PaperNo. ~ /
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`Date Filed: - - - - -
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`Filed on behalf of:
`
`IGT
`
`By: Michael H. Longmeyer, Lead Counsel
`Robert B. Reeser III, Backup Counsel
`Armstrong Teasdale LLP
`One Metropolitan Square
`Suite 2600
`St. Louis, MO 63102
`Ph: 314-621-5070
`Fax: 314-621-5065
`mlongmeyer@armstrongteasdale.com
`rreeser@armstrongteasdale.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: RolfE. 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
`
`IGT MOTION LIST
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`IGT EXHIBIT 2008
`Zynga v. IGT, IPR2022-00199
`
`
`
`Date Filed: - - - - -
`
`Filed on behalf of:
`
`IGT
`
`By: Michael H. Longmeyer, Lead Counsel
`Robert B. Reeser III, Backup Counsel
`Armstrong Teasdale LLP
`One Metropolitan Square
`Suite 2600
`St. Louis, MO 63102
`Ph: 314-621-5070
`Fax: 314-621-5065
`mlongmeyer@armstrongteasdale.com
`rreeser@armstrongteasdale.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: RolfE. 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
`
`IGT MOTION LIST
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`IGT EXHIBIT 2008
`Zynga v. IGT, IPR2022-00199
`
`
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`IGT MOTION LIST
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`Pursuant to Part D of the Declaration of Interference, Bd. R. 120 and 204, and SO
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`~~ 104.2.1, 120 and 204, the following is a list of the motions that Senior Party JGT ("JGT")
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`presently intends to file:
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`1.
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`A motion for judgment that Junior Party Legal iGaming, Inc. ("Legal iGaming")
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`has no standing in this Interference, because there is no interference-in-fact.
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`2.
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`A motion for judgment that Legal iGaming has no standing in this Interference,
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`because all claims of its involved application are unpatentable for lack of written
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`description under 35 U.S.C. 112 paragraph 1.
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`3.
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`A miscellaneous motion pursuant to Bd. R. 150(c), SO ~~ 123 and 150.2 for
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`additional discovery into the basis for the naming of, and subsequent removal of,
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`Michael W. Saunders as an inventor of Legal iGaming's involved application
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`("the '836 Application"). Recognizing that the Board will not grant a motion for
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`additional discovery absent a specific basis for expecting that the discovery will
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`be productive, JGT presents the following detailed basis:
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`a.
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`The '836 Application, as originally filed, consisted of the specification and
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`figures of Legal iGaming's prior U.S. Application No. 08/358,242 and a
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`preliminary amendment to incorporate by reference (i) four additional
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`applications owned by Legal iGaming, and (ii) IGT's involved patent and
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`a related application owned by IGT. The preliminary amendment also
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`copied verbatim the claims of IGT's involved patent. Thus, five prior
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`2
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`applications owned by Legal iGaming constitute the entirety of the as-filed
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`disclosure in the '836 Application, save for the material copied directly
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`from IGT to provoke the Interference.
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`b.
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`Michael W. Saunders was not named as an inventor in any of the five
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`prior applications owned by Legal iGaming that constituted the entirety of
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`the original disclosure in the '836 Application. Nevertheless, the '836
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`Application originally named Michael W. Saunders, along with Rolf E.
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`Carlson (the sole named inventor in the five prior applications), as an
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`inventor.
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`C.
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`As a matter of law, Mr. Saunders properly could be named as an inventor
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`only if he contributed to the conception of the invention claimed in the
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`copied claims in the '836 Application.
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`d.
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`Mr. Saunders was not named as an inventor in the five prior applications
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`on which the entirety of the disclosure in the '836 Application is based,
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`and for which junior party Legal iGaming is expected to move to be
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`accorded the benefit of filing dates. Therefore, if Mr. Saunders was newly
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`entitled to be named as an inventor for the '836 Application, this would
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`constitute strong evidence that the material he contributed to the claims is
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`not supported in those five prior applications, hampering any priority
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`claim by Legal iGaming. On the other hand, if material which Mr.
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`Saunders contributed is present in any of the claims of those five prior
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`applications, a question arises as to why Mr. Saunders was not named as
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`an inventor in such prior applications.
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`e.
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`After Legal iGaming had made certain amendments to the claims it copied
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`from IGT's involved patent, Legal iGaming submitted a Request to
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`Amend Inventorship (dated January 9, 2008) in the '836 Application. The
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`Request deleted Mr. Saunders as a named inventor based on the claims as
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`then presented.
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`f.
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`Additional discovery into the basis for Mr. Saunders' original entitlement
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`to inventorship, and removal therefrom, is necessary at least because:
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`(1)
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`Through changes in the claimed inventorship, certain matter in the
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`'836 Application may effectively have been admitted by Legal
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`iGaming to be new matter with respect to
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`the five prior
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`applications owned by Legal iGaming (for which it may otherwise
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`move to be accorded the benefit of fi I ing dates);
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`(2)
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`It will establish whether any material in the presently presented
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`claims of the '836 Application is still attributable to Mr. Saunders,
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`who is no longer named as an inventor; and
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`(3)
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`Legal iGaming may have been motivated to erroneously exclude
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`Mr. Saunders from inventorship with respect to the claims in the
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`'836 Application in order to avoid a finding (i) that the material
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`contributed to the claims by a new inventor is not supported in the
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`five prior applications for which Legal iGaming may move to be
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`accorded benefit, or alternately (ii) that Mr. Saunders was
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`improperly omitted as an inventor in such prior applications.
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`4.
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`The preceding motion for additional discovery is primarily directed to identifying
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`whether certain matter in the claims of the '836 Application has been admitted to
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`be new matter through changes in the claimed inventorship, rather than to
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`uncovering evidence of inequitable conduct. However, if the preceding motion
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`for additional discovery does uncover evidence that Legal iGaming submitted
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`incorrect information regarding Mr. Saunders' inventorship (with respect to the
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`'836 Application and/or the five prior applications owned by Legal iGaming) in
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`bad faith or with intent to deceive the United States Patent and Trademark Office,
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`IGT intends to file a motion for judgment on the basis that the '836 Application is
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`unpatentable due to inequitable conduct.
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`5.
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`A motion, contingent upon a claim construction that would permit a successful
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`motion by Legal iGaming to be accorded a priority date earlier than the filing date
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`of IGT's involved patent, to be accorded the benefit of the filing date of U.S.
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`Application No. 09/732,650, filed December 7, 2000, now issued as U.S. Patent
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`No. 7,127,069.
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`6.
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`Contingent on the outcome of preliminary motions, a motion for judgment based
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`on priority.
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`7.
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`IGT also may request permission to file certain responsive motions contingent
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`upon the motions list presented by Legal iGaming.
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`5
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`-
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`Respectfully submitted,
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`/s/ Michael H. Longmeyer
`Michael H. Longmeyer
`Registration No. 55,402
`ARMSTRONG TEASDALE LLP
`One Metropolitan Square, Suite 2600
`St. Louis, Missouri 63102-2740
`phone (314) 621-5070
`facsimile (314) 621-5065
`
`6
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`
`
`...
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`-
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`Certificate of Service
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`2
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`The undersigned counsel for IGT in this interference proceeding hereby certifies that on
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`3 April 28, 20 l 0, a copy of the foregoing document in its entirety was served per SO , l 05.3 on
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`4
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`the opposing party, Legal iGaming, Inc., through its attorneys of record, Knobbe Martens Olson
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`• 5 & Bear LLP, via the e-mail address provided in its Designation of Counsel:
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`Knobbe Martens Olson & Bear LLP
`E-mail: BoxIGAM@kmob.com
`2040 Main Street
`Fourteenth Floor
`Irvine, CA 92614
`
`Isl Michael H. Longmeyer
`Michael H. Longmeyer
`Registration No. 55,402
`ARMSTRONG TEASDALE LLP
`One Metropolitan Square, Suite 2600
`St. Louis, Missouri 63102-2740
`phone (314) 621-5070
`facsimile (314) 621-5065
`
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