IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`IGT AND IGT CANADA SOLUTIONS
`ULC,
`
`v.
`
`ZYNGA INC.,
`
`Plaintiffs
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`NO. 6:21-cv-00331-ADA
`
`JURY TRIAL DEMANDED
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`
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`
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`Pursuant to the agreed date in the Joint Motion for Entry of Disputed Scheduling Order
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`(Dkt. No. 20, Appendix A and B), as modified by agreement of the parties, Defendant Zynga,
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`Inc. (“Zynga”) hereby serves its Preliminary Invalidity Contentions (the “Invalidity
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`Contentions”) for U.S. Patent Nos. 8,708,791; 7,168,089; 9,159,189; 7,303,473; 8,795,064; and
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`8,266,212 (collectively, the “Asserted Patents”). Zynga is also producing on this date each of the
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`prior art references identified in these Preliminary Invalidity Contentions. In addition, under an
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`Outside Counsels’ Eyes’ Only designation pursuant to the Court’s interim Protective Order,
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`Zynga is producing technical documents sufficient to show the operation of the accused
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`products. Finally, following entry of a suitable Source Code Protective Order, Zynga is prepared
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`to produce source code sufficient to show the operation of the accused products.
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`I.
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`INTRODUCTORY STATEMENT
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`Zynga understands that Plaintiffs IGT and IGT Canada Solutions ULC (collectively,
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`“Plaintiffs” or “IGT”) have asserted the following claims, which are collectively referred to
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`herein as the “Asserted Claims”:
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`1
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`IGT EXHIBIT 2024
`Zynga v. IGT, IPR2022-00199
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`Page 1
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`Asserted Patent
`8,708,791 (the ’791 Patent)
`9,159,189 (the ’189 Patent)
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`7,168,089 (the ’089 Patent)
`
`7,303,473 (the ’473 Patent)
`8,795,064 (the ’064 Patent)
`8,266,212 (the ’212 Patent)
`
`Asserted Claims
`1, 4, 5, 7, 8, and 13
`1, 4-8, 10, and 13-17
`28-29, 31-33, 47-50, 84-86, 89-92, 99, and
`100
`1-4, 6-12, 14-18, 20-24, and 26-37
`9-13, 15, and 17-18
`24, 27-29, 31, and 34-36
`
`The Preliminary Infringement Contentions (the “Infringement Contentions”) served by
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`IGT on June 30, 2021, are vague and incomplete, and do not provide the specificity necessary to
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`allow Zynga to adequately respond. For example, the Court’s Order Governing Proceeding for
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`Patent Cases required Plaintiffs to “serve[] preliminary infringement contentions in the form of a
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`chart setting forth where in the accused product(s) each element of the asserted claim(s) are
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`found.” IGT has failed to do so. IGT’s Infringement Contentions provide inadequate
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`explanation for its infringement allegations and fail to fairly apprise Zynga of IGT’s
`
`infringement theories or what is alleged to infringe. An exemplary list of the claim elements for
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`which IGT’s Infringement Contentions are deficient is set forth below:
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`
`
`’791 Patent
`o “analyzing, by the at least one game server, the game play data to determine
`individual players’ typical gaming styles and times of deviation from the typical
`gaming styles” (claim 1)
`o “comparing, by the at least one game server, times of deviation from players’
`typical gaming styles to determine instances of probable collusion between
`players” (claim 1)
`With respect to the first element cited above, IGT cites no evidence and offers only
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`conclusory allegations that in games like Zynga Poker, Zynga’s servers determine individual
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`players’ times of deviation. IGT also fails to identify “to determine … times of deviation from
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`the typical gaming styles” in Zynga Poker or any other game which makes it impossible to
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`2
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`determine how IGT is reading this limitation on the accused products. With respect to the second
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`element cited above, IGT fails to identify “deviation from players’ typical gaming styles” and
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`“comparing … deviation from players’ typical game styles” in Zynga Poker or any other game
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`which makes it impossible to determine how IGT is reading these limitations on the accused
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`products. IGT also cites no evidence and offers only conclusory allegations that in games like
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`Zynga Poker, Zynga’s servers compare times of deviation from players’ typical gaming styles.
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`IGT also cites unreliable evidence in its contentions that does not come from Zynga.
`
`
`
`’189 Patent
`o “carrying out the game by the gaming terminal, including determining a final
`outcome of the game and any award for the outcome” (claim 1)
`o “transmitting signals from the gaming terminal to the mobile gaming device
`identifying the final outcome of the game and the award” (claim 1)
`o “extending the game animation for the game by the mobile gaming device during
`the communications link failure beyond a typical time for the game until the
`communications link has been re-established” (claim 1)
`o “The method of claim 1 wherein the step of displaying game animation comprises
`displaying game animation stored in a memory of the mobile gaming device prior
`to the game being initiated” (claim 6).
`
`First, with respect to the first two elements cited above from claim 1, IGT cites no
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`evidence and offers only conclusory allegations that in games like Mustang Money, Zynga’s
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`servers determine a final outcome of the game and any award for the outcome and transmit to the
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`user a final outcome of the game and any award for the outcome. Second, with respect to the
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`third element of claim 1 identified above, IGT fails to identify the “typical time for the game” in
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`Mustang Money or any other game which makes it impossible to determine how IGT is reading
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`this limitation on the accused products. Third, with respect to claim 6, IGT does not explain how
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`or when game animation is stored on a user’s device “prior to the game being initiated.”
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`
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`3
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`
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`’089 Patent
`o “sending 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
`and wherein the first gaming device and the second gaming device are separate
`from the software authorization agent” (claim 28)
`o “receiving an approval of the gaming software transaction request from the
`gaming software authorization agent” (claim 85)
`
`First, with respect to claim 28 and the claims that depend therefrom, IGT has not
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`identified a software authorization “separate from” the first and second gaming devices, which
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`renders its contentions vague and incomplete. Second, with respect to dependent claim 85 IGT
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`cites to the same evidence it cited for independent claim 84 making it impossible to ascertain
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`IGT’s views on what additional limitations have been added by dependent claim 85 and how
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`those limitations are met in the accused products.
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`
`
`’473 Patent
`o “a website server that is capable of being operatively coupled via the Internet to
`said remote player devices, said website server capable of being operatively
`coupled to said first and second gaming servers, said website server comprising: a
`controller that comprises a processor and a memory” (claim 1)
`o “wherein said memory of said first gaming server stores image data representing
`an image of at least five playing cards if said first game comprises poker, wherein
`said memory of said first gaming server stores image data representing an image
`of a plurality of simulated slot machine reels if said first game comprises slots,
`wherein said memory of said first gaming server stores image data representing an
`image of a plurality of playing cards if said first game comprises blackjack”
`(claim 2)
`o “said controller of one of said gaming servers is programmed to encrypt data
`transmitted to said website server and wherein said controller of said website
`server is programmed to decrypt data received by said website server from one of
`said gaming servers” (claim 6)
`o “one of said controllers of one of said gaming servers is programmed to determine
`whether a data communication received by said one gaming server was
`transmitted by an authorized sender” (claim 7)
`o “said first game may be played exclusively via said first gaming server, . . . said
`second game may be played exclusively via said second gaming server . . . .”
`(claim 8)
`
`4
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`o “said data communication being conducted through said website computing
`apparatus” (claim 27)
`o “at said website computing apparatus, initiating the retrieval of game display data
`from said first/second gaming apparatus” (claim 29)
`o “receiving at said website computing apparatus wager data from said remote
`player device via the Internet” (claim 29)
`o “transmitting first/second game display data from said gaming apparatus to a
`website computing apparatus . . . receiving wager data from said website
`computing apparatus . . . transmitting outcome data from said gaming apparatus to
`said website computing apparatus . . . .” (claim 33)
`First, IGT’s contentions rely “on information and belief” 64 times without meaningful
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`accompanying allegations. See generally Infringement Contentions Ex. D. Such heavy reliance
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`on information and belief does not put Zynga on adequate notice as to how IGT’s contends that
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`Zynga infringes every element of each Asserted Claim of the ’473 patent. Second, IGT alleges
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`that a Facebook platform comprises a website server. Id. at 15, 19–20. IGT does not explain
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`how that constitutes infringement by Zynga. Third, IGT’s contentions merely show an image
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`comprising five playing cards being displayed. Id. at 30. This does not show that “said first
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`gaming server stores image data representing an image of at least five playing cards” as required
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`by claim 2. Similar deficiencies exist with respect to claim elements 2(b)–2(c). See id. at 31–33.
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`Fourth, claim 6 requires “said controller of one of said gaming servers is programmed to encrypt
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`data transmitted to said website server and wherein said controller of said website server is
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`programmed to decrypt data received by said website server from one of said gaming servers.”
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`IGT’s contentions merely show a screenshot titled “Security of Your Information.” Id. at 38.
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`This falls short of showing any encryption or decryption performed at the alleged servers as
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`required by the claim. Fifth, claim 7 requires “determin[ing] whether a data communication
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`received by said one gaming server was transmitted by an authorized sender.” IGT alleges that
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`Zynga “‘proactively’ takes steps to counteract unauthorized actions affecting its games.” Id. at
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`39. IGT fails to explain, however, how taking such steps satisfies the claim limitation. Sixth,
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`5
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`claim 8 requires “said first game may be played exclusively via said first gaming server” and
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`“said second game may be played exclusively via said second gaming server.” IGT’s allegations
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`with respect to this claim are contradicted by its allegations with respect to claim 1. Compare id.
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`at 14 with id. at 7–12. Seventh, claim 28 requires “operating a website computing apparatus”
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`comprising “transmitting to said remote player device display data representing an image of”
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`said first game. IGT’s contentions merely shows screenshots of games in progress. Id. at 75–78.
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`IGT fails to explain how theses screenshots satisfy the requirement of claim 29. Eighth, claim 29
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`requires “receiving at said website computing apparatus wager data from said remote player
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`device.” IGT’s contentions merely shows screenshots of games in progress with an option to
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`place wagers. See id. at 81–82. IGT fails to explain how these screenshots satisfy the
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`requirement of claim 29. Ninth, claim 27 requires “said data communication between said
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`remote player device and said first/second gaming computer being conducted through said
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`website computing apparatus.” Claims 29 and 33 both recite similar requirements. For
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`example, the website computing apparatus “initiat[es] the retrieval of game display data from
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`said [] gaming apparatus” and “transmit[s] said game display data received from one of said
`
`gaming apparatuses to said remote player device.” IGT’s contentions fail to show how Zynga
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`allegedly satisfies these claim requirements. See id. at 73–74, 79–83, 88–91.
`
`
`
`’064 Patent
`o “causing at least one processor to execute a plurality of instructions to identify a
`player placing at least one wager on at least one play of a game” (claim 9)
`o “if a first/second, different set of information associated with the identified player
`is tracked and a/the message trigger condition occurs in association with the
`identified player: causing the at least one processor to execute the plurality of
`instructions to determine, based at least in part on the first/second set of tracked
`information, a first/second, different message, and causing the at least one output
`device to output the determined first/second message to the identified player”
`(claim 9)
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`6
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`o “wherein the determined message is at least one selected from the group
`consisting of . . . .” (claim 11)
`o “wherein the message trigger condition which occurs in association with the first
`set of tracked information is different than the message trigger condition which
`occurs in association with the second set of tracked information” (claim 15)
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`First, regarding the “to identify a player” limitation, IGT’s alleges that a player’s login or
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`an IP address satisfies this claim limitation. Infringement Contentions Ex. E at 4, 7. IGT has not
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`explained how the accused products identify a player placing at least one wager on at least one
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`play of a game. Second, the “causing” claim limitations require two different sets of tracked
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`information and two different messages but an identical message trigger condition. But IGT’s
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`contentions present virtually identical contentions between these claim elements and fail to
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`provide Zynga any notice on how these two different claim elements are allegedly met by the
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`Accused Products. Compare id. at 11–47 with id. at 47–82. Similarly, claim 15 requires the two
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`message trigger conditions of claim 9 to be different. IGT’s contentions do not explain or show
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`in any way how this requirement is met along with the requirements of claim 9. See id. at 116.
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`Third, claim 11 recites the determined message of claim 9. But the contentions do not explain or
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`show in any way how the messages allegedly satisfying claim 11 satisfy the requirements of
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`claim 9. See id. at 97–105.
`
`
`
`’212 Patent
`o “providing a node coupled to the communication bus” (all asserted claims)
`o “The method of claim 24, further comprising a step of the first gaming machine
`performing a call back upon receiving the request to consume or execute the high-
`level function” (claim 29)
`
`First, with respect to the claimed “node,” IGT articulates multiple theories for how the
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`accused products meet this limitation but then does not apply those theories consistently
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`throughout each of the remaining claim elements that include the word “node,” which makes it
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`impossible to determine the bases for IGT’s claims of infringement on this patent. Second, IGT
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`7
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`cites the same evidence to satisfy claim 29 as it cited for claim 24, making it impossible to
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`ascertain IGT’s views on what additional limitations have been added by dependent claim 29 and
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`how those limitations are met in the accused products.
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`The foregoing are merely examples of the many ways in which IGT’s Infringement
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`Contentions are deficient. In at least each of the instances identified above, IGT fails to “set[]
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`forth where in the accused product(s) each element of the asserted claim(s) are found.” IGT’s
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`failure to identify what it contends to be infringing in its Infringement Contentions has
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`prejudiced Zynga’s ability to prepare these Invalidity Contentions.
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`To the extent that these Invalidity Contentions rely on or otherwise embody particular
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`constructions of terms or phrases in the Asserted Claims, Zynga is not proposing any such
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`constructions as proper constructions of those terms or phrases. Various positions put forth in
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`this document are predicated on IGT’s incorrect and overly broad interpretation of its patents and
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`claims as evidenced by its Infringement Contentions. Those positions are not intended to and do
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`not necessarily reflect Zynga’s interpretation of the true and proper scope of IGT’s claims, and
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`Zynga reserves the right to adopt claim construction positions that differ from or even conflict
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`with various positions put forth in this document. Zynga offers these Invalidity Contentions in
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`response to IGT’s Infringement Contentions, notwithstanding the deficiencies therein, without
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`prejudice to any position Zynga may ultimately take as to any claim construction issues. Thus,
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`Zynga’s Invalidity Contentions should not be interpreted as suggesting that IGT’s reading of the
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`Asserted Claims is correct, that any of the Asserted Claims are not indefinite, or as an admission
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`that any of Zynga’s products or technology infringe any claim of the Asserted Patents. Zynga
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`specifically denies any such infringement.
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`8
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`These Invalidity Contentions, including the attached exhibits, are subject to modification,
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`amendment, and/or supplementation in the event that IGT provides any information that it failed
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`to provide in its Infringement Contentions or attempts to cure the deficiencies in its Infringement
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`Contentions, including in Zynga’s Final Invalidity Contentions, and/or in light of the Court’s
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`construction of the Asserted Claims, IGT’s Final Infringement Contentions, any findings as to
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`the priority or invention date of the Asserted Claims, and/or positions that Plaintiffs or their
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`expert witness(es) may take concerning claim construction, infringement, and/or invalidity
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`issues. Further, because discovery is not complete, Zynga reserves the right to revise, amend,
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`and/or supplement the information provided herein, including identifying and relying on
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`additional references, should Zynga’s further search and analysis yield additional information or
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`references.
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`The Invalidity Contentions herein are based on Zynga’s present knowledge, and Zynga
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`reserves the right to amend these contentions if it identifies new material despite its reasonable
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`efforts to prepare these contentions. Zynga’s investigation regarding invalidity of the Asserted
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`Patents over prior art and regarding other grounds of invalidity, including those based on the
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`public use and on-sale bars under 35 U.S.C. § 102(b), anticipation under 35 U.S.C. § 102,
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`obviousness under 35 U.S.C. § 103, failure to comply with 35 U.S.C. § 112, derivation under 35
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`U.S.C. § 102(f), and prior invention under 35 U.S.C. § 102(g), is ongoing. There may be
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`products that were known or in public use prior to the filing dates of the applications leading to
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`the Asserted Patents, but Zynga must first obtain additional information regarding these products
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`using available discovery tools.
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`Moreover, prior art not included in this disclosure, whether known or unknown to Zynga,
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`may become relevant. In particular, Zynga is currently unaware of the extent, if any, to which
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`IGT may contend that limitations of the Asserted Claims are not disclosed in the prior art
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`identified by Zynga or will contend that any of the identified references does not qualify as prior
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`art under § 102. The identification of any patents as prior art shall be deemed to include
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`identification of any foreign counterpart patents. To the extent that such issues arise, Zynga
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`reserves the right to identify additional teachings in the same references or in other references
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`that anticipate or would have made the addition of the allegedly missing limitation to the
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`apparatus or method obvious.
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`II.
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`INVALIDITY OF THE ’791 PATENT
`
`A.
`
`Invalidity Based on 35 U.S.C. § 101
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`Each Asserted Claim of the ’791 Patent is invalid for failing to recite patentable subject
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`matter under 35 U.S.C. § 101.
`
`In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court
`
`established a two-part test for determining whether a claim recites patent-eligible subject matter.
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`First, the court must determine whether the claim as a whole is “directed to [a] patent-ineligible
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`concept” such as an abstract idea. Alice, 573 U.S. at 217. Second, if the claims are directed to
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`ineligible subject matter, the court must “examine the elements of the claim to determine
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`whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into
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`a patent-eligible application.” Id. at 221. Merely claiming a “generic computer” to implement
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`an abstract idea is not sufficient to transform the computer into a patent-eligible invention. Id. at
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`223.
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`The Asserted Claims fail both steps of the Alice framework. They are directed to the
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`abstract idea of detecting collusion between game players based on behavioral data.
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`Representative Claim 1, the only independent claim asserted, recites generic computer
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`components and functions. It recites a server and “host device,” like a smartphone, which
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`display data and gather information about the playing habits of the users playing the game.
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`These generic recitations of displaying and gathering information are abstract. E.g., Intellectual
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`Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“[R]outine
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`steps of data collection and organization using generic computer components and conventional
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`computer data processing activities … do not meet the standard for eligibility.”). The claim then
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`recites “analyzing” the data to “determine individual players’ typical gaming styles and times of
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`deviation from the typical gaming styles,” to reach a conclusion about whether players are
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`colluding on game. This too is abstract; it is nothing more than the “abstract idea of 1) collecting
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`data[ ] [and] 2) recognizing certain data within the collected data set.” Intellectual Ventures I
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`LLC v. Symantec Corp., 838 F.3d 1307, 1314-15 (Fed. Cir. 2016).
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`Furthermore, observing player habits and drawing conclusions about whether players are
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`colluding is a mental process that “can be performed in the human mind.” CyberSource Corp. v.
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`Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011). That is “a telltale sign of
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`abstraction.” PersonalWeb Technologies LLC v. Google LLC, -- F.4th --, 2021 WL 3556889, at
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`*4 (Fed. Cir. Aug. 12, 2021). Performing mental steps “in a computer environment” does not
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`“transfigure an idea out of the realm of abstraction.” Id. (citing BASCOM Glob. Internet Servs.,
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`Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an
`
`Internet computer network’ ... is still an abstract idea.”).
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`Even viewing the claims “as a whole” does not transform the series of abstract data
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`collection and analysis steps into a patent-eligible claim. The claims “are clearly focused on the
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`combination of those abstract-idea processes.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
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`1350, 1354 (Fed. Cir. 2016). Putting together the data gathering and analysis steps by “[a]dding
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`one abstract idea ... to another,” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
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`Cir. 2017), results merely in the abstract idea of gathering data and detecting patterns in the data.
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`Besides, nothing about the claims is directed to a solution to a problem unique to a
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`computer environment. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
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`Cir. 2014). Collusion amongst game players is hardly unique to online gaming and observing
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`player behaviors is a solution that can be done in person or online. Ultimately, “the focus of the
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`claims is not on ... an improvement in computers as tools, but on certain independently abstract
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`ideas that use computers as tools.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
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`1055 (Fed. Cir. 2017).
`
`Moving to Alice step 2, none of the claims contain an inventive concept sufficient to
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`transform the claimed abstract idea into a patent-eligible invention. Alice, 573 U.S. at 217-18.
`
`The patent describes the invention as “[m]ethods and devices are provided for detecting and/or
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`preventing cheating in online gaming” including “tracking and analysis of players' gaming
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`activities.” ’791 Patent, Abstract. That merely restates the abstract idea of analyzing data. It is
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`not “significantly more than … the ineligible concept itself.” Alice, 573 U.S. at 217-18.
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`Accordingly, all Asserted Claims of the ’791 patent are invalid under § 101.
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`Zynga’s investigation concerning invalidity of the Asserted Patents under Section 101 is
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`ongoing. For example, no claim terms have been construed, Plaintiff has not provided adequate
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`infringement contentions, and discovery is ongoing. Accordingly, Zynga reserves the right to
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`supplement and/or amend its invalidity contentions with respect to Section 101.
`
`B.
`
`Invalidity Based on 35 U.S.C. §§ 102 and 103
`
`1.
`
`Background of the Prior Art
`
`As shown below, the asserted claims of the ’791 Patent, and each of the elements of the
`
`asserted claims, were well known in the art prior to the date of the alleged inventions. Examples
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`of these disclosures and embodiments are identified in the following sections and in the attached
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`Invalidity Claim Charts in Exhibits A-1 through A-2.
`
`2.
`
`Identifications of the Prior Art References and Products
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`Subject to the reservations of rights above, Zynga identifies prior art that anticipates
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`and/or renders obvious one or more of the asserted claims of the ’791 Patent. The prior art
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`references and products identified are also relevant to show the state of the art and reasons and
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`motivations for making improvements, additions, modifications, and combinations.
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`The following prior art references and products anticipate and/or render obvious the
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`asserted claims of the ’791 Patent and/or illustrate the state of the art at the time of the alleged
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`invention:
`
`Ex. No.
`
`Prior Art Ref.
`
`Ex. A-1
`
`Ex. A-2
`
`Ex. A-1
`
`WO2004050201
`(“Daniel”)
`US7604541
`(“Aikin”)
`WO2004/071601
`(the “’601
`Application”)
`Exs. A-1 – A-2 US9159195
`(“Frenkel”)
`
`Country of
`Origin
`
`GB
`
`Filing Date
`
`Dec. 2, 2003
`
`Publication or
`Issue Date
`June 17, 2004
`
`United States
`
`March 31, 2006 Oct. 20, 2009
`
`GB
`
`Feb. 11, 2004
`
`Aug. 26, 2004
`
`United States
`
`July 14, 2005
`
`Oct. 13, 2015
`
`
`
`
`
`In addition, Zynga incorporates by reference each and every prior art reference of record
`
`in the prosecution of the ’791 Patent and any related patent or application, the statements made
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`therein by the applicant, as well as the prior art discussed in the specification.
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`3.
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`Anticipation and Obviousness
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`The references in Exhibits A-1 through A-2 disclose elements of the asserted claims
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`explicitly and/or inherently. These references may also be relied upon to show the state of the art
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`at the relevant time and/or that elements of the asserted claims, or any asserted claim as a whole,
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`would have been obvious to a person having ordinary skill in the art at the time of the alleged
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`invention. Obviousness combinations are provided in the alternative to Zynga’s anticipation
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`contentions and are not to be construed as suggesting that any reference included in the
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`combinations is not by itself anticipatory.
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`The references in Exs. A-1 through A-2 are applied to the asserted claims. The fact that
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`Zynga’s disclosures pertain only to the asserted claims of the ’791 Patent should not be
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`construed to suggest that any of the other claims of the Asserted Patents are valid. Should
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`Plaintiffs be permitted to amend their infringement contentions to assert additional or alternative
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`claims, or modify the bases for their contentions, Zynga reserves the right to modify, amend, or
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`supplement these disclosures.
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`Various references discussed in Exs. A-1 through A-2 may be of greater or lesser
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`relevance and different combinations of these references may be implicated depending on
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`Plaintiffs’ proposed claim constructions. In view of Zynga’s uncertainty regarding how
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`Plaintiffs will contend the claims apply, the discussion of the different references in Exs. A-1
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`through A-2 may reflect alternative applications of the prior art against the asserted claims.
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`Zynga reserves the right to combine references from separate charts in additional obviousness
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`combinations. A more detailed discussion of Defendant’s Section 102 and/or 103 defenses will
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`be set forth in Zynga’s expert report(s) on invalidity.
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`Zynga provides pinpoint citations to exemplary portions of the prior art for the purpose of
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`fairly disclosing the manner in which the prior art references meet the claim limitations. Such
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`citations should not be construed to mean that other portions of the prior art references are not
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`relevant to the invalidity of the claims. Zynga specifically reserves the right to rely on the
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`entirety of any or all of the prior art references—whether charted or not charted—as a basis for
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`asserting invalidity of the Asserted Claims and/or as necessary to supplement its invalidity
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`contentions with additional citations and evidence.
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`The cited portions of each prior art reference are exemplary and representative of the
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`content of the reference and should be understood in the context of the reference as a whole, as
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`understood by a person of skill in the art (POSITA). To the extent a prior art reference is
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`deemed not to anticipate or render obvious a claim as noted in the attached charts for failing to
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`disclose, teach, or suggest one or more limitations of a claim, that claim would nonetheless have
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`been obvious to POSITAs at the time of the invention over the reference itself or by the
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`combination of the reference with one or more other references disclosing the missing claim
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`limitations or the knowledge of a POSITA.
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`4.
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`Motivation to Combine
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`A POSITA would have been motivated to combine the preceding references in Exhibits
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`A-1 through A-2 for reasons set forth below. Teachings, suggestions, motivations and/or reasons
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`to modify any of the references and/or to combine any two or more of the references can come
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`from many sources, including the prior art, common knowledge, common sense, predictability,
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`expectations, industry trends, design incentives or need, market demand or pressure, market
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`forces, obviousness to try, the nature of the problem faced, and/or knowledge possessed by a
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`POSITA.
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`A patent claim may be invalidated based on a teaching-suggestion-motivation (“TSM”)
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`rationale—i.e., that some teaching, suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior-art reference or to combine prior-art reference teachings
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`to arrive at the claimed invention—the Supreme Court identified additional rationales in KSR
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`Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). The following of these rationales apply here:
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`(A) the asserted claims combine prior-art elements according to known methods to
`yield predictable results;
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`(B) the asserted claims involve the simple substitution of one known element for
`another to obtain predictable results;
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`(C) the asserted claims involve the use of a known technique to improve similar
`devices (methods, or products) in the same way;
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`(D) the asserted claims apply a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
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`(E) the asserted claims involve combinations of prior-art references that would have
`been “obvious to try”’—a person of ordinary skill in the art could have reached the
`asserted claims by choosing from a finite number of identified, predictable solutions,
`with a reasonable expectation of success;
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`(F) the asserted claims are simply variations of work from one field of endeavor or a
`different one that would have been prompted based on design incentives or other
`market forces because the variations were predictable to one of ordinary skill in the
`art.
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`See KSR, 550 U.S. at 414-18 (rejecting the Federal Circuit’s “rigid” application of the
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`teaching, suggestion, or motivation to combine test, and instead espousing an “expansive and
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`flexible” approach); see also Department of Commerce, Patent and Trademark Office,
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`Examination G