Mail Stop Interference
`P.O. Box 1450
`Alexandria Va 22313-1450
`Tel: 571-272-4683
`Fax: 571-273-0042
`
`Paper 22
`
`Entered: May 3, 2010
`
`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)
`
`
`Order - Authorizing Motions – 37 C.F.R. § 41.121
`A telephone conference call was held on January 19, 2010, at
`approximately 4:00 p.m., involving:
`Brenton R. Babcock, Esq., Frederick S. Berretta, Esq.,
`1.
`and Eric M. Nelson, Esq., for Legal iGaming;
`Michael H. Longmeyer, Esq., and Robert B. Reeser III,
`Esq. for IGT; and
`Richard E. Schafer, Administrative Patent Judge.
`
`2.
`
`3.
`
`IGT EXHIBIT 2005
`Zynga v. IGT, IPR2022-00199
`
`
`P.O. Box 1450
`Alexandria Va 22313-1450
`Tel: 571-272-4683
`Fax: 571-273-0042
`
`Paper 22
`
`Entered: May 3, 2010
`
`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)
`
`
`Order - Authorizing Motions – 37 C.F.R. § 41.121
`A telephone conference call was held on January 19, 2010, at
`approximately 4:00 p.m., involving:
`Brenton R. Babcock, Esq., Frederick S. Berretta, Esq.,
`1.
`and Eric M. Nelson, Esq., for Legal iGaming;
`Michael H. Longmeyer, Esq., and Robert B. Reeser III,
`Esq. for IGT; and
`Richard E. Schafer, Administrative Patent Judge.
`
`2.
`
`3.
`
`IGT EXHIBIT 2005
`Zynga v. IGT, IPR2022-00199
`
`
`
`The principal purpose of the conference call was to discuss the
`parties’ proposed motions.
`IGT’s Proposed Motions
`A motion that no interference-in-fact exists between the parties
`1.
`respective claims;
`2.
`A motion that iGaming’s claims are not supported by a written
`description required by 35 U.S.C. § 112, ¶ 1;
`A motion for additional discovery related to the inventorship of
`3.
`iGaming’s patent;
`4.
`A motion that iGaming committed inequitable conduct in naming its
`inventor(s);
`A motion contingent on the grant of iGaming’s motion for benefit to
`5.
`be accorded the benefit of the filing date of Application 90/732,650; and
`6.
`A motion for judgment based upon priority.
`IGT’s motion for no interference-in-fact was authorized. The motion
`shall be filed on or before May 28, 2010. All evidence relied upon to
`support the motion shall be filed with the motion. No opposition is
`authorized at this time. However, iGaming shall promptly advise the board
`if it does not plan to file an opposition or it plans to file a paper in support of
`the motion. The parties may stipulate to change the due date as set forth in
`Paper 3 at page 2.
`IGT’s motion that iGaming’s claims are not supported by a written
`description was authorized.
`IGT’s motion for additional discovery relating to the changes of the
`named inventors during the prosecution of iGaming’s involved application
`was not authorized. IGT sought discovery to obtain information for use in
`opposing an iGaming motion for the benefit of the filing dates of earlier
`
`2
`
`
`
`applications. While the record of iGaming’s application shows that the
`inventorship was changed, IGT has not provided sufficient additional facts
`suggesting that iGaming’s current inventorship is either incorrect or that the
`handling of the inventorship during iGaming’s prosecution was
`inappropriate. Additionally, IGT, in opposing a motion for benefit, may
`attempt to show that the iGaming’s purported benefit applications do not
`provide an adequate disclosure of an embodiment within the scope of the
`count.
`IGT’s auxiliary motion relating to any inequitable conduct uncovered
`as a result of the additional discovery was not authorized.
`IGT’s motion for benefit of the filing date of its Application
`09/732,650 was authorized.
`IGT’s motion for priority is deferred until the second phase of the
`interference.
`Legal iGaming’s Proposed Motions
`Legal iGaming proposed the following motions:
`A motion to substitute a new Count including, as an additional
`1.
`alternative, one or more of iGaming’s independent claims;
`2.
`A motion for the benefit of iGamings’s Applications 09/698,507 and
`60/161,591;
`A motion for no interference-in-fact contingent on the denial of
`3.
`iGaming’s previously listed motions;
`4.
`A motion that the IGT’s involved claims are unpatentable under 35
`U.S.C. § 102(e) or 103(a) in view of iGaming’s patent 7,260,834 which is
`asserted to be entitled to the October 26, 1999, filing date of iGaming’s
`Application 60/161,591.
`
`3
`
`
`
`5. A motion to cancel iGaming’s Claim 93 and replace it with a new
`Claim 93 to correct a typo; and
`6. A motion for judgment based upon priority.
`
`iGaming’s motions 1, 2 and 4 were authorized.
`
`With respect to iGaming’s motion to substitute a count, iGaming was
`advised that a motion relying on the theory that its best proofs are outside
`the count must (1) make a proffer of the embodiment its proofs would show
`and (2) show that the embodiment proved would interfere-in-fact with at
`least one of IGT’s claims.
`
`iGamings motion 3 appears to be unnecessary at this time in light of
`IGT’s intent to file a motion for no-interference in fact.
`
`iGaming’s motion to cancel its Claim 93 was not authorized. Claim
`93 will be construed for the purpose of this interference that the word
`“software” in the second clause means “information.” In other words, Claim
`93 will be construed as if it were amended as suggested by iGaming. If
`appropriate, iGaming may file an amendment in its application upon return
`to ex parte examination.
`
`iGaming’s motion for judgment based upon priority of invention was
`deferred until the second phase of the interference.
`
`Any Responsive motions must be authorized. A conference call
`should be arranged if, after review of the opponent’s motions, the filing of a
`responsive motion is desired.
`
`
`
`
`
`
`/Richard E. Schafer/
`Administrative Patent Judge
`
`4
`
`
`
`cc (via e-mail):
`
`Counsel for Legal iGaming:
`
`Brenton R. Babcock, Esq.
`
`Salima A. Merani, Ph.D.,Esq.
`
`Frederick S. Berretta, Esq.
`
`Eric M. Nelson, Esq.
`
`James P. Skelley, Esq.
`
`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
`
`Counsel for IGT:
`
`Michael H. Longmeyer, Esq.
`
`Robert B. Reeser III, Esq.
`
`ARMSTRONG TEASDALE LLP
`
`One Metropolitan Square, Suite 2600
`
`St. Louis, MO 632102-2740
`
`
`Phone: 314-621-5070
`
`
`Facsimile: 314-621-5065
`
`
`E-Mail: mlongmeyer@armstrongteasdale.com
`
`
`E-Mail: rreeser@armstrongteasdale.com
`
`
`
`
`
`
`
`5
`
`
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