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`Paper: :Jo.
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`Filed on behalf of:
`By:
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`Legal iGaming
`Brenton R. Babcock
`Salima A. Merani, Ph.D.
`Frederick S. Berretta
`Eric M. Nelson
`James P. Skelley
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxIGAM@kmob.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`Legal iGaming, 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).
`
`Patent Interference No. 105,747 (RES)
`(Technology Center 2400)
`
`LEGAL iGAMING LIST OF PROPOSED MOTIONS
`
`IGT EXHIBIT 2004
`Zynga v. IGT, IPR2022-00199
`
`

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`Pursuant to Part D of the Declaration (Paper 1 ); Bd. R. 120; Bd. R. 121; Bd. R. 204; and
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`SO 1~ 104.2.1, 104.2.2, 120 and 204, Junior Party Legal iGaming, Inc. ("Legal iGaming")
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`hereby submits a list of motions that Legal iGaming requests authorization to file in this
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`interference, along with a short explanation of each motion. 1
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`PROCEDURAL MATTER
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`Legal iGaming respectfully brings to the Board's attention the fact that on January 10,
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`2008, during the prosecution of its involved U.S. Patent Application No. 10/658,836, Legal
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`iGaming deleted Michael W. Saunders as a co-inventor of the application under 35 C.F.R.
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`§ 1.48(b) based on previous claim amendments. Legal iGaming respectfully requests that the
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`official caption of this interference be corrected accordingly.
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`PROPOSED MOTIONS
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`1.
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`Motion to Amend Count (to add one or more independent claims of Legal
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`iGaming's involved U.S. Patent Application No. 10/658,836).
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`Legal iGaming respectfully requests authorization to move to amend the Count to add at
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`15 .
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`least one or more of its involved independent claims 29, 56, 93 (new), 112, 131, 151, 165, and/or
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`166 of U.S. Patent Application No. 10/658,836. Presently the Count is comprised of only the
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`independent claims of IGT's involved U.S. Patent No. 7,168,089. Amendment of the Count is
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`necessary because Legal iGaming's best proofs of priority exist with respect to its own involved
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`claims that more broadly claim inventions relating to the transfer of gaming "information," as
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`opposed to the present Count which claims inventions relating only to the transfer of gaming
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`"software."
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`I I I
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`1 Legal iGaming respectfully reserves the right to not file any proposed motion even if
`authorized by the Board, and to file any new or additional motions as may be authorized by the
`Board from time to time.
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`2.
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`Motion to Amend Legal iGaming's Accorded Benefit (to extend benefit of
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`2
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`priority to Legal iGaming's U.S. Provisional Patent Application No. 60/161,591, filed
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`3 October 26, 1999).
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`4
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`5
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`Legal iGaming respectfully requests authorization to move to amend Legal iGaming's
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`accorded benefit to the October 26, 1999 filing date of its U.S. Provisional Patent Application
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`6 No. 60/161,591. Presently Legal iGaming has been accorded no benefit to its priority patent
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`applications. As discussed above, Legal iGaming's best proofs of priority exist with respect to
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`its own involved claims, and in the event the Count is amended as requested above to include at
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`least one or more of Legal iGaming's involved independent claims, Legal iGaming would be
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`entitled to the benefit of the filing date of its U.S. Provisional Patent Application No. 60/161,591,
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`filed October 26, 1999, based on the disclosure contained therein. Priority to U.S. Provisional
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`Patent Application No. 60/161,591 is claimed through the direct parent of Legal iGaming's
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`involved U.S. Patent Application No. 10/658,836, Legal iGaming's U.S. Patent No. 7,260,834,
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`filed October 26, 2000 (based on U.S. Provisional Patent Application No. 60/161,591).
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`Alternatively, in the event that the Count is not amended as requested above, then Legal iGaming
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`respectfully submits that its priority disclosure of inventions relating to the transfer of gaming
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`"information" found in its U.S. Provisional Patent Application No. 60/161,591 would then
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`provide an anticipatory disclosure within the scope of the present Count, which claims inventions
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`relating to the transfer of gaming "software."
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`3.
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`Contingent Motion to Declare No Interference-In-Fact (in the event that
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`Legal iGaming's Motion No. 1 and Motion No. 2 are denied).
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`Legal iGaming respectfully requests authorization to move on a contingent basis for a
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`declaration of no interference-in-fact in the event that its proposed Motions Nos. I and 2 are
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`denied. In the event that Legal iGaming's proposed Motions Nos. I and 2 are denied, Legal
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`iGaming respectfully submits that such a result would be inconsistent with the determination that
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`the claims of IGT's involved U.S. Patent No. 7,168,089 and Legal iGaming's involved U.S.
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`Patent Application No. 10/658,836 interfere-in-fact (i.e., are obvious in view of each other).
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`4 While admittedly an alternative theory, under Legal iGaming's proposed contingent motion,
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`inventions relating to the transfer of gaming "information" would not be obvious in view of
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`inventions relating to the transfer of gaming "software," and vice versa. Thus, IGT's involved
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`7 U.S. Patent No. 7,168,089 and Legal iGaming's involved U.S. Patent Application No.
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`8
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`10/658,836 would not be interfering.
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`4.
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`Motion for Judgment of Invalidity of Senior Party IGT's Involved U.S.
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`Patent No. 7,168,089 (under 35 U.S.C. §§ 102(e)/103 in view of Legal iGaming's l}.S. Patent
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`No. 7,260,834, provisionally filed on October 26, 1999).
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`Legal iGaming respectfully requests authorization to move for invalidity of IGT's
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`involved U.S. Patent No. 7,168,089 under 35 U.S.C. §§ 102(e)/103 in view of Legal iGaming's
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`14 U.S. Patent No. 7,260,834, filed October 26, 2000 (a direct parent to Legal iGaming's involved
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`15 U.S. Patent Application No. 10/658,836), and issued August 21, 2007. Because Legal iGaming's
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`16 U.S. Patent No. 7,260,834 was filed based on its U.S. Provisional Patent Application No.
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`17
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`60/161,591, filed October 26, 1999, U.S. Patent No. 7,260,834 will be accorded the provisional
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`patent application filing date of October 26, 1999 for § I 02( e) prior art purposes under M.P .E.P.
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`§ 2136.03. U.S. Patent No. 7,260,834 discloses the same Legal iGaming inventions relating to
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`the transfer of gaming "information" that prompted this interference. The earliest possible
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`benefit filing date of IGT's involved U.S. Patent No. 7,168,089 is December 7, 2000. Thus,
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`assuming an interference-in-fact exists, and assuming IGT's inability to prove a date of invention
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`prior to October 26, 1999, IGT's involved U.S. Patent No. 7,168,089 is invalid under 35 U.S.C.
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`§§ 102(e)/103 in view of U.S. Patent No. 7,260,834.
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`5.
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`Motion to Cancel Claim 93 of Legal iGaming's Involved U.S. Patent
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`2 Application No. 10/658,836 and Add New Claim 93 (to correct a typographical error).
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`Legal iGaming respectfully requests authorization to move to cancel present claim 93 of
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`Legal iGaming's involved U.S. Patent Application No. 10/658,836 and replace it by adding a
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`new claim 93 in order to address a typographical error in the second clause of present claim 93,
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`effectively replacing an erroneous
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`incidence of the word "software" with
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`the word
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`"information."
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`6.
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`Motion for Judgment (based on Legal iGaming's earlier invention date -
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`priority motion).
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`To the extent necessary at
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`this juncture, Legal
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`iGaming respectfully requests
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`authorization to move during the priority phase of this interference for judgment of priority of
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`invention based on its earlier invention date.
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`19 Dated:April 28, 2010
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: s/Brenton R. Babcock/
`Brenton R. Babcock, Reg. No. 39,592
`Salima A. Merani, Ph.D., Reg. No. L0236
`Frederick S. Berretta, Reg. No. 38,004
`Eric M. Nelson, Reg. No. 43,829
`James P. Skelley, Reg. No. 59,458
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxIGAM@kmob.com
`
`Attorneys for Junior Party Legal iGaming, Inc.
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`-4-
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`H
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`I hereby certify in accordance with standard business practices that:
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`CERTIFICATE OF SERVICE
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`I.
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`The following paper has been filed on April 28, 2010, with the Board of Patent Appeals
`and Interferences via
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`*electronic mail pursuant to SO 1105.3 to Boxinterferences@USPTO.GOV in text(cid:173)
`searchable format.
`
`LEGAL iGAMING LIST OF PROPOSED MOTIONS
`
`II.
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`A true and correct copy of the above paper is being served via electronic mail pursuant to
`SO 411 I 05 .3 on April 28, 2010, to:
`
`Michael H. Longmeyer
`Robert B. Resser III
`.
`ARMSTRONG TEASDALE LLP
`One Metropolitan Square, Suite 2600
`St. Louis, MO 63102-2740
`Phone:
`314-621-5070
`Facsimile:
`314-621-5065
`Email:
`mlongmeyer@armstrongteasdale.com
`rreeser@armstrongteasdale.com
`
`s/Brenton R. Babcock/
`Brenton R. Babcock
`Reg. No. 39,592
`
`Attorney for Junior Party Legal iGaming, Inc.
`
`8925680
`
`-5-
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`