venkat konda

Patent Trials and Appeals Board

Mar 16, 2021

PGR2019-00042 (P.T.A.B. Mar. 16, 2021)

Trials@uspto.gov Paper 35
571-272-7822 Date: March 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FLEX LOGIX TECHNOLOGIES INC.,
Petitioner,

v.

VENKAT KONDA,
Patent Owner.
____________

Case PGR2019-00042
Patent 10,003,553 B2
____________

Before PATRICK M. BOUCHER, CHARLES J. BOUDREAU,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Revised Motion to Amend
Denying Patent Owner’s Motion to Exclude
35 U.S.C. § 328(a)
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I. INTRODUCTION
In response to a Petition filed by Flex Logix Technologies, Inc.
(“Petitioner”), we instituted a post-grant review of claims 1–7, 9–15, and
17–19 of U.S. Patent No. 10,003,553 B2 (Ex. 1001, “the ’553 patent”).
Paper 14 (“Dec.”). Venkat Konda (“Patent Owner”)1 did not file a Response
to the Petition after institution of trial.2 Instead, Patent Owner filed a
Motion to Amend the claims, Petitioner filed an Opposition to that Motion,
and we provided Preliminary Guidance under the Board’s Motion to Amend
Pilot Program. Papers 17, 19, 22. In our Preliminary Guidance, we
“treat[ed] the Motion as contingent upon a finding in a final written decision
that the challenged claims are unpatentable, and [did] not treat any of the
original claims 1–20 as either canceled or withdrawn.”3 Paper 22, 4.
Nevertheless, because we noted that Patent Owner’s intention regarding the
contingency of his Motion was ambiguous, we advised Patent Owner to state
expressly, should he file a Revised Motion to Amend, whether such a

1 The Petition identifies the owner of the ’553 patent as Konda
Technologies, Inc. Pet. 1. This appears to have been correct at the time the
Petition was filed, on March 18, 2019. But on April 8, 2019, an assignment
was recorded with the Office at reel/frame 048822/0867 assigning the ’553
patent to Venkat Konda. This ownership is also reflected in Patent Owner’s
mandatory notices, filed on April 9, 2019. Paper 5.
2 We note that, before institution of the proceeding, Patent Owner filed a
Preliminary Response. Paper 6. Arguments directed to patentability of the
challenged claims made in a preliminary response but not raised during the
trial itself are deemed waived. See In re NuVasive, Inc., 842 F.3d 1376,
1380–81 (Fed. Cir. 2016).
3 We referred to clams 1–20 because all of those clams are challenged in the
co-pending proceeding, PGR2019-00037.

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Motion “is contingent or noncontingent upon a finding in a final written
decision that the challenged claims are unpatentable.” Id.
Thereafter, Patent Owner filed a Revised Motion to Amend, which
included a different set of proposed substitute claims. Paper 24 (“RMTA”).
The Revised Motion to Amend expressly states that it “is contingent upon a
finding in a final written decision by the Board that the challenged claims 1-
20 are unpatentable” and that the Revised Motion to Amend “is made on a
contingent basis and is made in lieu of a response under 37 C.F.R. § 42.220
(2018) [(authorizing patent owners to file “a single response to a petition
and/or decision on institution”)].” Id. at 1. Petitioner opposes the Revised
Motion to Amend. Paper 30 (“Opp. RMTA”). Patent Owner filed a Reply,
and Petitioner filed a Sur-reply. Papers 31 (“Reply RMTA”), 34 (“Sur-reply
RMTA”).
In addition, Patent Owner filed a Motion to Exclude evidence, which
Petitioner opposed, and in support of which Patent Owner filed a Reply.
Papers 25, 32, 33. No oral hearing was held, as neither party requested one.
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 328(a) as to the patentability of the
claims on which we instituted trial.4 Based on the record before us,
Petitioner has shown, by a preponderance of the evidence, that claims 1–7,
9–15, and 17–19 are unpatentable. Also, we determine that Patent Owner’s
Revised Motion to Amend should be denied. In addition, for the reasons
explained below, we deny Patent Owner’s Motion to Exclude evidence.

4 In the Institution Decision, we concluded that the ’553 patent is eligible for
post-grant review. Dec. 11–26. Patent Owner neither contests nor requests
reconsideration of that conclusion, and we incorporate our analysis
supporting that conclusion herein.
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II. BACKGROUND
A. The ’553 Patent
The ’553 patent was filed on April 28, 2016 as U.S. Patent Appl. No.
15/140,470 (“the ’470 application”), and claims the benefit of the following:
(1) the March 6, 2014 filing date of U.S. Patent Appl. No. 14/199,168 (“the
’168 application”) (now issued as U.S. Patent No. 9,374,322 (“the ’322
patent”)); (2) the September 6, 2012 filing date of PCT/US12/53814 (“the
’814 PCT application”); and (3) the September 7, 2011 filing date of
Provisional Patent Appl. No. 61/531,615 (“the ’615 provisional
application”). Ex. 1001, 1:8–14; Ex. 1004, 1 (Certificate of Correction). A
summary drawing provided by Petitioner is reproduced below. Pet. 3.

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Petitioner’s drawing summarizes certain claims to earlier filing dates and is
similar to a drawing provided by Patent Owner that is in substantial
agreement. See Paper 6, 7. Although the drawing also refers to U.S. Patent
Appl. No. 15/984,408, that application is not relevant to this proceeding. In
addition, the ’553 patent recites that it incorporates the “entirety” of several
additional patents and applications. Ex. 1001, 1:14–2:62.
The ’553 patent relates to multi-stage interconnection networks that
find utility in multiple applications. Id. at 2:66–3:1. According to the ’553
patent, very large scale integration (“VLSI”) layouts for integrated circuits
with such networks can be “inefficient and complicated.” Id. at 3:2–4. For
example, prior-art networks of the type identified by the ’553 patent “require
large area to implement the switches on the chip, large number of wires,
longer wires, with increased power consumption, increased latency of the
signals which [a]ffect the maximum clock speed of operation.” Id. at 3:43–
48.
Accordingly, the ’553 patent discloses a number of configurations of
multi-stage hierarchical networks. One example is illustrated in Figure 1A
of the patent, reproduced below.
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Figure 1A illustrates an exemplary partial multi-stage hierarchical network
(or “block”) in which each computational block has four inlet links I1, I2, I3,
I4 and two outlet links O1, O2. Id. at 8:57–62. For each computational
block, a corresponding partial multi-stage hierarchical network has two
“rings” 110, 120. Id. at 8:62–9:3. Ring 110 has inlet links Ri(1,1), Ri(1,2)
and outlet links Bo(1,1), Bo(1,2). Id. at 9:4–6. Ring 120 similarly has inlet
links Fi(2,1), Fi(2,2) and outlet links Bo(2,1), Bo(2,2). Id. at 9:5–6. The
partial multi-stage hierarchical network thus has four inlet links and four
outlet links corresponding to the two rings 110, 120. Id. at 9:6–9.
Several connections characterize the specific structure illustrated.
First, outlet link O1 is connected to inlet link Ri(1,1) of ring 110 and also to
inlet link Fi(2,1) of ring 120. Id. at 9:9–11. Second, outlet link O2 is
connected to inlet link Ri(1,2) of ring 110 and also to inlet link Fi(2,2) of
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ring 120. Id. at 9:11–13. Third, outlet link Bo(1,1) of ring 110 is connected
to inlet link I1. Id. at 9:14–15. Fourth, outlet link Bo(1,2) of ring 110 is
connected to inlet link I2. Id. at 9:15–16. Fifth, outlet link Bo(2,1) of ring
120 is connected to inlet link I3. Id. at 9:17–18. Sixth, outlet link Bo(2,2)
of ring 120 is connected to inlet link I4. Id. at 9:18–20. Because outlet link
O1 is connected to both inlet link Ri(1,1) of ring 110 and inlet link Fi(2,1) of
ring 120, and outlet link O2 is connected to both inlet link Ri(1,2) of ring
110 and inlet link Fi(2,2) of ring 120, the partial multi-stage hierarchical
network has two inlet links and four outlet links (the counterparts of the four
inlet links and two outlet links of the computational block). Id. at 9:20–26.
The drawing also illustrates multiple “stages.” Ring 110 (i.e., ring 1)
consists of m+1 stages, and ring 120 (i.e., ring 2) consists of n+1 stages. Id.
at 8:65–9:1. For example, “ring 1, stage 0” has four inputs Ri(1,1), Ri(1,2),
Ui(1,1), Ui(1,2) and four outputs Bo(1,1), Bo(1,2), Fo(1,1), Fo(1,2). Id. at
9:62–66. That stage also has eight 2:1 multiplexers R(1,1), R(1,2), F(1,1),
F(1,2), U(1,1), U(1,2), B(1,1), B(1,2). Id. at 9:66–10:2. Multiplexer R(1,1)
has two inputs Ri(1,1), Bo(1,1) and one output Ro(1,1). Id. at 10:2–3.
Multiplexer R(1,2) has two inputs Ri(1,2), Bo(1,2) and one output Ro(1,2).
Id. at 10:3–6. Multiplexer F(1,1) has two inputs Ro(1,1), Ro(1,2) and one
output Fo(1,1). Id. at 10:5–6. Multiplexer F(1,2) has two inputs Ro(1,1),
Ro(1,2) and one output Fo(1,2). Id. at 10:6–8. Multiplexer U(1,1) has two
inputs Ui(1,1), Fo(1,1) and one output Uo(1,1). Id. at 10:9–10. Multiplexer
U(1,2) has two inputs Ui(1,2), Fo(1,2) and one output Uo(1,2). Id. at 10:10–
12. Multiplexer B(1,1) has two inputs Uo(1,1), Uo(1,2) and one output
Bo(1,1). Id. at 10:12–13. Multiplexer B(1,2) has two inputs Uo(1,1),
Uo(1,2) and one output Bo(1,2). Id. at 10:13–15. The patent also details the
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connections of other stages that appear in the drawing, some of which also
have eight multiplexers and others of which have only six multiplexers. Id.
at 10:16–12:59.
As illustrated by Figure 8 of the ’553 patent (not reproduced here),
multiple blocks like those shown in Figure 1A may be arranged in a two-
dimensional grid. Id. at 9:27–35. In such an arrangement, each block of the
grid is part of the die area of a semiconductor integrated circuit so that the
complete two-dimensional grid represents the complete die of the
semiconductor integrated circuit. Id. at 9:36–39.
Figure 3 of the ’553 patent is reproduced below.
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Figure 3A illustrates connections between two successive stages of a
ring “x” and two successive stages of another ring “y.” Id. at 20:42–48. Of
particular relevance are the “hop” connections between the distinct rings:
Hop(1,1) connects output Fo(x,2p+2) to input Ri(y,2q+4), Hop(1,2)
connects output Bo(x,2p+4) to input Ui(y,2q+2), Hop(2,1) connects output
Fo(y,2q+2) to input Ri(x,2p+4), and Hop(2,2) connects output Bo(y,2q+4) to
input Ui(x,2p+2). Id. at 22:15–26. The ’553 patent explains that rings x and
y “may or may not belong to the same block of the complete multi-stage
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hierarchical network.” Id. at 22:27–29. If the rings belong to the same
block, the hop connections are referred to as “internal hop wires”;
conversely, if the rings belong to different blocks, they are referred to as
“external hop wires.” Id. at 22:29–40. External hop wires may be
“horizontal wires or vertical wires,” and the length of external hop wires,
referred to as “hop length,” is the “manhattan distance between the
corresponding blocks,” i.e. the sum of the vertical and horizontal differences
separating the blocks. Id. at 22:40–63. Hop lengths are “positive
integer[s].” Id. at 29:40–41, 32:18–19.
B. Illustrative Claim
Independent claim 1 of the ’553 patent is illustrative of the challenged
claims, and is reproduced below.
1. A network implemented in a non-transitory medium
comprising a plurality of subnetworks and a plurality of inlet
links and a plurality of outlet links,
said plurality of subnetworks arranged in a two-
dimensional grid of rows and columns; and
each subnetwork comprising y stages, where y ≥ 1; and
each stage comprising a switch of size di × do, where di ≥
2 and do ≥ 2 and each switch of size di × do having di incoming
links and do outgoing links; and
Said inlet links are connected to one or more of said
incoming links of a said switch of a said stage of a said
subnetwork, and said outlet links are connected to one of said
outgoing links of a said switch of a said stage of a said
subnetwork; and
each subnetwork of the plurality of subnetworks may or
may not be comprising the same number of said inlet links and
may or may not be comprising the same number of said outlet
links; each subnetwork of the plurality of subnetworks may or
may not be comprising the same number of said stages; each
stage may or may not be comprising the same number of
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switches; and each switch in each stage may or may not be of the
same size, each multiplexer in each stage may or may not be of
the same size and
Said incoming links and outgoing links in each switch in
each stage of each subnetwork comprising a plurality of forward
connecting links connected from switches in a stage to switches
in another stage in same said subnetwork or another said
subnetwork, and also comprising a plurality of backward
connecting links connected from switches in a stage to switches
in another stage in same subnetwork or another said subnetwork;
and
Said forward connecting links comprising zero or more
straight links connected from a switch in a stage in a subnetwork
to a switch in another stage in the same subnetwork and also
comprising zero or more cross links connected from a switch in
a stage in a subnetwork to a switch in the same numbered stage
in one or more other subnetworks, and
Said backward connecting links comprising zero or more
straight links connected from a switch in a stage in a subnetwork
to a switch in another stage in the same subnetwork; and also
comprising zero or more cross links connected from a switch in
a stage in a subnetwork to a switch in the same numbered stage
in one or more other subnetworks.

Ex. 1001, 48:62–49:40.

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C. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–7, 9–15, and 17–19 on the following
bases:
Claims Challenged Statutory basis Reference(s)
1–7, 9–15, and 17–19 § 102(a)(1) Published PCT Application
No. WO 2008/109756 (“the
’756 PCT application”)
(Ex. 1009).
1–7, 9–15, and 17–19 § 103 The ’756 PCT application and
U.S. Patent No. 6,940,308 to
Wong (“Wong ’308”)
(Ex. 1008)

Pet. 5. Petitioner supports its challenges with a Declaration by R. Jacob
Baker, Ph.D., P.E. Ex. 1002; see also Ex. 1003 (Curriculum Vitae of Dr.
Baker).
D. Real Parties in Interest
The parties identify only themselves as real parties in interest. Pet. 2;
Paper 5, 2.
E. Related Proceedings
The ’553 patent was involved in Konda Technologies Inc. v. Flex
Logix Technologies, Inc., No. 5:18-cv-07581-LHK (N.D. Cal.). See Pet. 2.
Subsequent to filing of the Petition, this action was dismissed without
prejudice. Paper 11, 2 (representation by Petitioner). The ’553 patent is also
the subject of PGR2019-00037 and PGR2019-00040, for which a trial was
instituted in the former and denied in the latter. PGR2019-00037, Paper 13;
PGR2019-00040, Paper 13; Pet. 3. A final written decision in PGR2019-
00037 (“the related PGR”) is issued concurrently with the instant Decision.
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III. ANALYSIS
A. Legal Standards
A finding of anticipation under 35 U.S.C. § 102 requires that “each
and every element is found within a single prior art reference, arranged as
claimed.” Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed.
Cir. 2015; Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). “When a claim covers several structures or compositions,
either generically or as alternatives, the claim is deemed anticipated if any of
the structures or compositions within the scope of the claim is known in the
prior art.” Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). “The
identical invention must be shown in as complete detail as is contained in
the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.
Cir. 1989). The elements must be arranged as required by the claim, but this
is not an ipsissimis verbis test, i.e., identity of terminology is not required.
In re Bond, 910 F.2d 831 (Fed. Cir. 1990).
A prior art reference may anticipate without disclosing a feature of the
claimed invention if that missing characteristic is necessarily present, or
inherent, in the single anticipating reference. Cont’l Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
To serve as an anticipation when the reference is silent about
the asserted inherent characteristic, such gap in the reference
may be filled with recourse to extrinsic evidence. Such
evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill.
Id.
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
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patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
question of obviousness is resolved on the basis of underlying factual
determinations, including “the scope and content of the prior art”;
“differences between the prior art and the claims at issue”; and “the level of
ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). Additionally, secondary considerations, such as “commercial
success, long felt but unsolved needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy.”5 Graham, 383 U.S. at 17–18.
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. Rather, an obviousness determination requires finding
“both ‘that a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success in
doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements [in the way the claimed] new invention does”).
“Although the KSR test is flexible, the Board ‘must still be careful not to
allow hindsight reconstruction of references . . . without any explanation as

5 Patent Owner does not rely on any secondary considerations.
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to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted).
Further, an assertion of obviousness “cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
articulation[] of motivation to combine”; “instead, the finding must be
supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
burden of proving obviousness, a petitioner cannot employ mere conclusory
statements. The petitioner must instead articulate specific reasoning, based
on evidence of record, to support the legal conclusion of obviousness.”).
The motivation to combine must be “accompanied by a reasonable
expectation of achieving what is claimed in the patent-at-issue.” Intelligent
Bio-Sys, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Id.
B. Level of Ordinary Skill in the Art
Petitioner contends that the relevant level of skill in the art is that
possessed by a person who “would have had a master’s degree in electrical
engineering or a similar field, and at least two to three years of experience
with integrated circuits and networks.” Pet. 6 (citing Ex. 1002 ¶ 18).
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Petitioner asserts that “[m]ore education can supplement practical
experience and vice versa.” Id. Patent Owner did not file a Response to the
Petition and does not advocate for a particular level of skill in the art. See
Paper 32, 7 (Petitioner observing that “Patent Owner has not challenged this
skill level in this proceeding”); see generally Paper 16; RMTA.
We find Petitioner’s proposal consistent with the level of ordinary
skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995). Therefore, for purposes of this Decision, we adopt Petitioner’s
unopposed position as to the level of ordinary skill in the art.
C. Claim Construction
For petitions filed after November 13, 2018, as here, the Board uses
“the same claim construction standard that would be used to construe the
claim in a civil action under 35 U.S.C. 282(b), including construing the
claim in accordance with the ordinary and customary meaning of such claim
as understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)); Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc). The specification may reveal a
special definition given to a claim term by the patentee. Phillips at 1316. If
an inventor acts as his or her own lexicographer, the definition must be set
forth in the specification with reasonable clarity, deliberateness, and
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precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
1249 (Fed. Cir. 1998).
Petitioner “submits that for purposes of this proceeding, no term
requires construction.” Pet. 32 (citing Ex. 1002 ¶ 51). Patent Owner does
not take a position regarding construction of the challenged claims.
Because only those claim terms that are in controversy need to be
construed, and only to the extent necessary to resolve the controversy, we do
not expressly construe any claim term for purposes of this Decision. Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017).
D. Anticipation by the ’756 PCT Application
Petitioner contends the ’756 PCT application anticipates the
challenged claims of the ’553 patent. Pet. 33–92. The ’756 PCT application
was published September 12, 2008. Ex. 1009, code (43). Therefore, the
application is prior art even if the ’553 patent were entitled to the
September 7, 2011 priority date of the ’615 provisional application (which
we concluded is not the case in the Institution Decision, which Patent Owner
has not contested). Dec. 11–26; 35 U.S.C. § 102. Petitioner actually relies
on the disclosure of Provisional Patent Appl. No. 60/984,724 (the “’724
provisional application”), which was filed November 2, 2007, and
incorporated by reference in its entirety by the ’756 PCT application. Pet.
35–36; Ex. 1039, 98; Ex. 1009, 2:18–21.6 For purposes of this Decision, we

6 Exhibit 1039 is a copy of the file history of the ’724 provisional
application; Petitioner also includes the application itself as Exhibit 1010,
and cites to that exhibit throughout the Petition. Pet. vii, viii.
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treat the disclosure of the ’724 provisional application as prior art entitled to
an effective date of September 12, 2008, when the ’756 PCT application was
published.7
1. Independent Claims 1 and 11
The preamble of claim 1 recites, “[a] network implemented in a non-
transitory medium comprising a plurality of subnetworks and a plurality of
inlet links and a plurality of outlet links.”8 Ex. 1001, 48:62–49:40.
Petitioner points out that the ’724 provisional application discloses VLSI
layouts of networks which are included on a semiconductor chip such as a
Field Programmable Gate Array (FPGA), which is a non-transitory medium.
Pet. 36–37, citing Ex. 1010, 6:18–19, 7:1–9; Ex. 1002 ¶ 88.
Figure 1A of the ’724 provisional application, reproduced below,
discloses an exemplary network.

7 Petitioner submits, and we agree, that the incorporation by reference of the
’724 provisional application in its entirety by the ’756 PCT application
accords the ’724 provisional application prior art status in its own right by
virtue of the fact that it became publically available by virtue of the
incorporation, and in addition is prior art because it is considered part of the
disclosure of ’756 PCT application itself. Pet. 33–35; 37 C.F.R.
§ 1.14(a)(1)(vi).
8 Petitioner treats the preamble of claim 1 as possibly limiting, without
conceding as much. Pet. 36–39. For purposes of this Decision, we assume,
without deciding, that the preamble is limiting.
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Figure 1A illustrates an “exemplary generalized multi-link multi-stage
network . . . with nine stages of one hundred forty four switches . . . .”
Ex. 1010, 9:10–12. Connections are shown through the switches from the
input stage 110 to the output stage 120 via middle stages 130–190. Id. at
9:13–15. Figure 1B, reproduced below, is a “folded” version of Figure 1A.
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Id. at 2:17–18, 15:15–16. Figure 1B likewise depicts an array consisting of
stages, with each stage containing multiple switches. Id. at 15:16–16:26.
The network depicted in Figure 1B discloses a plurality of subnetworks
(each row of the network), and a plurality of inlet and outlet links (IL1,
IL2, . . . IL32 and OL1, OL2, . . . OL32). See Pet. 39–44, citing Ex. 1010,
15:15–22, 17:15–20, 28:14–26, 29:4–10; Ex. 1002 ¶¶ 92–99.
The first limitation of claim 1 recites, “said plurality of subnetworks
arranged in a two-dimensional grid of rows and columns.” Ex. 1001,
48: 65–66. The ’724 provisional application discloses such an arrangement
in Figure 1C, reproduced below.
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Figure 1C shows an arrangement of Figure 1B, where each row of Figure 1B
corresponds to a block of Figure 1C, where the blocks of the latter are
arranged in rows and columns. See Pet. 44–46, citing Ex. 1010, , 2:22–24,
20:19–22; Ex. 1002 ¶¶ 103–104.
The second limitation of claim 1 recites, “each subnetwork
comprising y stages, where y ≥ 1.” Ex. 1001, 48:65–67. As shown in the
above discussed figures, the ’724 provisional application discloses
subnetworks with multiple stages. See Pet. 46, citing Ex. 1010, 2:17–19; Ex.
1002 ¶ 105.
The third limitation of claim 1 recites, “each stage comprising a
switch of size di × do, where di ≥ 2 and do ≥ 2 and each switch of size di × do
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having di incoming links and do outgoing links.” Ex. 1001, 49:1–3. It is
noted that di in this context refers to the number of inputs to the switch, and
do refers to the number of outputs. Ex. 1002 ¶ 106; see also Ex. 1001,
47:27–29. The switches disclosed in the ’724 provisional application have,
for example, switches with two inputs and four outputs, with four inputs and
two outputs, and with four inputs and four outputs. See Pet. 47–48, citing
Ex. 1010, 9:15–24; Ex. 1002 ¶ 107. The switch inputs are connected to
incoming links, and the switch outputs are connected to outgoing links. See
Pet. 49–50, citing Ex. 1010, 9:15–24; Ex. 1002 ¶ 110.
The fourth limitation of claim 1 recites:
Said inlet links are connected to one or more of said incoming
links of a said switch of a said stage of a said subnetwork, and
said outlet links are connected to one of said outgoing links of a
said switch of a said stage of a said subnetwork.
Ex. 1001, 49:4–8. Figures 1B and 1J of the ’724 provisional application
show that the inlet links IL1, IL2, . . . IL32 are connected to incoming links
of the switches in the combined stages 110/120, and the outlet links OL1,
OL2, . . . OL32 are connected to outgoing links of those switches. See Pet.
51–53, citing Ex. 1010, 10:11–14, 15:15–22, 29:20–23; Ex. 1002 ¶¶ 111–
116.
The fifth limitation of claim 1 recites:
each subnetwork of the plurality of subnetworks may or may
not be comprising the same number of said inlet links and may
or may not be comprising the same number of said outlet links;
each subnetwork of the plurality of subnetworks may or may
not be comprising the same number of said stages; each stage
may or may not be comprising the same number of switches;
and each switch in each stage may or may not be of the same
size, each multiplexer in each stage may or may not be of the
same size.
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Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is
non-limiting as reciting optional features that “may or may not” be present,
and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.
The sixth limitation of claim 1 recites:
Said incoming links and outgoing links in each switch in each
stage of each subnetwork comprising a plurality of forward
connecting links connected from switches in a stage to switches
in another stage in same said subnetwork or another said
subnetwork, and also comprising a plurality of backward
connecting links connected from switches in a stage to switches
in another stage in same subnetwork or another said
subnetwork.
Ex. 1001, 49:19–26. Figures 1B and 1J of the ’724 provisional application
show that the incoming links and outgoing links in each switch include such
forward and backward connecting links. See Pet. 57–68, citing Ex. 1002
¶¶ 123–130.
The seventh limitation of claim 1 recites:
Said forward connecting links comprising zero or more straight
links connected from a switch in a stage in a subnetwork to a
switch in another stage in the same subnetwork and also
comprising zero or more cross links connected from a switch in

9 As discussed in the accompanying Final Decision in PGR2019-00037,
Petitioner shows, by a preponderance of the evidence, that the claim is
indefinite because “each multiplexer in each stage may or may not be of the
same size,” lacks an antecedent basis for “multiplexer.” In particular, it is
unclear whether or not this limitation requires any multiplexers at all. Id.
For purposes of this anticipation analysis, we assume the claim does not
require multiplexers. I.e., there is no requirement that any stage contain
multiplexers — the language covers instances where multiplexers are
included, and allows them to be the same size or different sizes, but does not
require their presence.
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a stage in a subnetwork to a switch in the same numbered stage
in one or more other subnetworks.
Ex. 1001, 49:27–33. The eighth limitation of claim 1 recites:
Said backward connecting links comprising zero or more
straight links connected from a switch in a stage in a
subnetwork to a switch in another stage in the same
subnetwork; and also comprising zero or more cross links
connected from a switch in a stage in a subnetwork to a switch
in the same numbered stage in one or more other subnetworks.
Ex. 1001, 49:34–40. Petitioner argues, and we agree, that the language of
these two limitations is non-limiting as reciting optional features, including
the option of zero links connected to a “same numbered stage,” and therefore
irrelevant to the issue of anticipation. Pet. 69–71.
The limitations of claim 11 track those of claim 1, and Petitioner
incorporates the arguments in support of anticipation of claim 1, and
provides additional comparable arguments, for its challenge to claim 11.
Pet. 82–87.
Patent Owner does not address whether or not the ’724 provisional
application discloses the limitations of claims 1 and 11. Based on the record
presented, as discussed above, we determine that Petitioner has proved by a
preponderance of the evidence that the ’724 provisional application
anticipates claims 1 and 11.
2. Dependent Claims 2–7, 9, 10, 12–15, and 17–19
Petitioner also relies on the ’724 provisional application as disclosing
the limitations of dependent claims 2–7, 9, 10, 12–15, and 17–19. Pet.
72–82, 87–92. Each of claims 2, 4–7, 12, 14, 15, and 19 adds requirements
to the “zero or more cross links” of independent claim 1 or 11. Ex. 1001,
49:41–45, 49:60–50:18, 51:32–36, 51:51–52:13, 52:39–43. Petitioner
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argues, and we agree, that because the independent claims require “zero or
more” cross links, the ’724 provisional application discloses the subject
matter of these dependent claims whether or not it discloses any cross links
having the required characteristics. Pet. 72, 76–78, 87–88, 89–90, 92.
Claim 3 depends from claim 2, and adds three alternative
requirements, including “wherein each subnetwork with its said stages is
replicated in either said rows or said columns of the two-dimensional grid.”
Ex. 1001, 49:46–49. Claim 13, which depends from claim 12, recites
commensurate limitations. Id. at 51:37–40. Petitioner relies on Figure 1C of
the ’724 provisional application, which shows the subnetworks replicated in
both the rows and columns. Pet. 72, 88, citing Ex. 1002 ¶¶ 135, 162. We
construe “either . . . or” in the claim disjunctively, which appears to be the
most natural reading of the claim. Kustom Signals, Inc. v. Applied Concepts,
Inc., 264 F.3d 1326, 1331 (Fed. Cir. 2001) (“‘[O]r’ and ‘either’ in their
common usage . . . designat[e] alternatives.”). That is, we treat the claim as
not encompassing an embodiment in which the subnetworks are replicated in
both rows and columns, and therefore Petitioner has not shown that the ’724
provisional application discloses this alternative of claims 3 and 13.
However, an additional alternative requirement of these claims
provides:
each subnetwork with said horizontal links and said
vertical links connected from and said horizontal links and said
vertical links connected to is replicated in either said rows or
said columns of the two-dimensional grid.
Ex. 1001, 49:50–54, 51:41–45. As discussed above, because the
independent claims require “zero or more” cross links, the ’724 provisional
application discloses the subject matter of this alternative requirement of
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these dependent claims whether or not it discloses any cross links having the
required characteristics. Ex. 1002 ¶ 138.
Claim 9 depends from claim 1, and adds five alternative requirements,
including “some of said stages in a subnetwork comprising a switch of size
(di+m) × (do+n), where di ≥2, do ≥2, m≥0, n≥0 and each such switch having
di+m incoming links and do+n outgoing links.” Ex. 1001, 50:39–42. Claim
17, which depends from claim 11, recites this limitation, as one of two
alternatives. Id. at 52:24–27. As discussed above for the third element of
claim 1, the ’724 provisional application discloses this limitation. Pet. 80,
91.
Claim 10 depends from claim 1, and adds 3 alternative requirements,
including “said plurality of subnetworks are either implemented in three or
more dimensions or implemented in a 3D integrated circuit device.” Ex.
1001, 50:51–53. Claim 18, which depends from claim 11, recites this
limitation, also as one of three alternatives. Id. at 52:36–38. The ’724
provisional application discloses this limitation. Pet. 81–82, 91, citing
Ex. 1010, 61:19–24; Ex. 1002, ¶¶ 148–149.
Patent Owner does not address whether or not the ’724 provisional
application discloses the limitations of claims 2–7, 9, 10, 12–15, and 17–19.
Based on the record presented, as discussed above, we determine that
Petitioner has proved by a preponderance of the evidence that the ’724
provisional application anticipates claims 2–7, 9, 10, 12–15, and 17–19.
E. Obviousness over the Combination of the ’756 PCT Application and
Wong ’308
Petitioner contends the challenged claims would have been obvious
over the combination of the ’756 PCT application and Wong ’308. Pet.
93–105. Petitioner makes this alternative argument “to the extent that
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[Patent Owner] argues or the Board finds that [the fifth limitation of claim 1]
requires each stage or any stages of the network to include a multiplexer.”
Pet. 93. As discussed above, this claim limitation includes the language,
“each multiplexer in each stage may or may not be of the same size.” Ex.
1001, 49:17–18. There is no antecedent basis for this occurrence of
“multiplexer” in the claims, and as elaborated in the Final Decision in
PGR2019-00037, it is unclear whether or not this limitation requires any
multiplexers at all. For purposes of this obviousness analysis, we assume
the claims require multiplexers in at least some switches.
The ’756 PCT Application does not explicitly disclose that the
switches used in the various embodiments are made up of multiplexers. Ex.
1002 ¶ 173. Petitioner relies on the disclosures in Wong ’308 as teaching
that switches are commonly made up of multiplexers. Pet. 93. Wong ’308,
titled “Interconnection Network For A Field Programmable Gate Array,”
issued September 6, 2005. Ex. 1008, [12], [45]. Therefore, Wong ’308 is
prior art pursuant to AIA U.S.C. § 102(a)(1). Pet. 5. An example of the
Wong ’308 interconnection network architecture is illustrated in Figure 13A,
reproduced below.
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Figure 13A depicts a network consisting of switches 82 and logic cells 81.
Ex. 1002 ¶ 174. Wong ’308 discloses that the switches are made up of
multiplexers, as shown in Figures 2C and 7, reproduced below.
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Figure 2C depicts a 2-input, 2-output switch made up of two multiplexers,
and Figure 7 depicts a 4-input, 4-output switch made up of six multiplexers.
Pet. 100–101, Ex. 1008, 5:14–21, 8:12–34; Ex. 1002 ¶¶ 178–180.
In light of these and other disclosures in Wong ’308, Petitioner argues
that a POSITA would have been motivated to implement the switches of the
’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent
Owner does not challenge this fact — the references to multiplexers (also
referred to a “muxes”) in the ’342 patent suggest that Patent Owner would
concede this point. E.g., Ex. 1001, 9:67, 14:33.
Upon review of the record, we are persuaded that Petitioner has
proved by a preponderance of the evidence that the combination of the ’724
provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19
obvious.
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IV. REVISED MOTION TO AMEND
Because we conclude that all of the challenged claims are
unpatentable, we consider Patent Owner’s Revised Motion to Amend.10 See
RMTA 1 (confirming that “this 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”). “Before considering the patentability of any
substitute claims, . . . the Board first must determine whether the motion to
amend meets the statutory and regulatory requirements set forth in”
35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. See Lectrosonics, Inc. v.
Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019)
(precedential).11 Accordingly, a patent owner must provide a claim listing
reproducing each proposed substitute claim, and must make an initial
showing to demonstrate the following: (1) the amendment proposes a
reasonable number of substitute claims; (2) the proposed claims are

10 Patent Owner referred in his Revised Motion to Amend to a Declaration
executed by himself and identified as Exhibit 2004. RMTA 3. However,
Exhibit 2004 is a copy of the Revised Motion to Amend, and the Declaration
does not otherwise appear in the record of this proceeding. We note that a
Konda Declaration is filed as Exhibit 2004 in IPR2019-00037, and we
assume a copy was also intended to be filed here under that exhibit number.
In addition, Patent Owner filed what appears to be an identical declaration as
Exhibit 2009, accompanying his Reply. See Reply RMTA 3 (noting filing
of Exhibit 2009). But Patent Owner does not cite substantively to either
Declaration in his arguments, and we agree with Petitioner that,
notwithstanding Patent Owner’s attestation to his education and professional
experience in the Declarations, Patent Owner’s pro se arguments in the
Revised Motion to Amend and corresponding Reply are not properly
considered as supporting evidence. See Opp. RMTA 2; Sur-reply
RMTA 2 n.1.
11 While Lectrosonics expressly references an inter partes review, its
analysis is equally applicable to motions to amend in a post grant review.
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supported in the original disclosure (and any earlier filed disclosure for
which the benefit of the earlier filing date is sought); (3) the amendment
responds to a ground of unpatentability involved in the trial; and (4) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.221.
The Board also must assess the patentability of proposed substitute
claims “without placing the burden of persuasion on the patent owner.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017); see
Lectrosonics, Paper 15 at 3‒4 (discussing Aqua Products and the burden of
persuasion). After Aqua Products, the Federal Circuit further clarified the
burden of persuasion in Bosch Automotive Service Solutions, LLC v. Matal,
878 F.3d 1027 (Fed. Cir. 2017), amended by Bosch Automotive Service
Solutions, LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018).
According to Aqua Products, Bosch, and Lectrosonics, a patent owner does
not bear the burden of persuasion to show that the proposed substitute claims
are patentable. Rather, ordinarily “the petitioner bears the burden of proving
that the proposed amended claims are unpatentable by a preponderance of
the evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. To determine whether a petitioner has proven
the substitute claims are unpatentable, the Board focuses on “arguments and
theories raised by the petitioner in its petition or opposition to the motion to
amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020).
For the reasons expressed below, we conclude that Patent Owner does
not make a sufficient showing that (1) the proposed substitute claims are
supported by the original or earlier disclosures; (2) the amendments to the
claims respond to a ground of unpatentability involved in the trial; or (3) the
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amendments to the claims do not introduce new subject matter. We also
conclude that Petitioner shows, by a preponderance of the evidence, that the
proposed substitute claims are unpatentable under 35 U.S.C. § 112 as
indefinite.
A. Proposed Substitute Claims
Patent Owner proposes a set of substitute claims in one-to-one
correspondence with the set of original claims. RMTA App’x. That is,
proposed claim 21 substitutes for original claim 1, proposed claim 22
substitutes for original claim 2, etc. through proposed claim 40 as a
substitute for original claim 20. Id. Of the proposed substitute claims,
claims 21 and 31 are independent, and the dependency of the remaining
proposed claims tracks the dependency of the original claims as applied to
the proposed substitute claims. Id.
In PGR2019-00037, Petitioner challenges 20 original claims of the
’553 patent (claims 1–20), and in this proceeding, Patent Owner proposes 20
substitute claims (claims 21–40). Mot. 8. However, because claims 8, 16,
and 20 are not challenged in this proceeding, it is not appropriate to seek to
amend those claims here. “All proposed claims should be traceable to an
original challenged claim as a proposed substitute claim for that challenged
claim.” Lectrosonics, Paper 15 at 5; see 35 U.S.C. § 326(d)(1)(B) (“For
each challenged claim, propose a reasonable number of substitute claims.”
(emphasis added)). Therefore, proposed substitute claims 28, 36, and 40
will not be considered in this proceeding.
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Proposed substitute claim 21 is illustrative, and is reproduced below
with underlining to indicate text added to original claim 1 and bracketing to
indicate text removed from original claim 1.12
21. A multi-stage hierarchical network implemented in a non-
transitory medium comprising a plurality of partial multi-stage
hierarchical networks [subnetworks] and a plurality of inlet
links and a plurality of outlet links,
said plurality of partial multi-stage hierarchical networks
[subnetworks] arranged in a two-dimensional grid of a plurality
of rows and a plurality of columns; and
each partial multi-stage hierarchical network
[subnetwork] of said plurality of partial multi-stage hierarchical
networks comprising a ring and said ring comprising a plurality
of stages [[y stages, where y ≥ 1]]; and
one of said plurality of stages comprising an entry stage
and one of said plurality of stages comprising a last stage; and
each stage of said plurality of stages comprising a switch
of size di × d0, where di ≥ 2 and do ≥ 2 and [each] said switch of
size di × d0 having di inputs [incoming links] and d0 outputs
[outgoing links]; and said switch of size di × d0 further
comprising a plurality of multiplexers of size d ≥ 2 with each
multiplexer of said plurality of multiplexers of size d ≥ 2
comprising d inputs and an output; and
said multi-stage hierarchical network further comprising
a plurality of internal connections and a plurality of external
hop wires; and

12 We generally reproduce the claim in the form it appears in the Revised
Motion to Amend. But we note certain alterations to Patent Owner’s
identification of changes because some differences from original claim 1 are
not correctly identified in Patent Owner’s version of proposed substitute
claim 21. In addition, the claim differs from original claim 1 in certain
trivial respects that are not identified as changes, namely with different
italicization of certain quantities such as di instead of di or the use of a zero
subscript in d0 instead of an “o” subscript in do in certain instances. We do
not consider such trivial differences meaningful since the intent of which
quantities are referred to is unambiguously clear.
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each input of said di inputs of said switch of size di × d0
connected to either an internal connection of said plurality of
internal connections or an external hop wire of said plurality of
external hop wires; and
each output of said d0 outputs of said switch of size di ×
d0 connected to either an internal connection of said plurality of
internal connections or an external hop wire of said plurality of
external hop wires; and
at least a first multiplexer of said plurality of multiplexers
of a first said switch of size di × d0 where di > do comprising
more inputs than a second multiplexer of said plurality of
multiplexers of the first said switch of size di × d0, or at least
one input of a multiplexer of said plurality of multiplexers of
said switch of size di × d0 of a first stage of said plurality of
stages of said ring of a first partial multi-stage hierarchical
network of said plurality of partial multi-stage hierarchical
networks connected from the output of a multiplexer of said
plurality of multiplexers of said switch of size di × d0 of a
second stage of said plurality of stages of said ring of said first
partial multi-stage hierarchical network or a second partial
multi-stage hierarchical network of said plurality of partial
multi-stage hierarchical networks, and
each inlet link of [S]said plurality of inlet links [are] is
connected to one or more of said di inputs [incoming links] of
[a] said switch of size di × d0 of [a] either said entry stage or
said last stage of said plurality of stages of [a] one [said] partial
multi-stage hierarchical network [subnetwork] of said plurality
of partial multi-stage hierarchical networks, and each outlet link
of[13] said plurality of outlet links [are] is connected to one of
said d0[14] outputs [outgoing links] of [a] said switch of size di ×
d0 of [a] either said entry stage or said last stage of said
plurality of stages of [a] one said partial multi-stage hierarchical
network [subnetwork] of said plurality of partial multi-stage
hierarchical networks; and

13 The added text “each outlet link of” incorrectly omits underlining in
Patent Owner’s version of the claim. This text is not part of original claim 1.
14 The added text “d0” incorrectly omits underlining in Patent Owner’s
version of the claim. This text is not part of original claim 1.
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[each subnetwork of the plurality of subnetworks may or
may not be comprising the same number of said inlet links and
may or may not be comprising the same number of said outlet
links; each subnetwork of the plurality of subnetworks may or
may not be comprising the same number of said stages; each
stage may or may not be comprising the same number of
switches; and each switch in each stage may or may not be of
the same size, each multiplexer in each stage may or may not be
of the same size and]
said ring of a first partial multi-stage hierarchical
network of said plurality of partial multi-stage hierarchical
networks comprising the same or different number of said
plurality of stages as said ring of a second partial multi-stage
hierarchical network of said plurality of partial multi-stage
hierarchical networks; a first stage of said plurality of stages
comprising said switch comprising the same or different
number of said plurality of multiplexers as a second stage of
said plurality of stages; a first multiplexer in said plurality of
multiplexers of size d ≥ 2 is the same or different size as a
second multiplexer in said plurality of multiplexers of size d ≥
2; and
[Said incoming links and outgoing links in each switch in
each stage of each subnetwork comprising a plurality of
forward connecting links connected from switches in a stage to
switches in another stage in same said subnetwork or another
said subnetwork, and also comprising a plurality of backward
connecting links connected from switches in a stage to switches
in another stage in same subnetwork or another said
subnetwork; and
Said forward connecting links comprising zero or more
straight links connected from a switch in a stage in a
subnetwork to a switch in another stage in the same subnetwork
and also comprising zero or more cross links connected from a
switch in a stage in a subnetwork to a switch in the same
numbered stage in one or more other subnetworks, and
Said backward connecting links comprising zero or more
straight links connected from a switch in a stage in a
subnetwork to a switch in another stage in the same
subnetwork; and also comprising zero or more cross links
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connected from a switch in a stage in a subnetwork to a switch
in the same numbered stage in one or more other subnetworks.]
each internal connection of said plurality of internal
connections connected from the output of a first multiplexer of
said plurality of multiplexers of size d ≥ 2 of said switch of a
first stage of said plurality of stages of said ring of a first partial
multi-stage hierarchical network of said plurality of partial
multi-stage hierarchical networks to one input of said d inputs
of a second multiplexer of said plurality of multiplexers of size
d ≥ 2 of said switch of a second stage either succeeding or
preceding to said first stage of said plurality of stages of said
ring of said first partial multi-stage hierarchical network of said
plurality of partial multi-stage hierarchical networks; and
each external hop wire of said plurality of external hop
wires connected from said output of one multiplexer of said
plurality of multiplexers of size d ≥ 2 of said switch of a first
two successive stages of said plurality of stages of said ring of a
first partial multi-stage hierarchical network of said plurality of
partial multi-stage hierarchical networks to one or more inputs
of said d inputs of one or more multiplexers of said plurality of
multiplexers d ≥ 2 of said switch of said first two successive
stages or a second two successive stages of said plurality of
stages of said ring of a second partial multi-stage hierarchical
network different from said first partial multi-stage hierarchical
network of said plurality of partial multi-stage hierarchical
networks.

RMTA App’x 2–8.
Patent Owner contends that “[b]ecause the challenged claims have
been cancelled and substitute claims are proposed, this constitutes a
‘reasonable number of substitute claims.’” RMTA 16–17 (citing 37 C.F.R.
§ 42.221(a)(3)). Petitioner does not dispute this contention, and we agree
with Patent Owner because there is only one proposed substitute claim per
original challenged claim. We agree that Patent Owner proposes a
reasonable number of substitute claims, as to challenged claims 1–7, 9–15,
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and 17–19 (as stated above, claims 28, 36, and 40, corresponding to
unchallenged claims 8, 16, and 20, are not considered).

B. Support for Proposed Substitute Claims
New subject matter is any addition to the claims that lacks sufficient
support in the subject patent’s original disclosure. See TurboCare Div. of
Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001) (“When [an] applicant adds a claim . . . , the new claim[] must
find support in the original specification.”). The Board requires that a patent
owner show in a motion to amend that there is written-description support in
the originally filed disclosure of the subject patent for each proposed
substitute claim, and also set forth support in an earlier-filed disclosure for
each claim for which the patent owner seeks the benefit of the earlier-filed
disclosure’s filing date. See 37 C.F.R. §§ 42.221(b)(1), 42.221(b)(2).
To support his contention that the proposed substitute claims have
sufficient support, Patent Owner provides a chart that purports to identify
support for the proposed substitute claims in the ’470 application, the ’168
application, the ’814 PCT application, and/or the ’615 provisional
application. RMTA 20–27. As noted above, the ’470 application is the
patent application that matured into the ’553 patent, and each of the other
three applications is incorporated by reference into the ’470 application.
Ex. 1001 at code (21), 1:8–14; Ex. 1004, 1 (Certificate of Correction).
These applications are also identified in Petitioner’s drawing, reproduced
supra at 4, summarizing the ’553 patent’s claims for earlier effective filing
dates.
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Petitioner contends that Patent Owner’s chart is inadequate because it
“simply provides citations to blocks of text, and, despite specific guidance
on this point, [Patent Owner] does not provide any explanation or supporting
evidence to establish that the passages that are cited actually support the
combination of limitations recited in the proposed substitute claims.” Opp.
RMTA 9 (citing RMTA 20–27; Paper 22, 10). In addition, Petitioner
contends that “huge portions of the proposed substitute claims are grouped
together with a large number of broad citations to the specification provided
as alleged support, thereby obfuscating what language in the specification
allegedly supports specific portions of the claims.” Id.
Petitioner points to a specific example in which Patent Owner’s chart
“indicates that a portion of proposed substitute claim 21 spanning a page and
a half ([RMTA,] Appendix, 3:4-4:17) is supported by a dozen citations to
the ’470 application. ([RMTA,] 21-22 (citing Ex. 1004[,] 212:21-22,
219:19-220:2, 223[:]25-28, 221:13-22, 235:16-236:3, 236:3-6, 233:7-11,
238:17-20, 238:20-242:8, 241:26-242:8, 245:9-17, 282:19-21 in attempting
to show support for that portion of proposed substitute claim 21).).” Opp.
RMTA 9. We agree with these characterizations of Patent Owner’s chart,
and further agree that the mere citation of broad portions of the claims and
allegedly supporting documents can be insufficient to carry Patent Owner’s
burden. See Lectrosonics, Paper 15 at 4; see also 37 C.F.R. § 42.221(d)(1)
(“A patent owner bears the burden of persuasion to show, by a
preponderance of the evidence that the motion to amend complies with the
requirement[] of . . . paragraph[] . . . (b)(2) [to identify support for the
proposed substitute claims].”) (effective for motions to amend filed on or
after January 20, 2021). Such citations do not “provide an explanation as to
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how the cited portions of the original disclosure (and any earlier-filed
disclosure Patent Owner relies on) supports the limitations of the substitute
claims,” as we advised Patent Owner to provide in our Preliminary
Guidance.15 See Paper 22, 10 (emphasis added).
In addition to this general criticism of Patent Owner’s chart, Petitioner
also provides a specific example for each of the proposed substitute
independent claims in which Petitioner contends that “the cited portions do
not provide written description support for that newly added portion” of the
proposed substitute independent claims. Opp. RMTA 9–10. Specifically,
proposed substitute claims 21 and 31 recite “each stage of said plurality of
stages comprising a switch of size di × d0, where di ≥ 2 and do ≥ 2 and said
switch of size di × d0 having di inputs and d0 outputs.” RMTA, App’x 3:9–
11, 15:10–12. Patent Owner’s chart does not address this recitation
precisely, but instead addresses it as a mere part of much larger recitations
that span about two pages. See id. at 21 (citing id., App’x 3:4–4:17), 24
(citing id., App’x 14:4–17:2). And as Petitioner accurately asserts, “none of
the cited passages cited as allegedly supporting this large portion of claim 21
mentions switches of size di × d0 where di ≥ 2 and d0 ≥ 2.” Opp. RMTA 10.
In discussing this example, the parties focus on the statement in the
’470 application that “[i]n other embodiments, all the d * d switches
described in the current invention are also implemented using muxes of

15 We recognize that the proposed substitute claims are lengthy, and that our
regulations impose page limits on motions to amend. See 37 C.F.R.
§ 42.24(a)(1)(vi). Nevertheless, in holding Patent Owner to his burden, we
note that we authorized an enlargement of the page limit on Patent Owner’s
Motion to Amend. Ex. 3003.

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different sizes controlled by SRAM or flash cells etc.” Ex. 1004, 282:19–
21. Petitioner refers to this statement as “the only mention of switches”
among the citations provided in Patent Owner’s chart for the limitation, and
as evidencing a lack of support for the specific requirements of a switch of
size of di × d0, where di ≥ 2 and do ≥ 2. Opp. RMTA 10. Conversely, Patent
Owner refers to the statement as being “correctly identified” by Petitioner
as providing support, and thereby a concession that the limitation finds
written-description support. Reply RMTA 9.
We agree with Petitioner that the statement does not provide adequate
support for the limitation because it provides no indication of switch size,
but instead merely states that switches can be implemented using muxes “of
different sizes.” We also agree with Petitioner that Patent Owner’s effort to
supplement his position that the limitation finds adequate support with still
further citations in his Reply is unavailing. See Reply RMTA 9–11 (citing
Ex. 1004, 233:12–19, 226:6–13, 282:19–21); Sur-reply RMTA 8. On this
point, Patent Owner expressly acknowledges that further reference in his
Reply to support in various drawings “are not included” in his chart. Reply
RMTA 11. We have nevertheless reviewed the additional passages Patent
Owner identifies in the Reply, and agree with Petitioner that Patent Owner
“fails to explain how the specific examples described in the application as
filed (Ex. 1004) support the broad range of switch sizes recited in the claims
where each switch has di inputs and d0 outputs and di is any number greater
than or equal to 2 and d0 is also any number greater than or equal to 2.” Sur-
reply RMTA 8 (citing Ex. 1004, 233:12–19, 226:6–13).
Because proposed substitute claims 22–27, 29, 30, 32–35, and 37–39
depend from proposed substitute claim 21 or 31, those claims suffer from the
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same issue. We thus conclude that Patent Owner does not make a sufficient
showing that identifies adequate written-description support for any of the
proposed substitute claims.

C. Responsiveness to a Ground of Unpatentability Involved in the Trial
In our Preliminary Guidance on Patent Owner’s original Motion to
Amend, we noted that Patent Owner’s proposed claim amendments “go
beyond the changes identified by Patent Owner and make wholesale changes
to nearly all of original challenged claims.” Paper 22, 6. The same problem
persists in Patent Owner’s Revised Motion to Amend, and Patent Owner
does not address this concern in his Revised Motion, despite it being
highlighted in the Preliminary Guidance. Rather, Patent Owner merely
asserts that “[t]he proposed substitute claims respond to an asserted ground
of unpatentability,” without explaining how they do so beyond merely
reiterating what the asserted grounds are. RMTA 18.
Lectrosonics affords a degree of flexibility in the permissible scope of
amendments proposed in a motion to amend. Specifically, in the context of
inter partes reviews, Lectrosonics advises that it is not required “that every
word added to or removed from a claim in a motion to amend be solely for
the purpose of overcoming an instituted ground.” Lectrosonics, Paper 15
at 5. Even though challenges for inter partes reviews may be based only on
“ground[s] that could be raised under section 102 or 103,” a patent owner
“also may include additional limitations [in proposing a claim amendment]
to address potential § 101 or § 112 issues” once the proposed claim
“includes amendments to address a prior art ground in the trial.” 35 U.S.C.
§ 311(b); Lectrosonics, Paper 15 at 6; see also Uniloc 2017 LLC v. Hulu,
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LLC, 966 F.3d 1295, 1304–1307 (Fed. Cir. 2020) (holding that § 311(b)
does not limit the Board’s review of substitute claims proposed in an inter
partes review). “Allowing an amendment to address such issues, when a
given claim is being amended already in view of a 35 U.S.C. § 102 or § 103
ground, serves the public interest by helping to ensure the patentability of
amended claims.” Lectrosonics, Paper 15 at 6 (citing Veeam Software Corp.
v. Veritas Techs., LLC, IPR2014-00090, Paper 48 at 26–29 (PTAB July 17,
2017)). But as Petitioner observes in opposition, the “Revised Motion once
again makes wholesale changes to all of the claims, and the resulting set of
substitute claims bears little resemblance to original claims 1-20 of the ’553
patent.” Opp. RMTA 3. For both proposed substitute independent claims
21 and 31, for example, multiple pages of text are inserted and multiple
pages of text are deleted. See RMTA App’x 2–8, 14–21. We need not
define the precise contours of how Lectrosonics’s flexibility might apply to
post-grant reviews because we find the scope of the proposed amendments
goes well beyond the intent and spirit of that flexibility.
Although Patent Owner contends that Petitioner is “simply wrong”
that Patent Owner did not respond to all the issues raised in our Preliminary
Guidance, Patent Owner again does not provide sufficient explanation to
carry his burden. Reply RMTA 4; see Lectrosonics, Paper 15 at 4; see also
37 C.F.R. § 42.221(d)(1) (assigning burden of persuasion to patent owner)
(effective for motions to amend filed on or after January 20, 2021). Patent
Owner’s bald assertion that he “strictly adhered” to our Preliminary
Guidance provides insufficient information to evaluate the assertion.
Because proposed substitute claims 22–27, 29, 30, 32–35, and 37–39
depend from proposed substitute claim 21 or 31, those claims suffer from the
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same issue. We thus conclude that Patent Owner does not make a sufficient
showing that the proposed substitute claims respond to a ground of
unpatentability involved in the trial, in a manner contemplated by our
regulations. We note that Patent Owner may wish to pursue alternative
avenues for amendment of the challenged claims in a reissue or
reexamination proceeding subsequent to the issuance of this decision as
described in the April 2019 Notice Regarding Options for Amendments by
Patent Owner Through Reissue or Reexamination During a Pending AIA
Trial Proceeding, 84 Fed. Reg. 16,654 (Apr. 22, 2019), and footnote 15 of
this Decision.

D. Scope of Proposed Substitute Claims
In addressing the scope of the proposed substitute claims, Patent
Owner identifies a number of features that are indisputably narrowing. See,
e.g., RMTA 17–18 (substitution of “network” with “multi-stage hierarchical
network” is clearly narrowing). Petitioner agrees. Opp. RMTA 7 (admitting
that “[Patent Owner’s] amendments may narrow certain aspects of the
claims”).
The problem with the proposed substitute claims, though, is that other
amendments appear to be broadening, and Patent Owner provides
insufficient explanation why such amendments are not broadening, despite
having the burden to do so. See Lectrosonics, Paper 15 at 4; 37 C.F.R.
§ 42.221(d)(1) (assigning burden of persuasion to patent owner) (effective
for motions to amend filed on or after January 20, 2021). In our Preliminary
Guidance, we specifically noted that this problem arose through “the
deletion of entire limitations, as well as the substitution of terms in other
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limitations.” Paper 22, 7. As a specific example, we observed that the
original Motion to Amend proposed to delete the following limitation from
original claim 1:
Said incoming links and outgoing links in each switch in each
stage of each subnetwork comprising a plurality of forward
connecting links connected from switches in a stage to switches
in another stage in same said subnetwork or another said
subnetwork, and also comprising a plurality of backward
connecting links connected from switches in a stage to switches
in another stage in same subnetwork or another said
subnetwork[.]

Id. As we explained, the deletion of that limitation broadened original claim
1 in the specific respect of reading on a network including only forward
connecting links or only backward connecting links. Id. Nevertheless, the
Revised Motion to Amend continues to propose deleting the limitation
without sufficient explanation how the claim is not thereby broadened in this
respect. See Opp. RMTA 7 (“[E]ven though [Patent Owner’s] amendments
may have added certain narrowing features, the substitute claims, which are
broadened in other areas, would still read on networks that the original
claims of the ’553 patent would not.”).
As another example, we observed that the original Motion to Amend
proposed to substitute the terms “incoming link” and “outgoing link” with
“input” and “output,” respectively. Paper 22, 8. As we explained, this
substitution broadened original claims 1 and 11 because the limiting term
“link” was no longer part of the claim term, such that a non-link input or
output would satisfy the claim limitation. Id. Again, notwithstanding this
guidance, the Revised Motion to Amend continues to propose the same
substitution. See RMTA App’x 3:10–11, 5:2–6, 15:11–12, 17:4–8. Patent
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Owner contends in his Reply that the respective terms are “equivalent,” but
such a contention does not respond to the specific concern that the terms are
broadened without the limiting term “link.” Reply RMTA 7. As Petitioner
asserts, “the incoming and outgoing links in claim 1 correspond to
connections between different switches . . . , whereas an ‘input’ and an
‘output’ do not themselves provide any connection and instead rely on
‘internal connections’ and ‘external hop wires’ recited in [proposed
substitute] claims 21-40.” Opp. RMTA 6–7. We thus agree with Petitioner
that Patent Owner’s “conclusory assertions that ‘incoming link’ and ‘input’
have the same meaning and ‘outgoing link’ and ‘output’ have the same
meaning are unsupported and incorrect.” Id. at 7.
Because proposed substitute claims 22–27, 29, 30, 32–35, and 37–39
depend from proposed substitute claim 21 or 31, those claims suffer from the
same issues. We thus conclude that Patent Owner does not make a sufficient
showing that the proposed substitute claims do not enlarge the scope of the
claims.

E. Patentability of Proposed Substitute Claims
The following table summarizes the unpatentability ground Petitioner
advances in its Opposition to the Revised Motion to Amend. Opp. RMTA
12–16; see Sur-reply RMTA 14 (“Petitioner need not and cannot address
whether the substitute claims are enabled or whether the substitute claims
are anticipated or rendered obvious by the prior art.”).
Claims Challenged 35 U.S.C. § References/Basis
21–27, 29–35, 37–39 § 112(b) Indefiniteness
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In contending that the proposed substitute claims are indefinite, Petitioner
highlights the following limitation recited in both proposed substitute
independent claims 21 and 31:
each stage of said plurality of stages comprising a switch of size
di × d0 . . . ; and said switch of size di × d0 further comprising a
plurality of multiplexers of size d ≥ 2 with each multiplexer of
said plurality of multiplexers of size d ≥ 2 comprising d inputs
and an output.

RMTA App’x 3:9–13, 15:10–14 (emphasis added). Petitioner observes that
each of proposed substitute independent claims 21 and 31 also recites the
following:
at least a first multiplexer of said plurality of multiplexers of a
first said switch of size di × d0 where di > do comprising more
inputs than a second multiplexer of said plurality of
multiplexers of the first said switch of size di × d0.

Id. at 4:7–9, 16:9–11 (emphases added). Petitioner contends that “[t]hese
limitations are incompatible.” Opp. RMTA 14. We agree.
According to Petitioner, the first limitation “requires each multiplexer
of the plurality of multiplexers to have the same number of inputs (d) and be
the same size.” Id. Patent Owner does not directly dispute this
understanding of the limitation. See Reply RMTA 12–15. Instead, Patent
Owner refers us to Figure 10B of the ’553 patent and identifies a subset the
multiplexers shown in that drawing, each of which has two inputs. Id. at 12–
13. It thus appears that Patent Owner reads the limitation in the same
manner as Petitioner with respect to the requirement that certain
multiplexers be of the same size, as defined by the number of inputs.
The second limitation explicitly and unambiguously requires that a
first multiplexer of the “plurality of multiplexers” have more inputs than a
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second multiplexer of the “plurality of multiplexers.” For this limitation,
Patent Owner observes that one of the multiplexers in Figure 10B of the
’553 patent has three inputs, i.e. greater than the two inputs of the subset
identified for the first limitation (and Patent Owner also observes that other
switches have four or five inputs). Id. at 13.
But the proposed substitute claims do not distinguish between the
recited “plurality of multiplexers.” It is not possible for each multiplexer of
the plurality of multiplexers to have the same number of inputs while also
including a first multiplexer having more inputs than a second multiplexer.
The claim language is thus not amenable to how Patent Owner would map it
onto Figure 10B because that mapping requires identification of different
pluralities of multiplexers that are not distinguished by the claim language.
Although we have considered Patent Owner’s identification of Figure 10B,
Patent Owner does not resolve the difficulty because Patent Owner does not
address how one of skill in the art would distinguish different pluralities of
multiplexers within the context of the claim language.16 We accordingly
agree with Petitioner that a person of ordinary skill in the art would not be
able to understand the scope of proposed substitute independent claims 21
and 31 with reasonable certainty.

16 We do not agree with Patent Owner that this is simply a matter of
“antecedent basis issues.” See Reply RMTA 12. In making that contention,
Patent Owner appears to rely on our disagreement in our Preliminary
Guidance with one of Petitioner’s arguments with respect to the original
Motion to Amend. See id. (citing Paper 22, 11). But the issue we addressed
in that guidance was of a significantly different nature, involving whether
the use of indefinite articles in referring to prepositional objects of phrases
that were otherwise repeated in their entirety raised an antecedent-basis
problem. Id.
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In a second example that Petitioner contends renders proposed
substitute independent claim 21 indefinite, Petitioner highlights the
following recitation proposed to be added:
said ring of a first partial multi-stage hierarchical network of
said plurality of partial multi-stage hierarchical networks
comprising the same or different number of said plurality of
stages as said ring of a second partial multi-stage hierarchical
network of said plurality of partial multi-stage hierarchical
networks; a first stage of said plurality of stages comprising
said switch comprising the same or different number of said
plurality of multiplexers as a second stage of said plurality of
stages; a first multiplexer in said plurality of multiplexers of
size d ≥ 2 is the same or different size as a second multiplexer is
said plurality of multiplexers of size d ≥ 2.

RMTA App’x 5:17–6:7 (emphases added). According to Petitioner, the
antecedent bases for the emphasized recitations of “said plurality of stages”
and “said plurality of multiplexers” are unclear. Opp. RMTA 15. As
Petitioner observes, proposed substitute claim 21 also recites that each of the
rings in each partial multi-stage hierarchical network of the plurality of
partial multi-stage hierarchical networks has a plurality of stages, and that
each stage has a switch with a plurality of multiplexers. Id. (citing RMTA
App’x 3:4–6, 3:9–13). We agree with Petitioner that “[i]t is unclear whether
the ‘said plurality of stages’ [in the limitation reproduced above] refers to
every ‘plurality of stages’ in every ring in every partial multi-stage
hierarchical network or some other subset thereof.” Id. at 15–16. We
similarly agree with Petitioner that “it is unclear whether the ‘said plurality
of multiplexers’ [in the limitation reproduced above] refers to every
‘plurality of multiplexers’ in every switch in every stage in every ring in
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every partial multi-stage hierarchical network or some subset thereof.” Id. at
16.
Patent Owner replies that the antecedent bases for both the “said
plurality of stages” and the “said plurality of multiplexers” are “clear”:
The first stage of said plurality of stages and second stage of
said plurality of stages are not recited as comprising a specific
ring or a specific partial multistage network, and could
comprise one or more rings in one or more partial multi-stage
hierarchical networks recited in substitute independent Claims
21 and 31. The same is true for “said plurality of multiplexers”
as well.
Reply RMTA 14–15. We do not find this explanation sufficiently clarifying.
Rather, we agree with Petitioner that this explanation instead “confirms that
the claim is not specific as to which stages of which rings of which networks
are addressed by the claim language.” Sur-reply RMTA 13. Although we
appreciate that Patent Owner may have in mind various permutations meant
to be captured by the proposed substitute claims, the language of the claims
does not effectively capture those permutations such that it “inform[s] those
skilled in the art about the scope of the invention with reasonable certainty.”
See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014).
We thus conclude that both examples identified by Petitioner illustrate
indefiniteness, the first with respect to both proposed substitute independent
claims 21 and 31, and the second with respect to proposed substitute
independent claim 21. Because proposed substitute claims 22–27, 29, 30,
32–35, and 37–39 depend from proposed substitute claim 21 or 31, those
claims suffer from the same indefiniteness. We thus conclude that Petitioner
shows, by a preponderance of the evidence, that proposed substitute claims
21–40 are unpatentable under 35 U.S.C. § 112(b) as indefinite.
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V. PATENT OWNER’S MOTION TO EXCLUDE17
Patent Owner requests that we exclude Exhibits 1002 and 1003
(Declaration and Curriculum Vitae of Dr. Baker) “and all the support
presented in the Petition by Ex. 1002 and Ex. 1003.” Paper 25, 4–5.18
According to Patent Owner, Dr. Baker does not meet Petitioner’s own
proposed definition of a person of ordinary skill in the art (which we have
adopted), because that definition requires “at least two to three years of
experience with integrated circuits and networks.” Id. at 3; Pet. 6 (citing Ex.
1002 ¶ 18); see supra § III.B. Patent Owner appears to base this contention
on Dr. Baker’s statement in his Declaration that “All of my opinions stated
in this declaration are based on my own personal knowledge and
professional judgment. In forming my opinions, I have relied on my
knowledge and experience in designing, developing, researching, and
teaching regarding circuit design and memory devices referenced in this
declaration.” Ex. 1002 ¶ 3. Evidently because Dr. Baker does not refer to
experience with “networks” in this particular Declaration statement, Patent
Owner infers that “Petitioner’s witness by his own admission has no
experience in networks.” Paper 25, 4.

17 We agree with Petitioner that Patent Owner’s Motion to Exclude is
procedurally improper because Patent Owner failed to timely object to the
evidence within the timeframe mandated by our regulations. See 37 C.F.R.
§ 42.64(b). Nevertheless, in the interest of a complete record, we address
the Motion on its merits.
18 Patent Owner filed a Declaration in support of his Motion to Exclude as
Exhibit 2011. Similar to Exhibits 2004 and 2009, this Declaration attests to
Patent Owner’s education and professional experience, but is not specifically
cited or otherwise relied on in Patent Owner’s Motion to Exclude.
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To be qualified as an expert, Dr. Baker does not necessarily need to be
a person of ordinary skill in the art as to the precise subject matter of the
patent at issue. Rather, a witness may qualify as an expert if he or she has
“knowledge, skill, experience, training, or education” of a “scientific,
technical, or other specialized” nature that is likely to help the Board “to
understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702;
see also PTAB Consolidated Trial Practice Guide, 34 (Nov. 2019),
https://go.usa.gov/xpvPF (“CTPG”) (“There is . . . no requirement of a
perfect match between the expert’s experience and the relevant field.” (citing
SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir.
2010))).
We consider the admissibility of Dr. Baker’s testimony in light of this
standard. We also note that, despite Patent Owner’s concern with Dr.
Baker’s qualifications, Patent Owner did not cross-examine Dr. Baker
regarding those credentials. See Paper 32, 6 n.4. As Petitioner points out,
Patent Owner “identifies only one paragraph of Dr. Baker’s declaration,”
and appears to draw an inference greater than is supported by the mere
absence of the word “networks” in Dr. Baker’s summary of his experience.
We agree that Patent Owner’s assertion that Dr. Baker has “no experience”
in networks is overstated. See id. at 6. Indeed, Dr. Baker specifically
testifies elsewhere in his Declaration to having “extensive experience in
circuit designs for networks” and having published a textbook that includes
sections covering the use of certain electronic components for “networking.”
Ex. 1002 ¶¶ 7, 9.
We agree with Petitioner, particularly in light of the sparse record in
support of Patent Owner’s position vis-à-vis the otherwise uncontested
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information in Dr. Baker’s Curriculum Vitae, that Dr. Baker has sufficient
education and experience to qualify as an expert in this proceeding and for
the Board to rely on his testimony in understanding the evidence presented.
We also agree with Petitioner that Patent Owner’s challenge is directed to
the sufficiency of Dr. Baker’s testimony, rather than articulating a sufficient
basis why it is inadmissible. See Paper 32, 4–6. In this context, we note that
this proceeding has ultimately involved considerably more legal issues than
technical issues such that our reliance on Dr. Baker’s testimony has been
relatively limited.
Accordingly, we deny Patent Owner’s Motion to Exclude.

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VI. CONCLUSION19
For the reasons above, Petitioner has shown by a preponderance of the
evidence that claims 1–7, 9–15, and 17–19 of the ’553 patent are
unpatentable, as summarized in the following table.
Claims 35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–7, 9–15,
17–19
§ 102(a)(1) ’756 PCT
application
1–7, 9–15,
17–19

1–7, 9–15,
17–19
§ 103 ’756 PCT
application,
Wong
1–7, 9–15,
17–19

Overall
Outcome
1–7, 9–15,
17–19

The table below summarizes our conclusions as to Patent Owner’s
Revised Motion to Amend the claims.
Motion to Amend Outcome Claims
Substitute Claims Proposed in the Amendment 21–40
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 21–27, 29, 30–35, 37–
39
Substitute Claims: Not Reached 28, 36, 4020

19 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of his continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
20 As stated above, substitute claims 28, 36, and 40, corresponding to
unchallenged claims 8, 16, and 20, are not considered.
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VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims 1–
7, 9–15, and 17–19 of U.S. Patent No. 10,003,553 B2 are held to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend (Paper 24) is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
(Paper 25) is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER
Naveen Modi
Joseph E. Palys
Paul M. Anderson
Quadeer A. Ahmed
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
paulanderson@paulhastings.com
quadeerahmed@paulhastings.com

PATENT OWNER

Venkat Konda
vendat@knodatech.com