UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
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`IPR2020-01449
`Patent No. 7,149,867
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`PATENT OWNER FG SRC LLC’S
`REVISED MOTION TO AMEND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01449
`Patent No. 7,149,867
`
`
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`PATENT OWNER FG SRC LLC’S
`REVISED MOTION TO AMEND
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`Exhibit No.
`2001
`2002
`2003
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`2004
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`2005
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`2006
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`2007
`2008
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`2009
`2009-1
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`2009-2
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`2010
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`2011
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`2012
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`2013
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`LIST OF EXHIBITS
`
`Descriptions
`Declaration of Dr. Vojin Oklobdzija
`Cray, Britannica Online Encyclopedia
`Declaration of Brandon Freeman dated 10/25/18
`SRC Labs LLC and Saint Regis Mohawk Tribe v. Microsoft
`Corporation, No. 2:18-cv-00321-JLR, Dkt. 125 (W.D. Wash. Oct.
`25, 2018)
`Plaintiff’s Original Complaint For Patent Infringement in FG SRC
`LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D. Texas), filed
`April 24, 2020
`Plaintiff’s First Amended Complaint For Patent Infringement in
`FG SRC LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D.
`Texas), filed April 24, 2020
`Declaration of Mark Wollgast dated 09/10/18
`Xilinx, Inc. v. Saint Regis Mohawk Tribe, IPR2018-0195
`COTS Journal, UAVs Lead Push for Embedded Supercomputing
`Press Release: SRC Computers Chosen by Lockheed Martin for
`U.S. Army Program
`Declaration of Henning Schmidt
`Declaration of Henning Schmidt, Exhibit A, IEEE Xplore:
`Advanced Search
`Declaration of Henning Schmidt, Exhibit B, IEEE Xplore:
`Advanced Search Results
`Declaration Of Ryan Kastner, Ph.D. In Support Of FG SRC
`LLC’s Opening Claim Construction Brief in FG SRC LLC v. Intel
`Corp., No. 6:20-cv-00315-ADA (W.D. Texas), filed April 24,
`2020
`Peter McMahon, High Performance Reconfigurable Computing for
`Science and Engineering Applications (Thesis Oct. 2006).
`Caliga, Delivering Acceleration: The Potential for Increased HPC
`Application Performance Using Reconfigurable Logic
`D. A. Buell, D. Caliga, J. P. Davis, G. Quan, “The DARPA
`boolean equation benchmark on a reconfigurable computer,”
`Proceedings of the Military and Aerospace Programmable Logic
`Devices (MAPLD) Conference, Washington, DC, 8-10 September
`2004
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`i
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`
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`Exhibit No.
`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
`2023
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`2024
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`2025
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`2026
`2027
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`2028
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`2029
`2030
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`Descriptions
`El-Araby, The Promise of High-Performance Reconfigurable
`Computing
`FG SRC LLC’s Opening Claim Construction Brief in FG SRC
`LLC v. Intel Corp., No. 6:20-cv-00315-ADA (W.D. Texas),
`filed April 24, 2020
`Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial
`Holdings, LLC, No. 6:20-cv-00200, Text Order dated Aug. 2, 2020
`(W.D. Tex.)
`MultiMedia Content Mgmt LLC v. Dish Network L.L.C., No. 6:18-
`cv-00207, Dkt. 73 (W.D. Tex.)
`Solas OLED v. Dell Techs. Inc., No. 6:19-cv-00514, Text Order
`dated June 23, 2020
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 28 (W.D. Tex. July 31, 2020)
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 24 (W.D. Tex. June 14, 2020)
`Kerr Machine Co. v. Vulcan Indus. Holdings, LLC, No. 6:20-cv-
`200, Dkt. 12 (W.D. Tex., June 14, 2020)
`Email from J. Yi to Counsel (Aug. 3, 2020)
`FG SRC LLC v. Intel Corp., No. 1:20-cv-00834, Dkt. 48 (W.D.
`Tex. Nov. 23, 2020) (Amended Schedule)
`Continental Intermodal Group - Trucking LLC v. Sand Revolution
`LLC, No. 7:18-cv-00147, Text Order dated July 22, 2020 (W.D.
`Tex.)
`Solas OLED v. Dell Techs. Inc., No. 6:19-cv-00515, Text Order
`dated Jun. 23, 2020
`2019-07-11 - DirectStream MSFT - Huppenthal Declaration
`Declaration of William Mangione-Smith, Ph.D., In Support of FG
`SRC LLC’s Motion to Amend
`Declaration of Dr. William Mangione-Smith in support of Patent
`Owner Response
`Deposition Transcript of Dr. Stanley Shanfield
`Declaration of William Mangione-Smith, Ph.D., In Support of FG
`SRC LLC’s Revised Motion to Amend
`
`
`ii
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`
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`I.
`II.
`III.
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`
`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................... 1
`A REASONABLE NUMBER OF CLAIMS ARE AMENDED. ............................ 2
`PROPOSED AMENDED CLAIMS ARE PATENTABLE. ................................... 3
`A.
`Proposed Amended Claim 20 (Amending Original Claim 1) ....................... 5
`A.
`Proposed Amended Claim 21 (Amending Claim 1) .................................... 10
`B.
`Proposed Amended Claim 28 (Replacing Claim 9)..................................... 11
`C.
`Proposed Amended Claim 32 (Replacing Claim 13)................................... 14
`IV. CONCLUSION ...................................................................................................... 16
`APPENDIX A ................................................................................................................... 18
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`i
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`CASES:
`
`TABLE OF AUTHORITIES
`
`Aqua Products, Inc. v. Matal,
`, 872 F.3d 1290 (Fed. Cir. 2017) ............................................................................... 4
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`, 598 F.3d 1336 (Fed. Cir. 2010) ............................................................................... 3
`ADMINISTRATIVE ORDERS:
`
`Compliance v. Testing,
`Case IPR2020-00923, 2021 WL 1833328, at *2 (P.T.A.B. May 7, 2021) .......... 3
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 (PTAB, February 25, 2019) .................................2, 4, 6
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 27 (PTAB June 3, 2013)..................................................... 3
`STATUTES:
`
`35 U.S.C. § 101 ................................................................................................................. 5
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`35 U.S.C. § 103 ...................................................................................................... 5, 8, 11
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`35 U.S.C. § 112 ................................................................................................................. 5
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`35 U.S.C. § 316 ................................................................................................................. 2
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`REGULATIONS:
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`37 C.F.R. § 42.121 ................................................................................................... passim
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`ii
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`
`
`INTRODUCTION
`I.
`Patent Owner FG SRC LLC (hereinafter “SRC” or “Patent Owner”)
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`respectfully submits this Revised Motion to Amend (“Motion”) to request
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`amendment of certain claims of U.S. Patent No. 7,149,867 (the “’867 patent).
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`On March 3, 2021, the Board instituted trial of claims 1–19 of U.S. Patent No.
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`7,149,867 B2 (the “’867 patent”). Paper 13 (“Inst. Dec.”). After institution, FG
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`SRC LLC (“Patent Owner”) filed a Patent Owner’s Motion to Amend (Paper 26
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`“Motion”) and submitted a supporting declaration of William Mangione-Smith,
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`Ph.D. Ex. 2027. Intel Corporation (“Petitioner”) filed an Opposition to the Motion
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`to Amend (Paper 36 “Opposition”) and submitted a supporting declaration of
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`Stanley Shanfield, Ph.D. Ex. 1034. Patent Owner properly requested that its Motion
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`to Amend be subject to the MTA Pilot Program pursuant to 84 FR 9497, and
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`accordingly reserved the right to file a revised Motion to Amend subject to the
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`Board’s preliminary guidance. Accordingly, the Board issued its Preliminary
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`Guidance – Patent Owner’s Motion To Amend on Sep. 15, 2021. Paper 38. Patent
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`Owner’s Revised Motion to Amend responds thereto.
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`Patent Owner’s Revised Motion proposes to replace claims 1–19 of the ’867
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`patent with substitute claims 20–38. The proposed amendments do not enlarge the
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`scope of the claims, are responsive to at least one ground of unpatentability instituted
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`1
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`in this proceeding, do not introduce new matter, are supported by the original
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`application, and are patentable over the presumed prior art.1
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`Petitioner has challenged original claims 1 – 19 of the ’867 patent on the
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`following grounds:
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`Ground 1 – Claims 1-2, 4-8, 13-19 are unpatentable as obvious over
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`Zhang in view of Gupta as understood by one of ordinary skill in the art.
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`Ground 2 – Claims 3 and 9-12 are unpatentable as obvious over Zhang in
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`view of Gupta and Chien as understood by one of ordinary skill in the art.
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`Patent Owner requests amendments of independent claims 1, 9, and 13 to
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`provide further limitation and clarification of its claimed invention and reflect the
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`proper scope of these claims considering the specification.
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`Petitioner further asserted U.S. Patent No. 5,737,631 to Trimberger, filed
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`April 5, 1995, and issued on April 7, 1998 (“Trimberger”) (EX1037) in its
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`Opposition.
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`II. A REASONABLE NUMBER OF CLAIMS ARE AMENDED.
`Pursuant to 37 C.F.R § 42.121(a)(3), a motion to amend may propose a
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`reasonable number of substitute claims for each challenged claim. Generally, it is
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`presumed “that only one substitute claim would be needed to replace each
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`
`1 Patent Owner contends that Petitioner has not sufficiently established that either
`Zhang, Gupta, or Chien, each of which is a non-patent publication, qualifies as prior art.
`That issue has been addressed more fully in Patent Owner’s Response. For purposes of
`this Motion, the prior art status of Zhang, Gupta, and Chien will be presumed.
`2
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`
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`challenged claim,” but that challenge may be rebutted by a showing of need. 37
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`CFR § 42.121(a)(3); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
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`at 4-5 (PTAB Feb. 25, 2019). Petitioner challenges 19 claims (1 through 19). SRC
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`proposes only 4 substantive substitute claim (two for challenged independent claim
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`1 and one each for challenged independent claims 9 and 13) and cancelled 3 claims
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`(original claims 6, 7, and 8). Dependent claims 21-27, 29-31, and 33-38 are amended
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`only by virtue of depending from the proposed amended independent claims. Patent
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`Owner thus proposes only 19 substitute claims for the 19 originally challenged
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`claims, which is a reasonable number. 35 U.S.C.A. § 316 (Patent Owner may
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`“cancel a challenged claim or propose a reasonable number of substitute claims.”)
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`Further, since the requested amendments in all substantively amended claims are
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`similar and do not present an undue burden on the Board, Patent Owner’s request is
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`reasonable. Compliance v. Testing, No. IPR2020-00923, 2021 WL 1833328, at *2
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`(P.T.A.B. May 7, 2021) (“[the] proposed amendments are similar to the amendments
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`proposed for substitute claims 19 and 30” and were therefore found “reasonable as
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`it would not present an undue burden on the Board”).
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`III. PROPOSED AMENDED CLAIMS ARE PATENTABLE.
`In accordance with 35 U.S.C. § 316(d)(1)(B), Patent Owner may propose a
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`reasonable number of substitute claims for the claims challenged by Petitioner.
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`These substitutions may not broaden the scope of the claims or introduce new
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`claimed matter. 35 U.S.C. § 316(d)(3); 37 CFR § 42.121(a)(2)(ii). Proposed
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`3
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`
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`amendments should respond to a ground of unpatentability raised by the Petitioner
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`in the trial. 37 CFR § 42.121(a)(2)(i). The claim listing in Appendix A clearly
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`indicates the specific changes for each proposed amended claim and sets forth: (1)
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`the support in the original disclosure of the patent for each added or amended claim;
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`and (2) the support for each claim in an earlier-filed disclosure for which benefit of
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`the filing of the earlier filed disclosure is sought.
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`Appendix A thereby shows that the amended claims would reasonably convey
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`to one of ordinary skill in the art that the inventors were in possession of the claimed
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`subject matter as of the filing date of the ’867 patent. 37 CFR §§ 42.121(b)(1)-(2);
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`see also Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 3 (PTAB Jun.
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`3, 2013) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
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`Cir. 2010) (en banc)). The date of the provisional patent application from which the
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`’867 patent derives priority is irrelevant since the presumed prior art predates both.
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`The proposed amended claims do not exceed the scope of the original claims
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`of the ’867 patent. Any deletions are solely for correcting syntax in the proposed
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`amended claims, and no claim limitations are removed so as to impermissibly
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`expand the scope of the claims. The added claim elements further narrow the scope
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`of the claims. The proposed amended claims thus meet the requirements of §
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`42.121(a)(2)(i) and (ii). Lectrosonics, IPR2018-01129, Paper 15 at 5-6. The
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`Board’s preliminary guidance objected to various modifications of claim language
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`4
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`
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`on the basis that it was broadening claim scope. Paper 38 at 6-11. All language that
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`the Board identified as objectionable has been removed.
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`Patent Owner’s proposals are directly responsive to Petitioner’s grounds for
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`invalidation of the current claims. The burden thus shifts to Petitioner to show that
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`the amended claims are unpatentable over the prior art. Aqua Products, Inc. v.
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`Matal, 872 F.3d 1290, 1324 (Fed. Cir. 2017). Nonetheless, Patent Owner confirms
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`that no combination of the prior art of record teaches the subject matter of the
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`proposed amended claims. Patent Owner here discusses the closest known art to the
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`features discussed above, which Patent Owner believes is the art raised by Intel in
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`its petition. As explained herein, the proposed amended claims are patentable over
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`the presumed art at issue in this proceeding, i.e., Zhang, Gupta, and Chien, and the
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`new prior art proffered by Petitioner’s Opposition, i.e., Trimberger.
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`Proposed Amended Claim 20 (Amending Original Claim 1)
`A.
`Proposed Amended Claim 20 is set forth below. There are no deletions, and
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`underlining is used to indicate additions.
`
`Proposed Amended Claim 20. A reconfigurable processor that instantiates
`an algorithm as hardware comprising:
`a first memory having a first characteristic memory bandwidth and/or
`memory utilization; and
`a data prefetch unit coupled to the memory, wherein the data prefetch unit
`retrieves only computational data required by the algorithm from a
`second memory of second characteristic memory bandwidth and/or
`memory utilization and places the retrieved computational data in the
`first memory wherein the data prefetch unit operates independent of
`and in parallel with logic blocks using the computational data, and
`5
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`
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`wherein at least the first memory and data prefetch unit are configured
`to conform to needs of the algorithm, and the data prefetch unit is
`configured to match format and location of data in the second memory,
`wherein the reconfigurable processor is neither integrated within nor
`comprises a conventional microprocessor, and
`wherein the reconfigurable processor operates independent of and in
`parallel with a conventional microprocessor.
`A motion to amend is proper where the amendment “respond[s] to a ground
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`of unpatentability involved in the trial.” 37 CFR § 42.121(a)(2)(i). Where the
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`proposed amendment is intended to address the grounds for institution, additional
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`modifications may be permissible to address potential § 101 or § 112 issues.
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`Lectrosonics, IPR2018-01129, Paper 15, 5-6. The Petition here necessarily alleges
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`that every element of each challenged claim is disclosed by a combination of prior
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`art references under 35 U.S.C. §103. Based thereon, the Board found in its
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`institution decision that “Petitioner has shown sufficiently that Zhang in
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`combination with Gupta would have rendered claims 1, 2, 4–8, 13–19 obvious.”
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`Paper 13, at 71. Adding the proposed substantive limitations is thus responsive to
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`this ground for institution.
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`Proposed amended claim 20 narrows the scope of original claim 1 because it only
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`adds two limitations and does not remove any claim elements. Further, the new claim
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`elements that “the reconfigurable processor is neither integrated within nor comprises a
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`conventional microprocessor” and that “the reconfigurable processor operates
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`independent of and in parallel with a conventional microprocessor” are not taught by
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`6
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`
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`Zhang, Gupta, Chien, or Trimberger. “By requiring that the reconfigurable processor is
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`neither integrated within nor comprises a conventional microprocessor, the amendment
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`excludes from the claim scope the use of a conventional CPU together with only limited
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`reprogrammable peripheral components as well as “reconfigurable system” which has a
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`CPU integrated in it.” EX2030 ¶21. “In other words, the reconfigurable processor that
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`instantiates an algorithm as hardware does not utilize a conventional microprocessor in
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`any way for the purposes of said algorithm.” Id. The new limitation further “explicitly
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`excludes the use of a conventional CPU as the computational unit of the claimed
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`reconfigurable processor together with only limited reprogrammable peripheral
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`components from the claim scope.” EX2030 ¶ 22. The second new limitation further
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`narrows claim scope by requiring that the reconfigurable processor operate independent
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`of and in parallel with a conventional microprocessor and is similarly limiting.
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`Both new limitations are directly responsive to the Zhang, Gupta, and Chien prior
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`art, which relies on the use of a CPU together with only “small pockets of
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`reprogrammable logic.” EX2030 ¶22 (citing Ex. 1003, at 13, col. 2:44-49). As shown
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`by Dr. Mangione-Smith, Zhang discloses that “the processor running the main
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`application is a conventional CPU, not a reconfigurable processor.”
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`7
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`
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`EX2030 ¶23 (citing Ex. 1003, Fig. 2). Zhang discloses the use of programmable logic
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`(i.e., an FPGA) “only as means to deliver data for use by that conventional CPU. Zhang
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`specifically states that it includes only ‘small blocks of programmable logic implemented
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`into key elements of a baseline architecture’ to enable ‘the customization of architectural
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`mechanisms and policies to match an application.’” EX2030 ¶23 (citing Ex. 1003, at 13,
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`col. 2:44-49). Zhang’s small blocks of programmable hardware facilitate movement of
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`data between memory hierarchies to reduce latency at the point of data consumption. Id.
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`Unlike the ’867 patent however, the final consumer is a conventional CPU, not a
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`reconfigurable processor. Id.
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`Gupta builds on Zhang and proposes a CPU based prototype to implement the
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`simulations performed by Zhang. The purpose of the proposed Adaptive Memory
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`8
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`
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`Reconfiguration Management (AMRM) prototype board is to simulate a range of
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`memory hierarchies for applications running on a host processor (a conventional
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`CPU). Ex. 1004, at 9. Like Zhang, Gupta only uses small bits of programmable
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`logic in the AMRM prototype board, which is used for “configuration” of the
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`memory controller. Id. A description of the command interface is provided as well
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`as the command execution. Ex. 1004, at 10. This is the conventional way of
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`requesting data with a CPU. The basic steps are the same: (1) the CPU requests
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`data; (2) if available in the cache, data is returned to the CPU; (3) if not, a cache miss
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`triggers prefetching a whole line into cache; and then (4) data is returned to the CPU.
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`Notably, the prefetch data unit is not modified to conform to the needs of the
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`particular application/algorithm. Ex. 2028, ¶105. Like Zhang, in Gupta and Chien,
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`the main application remains in software (executed on the CPU). Ex. 2028, ¶70.
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`Gupta this relies on the operation of a CPU which is expressly excluded by the new
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`claim limitation of this proposed amended claim.
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`Similarly, the new cited prior art reference, Trimberger, “teaches a tightly
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`integrated conventional microprocessor that is augmented with a reconfigurable
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`component for implementing special purpose instructions. Thus, Trimberger is
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`intended to extend the instruction set of a conventional microprocessor.” EX2030 ¶25.
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`The Board’s citation to Trimberger’s disclosure of “the use of field programmable
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`gate array (FPGA) logic configured as a co-processor attached to the same bus as
`
`the host processor” with “the field programmable co-processor execut[ing] [a] sub-
`9
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`
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`routine” similarly describes a microprocessor tightly coupled to a reconfigurable
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`instruction execution unit. Paper 38 at 16 (citing Trimberger). The new limitation
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`of the proposed amended claims specifically excludes such tightly coupled
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`arrangement.
`
`Thus, the cited prior art does not teach or suggest the proposed amended
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`limitation and does not render obvious proposed amended claim 20.
`
`Proposed Amended Claim 21 (Amending Claim 1)
`A.
`Proposed Amended Claim 21 is set forth below. [Brackets] are used to indicate
`
`deletions, and underlining is used to indicate additions.
`
`Proposed Amended Claim 20. A reconfigurable processor that instantiates
`an algorithm as hardware comprising:
`a first memory having a first characteristic memory bandwidth and/or
`memory utilization; and
`a data prefetch unit coupled to the memory, wherein the data prefetch unit is
`configured to retrieve[s] only computational data required by the
`algorithm from a second memory of second characteristic memory
`bandwidth and/or memory utilization and places the retrieved
`computational data in the first memory wherein the data prefetch unit
`operates independent of and in parallel with logic blocks using the
`computational data, and wherein at least the first memory and data
`prefetch unit are configured to conform to needs of the algorithm, and
`the data prefetch unit is configured to match format and location of
`data in the second memory,
`wherein the reconfigurable processor is neither integrated within nor
`comprises a conventional microprocessor, and
`wherein the reconfigurable processor operates independent of and in
`parallel with a conventional microprocessor.
`
`10
`
`
`
`Proposed amended claim 21 is proper for the same reasons as proposed
`
`amended claim 20. The new proposed limitations “wherein the reconfigurable
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`processor is neither integrated within nor comprises a conventional microprocessor”
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`and “wherein the reconfigurable processor operates independent of and in parallel
`
`with a conventional microprocessor” are identical to the corresponding proposed
`
`limitation of claim 20 and are allowable for the same reasons.
`
`The only difference between proposed amended claim 21 and proposed
`
`amended claim 20 is the addition of the claim requirement that the data prefetch unit
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`must be “configured” before it can retrieve data. The purpose of this correction is
`
`to make explicit what is already implied in original claim 1, which is that the “data
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`prefetch unit [is] configured to conform to needs of the algorithm” before it can
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`retrieve data as claimed. The limitation makes explicit the truism that the data
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`prefetch unit must first be “configured” before it can “retrieve only computational
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`data required by the algorithm from a second memory.” This new limitation does
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`not broaden claim scope and is directly responsive to the cited ground for institution
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`because it adds a new claim limitation.
`
`Proposed Amended Claim 28 (Replacing Claim 9)
`B.
`Proposed Amended Claim 28 is set forth below. There are no deletions, and
`
`underlining is used to indicate additions.
`
`Proposed Amended Claim 28. A reconfigurable hardware system,
`comprising:
`a common memory; and
`
`11
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`
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`one or more reconfigurable processors that can instantiate an algorithm as
`hardware coupled to the common memory, wherein at least one of the
`reconfigurable processors includes a data prefetch unit to read and
`write only data required for computations by the algorithm between the
`data prefetch unit and the common memory wherein the data prefetch
`unit operates independent of and in parallel with logic blocks using the
`computational data, and wherein the data prefetch unit is configured to
`conform to needs of the algorithm and match format and location of
`data in the common memory,
`wherein data required for computations by the algorithm comprises only
`data required for the instantiation and execution of the algorithm,
`wherein the at least one of the reconfigurable processors is neither
`integrated within nor comprises a conventional microprocessor,
`and
`wherein the at least one of the reconfigurable processors operates
`independent of and in parallel with a conventional microprocessor.
`As detailed previously, an amendment must “respond to a ground of
`
`unpatentability involved in the trial.” 37 CFR § 42.121(a)(2)(i). The Petition here
`
`necessarily alleges that every element of each challenged claim is disclosed by a
`
`combination of prior art references under 35 U.S.C. §103. Based thereon, the Board
`
`found in its institution decision that “Petitioner has adequately shown that Zhang,
`
`Gupta, and Chien teach the limitations in claim 9 for purposes of institution.” Paper
`
`13, at 73. Adding the proposed substantive limitations is thus responsive to this
`
`ground for institution.
`
`Proposed amended claim 28 is narrower than the original claim 9. The additional
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`claim elements add additional limitations that narrow the claim. First, the limitation
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`“wherein the at least one of the reconfigurable processors is neither integrated within nor
`
`12
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`
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`comprises a conventional microprocessor” narrows claim scope for the reasons explained
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`above regarding proposed amended claim 20. “The amendment explicitly excludes the
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`use of a conventional CPU as the computational unit of the claimed reconfigurable
`
`processor, which is directly responsive to the Zhang, Gupta, and Chien prior art, which
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`relies on the use of a CPU together with only ‘small pockets of reprogrammable logic.’”
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`EX2030 ¶34 (citing Ex. 1003, at 13, col. 2:44-49; and Fig. 2). Second, the addition of
`
`the claim element “wherein the at least one of the reconfigurable processors operates
`
`independent of and in parallel with a conventional microprocessor” further limits claim
`
`scope because it “explicitly excludes the use of a reconfigurable processor that does not
`
`operate independent of and in parallel with a conventional microprocessor, as that
`
`purportedly disclosed by Trimberger.” EX2030 ¶27. Third, the amendment that “data
`
`required for computations by the algorithm comprises only data required for the
`
`instantiation and execution of the algorithm” limits claim scope “excludes any other kind
`
`of information being read or written that might otherwise be considered computational
`
`data.” EX2030 ¶36. Further, for the reasons explained regarding proposed amended
`
`claim 20, these new claim limitations are not taught or suggested by the cited prior art.
`
`The new claim limitation “wherein data required for computations by the
`
`algorithm comprises only data required for the instantiation and execution of the
`
`algorithm” limits the scope of the original Claim 1 by “exclude[ing] any other kind of
`
`information being read or written that might otherwise be considered computational
`
`data.” EX2030 ¶36. The combination of Zhang, Gupta, Chien, and Trimberger does not
`13
`
`
`
`teach or suggest this proposed amended limitations and therefore does not render
`
`obvious proposed amended claim 28.
`
`Proposed Amended Claim 32 (Replacing Claim 13)
`C.
`Proposed Amended Claim 32 is set forth below. There are no deletions, and
`
`underlining is used to indicate additions.
`
`Proposed Amended Claim 32. A method of transferring data comprising:
`transferring data between a memory and a data prefetch unit in a
`reconfigurable processor, and
`transferring the data between a computational unit and the data access unit,
`wherein the computational unit and the data access unit, and the data
`prefetch unit are configured to conform to needs of an algorithm
`implemented on the computational unit and transfer only data
`necessary for computations by the computational unit, and wherein the
`prefetch unit operates independent of and in parallel with the
`computational unit,
`wherein data necessary for computations by the computational unit
`comprises only data necessary for the configuration and execution
`of computations by the computational unit, and
`wherein the computational unit is neither integrated within nor
`comprises a conventional microprocessor, and
`wherein the reconfigurable processor operates independent of and in
`parallel with a conventional microprocessor.
`As detailed previously, and amendment must “respond to a ground of
`
`unpatentability involved in the trial.” 37 CFR § 42.121(a)(2)(i). The Petition here
`
`necessarily alleges that every element of each challenged claim is disclosed by a
`
`combination of prior art references under 35 U.S.C. §103. Based thereon, the Board
`
`found in its institution decision that “Petitioner has shown sufficiently that Zhang in
`
`14
`
`
`
`combination with Gupta would have rendered claims 1, 2, 4–8, 13–19 obvious.”
`
`Paper 13, at 71. Adding the proposed substantive limitations is thus responsive to
`
`this ground for institution.
`
`Proposed amended claim 32 is narrower than the original claim 13. The additional
`
`claim elements add additional limitations that narrow the claim. First, the limitation
`
`“wherein the at least one of the reconfigurable processors is neither integrated within nor
`
`comprises a conventional microprocessor” narrows claim scope for the reasons explained
`
`above regarding proposed amended claim 20. “The amendment explicitly excludes the
`
`use of a conventional CPU as the computational unit of the claimed reconfigurable
`
`processor, which is directly responsive to the Zhang, Gupta, and Chien prior art, which
`
`relies on the use of a CPU together with only ‘small pockets of reprogrammable logic.’”
`
`EX2030 ¶34 (citing Ex. 1003, at 13, col. 2:44-49; and Fig. 2). Second, the addition of
`
`the claim element “wherein the at least one of the reconfigurable processors operates
`
`independent of and in parallel with a conventional microprocessor” further limits claim
`
`scope because it “explicitly excludes the use of a reconfigurable processor that does not
`
`operate independent of and in parallel with a conventional microprocessor, as that
`
`purportedly disclosed by Trimberger.” EX2030 ¶27. Third, the amendment that “data
`
`required for computations by the algorithm comprises only data required for the
`
`instantiation and execution of the algorithm” limits claim scope “excludes any other kind
`
`of information being read or written that might otherwise be considered computational
`
`15
`
`
`
`data.” EX2030 ¶36. Further, for the reasons explained regarding proposed amended
`
`claim 20, these new claim limitations are not taught or suggested by the cited prior art.
`
`The new claim limitation “wherein data required for computations by the
`
`algorithm comprises only data required for the instantiation and execution of the
`
`algorithm” limits the scope of the original Claim 1 by “exclude[ing] any other kind of
`
`information being read or written that might otherwise be considered computational
`
`data.” EX2030 ¶36. The combination of Zhang, Gupta, Chien, and Trimberger does not
`
`teach or suggest this proposed amended limitations and therefore does not render
`
`obvious proposed amended claim 28.
`
`IV. CONCLUSION
`For the reasons set forth herein, Patent Owner asserts that the proposed
`
`amended claims meet are statutory requirements and respectfully requests that the
`
`Board allow proposed amended claims 20, 28, and 32, and dependent amended
`
`claims 21-27, 29-31, and 33-38.
`
`
`
`Date: September 29, 2021
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`/s/ Jay P. Kesan
`
`DiMuroGinsberg, PC-
`DGKeyIP Group
`Jay P. Kesan
`Reg. No. 37,488
`Cecil E. Key (admission pro hac vice
`pending)
`1750 Tysons Blvd., Suite 1500
`
`16
`
`
`
`Tysons Corner, VA 22102
`Phone: 703-289-5118
`jkesan@dimuro.com
`ckey@dimuro.com
`
`Michael W. Shore
`mshore@shorechan.com
`Alfonso G. Chan
`achan@shorechan.com
`Ari B. Rafilson
`arafilson@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`Telephone: 214-593-9110
`Facsimile: 214-593-9111
`
`17
`
`
`
`APPENDIX A
`Patent Owner’s proposed amended claims are set forth below, including (1) the
`
`support in the original disclosure of U.S. Patent No. 7,149,867 (“’867 patent”) for each
`
`amended claim; and (2) the support for each claim in Provisional Application No.
`
`60/479,339, filed on Jun. 18, 2003 (“’339 application”). Use of [brackets] indicates
`
`deleted text (if any) and bold underlining indicates inserted text. For ease of reference,
`
`the below table indicates the correspondence between the original and the amended claims:
`
`1.
`
`2
`3
`
`4
`
`CLAIM CROSS REFERENCE TABLE
`Original Claim Amended Claim
`1
`20 (Amended)
`21 (Amended)
`22
`23
`24
`2
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