`
`Paper No. 50
`Filed: December 22, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`INTEL CORPORATION and XILINX, INC.,1
`
`Petitioners
`
`v.
`
`FG SRC LLC,
`
`Patent Owner
`
`____________________
`
`CASE NO.: IPR2020-01449
`PATENT NO. 7,149,867
`____________________
`
`PETITIONER’S SUR-REPLY IN OPPOSITION TO PATENT OWNER’S
`REVISED MOTION TO AMEND
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Xilinx, Inc. filed a motion for joinder and petition in IPR2021-00633, which were
`granted, and, therefore, has been joined as petitioner in this proceeding.
`
`
`
`
`
`TABLE OF CONTENTS
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`
`Page
`
`Introduction .......................................................................................................... 1
`I.
`II. PO fails its burden to meet the statutory and regulatory
`requirements ......................................................................................................... 1
`A. PO fails to show it proposes a reasonable number of substitute
`claims ............................................................................................................. 1
`B. PO fails to show that its amendments do not add new matter....................... 3
`C. PO fails to show that its amendments do not enlarge the claim
`scope .............................................................................................................. 7
`III. The proposed claims are unpatentable even if PO had met its burden ................ 8
`A. Proposed amended claims 20 and 21 are unpatentable ................................. 8
`1. Zhang-Gupta discloses a reconfigurable processor that is
`“neither integrated within nor comprises a conventional
`microprocessor” ....................................................................................... 8
`2. The art renders obvious a reconfigurable processor that
`operates independent of and in parallel with a conventional
`microprocessor ........................................................................................ 9
`3. The art discloses the “configured to” limitation of claim 21 ................ 12
`B. Proposed claims 28 and 32 are unpatentable over the prior art .................. 12
`IV. Conclusion ......................................................................................................... 12
`
`
`
`
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`ii
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`TABLE OF AUTHORITIES
`
`Cases
`
` Page(s)
`
`1964 Ears, LLC v. Jerry Harvey Audio Holdings, LLC,
`IPR2017-01084, Paper 60 (PTAB April 2, 2019) ................................................ 6
`
`AG v. NIKE, Inc.,
`IPR2013-00067, Paper 69 (PTAB Sep. 18, 2021) ............................................ 2, 3
`
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01406, Paper 83 (PTAB Nov. 26, 2018) ............................................... 4
`
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) ........................................ 1, 2, 3
`
`Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLC,
`IPR2020-00923, Paper 25 (PTAB May 7, 2021) ................................................. 2
`
`Respironics, Inc. v. Zoll Med. Corp.,
`Case No. IPR2013-00322, 2014 WL 4715644 (PTAB Sept. 17,
`2014), vacated on other grounds, 656 F. App’x 531 (Fed. Cir. 2016) ................ 4
`
`Santarus, Inc. v. Par Pham., Inc.,
`694 F.3d 1344 (Fed. Cir. 2012) ............................................................................ 5
`
`Rules and Regulations
`
`Code of Federal Regulations
`Title 37, Section 42.63(a) ..................................................................................... 9
`
`
`
`
`
`iii
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`
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`TABLE OF EXHIBITS
`
`Description
`Exhibit No.
`Exhibit 1001 U.S. Patent No. 7,149,867 to Daniel Poznanovic, et al., filed June
`16, 2004, and issued on December 12, 2006 (the “’867 patent”).
`Exhibit 1002 Prosecution history of the ’867 patent.
`Exhibit 1003 X. Zhang et al., Architectural Adaptation of Application-Specific
`Locality Optimizations, IEEE (1997) (“Zhang”).
`Exhibit 1004 R. Gupta, Architectural Adaptation in AMRM Machines, IEEE
`(2000) (“Gupta”).
`Exhibit 1005 A. Chien and R. Gupta, MORPH: A System Architecture for
`Robust Higher Performance Using Customization,” IEEE (1996)
`(“Chien”).
`Exhibit 1006 Declaration of Stanley Shanfield, Ph.D.
`Exhibit 1007 RESERVED
`Exhibit 1008 RESERVED
`Exhibit 1009 RESERVED
`Exhibit 1010 Declaration of Rajesh K. Gupta
`Exhibit 1011 Chien et al., Safe and Protected Execution for the Morph/AMRM
`Reconfigurable Processor, IEEE (1999).
`Exhibit 1012 Declaration of Jacob Munford
`Exhibit 1013 RESERVED
`Exhibit 1014 Order Governing Proceedings - Patent Case by Judge Alan D
`Albright, filed on June 30, 2020 in FG SRC LLC v. Intel
`Corporation, No. 6:20-cv-00315-ADA (W.D. Tex.)
`Exhibit 1015 Scheduling Order by Judge Alan D Albright, filed on August 1,
`2020 in FG SRC LLC v. Intel Corporation, No. 6:20-cv-00315-
`ADA (W.D. Tex.)
`
`iv
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`Description
`Exhibit No.
`Exhibit 1016 Plaintiffs SRC Labs, LLC & Saint Regis Mohawk Tribe’s
`Opening Claim Construction Brief, filed on November 5, 2018 in
`SRC Labs, LLC et al. v. Amazon Web Services, Inc. et al., No.
`2:18-cv-00317-JLP (W.D. Was.)
`Exhibit 1017 Provisional Patent Application No. 60/479,339
`Exhibit 1018 Plaintiff’s Preliminary Infringement Contentions, submitted on
`July 23, 2020 in FG SRC LLC v. Intel Corporation, No. 6:20-cv-
`00315-ADA (W.D. Tex.)
`Exhibit 1019 Amended Scheduling Order by Judge Alan D Albright, filed on
`December 18, 2020 in UNM Rainforest Innovations v. Dell
`Technologies et al., No. 6:20-cv-00468-ADA (W.D. Tex.)
`Exhibit 1020 Docket Sheet from UNM Rainforest Innovations v. Dell
`Technologies et al., No. 6:20-cv-00468-ADA (W.D. Tex.)
`Exhibit 1021 Scheduling Order by Judge Alan D Albright, filed on November
`19, 2020 in Theta IP, LLC v. Samsung Electronics Co., Ltd. et al.,
`No. 6:20-cv-00160-ADA (W.D. Tex.)
`Exhibit 1022 Agreed Post-Markman Scheduling Order by Judge Alan D
`Albright, filed on December 3, 2020 in Videoshare, LLC v.
`Google LLC and Youtube, LLC, No. 6:19-cv-00663-ADA (W.D.
`Tex.)
`Exhibit 1023 Docket Sheet from H-E-B, LP v. Wadley Holdings, LLC, dba
`nICE Coolers et al., No. 6:20-cv-00081-ADA (W.D. Tex.)
`Exhibit 1024 Western District of Texas Order by Chief Judge Orlando L.
`Garcia
`regarding Court Operations Under
`the Exigent
`Circumstances Created by the COVID-19 Pandemic, filed on
`March 13, 2020 in all cases.
`Exhibit 1025 Western District of Texas Eleventh Supplemental Order by Chief
`Judge Orlando L. Garcia Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic,
`filed on December 10, 2020 in all cases.
`Exhibit 1026 December 23, 2020 email from H. Santasawatkul to Counsel
`Exhibit 1027 Declaration of Gordon MacPherson
`Exhibit 1028 Declaration of Eileen D. McCarrier
`
`v
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`Description
`Exhibit No.
`Exhibit 1029 Declaration of Austin M. Schnell
`Exhibit 1030 Supplemental Declaration of Rajesh K. Gupta, Ph.D.
`Exhibit 1031 Supplemental Declaration of Jacob Robert Munford
`Exhibit 1032 RESERVED
`Exhibit 1033 District Court Claim Construction Order
`Exhibit 1034 Declaration of Stanley Shanfield, Ph.D.
`Exhibit 1035 March 12, 2021 email from M. Shore to B. Nash
`Exhibit 1036 March 31, 2021 email from M. Shore to Court and Counsel
`Exhibit 1037 U.S. Patent No. 5,737,631 to Trimberger, filed April 5, 1995, and
`issued on April 7, 1998 (“Trimberger”).
`Exhibit 1038 Plaintiff FG SRC’s Opening Claim Construction Brief, filed on
`November 17, 2020 in FG SRC LLC v. Intel Corporation, No.
`6:20-cv-00315-ADA (W.D. Tex.)
`Exhibit 1039 Deposition transcript of Rajesh K. Gupta, Ph.D.
`Exhibit 1040 Deposition transcript of Gordon MacPherson (IEEE)
`Exhibit 1041 Assignment to FG SRC, LLC
`Exhibit 1042 Chapter 7 Case Schedules, In re DirectStream LLC, Case No. 20-
`10534, 2020 WL 3483549, ECF No. 3 (Bankr. D. Del. 2020)
`(Walrath, J.)
`Exhibit 1043 Deposition transcript of Stanley Shanfield, Ph.D.
`Exhibit 1044 Deposition transcript of William Mangione-Smith
`Exhibit 1045 Declaration of Stanley Shanfield, Ph.D.
`to Daniel
`Exhibit 1046 U.S. Patent Publication No. 2003/0046530A1
`Poznanovic, filed December 5, 2001, and published on March 6,
`2003 (“Poznanovic”).
`
`
`
`
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`vi
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`IPR2020-01449
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`LIST OF ABBREVIATIONS
`
`Abbreviation
`Pet.
`
`PRPR
`
`Institution
`
`MTA
`
`RMTA
`
`Resp.
`
`Prelim. Guid.
`
`Opp. Amend.
`
`Reply Amend.
`
`Description
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 1, Petition
`for Inter Partes Review of U.S. Patent No. 7,149,867
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 11,
`Petitioner’s Reply to Preliminary Response
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 13,
`Granting Institution of Inter Partes Review
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 26, Patent
`Owner’s Motion to Amend
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 41, Patent
`Owner’s Revised Motion to Amend
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 34, Patent
`Owner’s Response to Petition
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 38,
`Preliminary Guidance Patent Owner’s Motion to Amend
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 45,
`Petitioner’s Opposition to Patent Owner’s Revised Motion to
`Amend
`Intel Corp. v. FG SRC LLC, IPR2020-01449, Paper 49, Patent
`Owner’s Reply in Support of Revised Motion to Amend
`
`
`NOTE ON EMPHASIS: All emphasis in the brief is added unless otherwise
`indicated.
`
`
`vii
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`I.
`
`Introduction
`
`PO’s reply does not cure the motion’s many defects. PO exceeds the one-to-
`
`one substitution presumption as a hedge if the panel finds broadening, but that is
`
`not a justified basis that meets PO’s burden. PO continues to ignore requirements
`
`for showing written description support, and the passages it now quotes for the first
`
`time in reply do not support its new limitations. PO also does not rebut arguments
`
`showing certain proposed claims are broadening despite PO bearing that burden.
`
`PO also does not distinguish its claims over the asserted combination. PO’s
`
`contention about Zhang’s simulator lacks evidentiary support and is rebutted by
`
`Zhang itself, and PO’s argument about Poznanovic’s MAP is irrelevant to the
`
`language of its limitation and to the asserted combination. Thus, PO’s motion
`
`should be denied on multiple grounds as set forth below and in the Opposition.
`
`II.
`
`PO fails its burden to meet the statutory and regulatory requirements
`
`A. PO fails to show it proposes a reasonable number of substitute claims
`
`PO has not met its burden to show a reasonable number of substitute claims
`
`because the determination is made on a claim-by-claim basis, not total claim
`
`number, and PO did not “explain in the motion to amend [1] the need for the
`
`additional claims and [2] why the number of proposed claims is reasonable.”
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4-5 (PTAB Feb.
`
`25, 2019) (precedential); see also Opp. Amend. 3-4.
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`1
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`PO identifies for the first time in reply a purported “need” to offer multiple
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`substitutes for claims 1, 3, and 4 by arguing that, because the Board rejected PO’s
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`prior “clarification” amendments for impermissible broadening, it should be
`
`permitted a hedge against that same conclusion on amended claim 21 by proposing
`
`additional claim 20 “without the offending language.” Reply Amend. 1-2; see also
`
`Prelim. Guid. 6-11. But as Petitioner explained, substitute claim 21’s purported
`
`“clarification” is designed to fix PO’s failed infringement theory by expanding the
`
`claim scope, see Opp. Amend. 4, and a desire to hedge against an unfavorable
`
`determination on that issue is neither a reasonable nor proper justification.
`
`PO also argues that its number of substitute claims is reasonable by again
`
`noting that the total number of claims is the same and that claims are “similar,”
`
`relying again on preliminary guidance in Offshore Technical Compliance, LLC v.
`
`Innovative Pressure Testing, LLC, IPR2020-00923, Paper 25 (PTAB May 7,
`
`2021). Reply Amend. 1-2. But the determination is made on a claim-by-claim
`
`basis, not total claim number, Lectrosonics, IPR2018-01129, Paper 15 at 5, and in
`
`Offshore, unlike here, the motion proposed only one substitute claim for one
`
`challenged (but disclaimed) claim. See Offshore, IPR2020-00923, Paper 25.
`
`PO’s reliance on adidas AG v. NIKE, Inc., IPR2013-00067, Paper 69,
`
`(PTAB Sep. 18, 2021) is similarly misplaced. In that case, the PTAB found the
`
`one-for-one presumption “overcome by the total number of canceled claims [46]
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`2
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`and the manifest reasonableness of the number of proposed substitute claims [4]
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`offered in lieu of those canceled claims.” See id. at 14-15. Here, unlike the total
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`reduction in adidas from 46 to 4 claims, PO proposes to cancel only three claims
`
`and arrive at the same total (19). Thus, adidas does not support PO’s proposal.
`
`Because PO cannot show a need to offer multiple amendments and that the
`
`number of substitute claims is reasonable, the motion should be denied.
`
`B. PO fails to show that its amendments do not add new matter
`
`PO’s reply fails to correct its motion’s failure to comply with any of the
`
`requirements articulated in the Board’s regulations or precedential Lectrosonics
`
`decision for meeting PO’s burden to show that its amendments do not add new
`
`matter. Opp. Amend. 4-11. For example, PO refuses to cite to the original
`
`disclosure or earlier-filed provisional, arguing without legal support that its
`
`“citation to the actual patent disclosure is sufficient for the purposes of this IPR”
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`and that Petitioner’s position is thus “rendered asinine.” See Reply Amend. 4.
`
`Similarly, PO continues to not identify any written description support for any
`
`limitations in the dependent claims, apparently contending that this is not
`
`necessary for “dependent claims which are amended only by virtue of depending
`
`from that revised proposed amended independent claim.” Id.; but see Lectrosonics,
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`IPR2018-01129, Paper 15 at 8 (“In addition, the motion must set forth written
`
`description support for each proposed substitute claim as a whole, and not just the
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`3
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`features added by the amendment. This applies equally to independent claims and
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`dependent claims, even if the only amendment to a dependent claim is in the
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`identification of the claim from which it depends.”)
`
`PO accuses Petitioner of raising “form-over-substance” and taking a “head-
`
`in-the-sand” approach, but PO bears the burden on its motion and its repeated
`
`failure to meet these requirements reflects a lack of substance to do so. For
`
`example, PO has failed to offer any evidence or argument to show that any of the
`
`dependent claim limitations have written description support. And PO’s string
`
`citations for the independent claims do not meet its burden because string citations
`
`alone are insufficient to show written description support—regardless of whether
`
`they are in the motion or an appended claim listing. Intel Corp. v. Alacritech, Inc.,
`
`IPR2017-01406, Paper 83 at 43-49 (PTAB Nov. 26, 2018). That is because “[i]t is
`
`not the responsibility of the Board to search through the string citations to find
`
`sufficient written description support for each element.” Id.; see also Respironics,
`
`Inc. v. Zoll Med. Corp., Case No. IPR2013-00322, 2014 WL 4715644, at *13
`
`(PTAB Sept. 17, 2014) (“[PO’s] string citations amount to little more than an
`
`invitation to us (and to [Petitioner], and to the public) to peruse the cited evidence
`
`and piece together a coherent argument for them. This we will not do; it is the
`
`province of advocacy.”), vacated on other grounds, 656 F. App’x 531 (Fed. Cir.
`
`2016). PO cannot place its burdens on the Board, Petitioners, and the public.
`
`4
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`PO’s belated explanations in reply, if considered, are also insufficient to
`
`meet its burden. For example, PO relies only on attorney argument to contend that
`
`the patent’s description in column 6, lines 20-25 “clarifies that the RP is in the
`
`memory subsystem, separate and apart from the primary conventional processor,
`
`and operates independent of and in parallel.” Reply Amend. 5. But at most, that
`
`description only establishes that the reconfigurable processors 100 are
`
`implemented within the memory subsystem of a conventional computer. It does
`
`not describe, for example, whether or how a reconfigurable processor might
`
`operate relative to a conventional processor, i.e., whether in series or parallel,
`
`dependent, or independent. Thus, despite PO’s conclusory attorney argument, the
`
`passage cannot support PO’s new “independent and in parallel with” limitation
`
`because it does not show that this specific operational requirement was within the
`
`inventor’s possession. See Opp. Amend 8-9.
`
`Nor is that passage sufficient to support PO’s new negative limitation
`
`requiring that the reconfigurable processor is neither integrated within nor
`
`comprises a conventional processor. The passage does not disclose a reason to
`
`exclude a reconfigurable processor from being integrated within or comprising a
`
`conventional processor, nor does it disclose a reconfigurable processor integrated
`
`within or comprising a conventional processor as an excludable alternative. Thus,
`
`the passage is not sufficient to support PO’s negative limitation. Santarus, Inc. v.
`
`5
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`Par Pham., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative limitations are
`
`adequately supported when the specification describes a reason to exclude the
`
`relevant limitation.”); 1964 Ears, LLC v. Jerry Harvey Audio Holdings, LLC,
`
`IPR2017-01084, Paper 60 at 44-46 (PTAB April 2, 2019) (negative limitation not
`
`supported because disclosure does not reasonably convey that sound bores could
`
`be but purposefully were not adjoined by a mechanical coupling).
`
`For the new “data [required/necessary] for computations” limitations of
`
`claims 28 and 32, PO relies exclusively on descriptions supporting that
`
`reconfigurable hardware must be configured. See Reply Amend. 10, 11-12. But
`
`none of PO’s quotes or citations support that the term “data [required/necessary]
`
`for computations” includes instantiation/configuration data. Id. To the contrary,
`
`the specification uses the phrase “data required for computation” to describe data
`
`presented to the computational logic in an already instantiated/configured system.
`
`EX1001 7:23-33. Moreover, each claim also requires that the data prefetch unit
`
`read/write (or transfer) only the same “data [required/necessary] for computations”
`
`which PO’s amendment would impermissibly broaden to include
`
`instantiation/configuration data. Opp. Amend. 9-11; see also Part II.C., infra. Yet
`
`PO’s cited passages do not support that the data prefetch unit reads/writes (or
`
`transfers) instantiation/configuration data. Thus, PO fails to meet its burden to
`
`show written description support for these limitations.
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`6
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`C.
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`PO fails to show that its amendments do not enlarge the claim scope
`
`PO fails to meet its burden to show that certain amendments do not enlarge
`
`the original claim scope. For claim 21, as Petitioner explained, and PO does not
`
`address in reply, the original claim’s “only” limitation applies in all instances,
`
`whereas PO contends that the same limitation under its proposed “configured to”
`
`amendment would not apply before the data prefetch unit has been configured.
`
`Opp. Amend. 12-13; Reply Amend 8-9. PO contends that “reconfigurable
`
`hardware must—by definition—be configured before it can operate,” Reply
`
`Amend. 8, but it fails to define what it means by “configured” in that context or to
`
`cite any evidence in support. Moreover, PO’s contention that reconfigurable
`
`hardware “must necessarily be configured” before it can operate, id., conflicts with
`
`PO’s contention in the next sentence that reconfigurable hardware “must
`
`necessarily retrieve configuration data, id. 8-9, because PO appears to argue both
`
`that reconfigurable hardware cannot operate unless configured but also that
`
`reconfigurable hardware necessarily operates to retrieve configuration data.2 Thus,
`
`PO fails to show that the claim is not broadening.
`
`
`2 Petitioner noted Zhang-Gupta uses information to configure its components but
`
`did not “admit” that computational data retrieved by a data prefetch includes such
`
`information, as PO contends. See Paper 45 at 24-25; Reply Amend. 8-9.
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`7
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`For claims 28 and 32, PO makes no substantive argument, stating in
`
`conclusory fashion and without evidentiary support only that “[b]y definition,
`
`additional limitations narrow claim scope.” Reply Amend. 10, 12. PO does not
`
`address Petitioner’s arguments that these claims enlarge claim scope by redefining
`
`“data [required/necessary] for computations” to include instantiation/configuration
`
`information. See Opp. Amend. 14-16. Thus, PO has not met its burden to show that
`
`the claims do not enlarge the original claim scope.
`
`III. The proposed claims are unpatentable even if PO had met its burden
`
`A.
`
`Proposed amended claims 20 and 21 are unpatentable
`
`1.
`
`Zhang-Gupta discloses a reconfigurable processor that is “neither
`integrated within nor comprises a conventional microprocessor”
`
`Petitioner has shown that Zhang-Gupta renders obvious PO’s new negative
`
`limitations requiring that the claimed reconfigurable processor is “neither
`
`integrated within nor comprises a conventional microprocessor.” Opp. Amend. 17-
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`19. In reply, PO contends, for the first time and without supporting evidence, that
`
`Zhang’s simulation is purportedly based on a conventional processor and then
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`concludes that “[t]his is not a reconfigurable processor.” Reply Amend. 5-6.
`
`PO’s argument in reply fails to rebut Petitioner’s showing. First, PO lacks
`
`evidence to support its contention. PO notes that Zhang’s simulator is based on
`
`MINT and then contends—through only attorney argument and an Internet link—
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`8
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`that MINT is based on a conventional MIPS R3000 processor. Reply Amend. 6.
`
`But evidence is submitted through exhibits, not through unauthenticated citation to
`
`the Internet. See 37 CFR § 42.63(a). Second, even if taken as true that MINT
`
`simulation software uses files compiled for a MIPS-based multiprocessor
`
`architecture, it does not establish that Zhang discloses simulating a conventional
`
`processor. Nothing suggests that MINT was limited to conventional
`
`microprocessors, as opposed to other processor types, and Zhang’s simulator is
`
`only “based on MINT.” EX1003-15 C1:16-19. Moreover, Zhang teaches that its
`
`MINT-based simulator “interprets program binaries and models configurable logic
`
`behaviorly [sic],” id., which confirms its use for simulating reconfigurable
`
`processors comprised of configurable logic, not conventional microprocessors
`
`comprised of fixed logic. Third, PO’s strained supposition about Zhang’s
`
`simulator fails because Zhang teaches that its processing elements are comprised of
`
`reconfigurable logic, EX1003-13 C2:44-49 & Fig. 2, which meet the agreed
`
`construction of a reconfigurable processor. Opp. Amend. 18; Pet. 30; Institution
`
`48-49; EX1001 5:26-29. Thus, Zhang-Gupta teaches a reconfigurable processor.
`
`2.
`
`The art renders obvious a reconfigurable processor that operates
`independent of and in parallel with a conventional microprocessor
`
`Petitioner has shown that it would have been obvious to improve on Zhang-
`
`Gupta’s reconfigurable processor by implementing it in independent and parallel
`
`9
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`operation with a conventional processor as taught by Poznanovic. Opp. Amend.
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`19-23. In reply, PO contends that Poznanovic’s MAP processor, although
`
`reconfigurable, is “tightly integrated with and dependent upon a general-purpose
`
`RISC processor,” citing ¶¶ 62 and 92 of Poznanovic in support. Reply Amend. 6-7.
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`PO’s argument is irrelevant first because PO admits that Poznanovic teaches
`
`reconfigurable processors operating independent of and in parallel with at least
`
`some conventional processors, see Reply Amend. 7, which is sufficient to meet the
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`limitation’s requirements. Specifically, Petitioner showed that Poznanovic’s Fig. 1
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`teaches a reconfigurable processor (MAP 12, green) that is arranged in parallel
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`with conventional static microprocessors (100, blue) to allow for independent
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`operation. Opp. Amend. 20; see also EX1046 at Fig 1; ¶¶[0009], [0013], [0041];
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`EX1045 ¶10. PO concedes that arrangement and operation but argues that the
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`MAP is nevertheless dependent upon some other purported (and undepicted) RISC
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`processor. See Reply Amend. 7 (“Just because the reconfigurable processor may be
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`independent of some conventional processors in that system, as the one shown in
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`figure 1 for example, does not mean that it is not dependent on another
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`conventional processor in the system.”). But PO’s purported distinction is
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`irrelevant to its limitation, which requires only that the reconfigurable processor
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`operate independent of and in parallel with “a conventional microprocessor,” not
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`all conventional microprocessors.
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`PO’s argument is also irrelevant because it ignores the asserted combination,
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`which replaces Poznanovic’s reconfigurable MAP processor with Zhang-Gupta’s
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`reconfigurable processor. See Opp. Amend. 19-23. PO contends that the MAP’s
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`interface can be controlled by commands in a ComList, Reply Amend. 7 (citing
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`EX1046 ¶[0062]), but the command processor that processes those commands is
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`within the MAP processor itself. See id. ¶[0041] & Fig. 2 (depicting command
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`processor 42 within MAP 12); id. ¶[0043] (“Through the use of an interface
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`control program, including a command list, known as the ComList, the command
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`processor 42 processes commands, makes control decisions, and manages the
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`transfer of data.”). Thus, PO’s argument misses the point because it relates to an
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`aspect unique to Poznanovic’s MAP 12, which is replaced by Zhang-Gupta’s
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`reconfigurable processor in the asserted combination.
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`Zhang-Gupta’s reconfigurable processor meets PO’s new negative
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`limitation, see Part III.A.1., supra; Opp. Amend. 17-19, and Poznanovic teaches
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`operating a reconfigurable processor independent of and in parallel with a
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`conventional processor, as PO concedes as discussed above. Accordingly, when
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`considered in the asserted combination, i.e., Zhang-Gupta’s reconfigurable
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`processor in independent and parallel operation with a conventional processor as
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`taught by Poznanovic, the prior art renders this limitation obvious.
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`3.
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`The art discloses the “configured to” limitation of claim 21
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`PO does not identify in reply any patentable distinction over the prior art
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`related to claim 21’s “configured to” limitation. Reply Amend. 7-9.
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`B.
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`Proposed claims 28 and 32 are unpatentable over the prior art
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`PO’s only arguments against the unpatentability of claims 28 and 32 cite to
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`and incorporate its arguments against claim 20 (and even then it mistakenly refers
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`to each as “proposed amended claim 21”). Reply Amend. 11, 12. Yet claims 28
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`and 32 each include an additional limitation that has no similar limitation in claim
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`20. PO therefore does not dispute that Petitioner has shown that each of these
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`additional limitations is rendered obvious by the prior art. See Opp. Amend. 24, 25.
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`Thus, PO’s arguments against the unpatentability of claims 28 and 32 fail for the
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`same reasons discussed above. See Parts III.A.1-2., supra.
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`IV. Conclusion
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`PO’s motion should be denied for multiple independent grounds. PO fails its
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`burden on every statutory and regulatory requirement, including by introducing
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`amendments that lack written description support and enlarge the claim scope.
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`Moreover, the instituted combinations in view of Poznanovic render each of PO’s
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`amendments obvious and therefore unpatentable.
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`Dated: December 22, 2021
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`Respectfully submitted,
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`
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`By: /s/ Brian C. Nash
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`
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`
`
`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: (512) 580-9629
`Facsimile: (512) 580-9601
`Email: brian.nash@pillsburylaw.com
`
`
`Counsel for Petitioner Intel Corporation
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`CERTIFICATE OF COMPLIANCE
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`IPR2020-01449
`U.S. Patent No. 7,149,867
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this
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`“PETITIONER’S SUR-REPLY IN OPPOSITION TO PATENT OWNER’S
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`REVISED MOTION TO AMEND” complies with page limitation of 37 C.F.R. §
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`42.24(a)(vi) because it is no more than twelve pages. I further certify that the
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`foregoing Response complies with the general format requirements of 37 C.F.R. §
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`42.6(a) and has been prepared using Microsoft Word in 14-point Times New Roman
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`proportional font.
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`Dated: December 22, 2021
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`By: /s/ Brian C. Nash
`
`
`
`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: (512) 580-9629
`Facsimile: (512) 580-9601
`Email: brian.nash@pillsburylaw.com
`
`
`
`
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`IPR2020-01449
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of “PETITIONER’S SUR-REPLY IN
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`OPPOSITION TO PATENT OWNER’S REVISED MOTION TO AMEND”
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`was served electronically via e-mail on December 22, 2021, in its entirety on the
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`following:
`
`Jay P. Kesan, Reg. No. 37,488
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`
`Ari Rafilson, Reg. No. 58,693
`Shore Chan DePumpo LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`arafilson@shorechan.com
`
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`Dated: December 22, 2021
`
`By: /s/ Brian C. Nash
`
`
`
`
`
`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: (512) 580-9629
`Facsimile: (512) 580-9601
`Email: brian.nash@pillsburylaw.com
`
`Counsel for Petitioner Intel Corporation
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