throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`FLEX LOGIX TECHNOLOGIES INC.,
`
`Petitioner
`
`V.
`
`VENKAT KONDA,
`
`Patent Owner
`
`____________
`
`Case PGR2019-00037
`
`Patent 10,003,553 B2
`
`_________
`
`REVISED MOTION TO AMEND UNDER 37 C.F.R. § 42.221
`
`FLEX LOGIX EXHIBIT 1044
`Flex Logix Technologies Inc. v. Venkat Konda
`PGR2019-00042
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ..... 1
`
`II.
`
`PATENT OWNER'S RESPONSE TO PETITIONER'S CHALLENGES
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`3
`
`A. CHALLENGE GROUND 1 ............................................................................................. 3
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`B. CHALLENGE GROUND 2 ............................................................................................. 5
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`C. CHALLENGE GROUND 3 ............................................................................................. 6
`
`III. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS ........................................................................................ 6
`
`A. The Proposed Amendments Include A Reasonable Number Of Substitute Claims . 11
`
`B. The Substitute Claims Do Not Enlarge The Scope Of The Claims Or Introduce New
`Subject Matter ................................................................................................................. 12
`
`C. The Proposed Amendments Respond To A Ground Of Unpatentability Alleged By
`The Petitioner .................................................................................................................. 13
`
`D. Explanation Of Substitute Claims And Support In The Original Disclosure And
`Earlier-Filed Disclosure .................................................................................................. 14
`
`IV. PATENTABILITY OF THE SUBSTITUTE CLAIMS ........................... 22
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`V. CONCLUSION ............................................................................................ 23
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`APPENDIX OF CONTINGENT SUBSTITUTE CLAIMS ...................... 1
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`PATENT OWNER'S EXHIBIT LIST 1
`
`Exhibit No.
`
`Description
`
`Ex. 2001
`
`Ex. 2002
`Ex. 2003
`
`Ex. 2004
`
`CMOS Circuit Design Layout and Simulation, 3rd
`Edition
`PGR2019-00037 Petition – Paper 1
`PGR2019-00042 Petition – Paper 1
`Venkat Konda Declaration in support of Revised
`Motion to Amend
`
`Previously
`Submitted
`
`X
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`X
`X
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`
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`Patent Owner Venkat Konda respectfully files this Revised Motion to Amend
`
`under 37 C.F.R. § 42.221 that new claims 21-40 be treated as a contingent
`
`substitution of claims 1-20. See Lectrosonics, Paper 15 at 3. Consequently, this
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`Revised Motion to Amend is contingent upon a finding in a final written decision
`
`by the Board that the challenged claims 1-20 are unpatentable. Therefore, this
`
`Motion to Amend Under 37 C.F.R. § 42.221 is made on a contingent basis and is
`
`made in lieu of a response under 37 C.F.R. § 42.220. Patent Owner is submitting
`
`this paper following the approval by the Board1. This Revised Motion to Amend is
`
`filed timely as extended2.
`
`
`1 Prior to filing this paper, in an email communication the Board approved
`
`that the page limit for Patent Owner’s Revised Motion to Amend is increased to 30
`
`pages.
`
`2 The Board extended the due date of this Revised Motion to Amend by one
`
`month by issuing a scheduling Order (Paper 7) until May 15, 2020 since the Patent
`
`Owner requested an extension of DUE DATE 3 (originally April 15, 2020) (Paper
`
`14) by email communication in view of the CARES act that came into effect on
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`March 31, 2020.
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`Patent Owner’s initial motion to amend was filed on December 11, 2019
`
`(Paper 16). In his initial motion, Patent Owner requested Preliminary Guidance
`
`from the Board in accordance with the New Pilot Program Concerning Motion to
`
`Amend Practice. See 84 Fed. Reg. 9,497 (Mar. 15, 2019). Petitioner filed an
`
`Opposition on March 4, 2020 (Paper 18) and a Petitioner’s Reply (Paper 20), and
`
`the Board issued its Preliminary Guidance on March 27, 2020 (Paper 21).
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`Patent Owner appreciates the Preliminary Guidance provided by the Board.
`
`This Revised Motion to Amend includes proposed substitute claims in place of the
`
`previously presented substitute claims and includes amendments and arguments
`
`that are responsive to issues raised in the Preliminary Guidance and/or Petitioner’s
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`Opposition, in accordance with the New Pilot Program Concerning Motion to
`
`Amend Practice. See 84 Fed. Reg. 9,497 (Mar. 15, 2019).
`
`This Motion satisfies the requirements for a Revised Motion to Amend.
`
`Claims 1-20 are the challenged claims in this proceeding3. Accordingly substitute
`
`
`3 In addition to this PGR, the Board instituted another PGR2019-00042 filed
`
`by the same Petitioner concurrently on the ‘553 Patent. During the conference call
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`with the Board on December 3, 2019, Patent Owner indicated to the Board that he
`
`intends to move for the same amendments to the claims in both proceedings.
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`claims are presented for challenged claims 1-20 in the Appendix. This constitutes a
`
`“reasonable number of substitute claims.” 35 U.S.C. § 326(d)(1)(B). Additionally,
`
`the substitute claims: (1) do not “enlarge the scope of the claims;” (2) do not
`
`“introduce new [subject] matter;” and (3) “respond to [the] ground[s] of
`
`unpatentability involved in the trial.” 35 U.S.C. § 326(d)(3); 37 C.F.R. §
`
`42.221(a)(2)(i), (ii). Patent Owner has therefore satisfied his burden of production.
`
`In the present case, the sole inventor, Venkat Konda, holds a Ph.D.
`
`degree in Computer Science and engineering and had experience in designing,
`
`developing, researching and teaching different types of interconnection networks,
`
`for over two decades at the time of the effective priority date of the ‘553 Patent and
`
`submits this Revised Motion to Amend with Venkat Konda’s declaration. See Ex.
`
`2004.
`
`II. PATENT OWNER'S RESPONSE TO PETITIONER'S CHALLENGES
`
`A. CHALLENGE GROUND 1
`
`In response to the Petition, the following is submitted regarding the proposed
`
`substitute claims 31 – 40 submitted in the Appendix: 1) Term “Zero or more cross
`
`
`Accordingly, the same amended claims are submitted in both the proceedings, i.e.
`
`PGR2019-00037 and PGR2019-00042.
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`links” in Claims 1 and 11 is deleted. 2) Term “Zero or more straight links” in
`
`Claim 1 and Claim 11 are deleted. 3) Terms “plurality of forward connecting
`
`links” and “forward connecting links” in Claim 1 and Claim 9 are deleted. 4)
`
`Terms “plurality of backward connecting links” and “backward connecting links”
`
`in Claim 1 and Claim 9 are deleted. 5) Term “subnetwork(s)” in claims 1 – 3, 7 –
`
`13, and 15 – 20 is substituted with “partial multi-stage hierarchical network(s)” in
`
`claims 21 – 23, 27 – 33, and 35 – 40. 6) Term “incoming links” in claims 1, 5, 9,
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`11, and 17 is substituted with “inputs” in claims 21, 25, 29, 31, and 37.
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`Furthermore, term “outgoing links” in claims 1, 5, 9, 11, and 17 is substituted with
`
`“outputs” in claims 21, 25, 29, 31, and 37. 7) Term “multiplexers of size
`
`” is
`
`first defined in claims 21 and 31 to remedy the antecedent issue. 8) Exemplary
`
`definition of term “a plurality of subnetworks” and referring to it subsequently as
`
`“each subnetwork” in several claims is corrected with substituted definition of term
`
`“a plurality of partial multi-stage hierarchical networks” and referred to it
`
`subsequently as “each partial multi-stage hierarchical network of said plurality of
`
`partial multi-stage hierarchical networks” in several substitute claims, to remedy
`
`the antecedent issue. All the similar antecedent issues are remedied in several
`
`substitute claims. 9) Term “straight links” in claims 1 and 11 is substituted with
`
`“internal connections” in claims 21 and 31. 10) Term “cross links” in claims 1, 2, 6
`
`- 9, 11, 15 – 16, and 19 – 20 is substituted with “external hop wires” in claims 1, 2,
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`Patent Owner’s Revised Motion to Amend
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`and 6 – 9, and substituted with “hop wires” in claims 11, 15 – 16, and 19 – 20. 11)
`
`Term “incoming cross links” in claim 25 is deleted. 12) Term “outgoing cross
`
`links” in claim 25 is deleted. 13) Term “number of rows” in claims 28, 36, and 40
`
`is deleted. 14) Term “number of columns” in claims 28, 36, and 40 is deleted. 15)
`
`Terms “higher stage”, “small in number”, and “large in number” in claims 8, 16,
`
`and 20 are deleted.
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`B. CHALLENGE GROUND 2
`
`In response to the Petition, the following is submitted regarding the proposed
`
`substitute claims 31 – 40 in the Appendix: 1) The term “Flip-flop” in Claim 9 is
`
`deleted. 2) Term “ stages, where
`
` ” in claims 1 and 11 is substituted with
`
`“plurality of stages” in claims 21 and 31, and also used in claims 27 – 30, 36 – 38
`
`and 40. 3) Term “vertical links” in claims 2 – 4 and 12 – 14 is substituted with
`
`“plurality of vertical external hop wires” in claims 22 – 24 and 32 – 34. 4) Term
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`“horizontal links” in claims 2 – 4 and 12 – 14 is substituted with “plurality of
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`horizontal external hop wires” in claims 22 – 24 and 32 – 34. 5) Term “hop length
`
`... where
`
`” in claims 4 and 14 is remedied with “hop length
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`... where
`
`”
`
`in claims 24 and 34. 6) Term “hop length ... where
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`” in claims 4 and 14 is
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`remedied with “hop length
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`... where
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`” in claims 24 and 34. 6) Term
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`PGR2019-00037
`Patent 10,003,553
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`“incoming cross links” in claim 25 is deleted. 7) Term “outgoing cross links” in
`
`claim 25 is deleted. 8) Term “final stage” in claim 19 is deleted.
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`C. CHALLENGE GROUND 3
`
`In response to the Petition, the following is submitted regarding the
`
`proposed substitute claims 31 – 40 in the Appendix: 1) Term “ stages, where
`
` ” in claims 1 and 11 is substituted with “a plurality of stages” in claims 21
`
`and 31. Furthermore, term “network” in claims 1 – 20 is substituted with “multi-
`
`stage hierarchical network” in claims 21 – 40. 2) Term “may or may not” in claims
`
`1 and 11 is deleted.
`
`III. COMPLIANCE WITH STATUTORY AND REGULATORY
`REQUIREMENTS
`
`In response to the question raised by the Board in the paper (Paper 21)
`
`regarding “inlet links” and “outlet links”, term “inlet links” is used to refer to the
`
`links coming into the multi-stage network from outside, and term “outlet links” is
`
`used to refer to the links going out of the multi-stage network from inside. Also the
`
`inputs and outputs to a computational block are referred to as “inlet links” and
`
`“outlet links”, respectively (Ex. 1004, 220:27-30). According to this definition, for
`
`example, an inlet link of a multi-stage network is connected from an outlet link of
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`a computational block. Also, from a multi-stage network point of view, an inlet
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`link to the multi-stage network is connected to an input of a switch in the multi-
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`Paper No. 24
`Patent Owner’s Revised Motion to Amend
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`stage network. Since both Claim 21 and 31 recite inlet links and outlet links of the
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`multi-stage network, for example, an inlet link is connected to an input of a switch
`
`in the network. Similarly, an outlet link is connected from an output of a switch in
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`the network.
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`Also per Board’s guidance claim dependencies are fixed and in appropriate
`
`form now.
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`The following table gives details of terms deleted and other terms replaced
`
`and meets the three criteria for the amendments made to the claims 1) in response
`
`to a Ground 2) without claim broadening, and 3) with written specification support:
`
`Term deleted or
`
`Met all three criteria 1) in response to a Ground, 2) no-
`
`replaced
`
`broadening, 3) with written specification support
`
`Zero or more cross
`
`To remedy indefiniteness “zero or more” is deleted;
`
`links; Zero or
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` “cross links” are replaced with “hop wires” which further
`
`more straight links
`
`comprise “internal hop wires” and “external hop wires”, and
`
`(Claims 1 and 11)
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`“straight links” is replaced with “internal connections” to
`
`adhere to the terms in the two priority applications. (So
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`meets all three criteria since it is neutral on broadening)
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`“Forward
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`To comply with the written specification of the two priority
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`
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`Patent Owner’s Revised Motion to Amend
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`connecting links”
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`applications “Forward connecting links” and “Backward
`
`and “Backward
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`connecting links” are either “internal connections” or “hop
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`connecting links”
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`wires”. (So meets all three criteria since it is neutral on
`
`(Claims 1 and 9)
`
`broadening)
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`“Subnetwork”
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`To comply with the written specification of the two priority
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`
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`applications “Sub-network” is replaced with “partial multi-
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`stage hierarchical network” and accordingly “network” is
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`replaced with “multi-stage hierarchical network”.
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`(So meets all three criteria since it is neutral on broadening)
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`(In Claims 1-3, 7-13, and 15-20)
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`“Incoming link”
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`To comply with the written specification of the two priority
`
`and “Outgoing
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`applications “Incoming link” is replaced with “input” as
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`link” (in Claims 1,
`
`both terms mean the same; and similarly “Outgoing link” is
`
`5, 9, 11, 17)
`
`replaced with “output” as both terms mean the same.
`
`“Input” and “output” are used several times in the
`
`specification.
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`(So meets all three criteria since it is neutral on broadening)
`
`“multiplexers of
`
`In response to the antecedent issue “multiplexers of size
`
`size
`
`” is
`
`” is defined first. (So meets all three criteria)
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`defined first
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`(In Claims 1, 11)
`
`An example of
`
`In response to indefiniteness “a plurality of partial multi-
`
`indefiniteness issue
`
`stage hierarchical networks” is introduced and referred to
`
`raised; and several
`
`subsequently as “each partial multi-stage hierarchical
`
`similar changes are
`
`network of said plurality of partial multi-stage hierarchical
`
`made.
`
`networks” (So meets all three criteria) (In several claims
`
`including Claims 1 and 11)
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`“Incoming cross
`
`To comply with the written specification of the two priority
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`links” and
`
`applications “Incoming cross links” is replaced with “hop
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`“outgoing cross
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`wires or external hop wires or internal hop wires” as these
`
`links” are deleted
`
`terms mean the same and similarly “Outgoing cross link” is
`
`replaced with “hop wires or external hop wires or internal
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`hop wires” as these terms mean the same.
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`(So meets all three criteria since it is neutral on broadening)
`
`(In Claim 25)
`
`“number of rows”
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`To comply with the written specification of the two priority
`
`and “number of
`
`applications “number of rows” and “number of columns”
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`columns” deleted
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`are deleted.
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`(So meets all three criteria since it is neutral on broadening)
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`Patent Owner’s Revised Motion to Amend
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`(In Claims 8, 16, 20)
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`“higher stage”,
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`To comply with the written specification of the two priority
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`“small in number”,
`
`applications “higher stage”, “small in number”, and “large
`
`and “large in
`
`in number” are deleted.
`
`number” are
`
`(So meets all three criteria since it is neutral on broadening)
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`deleted
`
`(In Claims 8, 16, 20)
`
`“Flip flop” is
`
`In response to the new subject matter issue, flip flop is
`
`deleted.
`
`deleted. (In Claim 9)
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`“ stages, where
`
`In response to the enablement issue raised, “ stages, where
`
` ” (in several
`
` ” is substituted with “plurality of stages” (So meets all
`
`claims including
`
`three criteria since it is neutral on broadening)
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`Claims 1 and 11)
`
`“vertical links”,
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`To comply with the written specification of the two priority
`
`“horizontal links”
`
`applications “vertical links” is substituted with “plurality of
`
`(In claims 2 – 4 and
`
`vertical external hop wires” and “horizontal links” is
`
`12 – 14)
`
`substituted with “plurality of horizontal external hop wires”
`
`(So meets all three criteria since it is neutral on broadening)
`
`“hop length
`
`...
`
`To comply with the written specification of the two priority
`
`where
`
`” and
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`applications “hop length
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`... where
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`” is replaced with
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`“hop length ...
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`“hop length
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`... where
`
`” and “hop length ... where
`
`where
`
`”
`
`” is replaced with “hop length
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`... where
`
`”.
`
`(So meets all three criteria since it is neutral on broadening)
`
`(In Claims 4 and 14)
`
`
`
` “final stage” is
`
`To comply with the written specification of the two priority
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`deleted.
`
`applications “final stage” is deleted.
`
`(So meets all three criteria since it is neutral on broadening)
`
`(In claim 19)
`
`
`
`In the Patent Owner’s preliminary response (Paper 5, 20-43), Patent owner
`
`has illustrated with diagrams the details of ring, hop wires, internal hop wires,
`
`external hop wires, hop length, and hop wire connection chart. The terms forward
`
`connecting links, backward connecting links are illustrated in the incorporated by
`
`reference patents and patent applications of the ‘470. These illustrations are helpful
`
`to follow the proposed substitute claims 31-40 presented in the Appendix.
`
`A. The Proposed Amendments Include A Reasonable Number Of Substitute
`Claims
`
`The proposed amendments are presented in the Appendix attached hereto,
`
`pursuant to 37 C.F.R. § 42.221(b). Patent Owner cancels claims 1-20 and proposes
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`substitute claims, namely, claims 21-40. Because the challenged claims have been
`
`cancelled and substitute claims are proposed, this constitutes a “reasonable number
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`of substitute claims.” 37 C.F.R. § 42.221(a)(3). As shown in the Appendix, claims
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`21-40 include all of the limitations of original claims 1-20. Changes in claims 1-20
`
`are shown by underlining for additions and brackets for deletions.
`
`B. The Substitute Claims Do Not Enlarge The Scope Of The Claims Or
`Introduce New Subject Matter
`
`Substitute claims 21-30 are based on cancelled claims 1-20, but further
`
`include narrowing amendments. Substitute claims 21-40 are narrower than original
`
`claims 1 – 20 because the term “network” in claims 1 – 20 is substituted with
`
`“multi-stage hierarchical network” in claims 21 – 40. Term “a ring” in claims 21
`
`and 27-28 and term “at least one ring” introduced in claims 31, 36, and 40 narrows
`
`claims 21, 27, 28, 31, 36, and 40. Usage of term “entry stage” in claims 21 and 31
`
`and usage of term “last stage” in claims 21 and 31, for example, “each inlet link of
`
`said... is connected to... said switch of size
`
` of [a] either said entry stage or
`
`said last stage of said plurality of stages” narrows both of the independent claims
`
`since each inlet and each outlet are connected to either the entry stage or last stage
`
`of said plurality of stages, which in turn narrows all of the dependent claims as
`
`well. Definition of term “a plurality of multiplexers of size
`
`” and referring to
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`them in claims 21 and 31 narrows both of the independent claims, which in turn
`
`narrows all of the dependent claims as well.
`
`Phrase “said switch comprising at least one input connected from one of the
`
`outputs of said switch of a second stage of said plurality of stages of said ring of
`
`one partial multi-stage hierarchical network of said plurality of partial multi-stage
`
`hierarchical networks” in claims 21 and 31 narrows both of the independent
`
`claims, which in turn narrows all of the dependent claims as well.
`
`Because substitute claims 21-40 narrow the scope of claims 1-20, the
`
`substitute claims do not expand the scope of the patent and thus comply with the
`
`requirements of 37 C.F.R. § 42.221(a)(2)(ii).
`
`C. The Proposed Amendments Respond To A Ground Of Unpatentability
`Alleged By The Petitioner
`
`The proposed substitute claims respond to an asserted ground of
`
`unpatentability. The substitute claims respond to Petitioner’s argument that claims
`
`1-20 are unpatentable under AIA 35 U.S.C. § 112(b) as failing to particularly point
`
`out and distinctly claim the subject matter (ground 1), unpatentable under AIA 35
`
`U.S.C. § 112(a) as failing to satisfy the written description requirement (ground 2),
`
`and Claims 1-20 are unpatentable under AIA 35 U.S.C. § 112(a) as failing to
`
`satisfy the enablement requirement (ground 3).
`
`
`
`Page 13 of 54
`
`
`Page 16 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`D. Explanation Of Substitute Claims And Support In The Original Disclosure
`And Earlier-Filed Disclosure
`
`Support for the proposed substitute claims is found in “the original
`
`disclosure of the patent.” See 37 C.F.R. § 42.221(b)(1)-(2). The ‘553 patent (Ex.
`
`1001) issued from patent application No. 15/140,470 (“the ‘470 application”, Ex.
`
`1004) filed on April 28, 2016, which is a continuation application to patent
`
`application No. 14/199,168, filed on March 6, 2014 (“the ‘168 application”, Ex.
`
`1005), which was granted as U.S. Patent No. 9,374,322 (“the ‘322 patent”, Ex.
`
`1035) which in turn is a continuation application to PCT Application No.
`
`PCT/US12/53814 (“the ‘814 PCT application”, Ex. 1006), filed September 6, 2012
`
`which in turn is a continuation-in-part and claims priority to U.S. Provisional
`
`Patent Application Serial No. 61/531,615, filed September 7, 2011 (“the ‘615
`
`provisional application”, Ex. 1007). The complete priority chain of the ‘553 patent
`
`is illustrated on Paper 5, page 7.
`
`Accordingly the entirety of the subject matter disclosed in the ‘470
`
`application claims priority to the filing date of the ‘615 provisional application
`
`filed on September 7, 2011, excepting 4 diagrams, namely, FIG. 1B, FIG. 2E, FIG.
`
`3B, and FIG. 16A which claim priority to the filing date of the ‘814 PCT
`
`application, September 6, 2012. (Also only the titles of the FIG. 1 and FIG. 3 in the
`
`
`
`Page 14 of 54
`
`
`Page 17 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`‘615 provisional application are changed to FIG. 1A and FIG. 3A, respectively, in
`
`all the rest of the applications in the priority chain of the ‘470 application).
`
`Exemplary support for the proposed substitute claims is provided in the
`
`following table with reference to the above-identified patent applications and/or
`
`patents. To save space, in the first column of the following table, Parts of or
`
`complete Claim language of each claim is referred to by their corresponding page
`
`and line numbers of the complete amendments shown with respect to the substitute
`
`claims in the Appendix.
`
`
`
`
`
`Exemplary Support in Priority documents
`
`Reference to the
`
`The ‘470
`
`The ‘168
`
`The ‘814
`
`The ‘615
`
`pages:lines to the
`
`application
`
`application
`
`PCT
`
`Provisional
`
`Contingent
`
`(Ex: 1004)
`
`(Ex. 1005)
`
`Application
`
`Application
`
`Substitute Claim
`
`(Ex. 1006)
`
`(Ex. 1007)
`
`Language in
`
`Appendix
`
`(Claim 21)
`
` 2:11 - 3:3
`
`
`
` 219:19 –
`
` 196:12 –21,
`
` 13:12 –21,
`
` 13:7 –16,
`
`220:2,
`
`
`
`
`
`
`
` 220:19 –
`
` 197:11 –
`
` 14:11 –
`
` 14:6 –29
`
`Page 15 of 54
`
`
`Page 18 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`221:12
`
`198:4
`
`15:4
`
`
`
` 212:21-22,
`
` 189:18-19,
`
` 6:18-19,
`
` N/A4
`
` 219:19 –
`
` 196:12 –21,
`
`13:12 –21,
`
`13:7 –16,
`
`220:2,
`
`
`
`
`
`
`
`
`
` 223:25 –28,
`
`200:17 –20,
`
` 17:17 –20,
`
` 17:14 –17,
`
` 221:13 -22,
`
` 198:5 –14,
`
`15:5 –14,
`
`15:1 –10,
`
`(Claim 21)
`
` 235:16 –
`
`
`
`
`
`
`
`
`
` 3:4 - 4:17
`
`236:3,
`
` 212:5 –21,
`
`29:5 –21
`
`N/A
`
`236:3-6,
`
` 212:21-24,
`
`29:21 –24
`
`N/A
`
`233:7-11,
`
` 209:25-29,
`
`26:25-29
`
`19:19-23,
`
`238:17-20,
`
` 215:6-9,
`
`32:6-9,
`
` 23:15-18,
`
` 238:20- 242:8,
`
`215:9- 218:24,
`
`32:9-. 35:24
`
`23:18-. 27:4
`
` 241:26- 242:8,
`
` 218:14-24,
`
` 35:14-24
`
` 6:22-. 27:4
`
`
`4 N/A in the entire column of this table means not applicable as part this falls
`
`under the 4 diagrams namely FIG. 1B, FIG. 2E, FIG. 3B, FIG. 16A that are not
`
`disclosed in the ‘615 provisional application and so these 4 diagrams do not claim
`
`priority to the ‘615 provisional application.
`
`
`
`Page 16 of 54
`
`
`Page 19 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
` 245:9-17,
`
` 221:26-
`
`38:26- 39:6
`
`N/A
`
`
`
`222:6,
`
`
`
`
`
`
`
` 282:19-21,
`
` 259:4-6,
`
`76:4-6,
`
`N/A
`
`(Claim 21)
`
`220:27-30,
`
`197:19-22,
`
`14:19-22,
`
`14:14-17,
`
` 5:1-9
`
` 233:20-24
`
` 210:9-13
`
` 27:9-13
`
`N/A
`
` 237:21-29,
`
` 214:10-20,
`
` 31:10-20,
`
` 22:22- 23:3,
`
`(Claim 21)
`
` 236:7-15,
`
` 212:25-
`
`29:25- 30:4,
`
` 21:23- 22:2,
`
` 5:17-6:7
`
` 233:12-19
`
`213:4,
`
` 27:1-8
`
` 19:24- 20:2,
`
` 210:1-8
`
`(Claim 21)
`
` 229:19-23
`
` 207:9-13
`
` 25:9-13
`
` 17:1-5
`
` 7:6- 7:14
`
` 238:17-20,
`
` 215:6-9,
`
` 32:6-9,
`
` 23:15-18,
`
`(Claim 21)
`
` 238:20- 242:8,
`
`215:9- 218:24,
`
`32:9-. 35:24,
`
`23:18-. 27:4,
`
` 7:15-8-6
`
` 252:19-
`
` 229:7- 235:28
`
` 46:7- 52:28
`
` 34:14- 41:8
`
`259:11
`
`(Claim 22)
`
` 241:26-
`
` 218:14- 219:2 35:14- 36:2
`
` 26:22-
`
` 8:7- 8:12
`
`242:15
`
`27:11
`
`
`
`Page 17 of 54
`
`
`Page 20 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
` 220:19 –
`
` 197:11 –
`
` 14:11 –
`
` 14:6 –29
`
`(Claim 23)
`
`221:12
`
`198:4
`
`15:4
`
`
`
` 8:14-9:10
`
` 228:3 – 18
`
` 204:21 –
`
` 21:21 –
`
`N/A
`
`205:7
`
`22:7
`
`(Claim 24)
`
` 241:26-
`
` 218:14- 219:2 35:14- 36:2
`
` 26:22-
`
` 9:11-10:4
`
`242:15
`
`27:11
`
`(Claim 25)
`
`233:25-236:6
`
`210:14-212:24 27:14-29:24 20:3-21:22
`
` 10:5-14
`
`(Claim 26)
`
`238:17-242:15 215:6-219:2
`
`32:6-36:2
`
`23:15-27:11
`
` 10:15-11:5
`
`(Claim 27)
`
`47:24-54:26
`
`229:12-236:13 46:12-53:14 34:18-41:22
`
` 11:6-12:6
`
`(Claim 28)
`
`290:7-8
`
`265:25-26
`
`82:22-23
`
`N/A
`
` 12:7-12:18
`
` 282:3-15
`
` 258:17-29
`
` 75:17-29
`
`N/A
`
`(Claim 29)
`
`282:19-21
`
` 259:4-6
`
`76:4-6
`
`N/A
`
` 13:1- 14:2
`
` 282:16-18
`
`260:1-3
`
`76:1-3
`
`
`
` 233:25 – 236:6
`
`210:14 –
`
`27:14 –
`
`20:3 – 21:22
`
`
`
`Page 18 of 54
`
`
`Page 21 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`
`
`
`
`212:24
`
`29:24
`
`
`
`289:3-4
`
` 263:24-25
`
` 80:22-23
`
`N/A
`
`Claim 30)
`
` 282:12-15
`
` 258:24-29
`
` 75:24-29
`
`N/A
`
` 14:3- 14:11
`
` 290:7-8
`
` 265:25-26
`
`82:22-23
`
`N/A
`
` 219:19 –
`
` 196:12 –21,
`
` 13:12 –21,
`
` 13:7 –16,
`
`(Claim 31)
`
`220:2,
`
`
`
`
`
`
`
` 14:12- 15:3
`
` 220:19 –
`
` 197:11 –
`
`14:11 – 15:4
`
`14:6 –29
`
`(Claim 31)
`
` 14:4 - 17:2
`
`221:12
`
`198:4
`
`
`
` 212:21-22,
`
` 189:18-19,
`
` 6:18-19,
`
`N/A
`
` 219:19 –
`
` 196:12 –21,
`
`13:12 –21,
`
`13:7 –16,
`
`220:2,
`
`
`
`
`
`
`
`
`
` 223:25 –28,
`
`200:17 –20,
`
` 17:17 –20,
`
` 17:14 –17,
`
` 221:13 -22,
`
` 198:5 –14,
`
`15:5 –14,
`
`15:1 –10,
`
` 235:16 –
`
`
`
`
`
`
`
`
`
`236:3,
`
` 212:5 –21,
`
`29:5 –21
`
`N/A
`
`236:3-6,
`
` 212:21-24,
`
`29:21 –24
`
`N/A
`
`233:7-11,
`
` 209:25-29,
`
`26:25-29
`
`19:19-23,
`
`238:17-20,
`
` 215:6-9,
`
`32:6-9,
`
` 23:15-18,
`
` 238:20- 242:8,
`
`215:9- 218:24,
`
`32:9-. 35:24
`
`23:18-. 27:4
`
`
`
`Page 19 of 54
`
`
`Page 22 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
` 241:26- 242:8,
`
` 218:14-24,
`
` 35:14-24
`
` 6:22-. 27:4
`
` 245:9-17,
`
` 221:26-
`
`38:26- 39:6
`
`N/A
`
`
`
`222:6,
`
`
`
`
`
`
`
` 282:19-21,
`
` 259:4-6,
`
`76:4-6,
`
`N/A
`
`(Claim 31)
`
`220:27-30,
`
`197:19-22,
`
`14:19-22,
`
`14:14-17,
`
` 17:3-17:11
`
` 233:20-24
`
` 210:9-13
`
` 27:9-13
`
`N/A
`
` 237:21-29,
`
` 214:10-20,
`
` 31:10-20,
`
` 22:22- 23:3,
`
`(Claim 31)
`
` 236:7-15,
`
` 212:25-
`
`29:25- 30:4,
`
` 21:23- 22:2,
`
` 18:1- 18:14
`
` 233:12-19
`
`213:4,
`
` 27:1-8
`
` 19:24- 20:2,
`
` 210:1-8
`
`(Claim 31)
`
` 229:19-23
`
` 207:9-13
`
` 25:9-13
`
` 17:1-5
`
` 18:15-19:5
`
` 238:17-20,
`
` 215:6-9,
`
` 32:6-9,
`
` 23:15-18,
`
`(Claim 31)
`
` 238:20- 242:8,
`
`215:9- 218:24,
`
`32:9-. 35:24,
`
`23:18-. 27:4,
`
` 19:6- 20:6
`
` 252:19-
`
` 229:7- 235:28
`
` 46:7- 52:28
`
` 34:14- 41:8
`
`259:11
`
`(Claim 32)
`
` 241:26-
`
` 218:14- 219:2 35:14- 36:2
`
` 26:22-
`
` 21:3- 21:9
`
`242:15
`
`27:11
`
`
`
`Page 20 of 54
`
`
`Page 23 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
` 220:19 –
`
` 197:11 –
`
` 14:11 –
`
` 14:6 –29
`
`(Claim 33)
`
`221:12,
`
`198:4,
`
`15:4,
`
`
`
` 21:11- 22:8
`
` 228:3 – 18
`
` 204:21 –
`
` 21:21 –
`
`N/A
`
`205:7
`
`22:7
`
`(Claim 34)
`
` 241:26-
`
` 218:14- 219:2 35:14- 36:2
`
` 26:22-
`
` 22:9-23-2
`
`242:15
`
`27:11
`
`(Claim 35)
`
`47:24-54:26
`
`229:12-236:13 46:12-53:14 34:18-41:22
`
` 23:2-24:2
`
`(Claim 36)
`
`290:7-8
`
`265:25-26
`
`82:22-23
`
`N/A
`
` 24:3 - 24:14
`
` 282:3-15,
`
` 258:17-29,
`
` 75:17-29,
`
`N/A
`
` 282:19-21,
`
` 259:4-6,
`
`76:4-6,
`
`N/A
`
`(Claim 37)
`
` 282:16-18,
`
`260:1-3,
`
` 76:1-3,
`
`N/A
`
` 24:15 - 25:6
`
` 233:25 –
`
`210:14 –
`
`27:14 –
`
`20:3 – 21:22
`
`236:6,
`
`212:24,
`
`29:24,
`
`
`
` 289:3-4
`
` 263:24-25
`
` 80:22-23
`
`N/A
`
`(Claim 38)
`
` 282:12-15,
`
` 258:24-29,
`
` 75:24-29,
`
`N/A
`
` 25:7 –25:14
`
` 290:7-8
`
` 265:25-26
`
` 82:22-23
`
`N/A
`
`
`
`Page 21 of 54
`
`
`Page 24 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`(Claim 39)
`
`47:24-54:26
`
`229:12-236:13 46:12-53:14 34:18-41:22
`
` 25:15- 26:6
`
`(Claim 40)
`
`290:7-8
`
`265:25-26
`
`82:22-23
`
`N/A
`
` 26:7-19
`
`
`
`
`
`IV. PATENTABILITY OF THE SUBSTITUTE CLAIMS
`
`The Petition challenged claims 1-20 on three grounds, namely, grounds 1, 2,
`
`and 3. The substitute claims 21-40 remedy the indefiniteness issues raised by the
`
`Petition with respect to the original claims 1-20. Terms used only in the two pre-
`
`AIA applications are substituted in claims 21-40 to comply with the written
`
`description support for those claims. All antecedent basis issues are remedied. The
`
`claim language “may or may not” is deleted. Enablement is addressed with the
`
`term “plurality of stages” and with the term “multi-stage hierarchical network”
`
`substituting for the term “network”.
`
`The burden is on Petitioner to demonstrate that the amended claims proposed
`
`by Patent Owner are unpatentable. See Aqua Prods., Inc. v. Matal, 872 F.3d 1290,
`
`1307 (Fed. Cir. 2017) (“Congress’s choice reflects its intention that the burden of
`
`proof be placed on the petitioner for all propositions of unpatentability arising
`
`
`
`Page 22 of 54
`
`
`Page 25 of 54
`
`

`

`PGR2019-00037
`Patent 10,003,553
`
`
`
`
`Paper No. 24
`Patent Owner’s Revised Motion to Amend
`
`during IPRs, whether related to originally challenged or entered amended
`
`claims.”). Patent Owner’s proposed amendments need only meet the requirements
`
`of 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221, and the Board will proceed to
`
`determine whether the substitute claims are unpatentable by a preponderance of the
`
`evidence based on the entirety of the record. See Western Digital Corp., IPR2018-
`
`00082, Paper 13 at 3-4. Here, the proposed contingent substitute claims 21-40
`
`satisfy the statutory and regulatory requirements for the reasons discussed above
`
`and are patentable for the reasons set forth ab

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