Mail Stop Interference
`P.O. Box 1450
`Alexandria Va 22313-1450
`Tel: 571-272-4683
`Fax: 571-273-0042
`
`Paper 50
`
`Entered: October 21, 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)
`
`
`Before: RICHARD E. SCHAFER, JAMESON LEE, and SALLY C.
`MEDLEY, Administrative Patent Judges.
`
`Opinion by SCHAFER, Administrative Patent Judge.
`Decision - Interlocutory Motions - 37 C.F.R. § 41.125(b)
`IGT has filed a motion asserting that the subject matter of its and
`iGaming’s claims are patentably distinct and do not interfere. We deny the
`motion.
`
`IGT EXHIBIT 2009
`Zynga v. IGT, IPR2022-00199
`
`

`

`The Parties’ Subject Matter
`
`The subject matter claimed by each party relates to the authorization
`of transfers between networked computer gaming machines, particularly
`casino-type gaming machines. Each of the parties employs an
`“authorization agent” that is used to determine whether to allow the transfer.
`In iGaming’s claims the authorization is for transfer of “gaming
`information.” In IGT’s claims the authorization is for transfer of “gaming
`software.”
`The Parties’ Positions
`
`IGT argues that iGaming’s claimed subject matter relating to the
`transfer of “gaming information” does not anticipate or render obvious
`transfer of “gaming software” as those phrases are used in the parties’
`respective claims.1 Paper 25, p. 1.
`
`iGaming has filed a somewhat curious response. Paper 36.
`Notwithstanding that it copied claims to provoke an interference with IGT’s
`patent, iGaming says that it
`does not oppose IGT’s requested relief that the Board
`determine that iGaming’s claimed inventions relating to
`the transfer of “gaming information” would not be
`anticipated or obvious in view of IGT’s claimed
`inventions relating to the transfer of “gaming software,”
`or vice versa.
`Paper 36, p. 3, ll. 12-15. iGaming further states that it “takes no position on
`either the anticipation or obviousness analysis on this motion . . . .” Paper
`
`
`1 For the purpose of determining whether an interference-in-fact is present, the claims are
`interpreted according to the general rule that claim language is interpreted in light of the
`specification of which they are a part. The exception to the general rule set forth in
`Agilent Techs., Inc. v. Affymetrix Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), does not
`apply because written description is not at issue in this motion.
`
`
`
`
`2
`
`

`

`36, p. 3, ll. 15-17. Instead of challenging IGT’s arguments on no
`interference-in-fact, it challenges IGT’s proposed construction of certain of
`the phrases used in the parties’ claims:
`[T]he Board, in making its determination as to whether
`there is no interference-in-fact in this matter, is
`respectfully requested to reject the claim constructions
`proposed by IGT and adopt those proposed by iGaming.
`Paper 36, p. 17, ll. 10-12.
`Analysis
`
`A.
`IGT has the burden of proving entitlement to the relief requested. 37
`
`C.F.R. § 41.121(b). An interference exists if a claim of one party, when
`taken as prior art, anticipates or renders obvious a claim of the other party
`and vice versa. 37 C.F.R. § 41.203(a). Under this standard, IGT must
`prove that iGaming’s claims, when presumed to be prior art, neither would
`have anticipated, nor have rendered obvious, the subject matter of any IGT’s
`claims or vice versa. Yorkey v. Diab, 605 F.3d 1297, 1300, 94 USPQ2d
`1444, 1447 (Fed. Cir. 2010). In other words, in order for IGT to show that
`the parties do not interfere, it must show that there is no pair of claims --one
`coming from each party-- that meet the two-way test for interference-in-fact.
`On the other hand, if there remains a single pair of claims that satisfy the
`two-way test, then IGT has failed to satisfy its burden.
`B.
`In IGT’s view, the subject matter of iGaming’s claims does not
`
`describe or render obvious the use of a “software authorization agent” that
`authorizes and monitors the transfer of gaming “software” from one gaming
`machine to another. Paper 25, p. 1. By “gaming software” IGT means the
`code or set of instructions executed on a gaming computer to play the game.
`
`
`
`3
`
`

`

`Paper 25, p. 4. IGT’s Claim 84 is representative and is reproduced in the
`margin with paragraphing and emphasis added.2
`
`iGaming’s claims do not refer to a “software authorization agent ” or
`to “gaming software.” Rather, those claims specify an “authorization agent”
`that authorizes the transfer of “gaming information”. See e.g., Paper 36,
`p. 9. iGaming says “gaming information” is any information associated with
`game play or a gaming device.” Paper 36, p. 8. iGaming’s Claim 112 is
`representative and reproduced in the margin with added paragraphing and
`bolding. 3
`
`
`2 IGT Claim 84:
`84. In a first gaming device, a method of transferring gaming software to a second
`gaming device, said method comprising:
`receiving a gaming software transaction request from the second gaming
`
`device;
`sending the gaming software transaction request to a gaming software
`
`authorization agent that approves or rejects the transfer of gaming software;
`receiving an authorization message from the gaming software authorization
`
`agent
`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
`transferring the gaming software to the 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 machine,
`
`d) a player tracking service on a gaming machine and
`
`e) an operating system installed on a gaming machine.
`
` 3
`
` iGaming Claim 112:
`112. In a first gaming device, a method of transferring gaming information to a second
`gaming device, said method comprising:
`receiving a gaming transaction request;
`
`sending the gaming transaction request to a gaming authorization agent that
`
`authorizes the transfer of gaming information;
`
`receiving a message on the first gaming device from the authorization agent
`
`wherein the message includes information authorizing the first gaming device to
`transfer the gaming information to the second gaming device
`
`
`
`4
`
`

`

`IGT’s motion takes iGaming’s claims as presumed prior art and
`
`argues that its claimed subject matter is patentably distinct from iGaming’s
`subject matter. Paper 25, pp. 8-14. We will take iGaming’s Claim 112 as
`representative of the presumed prior art and compare it with IGT’s Claim 84.
`
`Comparing the two claims, we see two differences. First, iGaming’s
`Claim 112 requires that the gaming machines be separate from the
`authorization agent, a requirement not found in IGT’s Claim 84. The second
`difference relates to what is authorized to be transferred and the content of
`the transfer. In iGaming’s Claim 84 it is “gaming information.” In IGT’s
`Claim 112 it is “gaming software.”
`
`The first difference does not patentably distinguish the subject matter.
`While the requirement that the authorization agent be separate from the
`gaming machines is not a requirement of IGT’s Claim 84, there is no
`language in Claim 84 that excludes that concept. Indeed, as indicated by
`IGT’s specification and drawings, the use of an authorization agent separate
`from the gaming machines is contemplated as part of its invention. See,
`Patent 7,168,089, Figs. 8-12 and Claim 1.
`
`We also think the references in IGT’s Claim 112 to “gaming
`software” do not recite a patentable distinction of iGaming’s Claim 84. The
`characterization of what is to be transferred does not appear to create any
`functional differences between the parties’ methods. In this regard, we think
`the issue here is analogous to that raised when printed matter is relied upon
`to distinguish claims from the prior art, and that the issue is governed by the
`
`
`wherein the first gaming device and the second gaming device are separate
`from the authorization agent; and
`
`transferring the gaming information to the second gaming device;
`wherein the gaming information is for
`
`a game of chance played on a gaming machine.
`
`
`
`
`5
`
`

`

`same rationale. The relevant question is whether the difference in content of
`the desired transfer –gaming software -- creates a new and unobvious
`functional relationship when compared to the process described by
`iGaming’s Claim 84. Accord, King Pharmaceuticals Inc. v. Eon Labs Inc.,
`616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010) (“the relevant
`inquiry here is whether the additional [printed matter] . . . has a ‘new and
`unobvious functional relationship’ with the known method . . . .”).
`
`We think the answer to that question is no.
`
`Both parties’ claims relate to a method of making a transfer between
`gaming machines. Both start with a request for a transfer from one machine.
`The request is sent to an authorization agent. The authorization agent sends
`a message including the information indicating whether the transfer may be
`made. The messages from the authorization agent are functionally treated
`the same way in both claims. Thus, if the authorization message indicates a
`transfer is permitted, a transfer between the machines is made.
`
`The difference in the content of the transfer, gaming software versus
`gaming information, does not functionally alter the process. As far as
`Claims 84 and 112 are concerned, the transfer is nothing more than non-
`functional data --a collection of 1’s and 0’s. Neither Claim 84 nor Claim
`112 requires that anything be done with or to the transferred data. Thus,
`Claim 84 does not require that any action be taken with respect to the
`transferred “gaming information.” And Claim 112 does not require that the
`transferred “gaming software” be executed. While somewhat of an
`oversimplification, the parties’ claimed subject matter is not unlike the
`familiar method of obtaining a loan (an “authorized transfer”) from a public
`library. That method does not functionally change because the material
`
`
`
`6
`
`

`

`“transferred” is a novel, a cookbook providing instructions for making
`pastries, a music CD, or a CD containing word processing software.
`
`IGT has failed to show that the subject matter of its Claim 112 is
`patentably distinct from the subject matter of iGaming’s Claim 84.
`
`Both parties urge us to construe certain claim language including
`“gaming software,” “gaming information,” “software authorization agent”
`and “authorization agent.” Paper 25, pp. 4-8; Paper 36, pp. 13-17. The
`parties’ proposed construction would not change our decision that the
`difference in claim language does not create a functionally different and
`unobvious relationship. It is, therefore, unnecessary for us to adopt either
`parties’ construction.
`
`Since IGT’s motion fails to establish that an interference does not
`exist between IGT’s Claim 112 and iGaming’s Claim 84, the motion for no
`interference-in-fact is denied.
`
`ORDER
`
`For the reasons stated above, it is ordered that IGT’s motion that the
`parties’ involved claims do not interfere (Paper 25) is denied.
`
`
`
`7
`
`

`

`
`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:
`
`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:
`rreeser@armstrongteasdale.com
`
`
`
`
`8
`
`