`
`Paper No. 50
`Filed: December 22, 2021
`
`
`
`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
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`
`
`ii
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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”).
`
`
`
`
`
`vi
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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.
`
`1
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`PO identifies for the first time in reply a purported “need” to offer multiple
`
`substitutes for claims 1, 3, and 4 by arguing that, because the Board rejected PO’s
`
`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]
`
`2
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`and the manifest reasonableness of the number of proposed substitute claims [4]
`
`offered in lieu of those canceled claims.” See id. at 14-15. Here, unlike the total
`
`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”
`
`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,
`
`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
`
`3
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`features added by the amendment. This applies equally to independent claims and
`
`dependent claims, even if the only amendment to a dependent claim is in the
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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.
`
`6
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`C.
`
`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.
`
`7
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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-
`
`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
`
`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—
`
`8
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`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
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`operation with a conventional processor as taught by Poznanovic. Opp. Amend.
`
`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.
`
`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
`
`limitation’s requirements. Specifically, Petitioner showed that Poznanovic’s Fig. 1
`
`teaches a reconfigurable processor (MAP 12, green) that is arranged in parallel
`
`with conventional static microprocessors (100, blue) to allow for independent
`
`operation. Opp. Amend. 20; see also EX1046 at Fig 1; ¶¶[0009], [0013], [0041];
`
`EX1045 ¶10. PO concedes that arrangement and operation but argues that the
`
`MAP is nevertheless dependent upon some other purported (and undepicted) RISC
`
`processor. See Reply Amend. 7 (“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.”). But PO’s purported distinction is
`
`irrelevant to its limitation, which requires only that the reconfigurable processor
`
`operate independent of and in parallel with “a conventional microprocessor,” not
`
`all conventional microprocessors.
`
`10
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`PO’s argument is also irrelevant because it ignores the asserted combination,
`
`which replaces Poznanovic’s reconfigurable MAP processor with Zhang-Gupta’s
`
`reconfigurable processor. See Opp. Amend. 19-23. PO contends that the MAP’s
`
`interface can be controlled by commands in a ComList, Reply Amend. 7 (citing
`
`EX1046 ¶[0062]), but the command processor that processes those commands is
`
`within the MAP processor itself. See id. ¶[0041] & Fig. 2 (depicting command
`
`processor 42 within MAP 12); id. ¶[0043] (“Through the use of an interface
`
`control program, including a command list, known as the ComList, the command
`
`processor 42 processes commands, makes control decisions, and manages the
`
`transfer of data.”). Thus, PO’s argument misses the point because it relates to an
`
`aspect unique to Poznanovic’s MAP 12, which is replaced by Zhang-Gupta’s
`
`reconfigurable processor in the asserted combination.
`
`Zhang-Gupta’s reconfigurable processor meets PO’s new negative
`
`limitation, see Part III.A.1., supra; Opp. Amend. 17-19, and Poznanovic teaches
`
`operating a reconfigurable processor independent of and in parallel with a
`
`conventional processor, as PO concedes as discussed above. Accordingly, when
`
`considered in the asserted combination, i.e., Zhang-Gupta’s reconfigurable
`
`processor in independent and parallel operation with a conventional processor as
`
`taught by Poznanovic, the prior art renders this limitation obvious.
`
`11
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`3.
`
`The art discloses the “configured to” limitation of claim 21
`
`PO does not identify in reply any patentable distinction over the prior art
`
`related to claim 21’s “configured to” limitation. Reply Amend. 7-9.
`
`B.
`
`Proposed claims 28 and 32 are unpatentable over the prior art
`
`PO’s only arguments against the unpatentability of claims 28 and 32 cite to
`
`and incorporate its arguments against claim 20 (and even then it mistakenly refers
`
`to each as “proposed amended claim 21”). Reply Amend. 11, 12. Yet claims 28
`
`and 32 each include an additional limitation that has no similar limitation in claim
`
`20. PO therefore does not dispute that Petitioner has shown that each of these
`
`additional limitations is rendered obvious by the prior art. See Opp. Amend. 24, 25.
`
`Thus, PO’s arguments against the unpatentability of claims 28 and 32 fail for the
`
`same reasons discussed above. See Parts III.A.1-2., supra.
`
`IV. Conclusion
`
`PO’s motion should be denied for multiple independent grounds. PO fails its
`
`burden on every statutory and regulatory requirement, including by introducing
`
`amendments that lack written description support and enlarge the claim scope.
`
`Moreover, the instituted combinations in view of Poznanovic render each of PO’s
`
`amendments obvious and therefore unpatentable.
`
`
`
`12
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`Dated: December 22, 2021
`
`Respectfully submitted,
`
`
`
`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
`
`
`
`
`
`13
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this
`
`“PETITIONER’S SUR-REPLY IN OPPOSITION TO PATENT OWNER’S
`
`REVISED MOTION TO AMEND” complies with page limitation of 37 C.F.R. §
`
`42.24(a)(vi) because it is no more than twelve pages. I further certify that the
`
`foregoing Response complies with the general format requirements of 37 C.F.R. §
`
`42.6(a) and has been prepared using Microsoft Word in 14-point Times New Roman
`
`proportional font.
`
`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
`
`
`
`
`
`14
`
`
`
`IPR2020-01449
`U.S. Patent No. 7,149,867
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of “PETITIONER’S SUR-REPLY IN
`
`OPPOSITION TO PATENT OWNER’S REVISED MOTION TO AMEND”
`
`was served electronically via e-mail on December 22, 2021, in its entirety on the
`
`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
`
`
`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
`
`
`
`15
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
