Filed on behalf of:
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filed: July 9, 2013
`
`
`Junior Party Zynga Inc.
`Brenton R. Babcock
`Frederick S. Berretta
`Eric M. Nelson
`Derek Bayles
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail: BoxZynga@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`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).
`________________________
`
`Patent Interference No. 105,747 (RES)
`(Technology Center 2400)
`________________________
`
`ZYNGA SUBSTANTIVE MOTION 3
`(For Judgment That IGT's Involved Claims Are Unpatentable)
`
`
`
`IGT EXHIBIT 2006
`Zynga v. IGT, IPR2022-00199
`
`Page 1
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`III.
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ........................................................1
`
`EXHIBITS CITED; STATEMENT OF MATERIAL FACTS ...........................................1
`
`SUMMARY OF ARGUMENT ...........................................................................................1
`
`REASONS THE REQUESTED RELIEF SHOULD BE GRANTED ................................2
`
`A.
`
`The Claims of the Nguyen ’089 Patent Are Invalid Because They
`Would Have Been Obvious .....................................................................................3
`
`1.
`
`Claim Construction ......................................................................................3
`
`a.
`
`b.
`
`Relevant Field and Person Having Ordinary Skill in the
`Art ....................................................................................................4
`
`The Claim Terms .............................................................................4
`
`i.
`
`ii.
`
`iii.
`
`"Gaming Software" ..............................................................4
`
`"Software Authorization Agent" ..........................................5
`
`"Gaming Device" .................................................................5
`
`B.
`
`The Independent Claims of the Nguyen ’089 Patent Would Have Been
`Obvious in View of the Carlson ’834 Patent ...........................................................5
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Scope and Content of the Carlson ’834 Patent .....................................6
`
`The Carlson ’834 Patent Differs from the Independent Claims of
`the Nguyen ’089 Patent in that It Teaches a System for
`Authorizing the Transfer of Gaming Information But Not
`"Gaming Software" ......................................................................................7
`
`Because the "Gaming Software" Limitations Recited in the
`Independent Claims of the Nguyen ’089 Patent are Merely
`Nonfunctional Descriptive Material, they are Not Entitled to
`Patentable Weight ........................................................................................7
`
`Claim 103 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ..................................................................8
`
`a.
`
`b.
`
`"A Network Interface . . ." and "a Processor" ..................................9
`
`"Receive Gaming Software Transfer Requests . . . From
`a First Gaming Device for the Transfer of Gaming
`Software …" ....................................................................................9
`
`i
`
`Page 2
`
`

`

`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`c.
`
`d.
`
`e.
`
`"Approve or Reject the Gaming Software Transaction
`Request" .........................................................................................10
`
`"Send an Authorization Message to the First Gaming
`Device…" .......................................................................................10
`
`"The Gaming Software is for . . . a Game of Chance
`Played on a Gaming Machine…" ..................................................11
`
`5.
`
`Claim 123 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................12
`
`a.
`
`"The First Gaming Device and the Second Gaming
`Device Are Separate from the Software Authorization
`Agent" ............................................................................................13
`
`6.
`
`Claim 84 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................13
`
`a.
`
`b.
`
`"Receiving a Gaming Software Transaction Request
`from the Second Gaming Device" .................................................13
`
`"Transferring the Gaming Software to the Second
`Gaming Device" .............................................................................15
`
`7.
`
`8.
`
`Claims 65 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................15
`
`Claim 28 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................17
`
`a.
`
`b.
`
`"Receiving a Gaming Software Download Request
`Message with Gaming
`Software
`Transaction
`Information…" ...............................................................................17
`
`"Validating the Gaming Software Download Request
`Using the Gaming Software Transaction Information" .................18
`
`9.
`
`Claim 1 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................18
`
`a.
`
`b.
`
`"Authenticating an Identity of the First Gaming Device" .............19
`
`"Generating a Gaming Software Transaction Record
`Comprising Gaming Software Transaction Information
`That Is Used to Approve or Reject the Transfer of
`Gaming Software …" .....................................................................20
`
`ii
`
`Page 3
`
`

`

`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`10.
`
`Claim 52 Would Have Been Obvious in View of Carlson's
`Remote Gameplay Embodiment ................................................................20
`
`a.
`
`"Querying a Gaming Software Transaction Database for
`a Set of Gaming Software Transaction Information
`Requested by the Gaming Device … And Sending the
`Requested Gaming Software Transaction Information to
`the Gaming Device" .......................................................................21
`
`C.
`
`The Independent Claims of the Nguyen ’089 Patent Would Have Been
`Obvious in View of the Combination of the Carlson ’834 Patent and the
`Wells ’634 Patent ...................................................................................................22
`
`1.
`
`2.
`
`The "Gaming Software" Limitations of the Independent Claims
`of the Nguyen ’089 Patent Are Taught by the Wells ’634 Patent .............22
`
`It Would Have Been Obvious to Combine the Carlson ’834
`Patent and the Wells ’634 Patent in the Manner Recited by the
`Independent Claims of the Nguyen ’089 Patent ........................................23
`
`D.
`
`The Dependent Claims of the Nguyen ’089 Patent Would Have Been
`Obvious in View of the Carlson ’834 Patent and Other Prior Art .........................23
`
`V.
`
`CONCLUSION ..................................................................................................................24
`
`LIST OF EXHIBITS CITED .......................................................................................... Appendix 1
`
`STATEMENT OF MATERIAL FACTS........................................................................ Appendix 2
`
`
`
`
`
`
`
`
`iii
`
`Page 4
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009)..................................................................................................3
`
`Ex Parte Curry,
`84 U.S.P.Q.2d 1272 (B.P.A.I. 2005)..........................................................................................3
`
`Ex Parte Nehls,
`88 U.S.P.Q.2d 1883 (B.P.A.I. 2008)..........................................................................................3
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................3
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................3
`
`Yorkey v. Diab,
`605 F.3d 1297 (Fed. Cir. 2010)..................................................................................................4
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 102 ............................................................................................................................1, 2
`
`35 U.S.C. § 103 ........................................................................................................................1, 2, 3
`
`
`
`
`
`
`
`
`iv
`
`Page 5
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to Bd. R. 121 and 208, SO ¶¶ 121 and 208.1, the Order authorizing motions
`
`(Paper 22), the Order setting motion times (Paper 82), and the Stipulation to extend Time Period
`
`1 (Paper 86), Junior Party Zynga Inc. (“Zynga”) hereby moves for judgment that Claims 1-136
`
`of U.S. Patent 7,168,089 issued to Nguyen et al. ("the Nguyen ’089 patent") are unpatentable
`
`under 35 U.S.C. § 103 in view of U.S. Patent 7,260,834 issued to Carlson ("the Carlson ’834
`
`patent"), U.S. Patent 6,805,634 ("the Wells ’634 patent"), and U.S. Patent 5,643,086 issued to
`
`Alcorn et al. ("the Alcorn ’086 patent").
`II. EXHIBITS CITED; STATEMENT OF MATERIAL FACTS
`Pursuant to SO ¶ 121.5, Zynga’s List of Exhibits relied upon for this motion and its
`
`Statement of Material Facts are attached as Appendix 1 and Appendix 2, respectively.
`III. SUMMARY OF ARGUMENT
`IGT's patent-in-interference is the Nguyen ’089 patent, filed on April 3, 2002, claiming
`
`priority to a December 7, 2000 application. (Ex. 1001.) The Nguyen ’089 patent has 136 claims,
`
`of which Claims 1, 28, 52, 65, 84, 103, and 123 are independent. Nguyen's independent claims
`relate to the authorization of transfers of gaming software between networked casino-type
`
`computer gaming machines. (Paper 50 at 2.)
`
`The Carlson ’834 patent was filed on October 26, 2000, claiming priority to an October
`
`26, 1999 provisional application. (Ex. 2005.) The Carlson ’834 patent, prior art to the Nguyen
`
`’089 patent under at least 35 U.S.C. § 102(e), describes a remote gameplay embodiment which
`relates to the authorization of transfers of gaming information between networked casino-type
`
`computer gaming machines. (Paper 50 at 2.) The remote gameplay embodiment involves a
`
`remote computer 150 which makes a request to a gaming server 110 for remote access to a
`
`gaming machine 120 located in a casino. If the gaming server 110 grants the requested access,
`
`the remote computer 150 and the gaming machine 120 exchange gaming information to allow a
`
`user to remotely play the gaming machine 120. (Ex. 2015 ¶¶ 117, 119, 125.)
`
`The remote gameplay embodiment of the Carlson ’834 patent discloses every feature of
`
`the independent claims of the Nguyen ’089 patent except that it involves the transfer of "gaming
`
`1
`
`Page 6
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`information" between gaming devices, not specifically the transfer of "gaming software." (Id. ¶¶
`
`179-248.) However, the Board has determined in this interference that the "gaming software"
`
`limitations of the independent claims of the Nguyen ’089 patent constitute nonfunctional
`
`descriptive material and are not entitled to patentable weight. (Paper 50 at 6.) Because the only
`
`limitations of the independent claims of the Nguyen ’089 patent that are not satisfied by
`
`Carlson's remote gameplay embodiment are not entitled to patentable weight, the independent
`
`claims of the Nguyen ’089 patent would have been obvious, under 35 U.S.C. § 103, in view of
`
`the Carlson ’834 patent. (Ex. 2015 ¶¶ 179-248.)
`
`Moreover, even if arguendo the "gaming software" limitations of the independent claims
`
`of the Nguyen ’089 patent were entitled to patentable weight, the combination of the Carlson
`
`’834 patent and the Wells ’634 patent would still render the independent claims obvious. (Id. ¶¶
`
`250-255.) The Wells ’634 patent, which is also prior art to the Nguyen ’089 patent under at least
`
`§ 102(e), teaches a system and method for remotely transferring "gaming software" from a
`
`central computer 116 or a local server 114 to a gaming terminal 112 over a network. (Ex. 1006
`
`at 6:14-67.) The Wells ’634 patent teaches that it is desirable to remotely transfer "gaming
`
`software" between gaming devices because doing so is less labor-intensive and less costly than
`
`locally transferring the software. (See, e.g., id. at 3:37-45.) A person having ordinary skill in the
`
`art at the time of the invention would have found it obvious to use the secure system involved in
`
`the remote gameplay embodiment disclosed by the Carlson ’634 patent to transfer "gaming
`
`software" between gaming machines, as taught by the Wells ’634 patent. (Ex. 2015 ¶ 255.)
`
`Finally, the additional limitations recited in the dependent claims of the Nguyen ’089
`
`patent were known in the prior art. (Id. ¶ 249.) These, too, would have been obvious to a person
`
`of ordinary sill in the art at the time of the invention in view of the Carlson ’834 patent, the
`
`Wells ’634 patent, and the Alcorn ’086 patent. (Id.)
`IV. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
`Claims 1-136 of the Nguyen ’089 patent are unpatentable because they would have been
`
`obvious, under 35 U.S.C. § 103, in view of the Carlson ’834 patent, either alone or in
`
`combination with the Wells ’634 patent and the Alcorn ’086 patent.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`2
`
`Page 7
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`A.
`The Claims of the Nguyen ’089 Patent Are Invalid Because They Would Have Been
`Obvious
`
`A claim is obvious "if the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which said subject matter
`
`pertains." 35 U.S.C. § 103(a). Obviousness, while ultimately a question of law, is based upon
`
`underlying factual inquiries that include the scope and content of the prior art, the differences
`
`between the prior art and the claims at issue, the level of ordinary skill in the art, and secondary
`
`considerations of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
`
`"Nonfunctional descriptive material cannot render nonobvious an invention that would
`
`have otherwise been obvious." Ex Parte Curry, 84 U.S.P.Q.2d 1272, 1274 (B.P.A.I. 2005). The
`
`distinction between functional and nonfunctional descriptive material first arose in the context of
`
`printed matter limitations, but it has since been applied in the context of computer-related
`
`inventions. Ex Parte Nehls, 88 U.S.P.Q.2d 1883, 1887-90 (B.P.A.I. 2008). In the context of
`
`computer-related inventions, the relevant determination is whether the material in question has a
`
`new and non-obvious functional relationship with the computer system. Id. at 1887-88. If the
`
`claimed computer system differs from the prior art computer system only in the content of the
`
`material in question, then the material cannot serve as a patentable distinction between the claims
`
`and the prior art. Id. at 1887.
`1.
`Claim Construction
`
`In an interference, "where the PTO assesses the viability of an applicant's claims in the
`
`face of § 102 or § 103 challenges, the proper reference point for determining claim meaning is
`
`the host disclosure, just as in ex parte prosecution." Agilent Techs., Inc. v. Affymetrix, Inc., 567
`
`F.3d 1366, 1375 (Fed. Cir. 2009). "We have frequently stated that the words of a claim 'are
`
`generally given their ordinary and customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
`
`1582 (Fed. Cir. 1996)). "We have made clear, moreover, that the ordinary and customary
`
`meaning of a claim term is the meaning that the term would have to a person of ordinary skill in
`
`1
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3
`
`Page 8
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`the art in question at the time of the invention." Id. In interferences, the PTO gives claims "their
`
`broadest reasonable interpretation." Yorkey v. Diab, 605 F.3d 1297, 1300-01 (Fed. Cir. 2010).
`a.
`Relevant Field and Person Having Ordinary Skill in the Art
`
`The relevant field for the Nguyen ’089 patent is casino gaming systems and methods.
`
`(Ex. 2015 ¶ 175.) A person of ordinary skill in the art would have the following education and
`
`experience: an undergraduate degree in a science or technology field, such as electrical
`
`engineering, math, or computer science (or at least five years of professional software
`
`development experience in place of such an undergraduate degree); and three or more years of
`
`software development experience in the gaming industry specifically. (Id. ¶ 176.) In addition, a
`
`person of ordinary skill in the art in 2002 (the relevant time period for the Nguyen ’089 patent)
`
`would have somewhat greater general knowledge of networking, and public/private key and
`
`symmetric encryption, than in 1999 (the relevant time period for the Carlson ’834 patent). (Id.)
`b.
`The Claim Terms
`
`In general, the terms of the claims of the Nguyen ’089 patent are readily understandable
`
`to a person having ordinary skill in the art and do not require any special interpretation. (Id.
`
`¶ 178.) The only terms meriting further comment are the following: "gaming software,"
`
`"software authorization agent," and "gaming device." (Id.)
`i.
`The Nguyen ’089 patent provides that "[a] set of gaming software components may be
`
`"Gaming Software"
`
`executed on a gaming machine to play a gam[e] of chance." (Ex. 1001 at 25:38-39.) The term
`
`"gaming software" is not used exclusively to describe software that is used to play a game but
`
`rather also software that is used for other purposes related to gameplay. (Ex. 2001 ¶ 25.) For
`
`instance, Claim 24 of the Nguyen ’089 patent states that "gaming software" can include a device
`
`driver, a player tracking service, and an operating system. (Ex. 1001.) Thus, when construed in
`
`view of the Nguyen ’089 patent, the meaning of "gaming software" is as follows:
`
`gaming software = one or more software components which may be executed on a
`gaming device or machine
`
`(Ex. 2001 ¶¶ 24-25.)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`27
`
`28
`
`4
`
`Page 9
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`22
`
`23
`
`24
`25
`
`26
`
`27
`
`28
`
`29
`
`ii.
`The claims of the Nguyen ’089 patent provide substantial guidance as to the meaning of
`
`"Software Authorization Agent"
`
`the term "software authorization agent." (Ex. 2001 ¶ 26.) For example, Claim 1 describes that a
`
`"software authorization agent" is a device which is used "to approve or reject the transfer of
`
`gaming software" between gaming devices. (Ex. 1001.) The specification of the Nguyen ’089
`
`patent similarly states that the "software authorization agent" can be a "conventional data server"
`
`and that it "approves all gaming software transactions between two gaming devices in the
`
`gaming software distribution network . . . ." (Id. at 24:32-42.) When construed in view of the
`
`Nguyen ’089 patent, the meaning of the term "software authorization agent" is as follows:
`
`software authorization agent = a computer or processor responsible for
`authorizing the transfer of gaming software in a game play system
`
`(Ex. 2001 ¶¶ 24, 26-27.)
`iii.
`The claims of the Nguyen ’089 patent also provide guidance as to the meaning of the
`
`"Gaming Device"
`
`term "gaming device." (Id. ¶ 28.) For example, Claims 3, 112, and 129 state that a "gaming
`
`device" can include a game server, a gaming machine, a hand-held computing device, or a
`
`portable gaming device. (Ex. 1001.) A "gaming device" can be used not only for gameplay
`
`itself but also for related tasks, such as player tracking services and accounting services. (Id. at
`
`26:10-18.) When construed in view of the Nguyen ’089 patent, the meaning of the term "gaming
`
`device" is as follows:
`
`gaming device = a computer or processor capable of use for game play or game
`related support, such as financial or accounting services in a game play system
`
`(Ex. 2001 ¶¶ 24, 28.)
`B.
`The Independent Claims of the Nguyen ’089 Patent Would Have Been Obvious in
`View of the Carlson ’834 Patent
`
`Independent Claims 1, 28, 52, 65, 84, 103, and 123 of the Nguyen ’089 patent would
`
`have been obvious in view of the Carlson ’834 patent. (Ex. 2015 ¶¶ 179-255.) As part of the
`
`obviousness analysis, it is appropriate to consider the scope and content of the Carlson ’834
`
`patent, the differences between Carlson's remote gameplay embodiment and the claims of the
`
`5
`
`Page 10
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Int. 105,747 (RES)
`Zynga v. IGT
`Nguyen ’089 patent, and the perspective of a person having ordinary skill in the art.
`1.
`The Scope and Content of the Carlson ’834 Patent
`
`Figure 4 of the Carlson ’834 patent illustrates a remote gameplay embodiment that
`
`enables a player using a remote computer to connect to, and play, a gaming machine that is
`
`located in the casino. (Ex. 2005 at 10:52-56.) A copy of Figure 4 is reproduced below.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The remote gameplay embodiment illustrated by Figure 4 of the Carlson ’834 patent
`
`includes a remote computer 150, gaming machines 120-124, a gaming server 110, and a
`
`certificate authority server 300. The gaming machines 120-124 may be located in a casino and
`
`may be connected to the gaming server 110 and the certificate authority server 300 via a network
`
`bus 130. (Ex. 2005 at 10:52-11:13.) The gaming server 130 and the certificate authority server
`
`300 can be connected to the remote computer 150 via an outside network 140. (Id.)
`
`To play the gaming machine 120, the remote computer 150 makes a request to the
`
`gaming server 110 to gain access to the gaming machine 120. (Id. at 11:27-33.) The gaming
`
`server 110 determines whether to authorize access to the gaming machine 120. (Id. at 11:34-60.)
`
`If the remote computer 150 is granted access to the gaming machine 120, then the remote
`
`computer 150 and the gaming machine 120 communicate with one another to allow the player to
`
`remotely interact with, and view, the gameplay occurring on the gaming machine 120 as if he or
`
`she were present at the casino. (Id. at 11:61-67.) The remote computer 150 is an example of the
`
`6
`
`Page 11
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`"first gaming device" that is recited in the claims of the Nguyen ’089 patent, while the gaming
`
`machine 120 is an example of the "second gaming device" and the gaming server 110 is an
`
`example of the "authorization agent." (Ex. 2015 ¶ 182.)
`2.
`The Carlson ’834 Patent Differs from the Independent Claims of the Nguyen
`’089 Patent in that It Teaches a System for Authorizing the Transfer of
`Gaming Information But Not "Gaming Software"
`
`The remote gameplay embodiment of the Carlson ’834 patent involves the transfer of
`
`gaming information between gaming devices but not "gaming software" specifically, as required
`
`by the independent claims of the Nguyen ’089 patent. (Id. ¶ 183.) For example, once the remote
`
`computer 150 gains access to a gaming machine 120, the two devices exchange gaming
`
`information that is necessary to allow the remote user to "interact" with the gaming machine 120,
`
`as well as a "digital representation of the game being played." (Ex. 2005 at 11:61-67.) However,
`
`the Carlson ’834 patent does not disclose that the remote computer 150 and the gaming machine
`
`120 exchange "one or more software components which may be executed on a gaming device or
`
`machine." That is, the Carlson ’834 patent does not disclose the transfer of "gaming software"
`
`between gaming devices. (Ex. 2015 ¶ 183.)
`3.
`Because the "Gaming Software" Limitations Recited in the Independent
`Claims of the Nguyen ’089 Patent are Merely Nonfunctional Descriptive
`Material, they are Not Entitled to Patentable Weight
`
`Notwithstanding that the Carlson ’834 patent does not disclose the "gaming software"
`
`limitations of the independent claims of the Nguyen ’089 patent, the independent claims still
`
`would have been obvious in view of the disclosure of Carlson's remote gameplay embodiment.
`
`(Id. ¶¶ 180-248.) This is supported by the Board’s determination that the "gaming software"
`
`limitations of the independent claims of the Nguyen ’089 patent constitute nonfunctional
`
`descriptive material; the "gaming software" limitations do not create new and nonobvious
`
`functional relationships in the claimed computer devices and methods. (Paper 50 at 5-7.)
`
`In both Carlson's remote gameplay embodiment and Nguyen's independent claims, the
`
`"first gaming device" (e.g., Carlson's remote computer 150) sends a request to an "authorization
`
`agent" (e.g., Carlson's gaming server 110) to receive authorization for transferring data to a
`
`1
`
`2
`
`3
`
`4
`5
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`18
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`29
`
`7
`
`Page 12
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`"second gaming device" (e.g., Carlson's gaming machine 120). (Ex. 2015 ¶ 184.) In both the
`
`remote gameplay embodiment and Nguyen's claims, the "authorization agent" responds to the
`
`"first gaming device" with a message that authorizes the transfer of data to the "second gaming
`
`device." (Id.) The specific nature of the data, whether it be "gaming software" or some other
`
`type of "gaming information," does not functionally affect the transfer of the data between
`
`gaming devices. (Id. ¶ 185.) As noted by the Board, "the transfer is nothing more than non-
`
`functional data – a collection of 1's and 0's." (Paper 50 at 6.)
`
`Further, the specific nature of the data does not functionally affect the request for the data
`
`transfer nor the authorization task carried out by the "authorization agent." (Ex. 2015 ¶ 186.)
`
`Therefore, a "gaming software transaction request" is not patentably distinct from a gaming
`
`transaction request, nor is "gaming software transaction information" patentably distinct from
`
`gaming transaction information, etc. (Id.) These differences in terminology are simply
`
`incidental to, and part of, the "gaming software" limitations of the claims. (Id.) This is further
`
`supported by the Board's analysis in its decision on IGT's Motion 1. (Paper 50 at 4-5) (In
`
`analyzing the "differences" between the parties' claims, the Board did not identify the distinction
`
`between the "gaming software transaction request" recited in Nguyen's Claim 84 and the
`
`"gaming transaction request" recited in Carlson's Claim 112 as a separate "difference").
`
`Because the "gaming software" limitations are the only differences between Carlson's
`
`remote gameplay embodiment and the independent claims of the Nguyen ’089 patent (as
`
`discussed extensively below – Infra Section (IV)(B)(4)-(10)), Claims 1, 28, 52, 65, 84, 103, and
`
`123 would have been obvious in view of the Carlson ’834 patent. (Ex. 2015 ¶¶ 180-248.)
`4.
`Claim 103 Would Have Been Obvious in View of Carlson's Remote
`Gameplay Embodiment
`
`Claim 103 of the Nguyen ’089 patent describes a "software authorization agent" for
`
`facilitating the transfer of "gaming software" between gaming devices. The full text of Claim
`
`103 is reproduced below.
`
`103. A software authorization agent for facilitating the transfer of gaming
`software between a plurality of gaming devices, the software authorization agent
`comprising:
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`23
`
`24
`
`25
`
`26
`
`27
`28
`29
`
`8
`
`Page 13
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`
`a network interface allowing the authorization agent to communicate with
`each of the plurality of gaming devices; and
`a processor configured or designed to
`(i) receive gaming software transfer requests via the network
`interface from a first gaming device for the transfer of gaming software
`from the first gaming device to a second gaming device
`(ii) approve or reject the gaming software transaction request; and
`(iii) send 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 a second gaming device;
`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 for a device installed on a gaming d) a player
`tracking service on a gaming machine and e) an operating system installed on a
`gaming machine.
`
`With reference to Carlson's remote gameplay embodiment, the remote computer 150 is an
`
`example of the "first gaming device," while the gaming machine 120 is an example of the
`
`"second gaming device" and the gaming server 110 is an example of the "authorization agent."
`
`(Ex. 2015 ¶ 182.)
`a.
`
`"A Network Interface . . ." and "a Processor"
`
`In the remote gameplay embodiment, the Carlson ’834 patent describes that a network
`
`bus 130 communicatively connects the gaming server 110 and the gaming machines 120-124.
`
`(Ex. 2005 at 10:58-11:4.) In addition, an outside network 140 communicatively connects the
`
`remote computer 150 to the gaming server 110. (Id.) Thus, a person having ordinary skill in the
`
`art would understand that the Carlson ’834 patent at least implicitly or inherently discloses that
`
`the remote computer 150, the gaming server 110, and the gaming machines 120-124 each include
`
`a "network interface" that allows communications between these devices. (Ex. 2015 ¶ 187.)
`
`Further, each of these devices has a "processor" because they are computers, and a person having
`
`ordinary skill in the art would understand that computers have, or are, "processors." (Id.)
`b.
`"Receive Gaming Software Transfer Requests . . . From a First
`Gaming Device for the Transfer of Gaming Software …"
`
`In the remote gameplay embodiment of the Carlson ’834 patent, the remote computer 150
`
`makes a request, via the gaming server 110, to play the gaming machine 120.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`29
`
`30
`
`31
`32
`
`33
`
`34
`
`9
`
`Page 14
`
`

`

`Int. 105,747 (RES)
`Zynga v. IGT
`To play the gaming machine 120, the remote computer 150 makes a request to the
`gaming server 110 to gain access to gaming machine 120.
`
`(Ex. 2005 at 11:27-33.)
`
`Thus, Carlson's remote gameplay embodiment involves a request from the remote
`
`computer 150 (e.g., the "first gaming device") to exchange gaming information (e.g., player
`
`inputs and a "digital representation" of a game) with the gaming machine 120 (e.g., the "second
`
`gaming device") as part of a gaming transaction. (Ex. 2015 ¶¶ 188-190.) The remote gameplay
`
`embodiment differs from this feature of Claim 103 only in the content of the data being
`
`requested and authenticated for transfer. (Id. ¶ 191.) However, as discussed above, this is not a
`
`patentable distinction. (Supra Section (IV)(B)(3).) Further, in an obvious combination with
`
`Carlson's remote gameplay embodiment, the Wells ’634 patent teaches requesting an