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
`REPLY IN SUPPORT OF REVISED MOTION TO AMEND
`
`

`

`
`
`Exhibit No.
`2001
`2002
`2003
`
`2004
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`2005
`
`2006
`
`2007
`2008
`
`2009
`2009-1
`
`2009-2
`
`2010
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`2011
`
`2012
`
`2013
`
`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
`
`i
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`

`

`Exhibit No.
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`2023
`
`2024
`
`2025
`
`2026
`2027
`
`2028
`
`2029
`2030
`
`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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`

`

`I.
`II.
`
`
`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................... 4
`A REASONABLE NUMBER OF CLAIMS ARE AMENDED. ............................ 4
`A.
`In Light Of The Board’s Findings Regarding The Original Claims
`And The Proposed Amended Claims, Patent Owner’s Revised
`Proposed Amended Claims Are Needed........................................................ 5
`III. THE PROPOSED AMENDED CLAIMS DO NOT INTRODUCE NEW
`SBJECT MATTER. .................................................................................................. 8
`IV. THE PROPOSED AMENDED CLAIMS ARE PATENTABLE............................ 9
`A.
`Proposed Amended Claim 20 (Replacing Original Claim 1) ........................ 9
`1. Written Description Support For the Proposed Amendments. .......... 10
`2.
`Revised Proposed Amended Claim 20 does not Broaden Claim
`Scope. ................................................................................................. 11
`Revised Proposed Amended Claim 20 Responds to a Ground
`for Institution. .................................................................................... 11
`Revised Proposed Amended Claim 20 Is Patentable Over The
`Cited Prior Art. .................................................................................. 11
`Proposed Amended Claim 21 (Replacing Claim 1)..................................... 14
`1. Written Description Support For the Proposed Amendments. .......... 15
`2.
`Revised Proposed Amended Claim 21 does not Broaden Claim
`Scope. ................................................................................................. 15
`Revised Proposed Amended Claim 21 Responds to a Ground
`for Institution. .................................................................................... 16
`Revised Proposed Amended Claim 21 Is Patentable Over The
`Cited Prior Art. .................................................................................. 16
`Proposed Amended Claim 28 (Replacing Claim 9)..................................... 17
`1. Written Description Support For the Proposed Amendments. .......... 17
`2.
`Revised Proposed Amended Claim 28 does not Broaden Claim
`Scope. ................................................................................................. 19
`Revised Proposed Amended Claim 28 Responds to a Ground
`for Institution. .................................................................................... 19
`Revised Proposed Amended Claim 28 Is Patentable Over The
`i
`
`3.
`
`4.
`
`3.
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`4.
`
`B.
`
`C.
`
`3.
`
`4.
`
`

`

`D.
`
`3.
`
`4.
`
`Cited Prior Art. .................................................................................. 19
`Proposed Amended Claim 32 (Replacing Claim 13)................................... 19
`1. Written Description Support For the Proposed Amendments. .......... 20
`2.
`Revised Proposed Amended Claim 32 does not Broaden Claim
`Scope. ................................................................................................. 21
`Revised Proposed Amended Claim 32 Responds to a Ground
`for Institution. .................................................................................... 21
`Revised Proposed Amended Claim 32 Is Patentable Over The
`Cited Prior Art. .................................................................................. 22
`CONCLUSION ...................................................................................................... 22
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`
`V.
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`
`ii
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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
`
`35 U.S.C. § 103 ...................................................................................................... 5, 8, 11
`
`35 U.S.C. § 112 ................................................................................................................. 5
`
`35 U.S.C. § 316 ................................................................................................................. 2
`
`REGULATIONS:
`
`37 C.F.R. § 42.121 ............................................................................................................. 1
`
`37 C.F.R. § 42.24 (a)(1)(vi) ............................................................................................. 5
`
`iii
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`

`

`INTRODUCTION
`I.
`Patent Owner FG SRC LLC (hereinafter “SRC” or “Patent Owner”)
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`respectfully submits this Reply in Support of Its Revised Motion to Amend
`
`(“Motion”) to request amendment of certain claims of U.S. Patent No. 7,149,867
`
`(the “’867 patent).
`
`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
`
`reasonable number of substitute claims for each challenged claim. Generally, it is
`
`presumed “that only one substitute claim would be needed to replace each
`
`challenged claim,” but that challenge may be rebutted by a showing of need. 37
`
`C.F.R. § 42.121(a)(3); Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
`
`at 4-5 (PTAB Feb. 25, 2019). Petitioner challenges 19 claims (1 through 19). SRC
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`proposes only 4 substantive substitute claims (two for challenged independent claim
`
`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 a proposed amended independent claims. Patent
`
`Owner thus proposes only 19 substitute claims for the 19 originally challenged
`
`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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`4
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`

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`reasonable. Compliance v. Testing, No. IPR2020-00923, 2021 WL 1833328, at *2
`
`(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”).
`
`In Light Of The Board’s Findings Regarding The Original Claims
`A.
`And The Proposed Amended Claims, Patent Owner’s Revised Proposed
`Amended Claims Are Needed.
`Petitioner grossly exaggerates the proposed number of revised amended
`
`claims. The below table illustrates the de minimis difference between the two
`
`alternative amended claims for claim 1:
`
`Amended Claim 20
`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
`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
`
`Amended Claim 21
`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,
`5
`
`

`

`configured to match format and
`location of data
`in
`the second
`memory,
`
`is
`the data prefetch unit
`and
`configured to match format and
`location of data
`in
`the second
`memory,
`reconfigurable
`the
`wherein
`reconfigurable
`the
`wherein
`is neither
`integrated
`processor
`is neither
`integrated
`processor
`nor
`comprises
`a
`within
`nor
`comprises
`a
`within
`conventional microprocessor, and
`conventional microprocessor, and
`wherein
`the
`reconfigurable
`wherein
`the
`reconfigurable
`processor operates independent of
`processor operates independent of
`and in parallel with a conventional
`and in parallel with a conventional
`microprocessor.
`microprocessor.
`The only difference between revised proposed amended claim 20 (replacing
`
`original claim 1) and revised proposed amended claim 21 (also replacing original
`
`claim 1) is the highlighted language added to explicitly clarify what is already
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`implicitly required by original claim 1, which is that the reconfigurable hardware
`
`must first be configured as a data prefetch unit before it can function as a data
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`prefetch unit that “retrieves only computational data required by the algorithm” as
`
`claimed. Indeed, Petitioner inadvertently admits this point, as explained below.
`
`However, given that the Board’s preliminary guidance found every single instance
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`in which Patent Owner attempted to modify the original claim language for
`
`clarification broadening, there was a need to propose an alternative revised amended
`
`claim without that modification. Should the Board find that Patent Owner’s bona
`
`fide attempt to clarify the original claim language in revised proposed amended
`
`claim 21 is improper, it should simply proceed to analyze the claim without the
`
`offending language in revised proposed amended claim 20.
`
`6
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`

`

`Further, revised proposed amended claims 23 and 24 (replacing original claim
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`3), and 5 and 6 (replacing original claim 4) are amended only by virtue of depending
`
`from revised proposed amended claims 20 and 21. There are no further substantive
`
`amendments in these dependent claims.
`
`Finally, Patent Owner’s Revised Motion to Amend proposes to cancel three
`
`claims without replacement, thereby maintaining the total number of claims in the
`
`patent. “Here is a circumstance where the presumption against presenting more than
`
`one substitute claim for each original claim is overcome by the total number of
`
`canceled claims and the manifest reasonableness of the number of proposed
`
`substitute claims offered in lieu of those canceled claims.” adidas AG v. NIKE, Inc.,
`
`IPR2013-00067, Paper 69 at 14-15, Sep. 18, 2021 (finding that the proposed
`
`substitution of two claims in place of one original claim, and cancellation of forty-
`
`six original claims in favor of four proposed substitute claims constitutes a
`
`presentation of a reasonable number of substitute claims). Here, there is only one
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`instance of two substitute claims (20 and 21) being offered for one original claim (1)
`
`(and even then, only with a minor difference). The only two other revised proposed
`
`amended claims are substituted for one original claim each (revised proposed
`
`amended claim 29 for original claim 9, and revised proposed amended claim 32 for
`
`original claim 13. All other claims are amended only be virtue of being dependent
`
`on an amended independent claim.
`
`7
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`

`

`III. THE PROPOSED AMENDED CLAIMS DO NOT INTRODUCE NEW
`SBJECT MATTER.
`Petitioner raises multiple form-over-substance complaints about Patent
`
`Owner’s written description support in the revised motion to amend. First, Petitioner
`
`complains that “PO improperly relegates its purported support for each proposed
`
`claim to Appendix A’s claim listing, not the motion itself.” Paper 45 at 5 (citing
`
`Lectrosonics, Paper 15 at 8). However, Petitioner quotes Lectrosonics out of
`
`context. There, the Board made clear that “the claim listing may be filed as an
`
`appendix to the motion to amend and shall not count toward the page limit for the
`
`motion.” Lectrosonics, Paper 15 at 8. The requirement to set the written description
`
`support forth in the emotion itself is aimed to prevent parties from skirting the 25-
`
`page limit of a Motion to Amend. 37 C.F.R. § 42.24 (a)(1)(vi). Patent Owner’s
`
`Revised Motion to Amend included its written description support on pages 20-24,
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`well within the limit. Paper 29 at 20-24. Whether or not the written description
`
`support is provided within that 25-page limit before or after he headline “Appendix”
`
`is truly the definition of a form-over-substance argument.
`
`Second, Petitioner complains that “PO’s Appendix A cites to the issued patent
`
`rather than to the original application’s disclosure.” Paper 45 at 5-6. This complaint
`
`is also irrelevant because the cited art predates both the ’867 Patent (filed June 16,
`
`2004) as well as the provisional (filed June 18, 2003). Petitioner’s primary
`
`references Chien (EX1006), Zhang (EX1004), and Gupta (EX1005) are dated 1996,
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`8
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`

`

`1997, and 2000, respectively. Similarly, Petitioner’s additional prior art Trimberger
`
`(EX1037) and Poznanovic (EX1046) are dated 1998 and Mar. 6, 2003, respectively.
`
`Thus, without disclaiming priority to the provisional application if it were to make a
`
`difference for some as yet uncited prior art reference, citation to the actual patent
`
`disclosure is sufficient for the purposes of this IPR. Petitioner’s complaint that “PO
`
`fails to set forth support in the Provisional’s disclosure and thus fails to show benefit
`
`to that earlier filing date” is rendered asinine for the same reason.
`
`Finally, Petitioner’s complaint that “PO proposes fifteen substitute dependent
`
`claims without proffering any written description support for those claims.” This
`
`misrepresents the revised Motion to Amend which provide written description
`
`support for each element of each independent claim which is, of course, incorporated
`
`by reference in the dependent claims which are amended only by virtue of depending
`
`from that revised proposed amended independent claim. Petitioner’s head-in-the-
`
`sand approach should be fully discounted.
`
`IV. THE PROPOSED AMENDED CLAIMS ARE PATENTABLE.
`Proposed Amended Claim 20 (Replacing Original Claim 1)
`A.
`Proposed Amended Claim 20 is set forth below. There are no 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
`
`9
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`

`

`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
`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.
`Support For
`1. Written Description
`Amendments.
`Written description support for the proposed amended claim elements is
`
`the Proposed
`
`found, for example, in the ’867 Patent’s descriptions of its preferred embodiments.
`
`Specifically, the ’867 Patent teaches that
`
`a number of RPs 100 are implemented within a memory Subsystem of
`a conventional computer, such as on devices that are physically
`installed in dual inline memory module (DIMM) sockets of a
`computer. In this manner the RPs 100 can be accessed by memory
`operations and so coexist well with a more conventional hardware
`platform.
`’867 Patent at 6:20-25. This description clarifies that the RP is in the memory
`
`subsystem, separate and apart from the primary conventional processor, and operates
`
`independent of and in parallel. Further written description support for this proposed
`
`claim element is found at ’867 Patent at abstract; 3:64-4:3; 5:19-29; 5:34-37; 5:59-
`
`6:4; 6:5-31, 6:47-58; Figs. 1-7 and related the descriptions.
`
`10
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`

`

`Revised Proposed Amended Claim 20 does not Broaden
`2.
`Claim Scope.
`Revised proposed amended claim 20 narrows the scope of original claim 1 for the
`
`reasons set forth in the Revised Motion to Amend. Petitioner does not challenge this in
`
`its Response.
`
`Revised Proposed Amended Claim 20 Responds to a Ground
`3.
`for Institution.
`Revised proposed amended claim 20 is responsive to a ground for institution for
`
`the reasons set forth in the Revised Motion to Amend. Petitioner does not challenge this
`
`in its Response.
`
`Revised Proposed Amended Claim 20 Is Patentable Over
`4.
`The Cited Prior Art.
`The cited prior art in the Petition and Petitioner’s Response to Patent Owners
`
`Motion to Amend does not teach or suggest the proposed amended limitation and
`
`does not render obvious proposed amended claim 20 for the reasons set forth in the
`
`Revised Motion to Amend. Further, the Zhang simulation is based on a conventional
`
`processor: “We perform cycle-based system-level simulation using a program-
`
`driven simulator based on MINT [22) that interprets program binaries and models
`
`configurable logic blocks behaviorly.” EX1003 at 15. MINT is based on a
`
`conventional MIPS R3000 processor.1 This is not a reconfigurable processor.
`
`
`1 https://www.computer.org/csdl/proceedings-article/mascot/1994/00284422/12OmNxwnchJ.
`11
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`

`

`The newly cited Poznanovic reference (EX1046) (“Poznanovic”), by Daniel
`
`Poznanovic—the same inventor of the challenged ’867 Patent—similarly fails to
`
`anticipate or render obvious Revised Proposed Amended Claim 20. This makes
`
`sense since the same inventor, Mr. Poznanovic, filed for and was granted another
`
`different patent—the ’867 Patent. Specifically, Poznanovic—titled Interface For
`
`Integrating Reconfigurable Processors Into A General Purpose Computing
`
`System—discloses a RISC processor
`
`that
`
`is closely
`
`integrated with
`
`the
`
`reconfigurable hardware:
`
`[0062] The MAPs interface is controlled by commands in the ComList
`or direct commands issued by an instruction processor or another
`MAP. During compilation an application generates code for the
`standard instruction processor, ComLists for the MAP's interface, and
`hardware logic for the MAP's user array. ComLists are generated by
`the user application in order to coordinate data movement and control
`between the application code running in the instruction processor, and
`application logic running in the MAP's user array. Commands in the
`ComList correspond directly to instructions in a reduced instruction
`set computer (“RISC”) processor. These instructions are a small set
`of simple instructions for moving data, testing conditions, and
`branching. FPGA control processors can be reconfigured to function
`with various instruction sets, depending upon implementation needs.
`EX1046 at ¶ 62. This disclosure teaches that MAPs taught in Poznanovic comprise
`
`a RISC processor. This is confirmed further by the disclosure that “[0092]
`
`Register-to-Register Data Register Arithmetic/Logic Commands do register-to-
`
`register integer add and subtract operations, and OR, AND, and XOR bitwise
`
`logical operations.” Id. at ¶ 92. Therefore, the newly disclosed prior-art application
`
`described in Poznanovic discloses a reconfigurable processor that is tightly
`
`12
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`

`

`integrated with and dependent upon a general-purpose RISC processor. Just
`
`because the reconfigurable processor may be independent of some conventional
`
`processors in that system, as the one shown in figure 1 for example, does not mean
`
`that it is not dependent on another conventional processor in the system. Indeed,
`
`the Poznanovic reprogrammable processor is fully dependent upon a conventional
`
`RISC processor—even if there are other processors in the same system which are
`
`not related to the reconfigurable processor. In effect, Poznanovic discloses a
`
`reconfigurable processor in its system that is tightly integrated with and dependent
`
`upon one of the conventional processors in the system. The fact that the same
`
`system happens to contain another conventional processor that is not integrated with
`
`the reconfigurable hardware does not negate the fact that the reconfigurable
`
`hardware is indeed integrated with a conventional processor. Such a conventional
`
`RISC processor necessarily includes conventional instructions including to branch a
`
`program, load, and store values to memory, and do arithmetic and logical operations
`
`on data stored in registers. In Poznanovic, the MAP hardware is disclosed to do all
`
`of these. Not only does Poznanovic claim that it uses a RISC processor (as
`
`explained above), it also disclose all of the elements necessary to make it a
`
`conventional processor of the “RISC” type. Thus, Poznanovic does not disclose a
`
`reconfigurable processor “wherein the reconfigurable processor is neither integrated
`
`within nor comprises a conventional microprocessor,” and “wherein the
`
`13
`
`

`

`reconfigurable processor operates independent of and in parallel with a
`
`conventional microprocessor.”
`
`Proposed Amended Claim 21 (Replacing Claim 1)
`B.
`Proposed Amended Claim 21 is set forth below. [Brackets] are used to indicate
`
`deletions, and underlining is used to indicate additions.
`
`Proposed Amended Claim 21. 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.
`Revised proposed amended claim 21 is proper for the same reasons as revised
`
`proposed amended claim 20. 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 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
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`is that the “data prefetch unit [is] configured to conform to needs of the algorithm”
`
`before it can retrieve data as claimed. The limitation makes explicit the truism that
`
`the data prefetch unit must first be “configured” before it can “retrieve only
`
`computational data required by the algorithm from a second memory.” This new
`
`limitation does not broaden claim scope and is directly responsive to the cited ground
`
`for institution because it adds a new claim limitation.
`
`1. Written Description
`Amendments.
`Written description support for the claim elements is found for the reasons set
`
`the Proposed
`
`Support For
`
`forth regarding revised proposed amended claim 20 above. See Section IV.A.1.
`
`Revised Proposed Amended Claim 21 does not Broaden
`2.
`Claim Scope.
`Revised proposed amended claim 21 narrows the scope of original claim 1
`
`for the reasons set forth in the Revised Motion to Amend. Petitioner argues that the
`
`revised proposed amended claim element “configured to” broadens claim scope by
`
`removing restrictions on the type of the data that the data prefetch unit retrieves.
`
`Paper 45 at 12. This is nonsensical because the reconfigurable hardware must—by
`
`definition—be configured before it can operate. The proposed revision simply
`
`states what is already inherently true, that the reconfigurable hardware must
`
`necessarily be configured to implement a data prefetch unit before it can operate as
`
`a data prefetch unit and retrieve only computational data required by the algorithm.
`
`Importantly, Petitioner inadvertently admits that reconfigurable hardware must
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`necessarily retrieve configuration data in order to instantiate an algorithm as
`
`hardware and perform its computations in its opposition to the revised motion to
`
`amend: “Zhang necessarily uses information to instantiate an algorithm as
`
`hardware.” Paper 45 at 24; see also Zhang-Gupta necessarily uses information to
`
`configure its reconfigurable components.” Id. at 25. Petitioner thus admits that the
`
`claim limitation that the data prefetch unit “retrieve only computational data
`
`required by the algorithm” necessarily includes configuration data to first configure
`
`the reconfigurable hardware to instantiate a data prefetch unit in the first place.
`
`Revised Proposed Amended Claim 21 Responds to a Ground
`3.
`for Institution.
`Revised proposed amended claim 21 is responsive to a ground for institution for
`
`the reasons set forth in the Revised Motion to Amend. Adding new claim limitations, by
`
`definition, is responsive to a finding of obviousness or anticipation. Petitioner does not
`
`challenge this in its Response in any detail.
`
`Revised Proposed Amended Claim 21 Is Patentable Over
`4.
`The Cited Prior Art.
`The cited prior art in the Petition and Petitioner’s Response to Patent Owners
`
`Motion to Amend does not teach or suggest the proposed amended limitation and
`
`does not render obvious proposed amended claim 21 for the reasons set forth
`
`regarding revised proposed amended claim 20 above. See Section IV.A.4.
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`Proposed Amended Claim 28 (Replacing Claim 9)
`C.
`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
`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.
`Support For
`the Proposed
`1. Written Description
`Amendments.
`Written description support for the proposed amended claim elements
`
`“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
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`conventional microproces