BoxInterferences@uspto.gov
`Tel: 571-272-4683
`
`Paper 145
` Entered: February 14, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Patent Interference No. 105,747 (RES)
`(Technology Center 2400)
`____________________
`
`Zynga Inc.,
`Junior Party
`(Application 10/658,836;
`Inventors: Rolf E. Carlson and Michael W. Saunders),
`
`v.
`
`IGT,
`Senior Party
`(Patent 7,168,089;
`Inventors: Binh T. Nguyen, Michael M. Oberberger and
`Gregory Hopkins Parrott).
`
`Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and
`RICHARD TORCZON, Administrative Patent Judges.
`
`Opinion for the Board filed by SCHAFER, Administrative Patent Judge.
`
`Dubitante opinion filed by TORCZON, Administrative Patent Judge.
`
`Concurring opinion filed by McKELVEY, Administrative Patent Judge.
`
`DECISION - MOTIONS - 37 CFR § 41.125(a)
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`I.
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`The interference is before a motions panel for consideration of non-priority
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`motions.
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`There was no oral argument.
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`IGT EXHIBIT 2001
`Zynga v. IGT, IPR2022-00199
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`Four substantive motions are currently pending:
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`1. IGT Motion 21 (Paper 94) for a judgment that Zynga’s involved
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`claims lack sufficient written descriptive support under 35 U.S.C. § 112, ¶ 1
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`(2010);
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`2. Zynga’s Substantive Motion 1 (Paper 89) to substitute a new count
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`and designate all of the parties’ currently involved claims as corresponding to the
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`new count;
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`3. Zynga’s contingent Motion 2 (Paper 90) for the benefit of the filing
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`dates of Applications 09/698,507 and 60/161,591 as to the proposed new count;
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`and
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`4. Zynga’s Substantive Motion 3 (Paper 91) for a judgment that IGT’s
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`involved claims are unpatentable over prior art.
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`We grant IGT’s Motion 2. Because we find that Zynga’s specification does
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`not provide written descriptive support for its involved claims, it is inappropriate
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`and unfair to allow this interference to continue based upon the unsupported
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`claims. We therefore terminate this interference with a judgment against Zynga
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`and dismiss Zynga’s motions as moot. See 37 CFR §41.201 (definition of
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`threshold issue).
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`II.
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`This interference is between Zynga’s Application 10/658,836 and IGT’s
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`Patent 7,168,089. The interference was declared on March 5, 2010, between Legal
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`iGaming, Inc. and IGT. Zynga is the successor-in-interest to Legal iGaming. The
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`interference was suspended due to Legal iGaming’s bankruptcy proceeding. In re
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`Legal iGaming, Inc., Case No. 11-12771-BTB (Bankr. E.D. Nev). During the
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`1 IGT Substantive Motion 1 (Paper 25), asserting no interference-in-fact between
`the parties’ claimed subject matter, was previously denied in a panel decision.
`Paper 50.
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`29
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`bankruptcy, Legal iGaming’s intellectual property rights were sold to Atwater
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`Ventures, Ltd. which subsequently assigned its interests to Zynga.2 The
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`bankruptcy was terminated on April 5, 2013.
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`III.
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`The subject matter claimed relates to the authorization of electronic transfers
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`between networked computer gaming machines or devices, particularly casino-type
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`gaming machines. The parties employ an “authorization agent” or “gaming
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`server” that determines whether to allow the transfer. In Zynga’s claims the agent
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`approves the transfer of “gaming information.” In IGT’s claims the agent approves
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`the transfer of “gaming software.” We reproduce Zynga’s Claim 29 and IGT’s
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`Claim 1 below with paragraphing, bracketing, strikethrough, and emphasis added:
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`Zynga Claim 29
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`29. In an authorization agent, a method of generating a
`gaming transaction record used to facilitate a transfer of gaming
`information between two gaming devices, the method
`comprising:
`receiving a gaming transaction request from a first
`gaming device;
`authenticating an identity of the first gaming device;
`generating a gaming transaction record comprising
`gaming transaction information;
`and sending a message to the first gaming device wherein
`the message includes information authorizing the first gaming
`device to transfer the gaming information to the [a3] second
`gaming device wherein the first gaming device and the second
`gaming device are separate from the authorization agent,
`whereby the first gaming device transfers the gaming
`information to the second gaming device in response to the
`message;
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`2 Legal iGaming, Atwater, and Zynga will collectively be referred to as “Zynga.”
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`3 As presented by Zynga, there is no antecedent in Claim 29 for “the second
`gaming device”.
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`wherein the gaming information is for a game of
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`chance played on a gaming machine.
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`IGT Claim 1
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`1. In a software authorization agent, a method of
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`generating a gaming software transaction record used to
`facilitate a transfer of gaming software between two gaming
`devices, the method comprising:
`receiving a gaming software transaction request from a
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`first gaming device;
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`authenticating an identity of the first gaming device;
` generating a gaming software transaction record
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`comprising gaming software transaction information that is
`used to approve or reject the transfer of gaming software from a
`second gaming device to the first gaming device
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`sending an authorization message to the first gaming
`device
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`wherein the authorization message includes information
`indicating whether the first gaming device is authorized to
`transfer the gaming software to the second gaming device and
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`wherein the first gaming device and the second gaming
`device are separate from the software authorization agent;
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`wherein the gaming software is for at least one of a) a
`game of chance played on a gaming machine, b) a bonus game
`of chance played on a gaming machine, c) a device driver for a
`device installed on a gaming machine, d) a player tracking
`service on a gaming machine and e) an operating system
`installed on the gaming machine.
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`Legal iGaming’s Clean Copy of Claims, Paper 14, p. 2; IGT Clean Copy of
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`Claims, Paper 9, p. 2.
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`IV.
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`
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`IGT Substantive Motion 2 (Paper 94) argues, inter alia, that the concept of
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`using an “authorization agent” in Zynga’s claims is not described in Zynga’s
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`specification: Paper 94, pp. 12-17.
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`A.
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`Relying on Robertson v. Timmermans, 603 F.3d 1309, 1312, (Fed. Cir.
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`2010) and In re Spina, 975 F.2d 854, 856 (Fed. Cir. 1992), IGT argues that because
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`Zynga copied the claims from IGT’s published application, “authorization agent”
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`should be construed in light of IGT’s specification. Paper 94, pp. 3-4.
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`Zynga disagrees arguing that the claims are not copies of IGT’claims.
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`Paper 118, p. 2. For example, Zynga argues that there are several differences,
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`including that its claims generically specify the use of an “authorizing agent” while
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`IGT’s claims specify a “software authorizing agent.” We also observe that
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`Zynga’s claims require the authorization agent control the transfer of “gaming
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`information,” while IGT’s claims require that the authorization agent control the
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`transfer of “gaming software.” Because of the differences, Zynga argues, the
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`claims are not copies and cases holding that the originating disclosure provides the
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`meaning of the pertinent claim language do not compel that its claims be
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`interpreted in light of IGT’s disclosure. Paper 118, p. 2.
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`IGT does not contest that there are differences between its claims and
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`Zynga’s. However, it argues that Zynga’s claims are “essentially copied” and
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`remain closer in substance to IGT’s claims than to any of the Zynga’s original
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`claims. Paper 135, p. 2, ll. 3-8.
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`B.
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`A review of the prosecution history of Zynga’s involved application shows
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`that Zynga submitted claims copied from IGT’s published application (U.S. Patent
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`Application Publication 2002/0116616 (Aug. 22, 2002) (Ex. 1010).
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`Application 10/658,836, Transmittal letter filed August 21, 2003 (Ex 2010, Board
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`page 1209). As originally copied from IGT’s published application, Zynga
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`included claims that that were identical to claims in IGT’s involved application.
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`Application 10/658,836, Amendment filed August 21, 2003 (Ex 2010, starting at
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`Board page 1265). Thus, Zynga’s copied claims required the use of a software
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`authorizing agent to facilitate transfer of gaming software. Those claims were
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`amended four times before the Examiner indicated they were patentable to Zynga.
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`See generally Application 10/658,836 amendments filed November 15, 2006 (Ex.
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`1012 or Ex. 2017); May 18, 2007 (Ex. 2022); January 10, 2008 (Ex. 2026); and
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`December 12, 2008 (Ex. 2029). The amendments resulted in the deletion of all
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`references to “software” from Zynga’s claims. E.g., Application 10/658,836,
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`amendment filed November 15, 2006 (Ex. 2017).
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`During the prosecution, Zynga also added a limitation that mimicked a
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`limitation added during the prosecution IGT’s application. In an amendment filed
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`May 25, 2006 (Ex. 2033), IGT had amended some of its then-pending independent
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`claims by adding the following limitation:
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`sending an authorization message to the first gaming device
`wherein the authorization message includes information
`indicating whether the first gaming device is authorized to
`transfer the gaming software to the second gaming device and
`wherein the first gaming device and the second gaming
`device are separate from the software authorization agent; . . . .
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`Application 10/116,424, Amendment filed May 25, 2006 (Ex. 2033, Board page
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`1859) (emphasis added). In a subsequently filed amendment, Zynga added a
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`limitation to some of its claims that was identically worded to IGT’s amendment,
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`except that Zynga’s amendment substituted “information” for the first occurrence
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`of “software” and deleted the second occurrence of “software.” Application
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`10/658836, Amendment filed November 15, 2006 (Ex. 2017).
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`C.
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`While Zynga’s claims, as allowed by the Examiner, clearly are not identical
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`copies of IGT’s, we think they are substantial copies. Zynga originally identically
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`copied claims from IGT’s published application and followed IGT’s lead in adding
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`limitations that tracked IGT’s amendments to its application. Although Zynga’s
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`claims were amended to recite “authorization agent” and “gaming information,”
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`resulting in claims broadened in scope, the amendments did not create significant
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`differences in the concepts and steps involved. Under these circumstances,
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`Zynga’s claims remain substantial copies of IGT’s notwithstanding the different
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`breadth of coverage.
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`Additionally, when this interference was declared the parties were advised:
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`Pursuant to Koninklijke Philips Electronics N.V. v. Cardiac
`Science Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010)
`and Agilent Technologies Inc. v. Affymetrix Inc., 567 F.3d 1366,
`1375 (Fed. Cir. 2009) and notwithstanding 37 CFR
`§ 41.200(b),[4] for the purposes of written description support
`under 35 USC § 112, ¶ 1, language appearing in the applicant’s
`claims and not supported by the same language in applicant’s
`written description shall be construed in light of the patentees’
`written description.
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`Paper 3, p. 4.
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` Zynga’s claim language will be interpreted in light of IGT’s specification.
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`“Because this is an interference and [the applicant] substantially copied
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`[patentee’s] claim 1, we give the claim its broadest reasonable construction in light
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`of the . . . patent specification.” Harari v. Lee, 656 F.3d 1331, 1340 (Fed. Cir.
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`2011).
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`D.
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`1.
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`IGT argues that “authorization agent,” when interpreted in light of its
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`specification, should be construed to mean “a device that authorizes (that is
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`approves or rejects) specific transfers of gaming software based on the
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`4 The regulation was subsequently removed by the Director. Final Rule,
`Cancellation of Rule of Practice 41.200(b) Before the Board of Patent
`Appeals and Interferences in Interference Proceedings, 75 Fed. Reg. 19558 (April
`15, 2010).
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`applicable rules, and monitors (that is tracks) these transfers . . . .”. Paper 94,
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`p. 1, l. 26 – p. 2, l. 1 (bolding added). To support its position, IGT relies on
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`portions of its specification and on the testimony of Dr. William K. Bertram, Ph.D.
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`Paper 94, pp. 6-9.
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`Zynga responds that this definition is not the broadest reasonable
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`interpretation. Paper 118, p. 4. According to Zynga:
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`IGT’s definition of “authorization agent” is not the broadest
`reasonable interpretation because it includes fully four separate
`limitations (in bold type above) that are, for example, internally
`inconsistent with the remainder of the claim language or
`improperly imported from the specification of [IGT’s] patent.
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`Paper 118, p. 4, ll. 26-29.
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`We are persuaded that IGT’s definition is too narrow, at least in construing
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`the phrase “authorization agent” in Zynga’s claims to mean “software
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`authorization agent.” To interpret the phrase in this way would effectively render
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`superfluous the word “software” in the phrase “software authorization agent” as
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`used in IGT’s claims and written description. IGT’s use of the word “software” at
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`least implies that an “authorizing agent,” when used without the modifier, does not
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`connote an agent limited solely to authorizing software transfers. We therefore
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`decline to limit the phrase to an agent that authorizes the transfer of gaming
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`software.
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`We hold that “authorization agent” as used in Zynga’s claims is not limited
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`to a device that only authorizes transfers of gaming software. Rather, it is generic
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`to both the transfer of gaming software and to other types of gaming information.
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`2.
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`IGT also argues that, if “authorization agent” is not limited solely to
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`authorizing software transfers, Zynga’s claims still fail to have written descriptive
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`support. Paper 94, p. 17, ll., 13-28. IGT argues that Zynga’s original specification
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`does not provide written descriptive support for the full scope of the subject matter
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`encompassed by “authorization agent.” According to IGT, to the extent that
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`phrase encompasses an agent for authorizing the transfer of gaming software, the
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`authorization of such transfer is not supported by Zynga’s specification. Paper 94,
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`p. 17, ll. 13-28.
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`IGT directs us to ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368,
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`1376-79 (Fed. Cir. 2009), and LizardTech, Inc. v. Earth Res. Mapping, Inc.,
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`424 F.3d 1336, 1345-47 (Fed. Cir. 2005). These cases hold that, under the
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`particular facts there involved, generic subject matter added by amendment was
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`not supported by the disclosure of a species encompassed by the later claimed
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`generic subject matter. ICU Med., 558 F.3d at 1378 (Generic claims covering both
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`valves with and without spikes were not supported by specification that only
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`described valves with spikes); Lizard Tech., 424 F.3d at 1345 (Claim directed to a
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`generic method creating seamless discrete wave transformation coefficients was
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`not supported by a specification directed only to a particular method of creating
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`those coefficients).
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`As support for its position, IGT correctly notes that the phrase “authorization
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`agent” does not appear in Zynga’s specification other than in its amended claims.
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`Paper 94, p. 12, ll. 3-4. IGT also relies upon Dr. Bertram’s testimony. Paper 94, p.
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`17, ll. 16-22. Dr. Bertram testifies that Zynga’s “application does not teach a
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`device that authorizes and monitors the transfer of gaming software . . . .” He also
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`testifies that “one of ordinary skill would not have understood that the [Zynga]
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`inventors invented a device that authorizes and monitors transfers of gaming
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`software.” Ex. 1016, p. 22, ll. 15-17.
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`Zynga responds arguing that IGT has made only the naked assertion that its
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`claims encompass more than what is described. Citing to LizardTech, Zynga
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`argues that claims do not fail to comply with § 112, first paragraph, simply because
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`the specification does not include examples explicitly covering the full scope of the
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`claimed subject matter. Paper 118, p. 22, ll. 13-24.
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`3.
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`A purpose of the written description requirement is to ensure that the scope
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`of the right to exclude, as set forth in the claims, does not overreach the scope of
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`the inventor’s contribution to the field of art as described in the patent
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`specification. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed.
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`Cir. 2010) (en banc). The test for the adequacy of written description support “is
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`whether the disclosure of the application relied upon reasonably conveys to those
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`skilled in the art that the inventor had possession of the claimed subject matter as
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`of the filing date.” Id. at 1351. That is, the specification must “set forth enough
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`detail to allow a person of ordinary skill in the art to understand what is claimed
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`and to recognize that the inventor invented what is claimed.” Univ. of Rochester v.
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`G.D. Searle & Co., 358 F.3d 916, 928 (Fed. Cir. 2004). The invention is, for
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`purposes of the “written description” inquiry, whatever is now claimed.” Vas-
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`Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Possession
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`means “possession as shown in the disclosure” and “requires an objective inquiry
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`into the four corners of the specification from the perspective of a person of
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`ordinary skill in the art.” Crown Packaging Tech., Inc. v. Ball Metal Beverage
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`Container, Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011); Ariad, 598 F.3d at 1351.
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`However, “the exact terms need not be used in haec verba.” Id.; In re Hayes
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`Microcomputer Prods., Inc., 982 F.2d 1527, 1533 (Fed. Cir. 1992) (“[the
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`applicant] does not have to describe exactly the subject matter claimed”).
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`Additionally, a single embodiment supports a generic claim only if the
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`specification would “reasonably convey to a person skilled in the art that the
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`inventor had possession of the broader claimed subject matter at the time of filing.”
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`See Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed.Cir.2004).
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`4.
`We have reviewed Zynga’s amended specification and drawings (Ex. 2020)
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`and do not see a disclosure of an agent that authorizes the transfer of gaming
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`software. The discussions in Zynga’s specification describing the transfer of
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`information related to non-software information. For example, the transfers
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`include financial information (Ex. 2020, ¶¶ 23 and 108); player initiated events
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`(id., ¶¶ 56 and 93), encryption keys and encrypted information (id., ¶¶ 114-116);
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`gaming server responses to player initiated events (id., ¶¶ 90); and information
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`allowing remote computer controlled play of a separate gaming machine (id., ¶¶
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`106 and 150-152).
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`Dr. Bertram, IGT’s witness, testifies that he reviewed the specification,
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`claims, and drawings, as well as the prosecution history, of Zynga’s involved
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`application. Ex. 1016, p. 2, ¶ 9. He testifies Zynga’s specification teaches a
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`“centralized architecture with unchanging game software residing at a central
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`system.” Id., p. 21, l. 17. He further testifies that Zynga’s “application does not
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`teach a device that authorizes and monitors the transfer of gaming software . . . .”
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`Id., p. 22, ll. 15-17. He additionally testifies that “one of ordinary skill would not
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`have understood that the [Zynga] inventors invented a device that authorizes and
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`monitors transfers of gaming software.” Id.
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`In responding to IGT’s argument, Zynga does not identify a portion of its
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`written description that would be understood by a person skilled in the art to
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`expressly or implicitly describe an authorization agent for the transfer of gaming
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`software or that would otherwise convey that Zynga possessed the concept of
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`transferring gaming software between gaming machines. Paper 118, p. 22, ll. 13-
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`24. Zynga only argues that it is not necessary to describe examples that cover the
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`full scope of the claim language and that IGT has not provided any analysis
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`beyond the bare assertion that Zynga’s claims encompass more than what is
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`disclosed. Paper 118, p. 22, ll. 13-24.
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`While it is not necessary to provide examples covering the full scope of the
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`claim language, it is necessary to provide sufficient information to convey to one
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`skilled in the art that the inventors had possession of the claimed subject matter at
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`the time they filed their application. Ariad, 598 F.3d at 1351. Contrary to Zynga’s
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`argument, IGT does not rely solely on an assertion that Zynga’s claims
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`“encompass more than what is disclosed.” IGT relies on Dr. Bertrams’s testimony
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`that Zynga’s application does not teach a device that authorizes the transfer of
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`gaming software and that one having ordinary skill in the art would not have
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`understood from Zynga’s specification that the inventors contemplated a device
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`that authorizes the transfer of gaming software. Paper 94, p. 17, ll. 13-28 referring
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`to Ex 1016, ¶ 77. We find that Dr. Bertram’s testimony is credible and stands
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`unrebutted.
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`Zynga’s Claims 166 and 167 do not use the phrase “authorization agent.”
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`Instead they are directed to a system that employs a “gaming server.” The gaming
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`server, however, performs the same functions as the authorization agent. Thus, the
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`gaming server is configured to authenticate a request for gaming information from
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`a remote computer for transferring information from the gaming machine,
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`generating a gaming record authorizing the transfer of gaming information from
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`the gaming machine to the remote computer, and sending a message including the
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`authorization to the remote computer. Compare Zynga’s Claims 29 and 166, Paper
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`14, pp. 2 and 10. We perceive no substantive distinction between the recitations of
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`a “authorization agent” and “gaming server” as used in Zynga’s claims with
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`respect to the written descriptive support for authorization of the transfer gaming
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`software.
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`Zynga points to the testimony of Charles R. Berg and a portion of its
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`specification related to the exchange of encryption keys for support for the concept
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`of authorizing and transferring “gaming information.” Paper 118, p. 24, ll. 11-18;
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`Ex. 2020, ¶ 149; Ex. 2035, ¶¶ 125-128. Accepting for the purposes of this opinion
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`that the evidence provides an example of the authorization and transfer of “gaming
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`information,” that evidence does not show possession of the concept of authorizing
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`the transfer of gaming software between gaming machines. Zynga has not directed
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`us to testimony or other evidence establishing that one skilled in the art would
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`understand Zynga’s specification as showing possession of the concept of a device
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`that authorizes the transfer of gaming software. We are aware of Mr. Berg’s
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`testimony that one skilled in the art would understand “gaming information” to
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`encompass “gaming software:”
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`As discussed further herein, a person having ordinary skill in
`the art would understand “gaming information” to include “any
`information associated with game play or a gaming device.”…
`In contrast, a person having ordinary skill in the art would
`understand “gaming software” to have the narrower definition
`of “one or more software components which may be executed
`on a gaming device or machine.” … Because “gaming
`software” is “associated with game play” in that it includes
`computer instructions for carrying out game play, a person
`having ordinary skill in the art would understand “gaming
`software” as a specific type of “gaming information.” In other
`words, a person having ordinary skill in the art would
`understand “gaming software” as a species of the “gaming
`information” genus. This position is further supported by the
`fact that the specification of the Nguyen ‘089 patent explicitly
`and repeatedly states that “gaming software” is included within
`the scope of the meaning of the term “gaming information.”
`For example, the Nguyen ‘089 patent repeatedly refers to
`“gaming software and other gaming information.” (Ex. 1001 at
`27:4-5; 27:31-32).
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`Ex. 2015, ¶ 11. We have been given no credible reason to disagree with the
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`accuracy of his testimony on the understanding of one skilled in the art with
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`respect to the meaning of “gaming information.” However, that phrase and the
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`generic concept of “gaming information” as encompassing “gaming software” was
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`not introduced into the Zynga’s application until the amendment filed November
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`15, 2006, more than three years after Zynga’s involved application was filed.
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`While Zynga’s written description describes the transfer of a number of different
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`types of “gaming information” we could not locate, and Zynga has not identified,
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`the portions of its written description that would convey possession of the concept
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`of authorizing the transfer of gaming software between gaming devices. Dr.
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`Bertram’s testimony, that one skilled in the art would not have understood, from
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`Zynga’s specification, that the inventors contemplated a device that authorizes the
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`transfer of gaming software stands unrebutted. Zynga’s use of the phrase “gaming
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`information” to encompass “gaming software” goes beyond the scope of its
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`original disclosure. “[A] purpose of the written description requirement is to
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`‘ensure that the scope of the right to exclude, as set forth in the claims, does not
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`overreach the scope of the inventor’s contribution to the field of art as described in
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`the patent specification.’” Ariad, 598 F.3d at 1353-54.
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`A preponderance of the evidence establishes, and we find, that at the time
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`Zynga filed its involved application, one skilled in the art would not have
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`understood from Zynga’s specification, that Zynga had possession of the concept
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`of an authorization agent or gaming server that controls the transfer of gaming
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`software between gaming devices.
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`IGT has persuaded us that Zynga’s disclosure does not provide a written
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`description supporting the full scope of the subject matter of its involved claims.
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`Accordingly, we grant IGT’s motion that Zynga’s Claims 29-32, 35-43, 49, 56-58,
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`60-71, 93, 94, 96, 100, 101, 103-106, 112, 113, 115, 117, 119-124, 131, 136, 144,
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`145, 151, 152, 155, 157, 161, and 165-167 are unpatentable under 35 U.S.C. § 112,
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`¶ 1 (2010).
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`V.
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`We have granted IGT’s motion that Zynga’s written description does not
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`support the subject matter it now claims. See 37 CFR § 41.125(a). Under the
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`circumstances of this interference, it is appropriate to terminate the interference
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`with a judgment against Zynga. Zynga originally copied IGT’s claimed subject
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`matter. As a result, this interference was declared and IGT’s patented subject
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`matter was brought into this interference and put at risk. Because Zynga’s original
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`specification does not provide written descriptive support for the full scope of the
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`subject matter of its involved claims, Zynga is not an appropriate party, and this
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`interference is not an appropriate forum, to challenge IGT’s patent. See 37 CFR
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`§ 41.201, definition of “threshold issue.” Therefore, we will not consider Zynga’s
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`attacks on IGT’s claims. We decline to consider Zynga’s Substantive Motion 3
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`asserting IGT’s claims are unpatentable over prior art. We similarly will not allow
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`this interference to proceed to the priority phase subjecting IGT’s claims to be
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`challenged on priority grounds. Because this interference will not proceed to the
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`priority phase, it is unnecessary to consider Zynga’s Substantive Motion 1 to
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`substitute a different count5 or it’s Substantive Motion 2 for the benefit of the filing
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`dates of its earlier applications. Zynga’s Substantive Motions 1-3 are dismissed.
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`ORDER
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`
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`1. IGT Motion 2 (Paper 94) asserting that Zynga’s claims are not supported
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`by the written description required by 35 U.S.C. § 112, ¶ 1, is granted.
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`2. Zynga’s Substantive Motions 1-3 (Papers 89-91) are dismissed.
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`5Granting the motion to substitute a different count would not have resulted in a
`change in the parties’ respective claim correspondence. Paper 89, p. 1.
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`TORCZON, Administrative Patent Judge, dubitante.
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`This case underscores the peril in claim copying.
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`For more than a generation, claim copying has not been necessary to suggest
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`an interference. E.g., Aelony v. Arni, 547 F.2d 566, 570 (CCPA 1977) (claimed
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`subject matter need not even overlap). Nevertheless, patent practitioners persist in
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`copying claims. Claim copying is a nuisance (inevitably leading to a mismatch
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`between the language of the claim and the disclosure with resulting confusion or
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`otherwise unneeded analysis), but it once was essentially harmless.
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`
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`Now claim copying is destructive to applicants and their counsel. Although
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`neither statute nor interference practice provide a basis for it, case law has created
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`an exception in written description law for copied claims, albeit only at the United
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`States Patent and Trademark Office. In re Spina, 975 F.2d 854, 856 (Fed. Cir.
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`1992); Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009);
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`Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1332
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`(Fed. Cir. 2010); but see Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1332
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`(Fed. Cir. 2000) (declining to extend Spina to the district courts).
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`Whether a doctrine unsupported by statute or logic, messy to administer and
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`catastrophic to unwary applicants and patent practitioners should persist6 is a
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`question only the courts can resolve.
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`Resolution is needed. Until it happens, “caveat inventor”.
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`1
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`6 For a catalogue of some of the difficulties the doctrine has created, see, e.g.,
`Lazaridis v. Eggleston, 2011 WL 1676301 (BPAI 2011) (dubitante opinion); Rilo
`v. Benedict, 2011 WL 729494 n.55 (BPAI 2011).
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`McKELVEY, Administrative Patent Judge, concurring.
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`
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`I concur with the decision on IGT Motion 2 for the reasons set out in Judge
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`Schafer’s opinion. I add the following comments to further address thoughtful
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`remarks made by Judge Torczon’s dubitante opinion.
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`In deciding cases on the merits, it is our practice to apply the applicable
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`statute, rules, and precedent. Eberhart v. U.S., 546 U.S. 12 (2005). Consistent
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`with our practice, Judge Schafer advised the parties are follows (footnote omitted):
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`Pursuant to Koninklijke Philips Electronics N.V. v. Cardiac
`Science Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010)
`and Agilent Technologies Inc. v. Affymetrix In