UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Zynga, Inc.,
`
`Petitioner,
`
`v.
`
`IGT,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,168,089
`
`
`Case No.: IPR2022-00199
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Zynga, Inc.,
`
`Petitioner,
`
`v.
`
`IGT,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,168,089
`
`
`Case No.: IPR2022-00199
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`TABLE OF CONTENTS
`
`PR2022-00199
`
`Page
`Table of Authorities ................................................................................................. iii
`Exhibit List ................................................................................................................ iv
`I.
`Introduction ...................................................................................................... 1
`II.
`Argument ......................................................................................................... 3
`A. Ground 1 ................................................................................................ 3
`1.
`The Reply fails to remedy the Petition’s flawed motivation
`to combine analysis. .................................................................... 3
`The Reply fails to remedy the Petition’s flawed analysis of
`“gaming software.” ..................................................................... 8
`The Reply’s new theory regarding applets fails to show
`obviousness of the Challenged Claims. .................................... 13
`There is no inconsistency between IGT’s arguments in the
`district court litigation and in this IPR. ..................................... 18
`The Reply fails to remedy the Petition’s flawed analysis of
`a “software authorization agent” that monitors downloads. ..... 18
`The Reply fails to remedy the Petition’s flawed analysis of
`authorization “requests” and “messages.” ................................ 21
`Ground 2: The Reply Argues Invalidity Theories that Do Not
`Appear in the Petition. ......................................................................... 24
`III. Conclusion ..................................................................................................... 27
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`B.
`
`
`
`ii
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`
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`PR2022-00199
`
`TABLE OF AUTHORITIES
`
`Cases
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 15
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) .............................................................................. 7
`SAS Inst., Inc. v. Iancu,
`138 S.Ct. 1348 (2018) .......................................................................................... 25
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .............................................................................. 8
`Statutes
`35 U.S.C. § 316 .......................................................................................................... 8
`Rules
`37 C.F.R. § 42.104 ................................................................................................... 15
`37 C.F.R. § 42.120 ................................................................................................... 24
`
`
`
`
`iii
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`
`
`
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`PR2022-00199
`
`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Decisions – Motions – 37 CFR § 41.125(a), Patent Interference No.
`105,747 (RES), Paper 145 (Feb. 14, 2014)
`
`Declaration – 37 CFR § 41.203(b), Patent Interference No. 105,747
`(RES), Paper 1 (Mar. 5, 2010)
`
`Standing Order, Patent Interference No. 105,747 (RES), Paper 2
`(Mar. 5, 2010)
`
`Legal iGaming List of Proposed Motions, Patent Interference No.
`105,747 (RES), Paper 20 (Apr. 28, 2010)
`
`Order – Authorizing Motions – 37 CFR § 41.121, Patent Interference
`No. 105,747 (RES), Paper 22 (May 3, 2010)
`
`Zynga Substantive Motion 3, Patent Interference No. 105,747 (RES),
`Paper 91 (July 9, 2013)
`
`Second Declaration of Charles R. Berg, Patent Interference No.
`105,747 (RES), Zynga Ex. 2015 (July 9, 2013)
`
`IGT Motion List, Patent Interference No. 105,747 (RES), Paper 21
`(Apr. 28, 2010)
`
`Decision – Interlocutory Motions – 37 C.F.R. § 41.125(b), Patent
`Interference No. 105,747 (RES), Paper 50 (Oct. 21, 2010)
`
`Docket Report, IGT et al. v. Zynga Inc., No. 6:21-cv-00331- ADA
`(W.D. Tex.) (generated March 9, 2022)
`
`First Amended Complaint for Patent Infringement, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 7
`
`Claim Construction Order, IGT et al. v. Zynga Inc., No. 6:21-cv-
`00331-ADA (W.D. Tex.), Dkt. 64
`
`Joint Notice of Agreed Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv- 00331-ADA (W.D. Tex.), Dkt. 38.
`
`
`
`iv
`
`
`
`
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`PR2022-00199
`
`Exhibit
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`Joint Notice of Agreed Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv- 00331-ADA (W.D. Tex.), Dkt. 55.
`
`Zynga Inc.’s Opening Claim Construction Brief, IGT et al. v. Zynga
`Inc., No. 6:21-cv- 00331-ADA (W.D. Tex.), Dkt. 25.
`
`Zynga Inc.’s Reply Claim Construction Brief, IGT et al. v. Zynga Inc.,
`No. 6:21-cv- 00331-ADA (W.D. Tex.), Dkt. 39.
`
`Judgment - Motions - 37 CFR § 41.127, Patent Interference No.
`105,747 (RES), paper 146.
`
`West Texas Judge Says He Can Move Faster Than PTAB, Law360,
`available at https://www.law360.com/articles/1224105/west-texas-
`judge-says-he-can-move-faster-than-ptab.
`
`Albright Says He'll Very Rarely Put Cases On Hold For PTAB,
`Law360, available at https://www.law360.com/articles/1381597/-
`albright-says-he-ll-very-rarely-put-cases-on-hold-for-ptab.
`
`The IP Rise of Waco and the Western District of Texas, National Law
`Review, available at https://www.natlawreview.com/article/move-
`over-marshall-there-s-new-sheriff-town-rise-waco-and-western-
`district-texas.
`
`available
`2019 Data Update, RPX Corp,
`Q1
`https://www.rpxcorp.com/intelligence/blog/q1-in-review-new-
`uncertainties-spark-further-change-as-reform-momentum-builds.
`
`at
`
`Order on Discovery, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-
`ADA (W.D. Tex.), Dkt. 61.
`
`2023
`
`IGT Letter to Zynga (Sept. 25, 2020).
`
`2024
`
`2025
`
`Defendant’s Preliminary Invalidity Contentions, IGT et al. v. Zynga
`Inc., No. 6:21-cv- 00331-ADA (W.D. Tex.).
`
`Defendant’s Opposed Motion to Transfer Venue to the Austin
`Division of the Western District of Texas, IGT et al. v. Zynga Inc.,
`No. 6:21-cv- 00331-ADA (W.D. Tex.), Dkt. 63.
`
`
`
`v
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`
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`PR2022-00199
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`Exhibit
`
`Description
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`Order Granting Intra-District Transfer of Venue, Datascape, Ltd. v.
`Dell Techs, Inc., No. 6:19-cv-00129-ADA (W.D. Tex.).
`
`E-mail to counsel re: IGT et al v. ZYNGA INC. (6:21-cv-00331-
`ADA) - Preliminary Constructions (Jan. 4, 2022).
`
`Docket Sheet, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.) (Apr. 18, 2022).
`
`Unopposed Motion to Withdraw Defendants Motion for Judgment on
`the Pleadings, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.), Dkt. 68.
`
`Defendant’s Final Invalidity Contentions, IGT et al. v. Zynga Inc.,
`No. 6:21-cv- 00331-ADA (W.D. Tex.).
`
`Declaration of Craig Wills, Ph.D.
`
`Curriculum Vita of Craig Wills, Ph.D.
`
`from
`(video game), Wikipedia, downloaded
`Slot Machine
`https://en.wikipedia.org/wiki/Slot_Machine_(video_game) Aug. 29,
`2022.
`
`Atari 2600, Wikipedia, downloaded from https://en.wikipedia.org/-
`wiki/Atari_2600 Aug. 29, 2022.
`
`2035
`Freedman, The Computer Glossary, p. 192, AMACOM (1998)
`2036 Webster’s New World Computer Dictionary, 10th ed., p. 177, Wiley
`Publishing (2003).
`
`
`
`
`
`vi
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`PR2022-00199
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`I.
`
`INTRODUCTION
`The Petition proposes invalidity challenges that shoehorn inapposite prior art
`
`teachings into the Challenged Claims using hindsight as its guide. The Challenged
`
`Claims recite methods for determining when to transfer gaming software from a first
`
`gaming device to a second gaming device using a separate entity, called a “software
`
`authorization agent.” In particular, the first gaming device sends a “gaming software
`
`download request message” (sometimes called a “gaming software transaction
`
`request”) to the software authorization agent. The software authorization agent
`
`returns an “authorization message [that] includes information indicating whether the
`
`first gaming device is authorized to transfer the gaming software to the second
`
`gaming device.” Thereafter, the gaming software is transferred to the second gaming
`
`device, which may be used for a “game of chance played on a gaming machine” or
`
`other recited uses.
`
`The Petition’s hindsight becomes self-evident when one considers the salient
`
`teachings of the proffered art. A first reference, Goldberg, discloses an Internet
`
`gaming system in which blackjack software is retained on a central web site 308 far
`
`removed from the Internet client nodes 318 at which players access games. The
`
`players’ client nodes 318 do not request download of software; instead they provide
`
`player IDs that the web site 308 uses to validate the players and to advance the games
`
`that are processed on the web site 308. Goldberg’s system does not authorize
`
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`download of gaming software, either; it merely sends web pages to the Internet client
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`nodes 318 representing the blackjack games as they unfold, for example, when
`
`players start new games, hit, or stand. In all cases, the games are processed remotely
`
`by the central web site 308.
`
`The Petition’s second reference, Olden, does not disclose a gaming system at
`
`all, and it does not teach any transfer of software. It discloses techniques for
`
`providing secure access to applications that execute on webservers. When users
`
`attempt access to application functionality, Olden’s system determines whether such
`
`access is permitted and returns user interfaces from which authorized users can
`
`invoke the application functions. The applications themselves execute only on the
`
`webserver; they are not transferred to user computers. Like Goldberg, Olden
`
`discloses no “gaming software download request message[s]” or “gaming software
`
`transaction request[s],” and its system never generates an “authorization message
`
`[that] includes information indicating whether the first gaming device is authorized
`
`to transfer [] software to the second gaming device.” Goldberg and Olden both have
`
`fundamentally different character than the techniques recited in the Challenged
`
`Claims.
`
`The Reply (paper 22) does not challenge this understanding of the art. Instead,
`
`it provides still other hindsight-driven arguments that the Board should reject. As
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`explained herein, Goldberg’s query to database 28 is not a “gaming software
`
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`download request message;” instead, it is simply a database query that determines
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`whether a player is registered with Goldberg’s system. The database’s response is
`
`not an “authorization message [that] includes information indicating whether the
`
`first gaming device is authorized to transfer the gaming software to the second
`
`gaming device;” instead, it is a response that the web site 308 uses to determine
`
`whether a player can gain access to other pages within Goldberg’s web site 308.
`
`And Goldberg’s web pages are not “gaming software;” instead, individual web pages
`
`merely display, in a conventional web browser, the incremental progress of player
`
`games that execute on the web site 308. Whether considered with or without Olden’s
`
`security techniques, Goldberg’s techniques are very different from those recited by
`
`the Challenged Claims.
`
`II. ARGUMENT
`A. Ground 1
`1.
`The Reply fails to remedy the Petition’s flawed motivation
`to combine analysis.
`IGT’s unrebutted review of Goldberg’s and Olden’s disclosure (POR § VI)
`
`demonstrates that the Petition’s premises for combining disclosures of Goldberg and
`
`Olden are wrong. A POSITA would not agree that “Goldberg … does not fully
`
`detail the structure and functionality of this database system 28” (Pet. at 59); instead,
`
`Goldberg describes the database 28 comprehensively. See POR at 25-28; Ex. 2031
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`3
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`¶¶ 56-57, 125-126. Further, a POSITA would not see any benefit to applying
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`Olden’s “application-by-application, or even application-function-by-application-
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`function”-based access determinations (Pet. at 60) to Goldberg because Goldberg’s
`
`system extends game functions widely to registered users. POR at 29-30. More
`
`generally, a POSITA would recognize both references to teach that software should
`
`remain on a server rather than be transferred to a client device. POR at 32-38. The
`
`Reply’s counter-arguments merely confirm these basic flaws.
`
`First, the Reply (p. 3-4) presumes incorrectly that a POSITA would want to
`
`apply Olden’s so-called “‘highly … configurable,’” “sophisticated,” and “nuanced”
`
`accessibility rules to Goldberg. Nuanced accessibility rules have no value in
`
`Goldberg’s system, where verified players enjoy wide access to web site functions:
`
`Goldberg (Ex. 1004), FIG. 7 (annotated)
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`4
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`Ex. 1004, col. 25:33-40 (assuming a user is registered, the user may proceed from
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`the Lobby 708 to an introduction page 728, a game 726, or game rules 730); see also
`
`Ex. 2031 ¶¶ 129-134. Designing access rights that, for example, grant a player
`
`access to Goldberg’s game introduction page but deny that player access to the
`
`page’s underlying game would frustrate, not enhance, Goldberg’s design. Ex.
`
`2031 ¶¶ 129-134.
`
`The Reply’s other proffered advantages of Olden—high reliability, extensive
`
`logging, and cross-platform compatibility (Reply at 4)—already are present in
`
`Goldberg’s system. For example, Goldberg stores a representation of “status
`
`information” in the database 28 after every player interaction with a game. Ex. 1004,
`
`cols. 8:2-27, 17:6-12, 18:4-9. Goldberg’s web site 308, via the blackjack driver 26,
`
`retrieves this information from the database 28 on each new request received from
`
`an Internet client node 318. Id. col. 17:6-12. These techniques provide the reliability
`
`and logging that the Reply suggests is otherwise lacking in Goldberg. Goldberg also
`
`supplies cross-platform compatibility by transmitting Internet responses to
`
`conventional browsers 640, which can be employed on a wide variety of client
`
`machines. Id. col. 24:55-64.
`
`The Reply misconstrues IGT’s argument that a POSITA would not look to
`
`Olden to determine how a database might perform a validation operation. IGT did
`
`not “require[] that Olden’s authorization system [] be grafted into Goldberg without
`
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`any modification or adaptation.” Reply at 5. Instead, IGT’s Response explained
`
`that the Petition’s proffered Ground errs from the outset by ascribing an
`
`authentication operation to Goldberg’s database 28. POR at 11, 27-29. In Goldberg,
`
`the WWW server 340, not the database 28, performs authentication. Ex. 1004 at
`
`14:40-48 (the “World Wide Web server 340 … validat[es] and/or initiat[es]
`
`registration of web site users (e.g., blackjack players) at web site 308.”). Thus, the
`
`POR demonstrates that Petitioner’s motivation argument proceeds from a false
`
`premise: Goldberg’s database 28 does not correspond to the claimed “software
`
`authorization agent” (Pet. at 29), and Goldberg does not fail to “provide detail
`
`regarding [the database’s] structure, inner workings, or the totality of the functions
`
`it performs” (id. at 30). The Reply’s failure to respond meaningfully to IGT’s
`
`thorough review of Goldberg’s disclosure demonstrates that IGT’s analysis is
`
`correct.
`
`This difference becomes important because the
`
`Challenged Claims require the “first gaming device” and
`
`the “software authorization agent” to be separate from
`
`each other. Because Petitioner’s invalidity theory posits
`
`that the web site 308 (yellow) is the claims’ “first gaming
`
`device,” of necessity, the theory required Petitioner to
`
`select something else as the “software authorization
`
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`6
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`Reply at 33
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`agent.” Petitioner’s selection of Goldberg’s database 28 (orange) merely reflects a
`
`connection of dots necessary to build this invalidity theory rather than a fair
`
`evaluation of the prior art. As such, it reflects hindsight. Cheese Sys., Inc. v. Tetra
`
`Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013)
`
`(“Obviousness ‘cannot be based on the hindsight combination of components
`
`selectively culled from the prior art to fit the parameters of the patented invention.’”).
`
`And, because a single entity, the web site 308, validates web site users and sends
`
`Internet responses to those users (Ex. 1004, col. 14:37-65), there is no separateness
`
`between a software authorization agent and a first gaming device, even if Goldberg’s
`
`system otherwise were considered to perform the method steps recited in the
`
`Challenged Claims. Petitioner’s analysis, which disregards the prior art’s disclosure
`
`in favor of an expedient, hindsight-driven narrative, also fails to explain why a
`
`POSITA would be motivated to split Goldberg’s validation and gaming operations
`
`from a single unit, the web site 308, into multiple units as claimed.
`
`In the end, Petitioner’s proposed motivation theories reflect a goal-oriented
`
`approach disfavored by the Federal Circuit:
`
`Too often the obviousness analysis is framed as an inquiry into whether a
`person of skill, with two (and only two) references sitting on the table in
`front of him, would have been motivated to combine … the references in
`a way that renders the claimed invention obvious. The real question is
`whether that skilled artisan would have plucked one reference out of the
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`7
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`sea of prior art … and combined it with [another reference] to address some
`need present in the field.
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`WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016). Here, Petitioner
`
`failed to explain why a POSITA would have plucked Olden out of this sea of prior
`
`art and combined it with Goldberg’s disclosure. Even more, Petitioner failed to
`
`show that, even if a POSITA had plucked them out, the POSITA would have
`
`combined their features in a way that resembles the Challenged Claims. Petitioner,
`
`therefore, failed to carry its burden to prove invalidity. 35 U.S.C. § 316(e).
`
`2.
`
`The Reply fails to remedy the Petition’s flawed analysis of
`“gaming software.”
`The Reply fails to challenge IGT’s review of Goldberg and Olden, including
`
`IGT’s explanation that both references teach to keep software executing on servers
`
`rather than to transfer software to other devices. POR § VII.C.1. Goldberg places
`
`his gaming software on a web site 308 to provide consumer confidence that the
`
`games are fair. Id. Olden does not discuss gaming software at all, but keeps other
`
`software executing on a webserver 20 to protect the software against misuse. Id. It
`
`defies common sense to argue that two references, which both teach to keep software
`
`on a server, collectively teach a technique for transferring gaming software to a
`
`remote device as recited in the Challenged Claims.
`
`The Board should reject the Reply’s suggestion (p. 7) to ignore such
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`fundamental differences between the cited prior art and the Challenged Claims on
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`8
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`claim construction grounds. “Gaming software” is an unremarkable term, one that
`
`is given its plain meaning. Dec. Inst. at 21-22. On a plain meaning basis, gaming
`
`software simply is “software” to run a “game.” The Petition largely agrees. See Pet.
`
`at 15 (the term “refer[s] to ‘instructions that are executed to run a game or component
`
`of a game.’”); Dec. Inst. at 35 (citing same). But now that Petitioner’s proffered
`
`construction is shown to distinguish the prior art, the Reply retreats from it by
`
`distorting both IGT’s arguments and the ’089 Patent’s specification disclosure.
`
`First, IGT has not argued that the claims require “the download of an entire
`
`game, or at the very least all of the logic that ‘runs’ the game.” Reply at 7-8
`
`(emphases added). Instead, IGT explained that the “claim language indicates that
`
`the [] gaming machine plays the game following the transfer.” POR at 40. Thus, no
`
`matter whether the transfer of gaming software involves the entire game or some
`
`component, the gaming software is run on the gaming machine after the transfer
`
`occurs. The term “gaming software” suggests this understanding.
`
`Other claim recitations reinforce this understanding. They speak of a “gaming
`
`software download request” (claim 28) or a “gaming software transaction request”
`
`that involves a “transfer of gaming software” (claim 84). In both claims, these
`
`requests result in an “authorization message [that] includes information indicating
`
`whether the first gaming device is authorized to transfer the gaming software to a
`
`second gaming device.” Moreover, other recitations state that the software is for “a
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`game … played on a gaming machine,” a “device driver for a device installed in a
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`gaming machine,” “a player tracking service on a gaming machine,” or “an operating
`
`system installed on a gaming machine.” The whole point of these recitations is to
`
`develop gaming software on a gaming machine, when authorized, and to run the
`
`gaming software on the transferee gaming machine.
`
`Second, Petitioner misstates the patent’s specification. The Reply (p. 8-9)
`
`relies heavily on discussion from the ’089 Patent, column 25, but it overlooks this
`
`discussion’s teaching that, again, the gaming software executes on the transferee
`
`gaming machine:
`
`A set of gaming software components may be executed on a gaming
`machine to play a gaming of chance. … For instance, a complete package
`of gaming software components may be downloaded to replace a game
`executed on a gaming machine with a new game. As another example, a
`single game software component may be downloaded to fix an error in a
`game of chance executed on the gaming machine.
`
`Ex. 1001, col. 25:38-50 (emphases added); see also id. col. 37:28-31 (the gaming
`
`software is “executed on various gaming machines.”). This discussion is well-
`
`aligned with the Patent’s FIG. 8 and 9 disclosure, which teaches that gaming
`
`software distributors may store licensed software titles for distribution to gaming
`
`machines 55, 54 when authorized by software authorization agents. See id. cols.
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`24:27-31:57; see also POR § II (summarizing such disclosure). This specification
`
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`10
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`disclosure reinforces what the Challenged Claims already make self-evident: Once
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`gaming software is transferred to a second gaming device, either in whole or in part,
`
`the second gaming device runs the game.
`
`The Reply’s (p. 9-10) citation to the ’089 Patent, col. 13:12-17 does not
`
`suggest a different outcome. There, the ’089 Patent simply describes configurations
`
`of gaming machines beyond the embodiment illustrated in
`
`FIG. 2. It does not suggest, as Petitioner would have it, that,
`
`when a host computer generates display data for a remote
`
`terminal, the host computer somehow invokes the methods
`
`recited in the Challenged Claims. Petitioner’s cited passage
`
`identifies no role for a software authorization agent. Id. It
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`says nothing about requests to transfer gaming software or
`
`how such requests are authorized. Instead, the specification
`
`describes these operations elsewhere. See Ex. 1004, cols.
`
`24:27-31:57.
`
`’089 Patent (Ex. 1001),
`FIG. 2
`
`Nor does the Reply’s citation to LeMay disturb the plain meaning
`
`understanding of these claims. Reply at 10. LeMay discusses a modular architecture
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`for gaming software in which a game presentation module 54 (blue) generates
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`content (purple) for display on a gaming device:
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`
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`11
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`PR2022-00199
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`LeMay (Ex. 1013), FIG. 1 (annotated)
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`
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`This display data can include “display of various meters, game status information
`
`and input buttons on one or more of the gaming machine.” Ex. 1013, col. 41:22-29;
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`see also id. col. 27:23-25, 27:37-39, 29:31-35. More generally, LeMay’s gaming
`
`software module generates audio-visual content that is output from a gaming
`
`machine. Id. col. 10:44-46, 34:54-56, 41:11-15. Thus, LeMay teaches that a
`
`software presentation module 54 is distinct from the presentation content that it
`
`generates. Id. col. 11:26-31.
`
`In this regard, LeMay’s design is similar to Goldberg’s. Goldberg’s CGI
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`scripts 348 generate presentation content, the web pages (purple), that indicate
`
`credits available for betting 312, game status 302, and input buttons 204 at an
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`Internet client node 318 (orange):
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`
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`12
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`PR2022-00199
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`Goldberg (Ex. 1004), FIGS. 2 & 3 (annotated)
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`
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`But, here, the software that generates the presentation content, the CGI script 348
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`(blue), is distinct from the web page (purple) that carries this content. Ex. 1004, col.
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`14:50-65, 16:42-52. This is but another reason why a POSITA would not recognize
`
`the Goldberg web pages to be “gaming software” under the claims: In Goldberg’s
`
`system, even the logic that generates presentation content is retained on Goldberg’s
`
`web site. It is not transferred to Internet client nodes 318.
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`3.
`
`The Reply’s new theory regarding applets fails to show
`obviousness of the Challenged Claims.
`The Reply alters the Ground presented in the Petition for modifying
`
`Goldberg’s web pages to accommodate applets or other unnamed web-based
`
`software. In the Petition, Petitioner argued an invalidity theory in which applet-
`
`based games are sent to user devices. Pet at 58 (“by incorporating [applets] into
`
`
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`13
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`PR2022-00199
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`Goldberg, more feature rich, customized, and interactive games could be sent to
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`users.” (emphasis added)); see id. at 28-29 (alleging that a POSITA would “transmit
`
`applets either along with or in place of HTML to facilitate game play”), 42
`
`(transmitting “other Web-based software, like an applet, either in place of or along
`
`with Goldberg’s HTML” serves the same function by “provid[ing] the user device
`
`with the appropriate software needed to resume an existing game or start a new
`
`one.”); see also Dec. Inst. at 36 (adopting theory that “applets downloaded to a user’s
`
`computer include[] executable instructions to facilitate casino-style game play.”).
`
`IGT responded to the Ground as presented by explaining that Goldberg’s design
`
`intentionally keeps games on a web site 308, away from the Internet client nodes
`
`318. See POR at 45 (placing the games on a server creates a greater degree of
`
`confidence that games are fair).
`
`Petitioner’s Reply presents a new theory that does not appear in the Petition:
`
`[I]t would have been obvious to replace the files Goldberg already
`transmits—the customized HTML files that display the game state and
`provide the user interface—with applets or other more dynamic web-based
`software. The blackjack game logic that is currently executed on the
`casino web server by Goldberg’s blackjack game controller 14 would
`remain on the server.
`
`Reply at 15-16. The Petition did not argue that game logic would remain on a server.
`
`See Pet. at 58 (“interactive games could be sent to users”). The Board should not
`
`
`
`14
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`PR2022-00199
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`consider this new invalidity theory. 37 C.F.R. § 42.104(b)(5) (a Petition must
`
`identify “the relevance of the evidence to the challenge raised, including identifying
`
`specific portions of the evidence that support the challenge”); see also Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (the
`
`Board properly rejected a Reply’s presentation of new theories from applied prior
`
`art.).
`
`The Reply’s new theory, even if adopted, does not demonstrate obviousness
`
`of the Challenged Claims. As discussed, the Challenged Claims recite a method for
`
`transferring gaming software to the second gaming device. No matter whether an
`
`individual iteration of the method causes the gaming software to be transferred in
`
`total or as a component, the method develops gaming software that is run on the
`
`second gaming device. The Reply’s new invalidity theory posits that the “blackjack
`
`game logic that is currently executed … by Goldberg’s blackjack game controller
`
`14 would remain on the server.” Reply at 15-16. In advancing this new theory,
`
`Petitioner has created a hypothetical prior art combination that fails to meet the
`
`Challenge Claims because, in this combination, no game is run on the client device.
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`Moreover, the Reply’s new invalidity theory fails to explain how applets
`
`would be integrated into Goldberg’s web pages in this scenario. See Reply at 15
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`(discussing “HTML files that display game state and provide the user interface”
`
`without explanation). In the Goldberg system, CGI scripts 348 (blue) generate new
`
`
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`15
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`PR2022-00199
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`web pages (called “Internet responses”) that are sent to Internet client nodes 318
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`(orange). Ex. 1004, col. 14:59-65. The CGI scripts 348 incorporate much of the
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`functionality of the blackjack gaming controller 14 (yellow). Id. col. 15:6-15. The
`
`CGI scripts 348 dynamically generate content of individual Internet responses
`
`(purple) based on output from other elements of the blackjack game controller. Id.
`
`col. 14:59-65, 16:42-52.
`
`
`Goldberg (Ex. 1004), FIGS. 3, 5 (annotated)
`
`
`
`Goldberg, in FIG. 5, illustrates four exemplary games that lead to 19 Internet
`
`responses representing 19 unique game configurations. Id. col. 19:51-20:53.
`
`Countless other game configurations must be supported for other games.
`
`The Petition and the Reply both fail to explain how game logic is to remain
`
`on a server and CGI scripts 348 would be configured to generate applets that animate
`
`the endless number of card combinations that arise as a blackjack game controller
`
`
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`16
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`PR2022-00199
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`14 operates. Petitioner’s expert does not explain how Goldberg’s system might be
`
`modified to provide such functionality. See Ex. 1003 ¶¶ 179-182, 398-402. Instead,
`
`the expert proposes to employ client-side applets as an alternative to Goldberg’s
`
`server-side CGI programs when creating interactive web pages. Id. ¶ 181. But,
`
`there, the expert’s analysis relates to Petitioner’s original invalidity theory in which
`
`Goldberg “transmit[s] blackjack game software from Goldberg’s web site 308 and
`
`game controller 14 to user devices like Internet client node 318.” Id. ¶ 183 (emphasis
`
`added). As explained, Goldberg purposefully designed his system not to transmit
`
`game software to any client device (POR §§ IV.A, VII.C.1), which is why Petitioner
`
`concocted this new invalidity theory and its hypothesis that the “game logic that is
`
`currently executed on the casino web server by Goldberg’s blackjack game
`
`controller 14 would remain on the server.” Reply at 16. Petitioner’s supposition
`
`that a POSITA would have had a reasonable expectation of success to keep the
`
`blackjack game controller 14 on a server and to auto-generate applets for Goldberg’s
`
`Internet responses is unsupported by any evidence.
`
`The Board should reject the Reply’s applet theory because it is new,
`
`underdeveloped, and unsupported by evidence.
`
`
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`17
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`PR2022-00199
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`4.
`
`There is no inconsistency between IGT’s arguments in the
`district court litigation and in this IPR.
`The Reply’s suggestion (p. 17-18) that some inconsistency exists between
`
`IGT’s claim constructions in the district court and in this IPR is incorrect. Petitioner
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`infringes the ’089 Patent by downloading gaming software to consumer computing
`
`platforms that run games. See Ex. 1019 (Zynga’s Accused Methods achieve the
`
`result of “playing a game on any supported hardware platform”). There is no
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`inconsistency.
`
`5.
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`The Reply fails to remedy the Petition’s flawed analysis of a
`“software authorization agent” that monitors downloads.
`The Reply fails to address IGT’s argument that the Petition “fails to show that
`
`either Goldberg or Olden monitors/tracks delivery of [] web pages.” POR at 47-48.
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`Goldberg’s “CGI scripts 348 … generate web pages dynamically based on response
`
`from modules within the blackjack game controller.” Id. As discussed, in the four
`
`exemplary games illustrated in Goldberg’s FIG. 5, the CGI scripts 348 (blue)
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`generate 19 web pages (purple), each having unique content corresponding to the
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`games’ unique configurations, for the Internet client nodes 318 (orange):
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