contingent substitute for original claim 1): An integrated circuit device
`
`14
`
`comprising a plurality of sub-integrated circuit blocks and a routing network, and
`
`15
`
`Said each plurality of sub-integrated circuit blocks comprising a plurality of
`
`16
`
`inlet links and a plurality of outlet links; and
`
`17
`
`Said routing network comprising of a plurality of stages
`
`, in each said sub-
`
`18
`
`integrated circuit block, starting from the lowest stage of 1 to the highest stage of
`
`19
`
`, where [
`
`]
`
`; and
`
`
`
`Appendix - Page 3 of 45
`
`
`y
`
`y
`
`1y
`
`1y
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`Said routing network comprising a plurality of switches of size
`
`, where
`
`, in each said stage and each said switch of size
`
` having
`
` inlet links and
`
` outlet links; and
`
`Said plurality of outlet links of said each sub-integrated circuit block are
`
`1
`
`2
`
`3
`
`4
`
`5
`
`directly connected to said inlet links of said switches of its corresponding said
`
`6
`
`lowest stage of 1, and said plurality of inlet links of said each sub-integrated circuit
`
`7
`
`block are directly connected from said outlet links of said switches of its
`
`8
`
`corresponding said lowest stage of 1; and
`
`9
`
` Said each sub-integrated circuit block comprising a plurality of forward
`
`10
`
`connecting links connecting from switches in a lower stage to switches in its
`
`11
`
`immediate succeeding higher stage, and also comprising a plurality of backward
`
`12
`
`connecting links connecting from switches in a higher stage to switches in its
`
`13
`
`immediate preceding lower stage; and
`
`14
`
`Said each sub-integrated circuit block comprising a plurality straight links in
`
`15
`
`said forward connecting links from switches in said each lower stage to switches in
`
`16
`
`its immediate succeeding higher stage and a plurality cross links in said forward
`
`17
`
`connecting links from switches in said each lower stage to switches in its
`
`18
`
`immediate succeeding higher stage, and further comprising a plurality of straight
`
`19
`
`links in said backward connecting links from switches in said each higher stage to
`
`
`
`Appendix - Page 4 of 45
`
`
`dd 
`
`2d
`
`dd 
`
`d
`
`d
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`1
`
`switches in its immediate preceding lower stage and a plurality of cross links in
`
`2
`
`said backward connecting links from switches in said each higher stage to switches
`
`3
`
`in its immediate preceding lower stage,
`
`4
`
`said plurality of sub-integrated circuit blocks arranged in a two-dimensional
`
`5
`
`grid of rows and columns, and
`
`6
`
`said all straight links are connecting from switches in each said sub-
`
`7
`
`integrated circuit block are connecting to switches in the same said sub-integrated
`
`8
`
`circuit block; and said all cross links are connecting as either vertical or horizontal
`
`9
`
`links between switches in two different said sub-integrated circuit blocks which are
`
`10
`
`either placed vertically above or below, or placed horizontally to the left or to the
`
`11
`
`right,
`
`12
`
`each said plurality of sub-integrated circuit blocks comprising same number
`
`13
`
`of said stages and said switches in each said stage, regardless of the size of said
`
`14
`
`two-dimensional grid so that each said plurality of sub-integrated circuit block with
`
`15
`
`its corresponding said stages and said switches in each stage is replicable in both
`
`16
`
`vertical direction or horizontal direction of said two-dimensional grid.
`
`17
`
`
`
`
`
`Appendix - Page 5 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`1
`
`50.
`
`(Contingent substitute for original claim 2): The integrated circuit
`
`2
`
`device of claim 49, said two-dimensional grid of said sub-integrated circuit blocks
`
`3
`
`with their corresponding said stages and said switches in each stage is scalable by
`
`4
`
`any power of 2, and,
`
`5
`
`for each multiplication of 2 of the size of total said sub-integrated circuit
`
`6
`
`blocks, by adding one more stage of switches and the layout is placed in hypercube
`
`7
`
`format and also the cross links between said one more stage of switches are
`
`8
`
`connected in hypercube format.
`
`9
`
`51.
`
`(Contingent substitute for original claim 3): The integrated circuit
`
`10
`
`device of claim 50, wherein said cross links in succeeding stages are connecting as
`
`11
`
`alternative vertical and horizontal links between switches in said sub-integrated
`
`12
`
`circuit blocks.
`
`13
`
`52.
`
`(Contingent substitute for original claim 4): The integrated circuit
`
`14
`
`device of claim 51, wherein said cross links from switches in a stage in one of said
`
`15
`
`sub-integrated circuit blocks are connecting to switches in the succeeding stage in
`
`16
`
`another of said sub-integrated circuit blocks so that said cross links are either
`
`17
`
`vertical links or horizontal and vice versa, and hereinafter such cross links are
`
`18
`
`“shuffle exchange links”).
`
`
`
`Appendix - Page 6 of 45
`
`
`

`

`IPR2020-00261
`Patent 8,269,523
`
`
`
`
`Paper No. 35
`Patent Owner’s Motion to Amend
`
`1
`
`53.
`
`(Contingent substitute for original claim 5): The integrated circuit
`
`2
`
`device of claim 52, wherein said all horizontal shuffle exchange links between
`
`3
`
`switches in any two corresponding said succeeding stages are substantially of equal
`
`4
`
`length and said vertical shuffle exchange links between switches in any two
`
`5
`
`corresponding said succeeding stages are substantially of equal length in the entire
`
`6
`
`said integrated circuit device.
`
`7
`
`54.
`
`(Contingent substitute for original claim 6): The integrated circuit
`
`8
`
`device of claim 53, wherein the shortest horizontal shuffle exchange links are
`
`9
`
`connecting at the lowest stage and between switches in two nearest neighboring
`
`10
`
`said sub-integrated circuit blocks, and length of the horizontal shuffle exchange
`
`11
`
`links is doubled in each succeeding stage; and the shortest vertical shuffle
`
`12
`
`exchange links are connecting at the lowest stage and between switches in two
`
`13
`
`nearest neighboring said sub-integrated circuit blocks, and length of the vertical
`
`14
`
`shuffle exchange