Trials@uspto.gov
`571-272-7822
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`Paper # 31
`Entered: June 6, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZYNGA INC.,
`Petitioner
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`____________
`
`Record of Oral Hearing
`Held: March 13, 2023
`____________
`
`
`
`
`Before HUBERT C. LORIN, SCOTT A. DANIELS, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper # 31
`Entered: June 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZYNGA INC.,
`Petitioner
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`____________
`
`Record of Oral Hearing
`Held: March 13, 2023
`____________
`
`
`
`
`Before HUBERT C. LORIN, SCOTT A. DANIELS, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`
`
`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`PATRICK HERMAN, ESQ.
`RICHARD MARTINELLI, ESQ.
`of: Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, New York 10019-6142
`(212) 506-3702
`rmartinelli@orrick.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`ROBERT HAILS, ESQ.
`THERESA WEISENBERGER, ESQ.
`Baker & Hostetler LLP
`1050 Connecticut Avenue NW
`Suite 1100
`Washington, District of Columbia 20036
`(202) 861-1692
`rhails@bakerlaw.com
`
`ALSO PRESENT, OBSERVING:
`
`Stephen Calogero, ESQ.
`Leif Sigmond, ESQ.
`Jennifer Kurcz, ESQ.
`Jeffrey Lesovitz, ESQ.
`Charles Carson, ESQ.
`Daniel Goettle, ESQ.
`
`
`The above-entitled matter came on for hearing Monday,
`March 13, 2023, commencing at 9:00 a.m. EDT, via Video-conference.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`
`PROCEEDINGS
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`9:07 a.m.
`JUDGE DANIELS: Good morning, everyone. This is Judge Daniels.
`
` It's Monday, March 13th.
`
`Good morning. We have this morning, our final hearings for IPR
`2022-00199, 00200, and 00223 on Zynga vs. IGT. I'm Judge Daniels, and
`with me on this panel are Judge Parvis and Judge Lorin.
`
`If I could get the parties' appearances, please, and also, who will be
`presenting each of the cases today, that would be great. Let me ask, first,
`who do we have from Petitioner Zynga?
`
`MR. HERMAN: Good morning, Your Honors. This is
`Patrick Herman from Orrick, Herrington & Sutcliffe, here on behalf of
`Petitioner. And I will be presenting the first two -- the arguments in the first
`two proceedings, so the '089 and the '064. And Rich Martinelli, from Orrick,
`will be presenting the third hearing today, the '473 patent.
`
`JUDGE DANIELS: Mr. Herman, is it just you and Mr. Martinelli for
`Petitioner today?
`
`MR. HERMAN: Yes, presenting. Others are on the public line, but
`no one else will be presenting, Your Honor.
`
`JUDGE DANIELS: Okay. Great. Thank you.
`
`And for Patent Owner IGT, who do we have?
`
`MR. HAILS: Good morning. My name is Robert Hails from Baker
`Hostetler. I am the presenter for the first two IPRs, so IPR '199 and '200.
`I'm joined by Theresa Weisenberger; she will offer the presentation in the
`third. And it's only us on the presentation panel. We're joined by others.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`We have Stephen Calogero from IGT and other members of Baker Hostetler,
`including Leif Sigmond, Jennifer Kurcz, Jeffrey Lesovitz, Charles Carson,
`and Dan Goettle.
`
`JUDGE DANIELS: All right. Thank you. Good morning.
`Welcome, everybody.
`
`So we set forth the procedure for the hearing, and you all have read
`today's -- the trial order. Let me just remind you of a few things for some
`housekeeping purposes.
`
` Each party will have 45 minutes of total time to present their
`argument. You can allocate your time as you choose.
`
`Unless the parties have worked out another scheme, or what we would
`do is attend to 00199 first. Then we'll take about a ten-minute break and do
`00200. Then we'll take a lunch break after that and do 00223 afterwards.
`We can figure out the time for the lunch break after we get through both of
`the first two cases. I want to give everyone, including staff, time for lunch.
`
`I do want to note one thing. There's an objection to some of the
`material in Petitioner's slides for 14 and 15 in the '223 IPR. Let's just wait.
`We'll deal with that right after lunch. I took a look at those slides, and I
`wanted to chat with the panel before that case -- before we hear your
`-- everyone's position on that.
`
`All right. Last thing, when you all refer to exhibits on the screen,
`please state, for the record -- so that we can hear it -- also, the exhibit and
`page number, and on demonstratives, the slide number is great. It's
`important for clarity in the transcript and for us to follow you.
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`IPR2022-00223 (Patent 7,303,473 B2)
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`All right. Let's see. I will -- I told -- I asked the court reporter -- at
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`the end of each of our individual hearings, I'll give her a minute to ask any
`questions for clarification, so we'll do that before we end each hearing. And
`other than that, I think we're pretty much ready to go.
`
`I will keep time. I will keep time here. I would suspect that the
`parties may want to do that as well, so you know. I'll give you a -- I'll try to
`give you a warning as get close to the end of your time, and again, you can
`allocate it any way you want. If you need to use some of your rebuttal time,
`that's fine.
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`And, by the way, this panel is fairly flexible. If we ask a lot of
`questions and, you know -- we'll make sure everyone has appropriate time to
`present their case today.
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`Petitioner, Mr. Herman, you can -- you will go first since you have the
`burden in each case, and you can reserve the time for rebuttal.
`
`And then, Patent Owner, you will follow and also be able to save
`some time -- reserve some time for rebuttal.
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`Unless there is any questions, Mr. Herman, just let me know how
`much time you want to leave for rebuttal.
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`MR. HERMAN: Your Honor, seven minutes, please.
`
`JUDGE DANIELS: Okay. All right. You can proceed when you're
`ready.
`
`MR. HERMAN: Thank you, Your Honor.
`
`We're here, this morning, to talk about the '089 patent. And if you
`turn to slide 2 of Petitioner's demonstratives, this slide provides an overview
`of the subject matter at issue. And claim 28 of the '089 patent, which is one
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`of the two independent claims addressed in the petition, is shown on the left,
`and figure 9 from the patent is shown on the right.
`
`And the claims of the '089 patent, generally, relate to the use of what
`the patent calls a software authorization agent to authorize the transfer of
`what is called gaming software between two gaming devices.
`
`A first gaming device -- and that's highlighted in yellow on the slide --
`sends a request message to the software authorization agent; that agent is
`shown in red. And the agent can respond to the first gaming device with an
`authorization message. Then, if authorized, the first gaming device sends
`the gaming software to the second gaming device, which is highlighted in
`blue.
`So the claim concludes by referencing certain types of gaming
`
`software. And per the claim, the transferred software can be, quote, for
`playing a game of chance or a bonus game of chance, and it can also be a
`device driver, a playing tracking service, or an operating system. And that's
`--
`(Simultaneous speaking.)
`
`JUDGE DANIELS: Let me ask a couple questions. Is the -- can the -
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`-- can the gaming -- can the provider, if it's authorized, send it -- if I'm
`looking at the figure 9 correctly, can it -- according to the claim, does the
`claim cover both sending the software -- and I understand there's a question
`as to what the -- actually the gaming software entails, but can the software
`be sent either to the distributor and then to the gaming machines, and it can
`be sent directly to a gaming machine? Is that correct?
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`MR. HERMAN: So, under the claims, Your Honor, the second
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`gaming device can be either a gaming machine or a server, so I believe
`you're correct that the software could go from the first gaming device to a
`second gaming device that is not the user's device; it's a server, or it could go
`to the user's device. The claim doesn't specify one way or the other.
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`JUDGE DANIELS: Okay. Thank you. And let me ask this -- and
`maybe you're going to address it at another point, and we can do that -- but I
`think Patent Owner has an issue -- raised an issue, at least, with respect to
`the person of ordinary skill in the art. I think they're -- I think they may have
`said that Mr. Crane, your -- is not a person of ordinary skill in the art.
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`Do you want to address that at all?
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`MR. HERMAN: Your Honor, I don't believe that that particular
`dispute has any bearing on the issues here, so the Patent Owner does not
`dispute that Mr. Crane is one of ordinary skill in the art under their
`definition of a person of ordinary skill in the art. They just believe that our
`definition is too narrow, but at the same time, they have not pointed to any
`obviousness issues that arise from those two different opinions or -- two
`different levels of ordinary skills in the art.
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`So, for purposes of your analysis, it does not matter which of those
`levels of ordinary skill in the art you adopt because the parties have not
`disputed that it has any bearing on the obviousness issues in this case.
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`But, putting that aside, their dispute with Mr. Crane is that he does not
`have any direct experience with casino software, and Petitioner submits that
`he does. He's written casino-like software, not for casinos, but for games in
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`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`general for years and years and years, leading up to the filing of the patents
`in suit here.
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`JUDGE DANIELS: Is there any -- and my last question, just to start
`us off, is a segway from what you just explained about Mr. Crane. I mean, I
`guess, in general, are the claims -- is gaming software limited to casino
`gaming? Is -- I mean, I guess this kind of goes to Mr. Crane's, you know,
`experience. He obviously is a very experience gaming -- he has a lot of
`experience with game software, but not necessarily casino games.
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`Am I understanding that these claims are limited to casino games or --
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`MR. HERMAN: They are not, Your Honor. The claims literally just
`refer to gaming software that can be for a game of chance that's transferred.
`It does not say in the claims that that game of chance has to be run in or as a
`casino.
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`JUDGE DANIELS: Okay. Thank you.
`
`MR. HERMAN: So, moving on to slide 3, slide 3 provides an
`overview of the grounds. So there's only two grounds at issue here, so most
`of the claims are obvious over the combination of Goldberg and Olden. And
`dependent claims 49 through 50 are obvious in further view of D'Souza.
`
`So slide 4 provides an overview of the Goldberg reference, and that's
`directed to a system and method that allows users to play casino games, like
`blackjack, on a casino website. And that website is highlighted in yellow in
`figure 3 from Goldberg, and Goldberg is exhibit 1004.
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`And the user's device that accesses that website is highlighted in blue
`in figure 3, and when a user attempts to access a game, the website contacts
`the database 28 -- that's highlighted in red -- to determine if the user is
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`authorized. And if authorized, the website transmits customized HTML files
`to the user that allows a browser running on the user's computer to display
`the game and provide the appropriate interface.
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`So slide 5 provides an overview of the Olden reference, and that's
`exhibit 1005. Like Goldberg, Olden is also directed to a system that
`provides users with access to certain functionality through a website. A web
`server that provides this functionality is highlighted in yellow in figure 1
`from Olden, which is shown on the slide, and is shown -- rather than just
`using an ordinary database, the system includes a robust, reliable, and
`configurable authorization system 12 that controls user access to the
`website's functionality. And that's highlighted in red on the page here.
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`So slide 6 provides an --
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`JUDGE DANIELS: Mr. Herman, let me interrupt you again. Sorry.
`
`I just want to go back to -- I just want to go back to Goldberg for a
`second. You said something that we're going to talk about, I think, later on
`in this hearing too. The -- what happens -- happening in Goldberg -- and I
`think you just said it -- is that Goldberg sends HTML commands, interface,
`whatever you'd like to call them, to the internet client. That's what they get.
`They don't actually get the game -- the entire game downloaded onto their
`Note or their computer. Is that correct?
`
`MR. HERMAN: That's right, Your Honor. So the logic of the
`blackjack game is running on the web site. The interface that is required to
`play the game and the components that are required to display the game to
`the user, that's transmitted from the web site to the user in the form of
`HTML, but the game itself, you're correct, is running on the web site.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`And, if Your Honor permits, I'll explain why that does not matter and
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`also explain why what's transferred constitutes gaming software within the
`scope of the claims.
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`JUDGE DANIELS: Yeah, sure. You can do it now, or in -- I think
`you have it later on in your demonstratives. It's up to you. I mean, I
`understand -- I mean, your position, if I'm generally correct, is that the
`HTML is a program; it's gaming software -- part of the gaming software that
`allows the interface, just doesn't have the logic of the game itself.
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`MR. HERMAN: That's right, Your Honor.
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`Now -- so, again, moving back to slide 6, that's an overview of the
`parties' dispute, and you'll see that there's several disputes relating to
`motivation to combine and others relating to whether the prior art teaches
`certain claim limitations, including the gaming software limitation that we're
`talking about. And I'm going to discuss each of these in turn.
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`I'm going to briefly start with the motivation to combine issue because
`I believe this can be addressed fairly quickly because it's straightforward.
`So, if you turn to slide 7, the first dispute relates to the -- whether it would've
`been obvious to combine the teachings of Goldberg and Olden, and
`Petitioner submits that it would've been.
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`So, slide 8, Patent Owner's argument, with respect to motivation to
`combine, essentially distills down to two things. First, that the database 28
`Goldberg uses for authorization is already good enough, and thus, does not
`require improvement, and two, that there are supposed incompatibilities
`between Goldberg and Olden, but both of those arguments are directly at
`odds with the prior art.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`This slide provides an overview of the benefits and improvements
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`provided by Olden's authorization system, and as you can see, there are
`many of them. The passages on the left of the slide, which are all from
`Olden -- that's exhibit 1005 -- explain that Olden provides out of the box
`support for web servers yet is highly configurable. It avoids single points of
`failure. It employs an easy-to-use interface allowing for feature control and
`customizability.
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`And the passages on the right explain that the system allows a variety
`of different access rules to be implemented, from basic yes/no rules to more
`complicated rules. And all the benefits that Olden is able to provide derive
`from the fact that it employs a separate authorization server, instead of a
`simple, single database that's accessed directly by a web server.
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`So slide --
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`JUDGE DANIELS: So at -- when it says out-of-the-box support for
`web-based applications on the left, is that where a person of ordinary skill in
`the art understand that, basically, Olden could be applied to many different,
`you know, different -- I guess different applications, including -- your
`position is including an authorization service for casino games?
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`MR. HERMAN: Yes, Your Honor. So that's one of -- one of the
`things that one of ordinary skill in the art would derive.
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`And the second thing they would derive from that is that it does not
`matter what sort of software is controlling the web server. It could be
`software A, or it could be software B, yet Olden's system is designed to
`interact with all of those without the need for special tailoring of its
`authorization servers.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`JUDGE DANIELS: And that makes sense, I guess, in some respects,
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`right? I mean, if you have a security application -- you want a security
`application to be able to fit relatively seamlessly into other folks', you know,
`applications, I guess. I'm assuming your -- the -- that this is all supported. I
`can't remember what Mr. Crane said, but did he address some of this issue?
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`MR. HERMAN: Yes, Your Honor. And actually, looking at slide 9,
`so slide 9 provides an overview of the reasons why Goldberg would be
`approved by Olden. And all of this is set forth in the petition and explains in
`detail in Mr. Crane's declaration, so I've cited the portions of the petition on
`this slide that -- those portions of the petition, of course, point to Mr. Crane's
`declaration.
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`So, first, you see that Olden's system is highly reliable and achieves
`this by including component redundancy in its authorization system, so
`there's no single point of failure. And you see, on the right, that the Petition
`explain that using Olden's authorization system with Goldberg would
`produce a similar benefit. It would employ a separate authentication system
`with multiple servers instead of a single database and would render
`Goldberg less susceptible to failure.
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`So, next, Olden allows for more customizable rules, and this would
`translate to Goldberg by allowing better control over game access instead of
`just a binary allow or deny.
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`And Olden also includes a robust logging system, and you see on the
`right that the Petition explain that this would better enable Goldberg to keep
`track of what its system is doing.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`And, finally, Olden's system eliminates compatibility issues between
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`servers. It allows dynamic rule modification, if needed, and provides
`increased security and other benefits. And the Petition also explained how
`all this would improve Goldberg.
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`So most of this was not meaningfully addressed by Patent Owner. It
`does not explain why it would not have been obvious to add redundancy,
`better logging, or enhanced security to Goldberg. It just issues what
`amounts to a bald denial.
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`Moreover, in making this argument, Patent Owner essentially
`contradicts itself. On the one hand, Patent Owner is arguing that there is no
`motivation to combine because Goldberg already has everything it needs,
`but on the other -- and as I'll discuss later -- Patent Owner is also arguing
`that Goldberg's database is so simplistic that it is unable to engage in
`verification, monitoring, or message transmission.
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`So these supposedly missing Goldberg features are, of course, all the
`things that Olden's authentication system does. So, far from rebutting the
`motivation to combine, Patent Owner has effectively conceded that
`Goldberg is in need of or, at least, ready to include the very types of
`improvements Olden brings to the table.
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`So, if you --
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`(Simultaneous speaking.)
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`JUDGE DANIELS: -- overarching point here with Golden and Olden,
`from your perspective, is that Goldberg's doesn't talk a whole lot about how
`the actual authorization goes on. Is that correct?
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
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`MR. HERMAN: That's right. Right. So it -- Goldberg does say that
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`it queries that database 28 to determine if a user is authorized, but -- and it
`talks about what it stores in that database 28 to some limited degree, but
`then, that's the extent to its disclosure. It does not really explain what its
`web servers are doing, what they're looking for when a user attempts to log
`in, and all of that is what's being added by Olden. But the --
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`JUDGE DANIELS: Is that really necessary for the claim? I mean, is
`Olden necessary for the claim or cover, at least, claim 28?
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`MR. HERMAN: So, Your Honor, in the Petition, we did point to
`Olden's disclosure as providing support for numerous of the claim
`limitations, including the verification step that's required by the claims and
`the passing back and forth of specific messages that the claims require.
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`So we did not point to Goldberg alone, but the combination of those
`two references is teaching the limitations regarding what occurs at the
`software authorization agent and the messages that are passed back and forth
`between that agent and the first gaming device.
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`JUDGE DANIELS: Okay. Thank you.
`
`MR. HERMAN: Now, I'm going to move on to slide 12, Your Honor.
`
`In the parties' second dispute, relates to whether the prior art transfers
`the claimed gaming software, and as I'll explain it, it does.
`
`And slide 13 includes claim 28, and I'll begin by noting that Patent
`Owner's arguments, here, have shifted. In its response, the focus was on
`what Goldberg actually transfers. There, Patent Owner argued that the
`HTML files that Goldberg transmits are data, not software, and it argued that
`it would not have been obvious for Goldberg to transfer more.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`And Petitioner replied by noting that neither the claims nor the
`
`specification, required transferring an entire game or even any particular part
`of the game. And Petitioner pointed to repeated statements in the
`specification explaining that components of the game, including components
`indistinguishable from those in Goldberg, are all that need to be transferred.
`
`So, in its surreply, Patent Owner shifted its arguments. So it no longer
`appears to dispute that HTML is software, and it recognizes that the '089
`Patent allows for the transfer of components as opposed to whole games, but
`now, it appears to be arguing that the claims impose a separate requirement.
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`Not only does gaming software need to be transferred, but what makes
`up the game needs to be actually run on the user's device, so --
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`JUDGE PARVIS: This is Judge Parvis. I have a question. It looks to
`me, from the Patent Owner response, Patent Owner says, for plain meaning,
`gaming software simply is software to run a game.
`
`Does Petitioner agree with that? This is page 9 of the Patent Owner's
`response.
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`MR. HERMAN: Are you talking about the response or the surreply?
`Your Honor, I believe that construction may be in the surreply.
`
`JUDGE PARVIS: Okay. I'm sorry. Yes, it's page 9 of Patent
`Owner's surreply that the plain meaning, gaming software is simply software
`to run a game.
`
`MR. HERMAN: So, yes, Your Honor. I disagree to the extent that
`implies that the game must actually be running or executed on the user's
`device because that's not required by the claims or the specification. So
`that's a construction that Patent Owner did not submit until its surreply, did
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`not make that argument in its response, did not propose a construction
`amendment in its response.
`
`So, I believe, per the claims and the specification, the game just needs
`to be played on the user's device. The game does not need to be executed or
`run there. Yes, the transferred gaming software needs to be executed, but
`the gaming software does not need to be the entirety of the game, and I'll
`explain why that's the case.
`
`So there's nothing about the claim that requires the game to be run on
`the second gaming device, and you see that on slide 13. The final clause
`does note that gaming software needs to be sent to the second gaming
`device, and it specifies that that gaming software can be, quote, for a game
`of chance played on a gaming machine, but the game simply has to be
`played on the gaming machine. The game does not require that it actually be
`run or executed there.
`
`Further, even if it did, the gaming machine that plays the game is a
`separate element from the claimed second gaming device that receives the
`gaming software, so the claim tells you nothing about what the second
`gaming device is or is not required to do.
`
`So, next, you see, from the highlighted elements, that the transferred
`gaming software can be things that have nothing to do with the running of
`the game, such as a driver, the player tracking service in an operating
`system. And this confirms that the claim does not specify or require that the
`game be run anywhere in particular. All that is required is that something
`that can be called gaming software is transferred from one device to another.
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`And if you turn to slide 14, the specification also confirms that it's not
`
`necessary to actually run a game on a user's device. This passage is from
`column 13 of the '089 Patent. And it explains that a game may be generated
`on a host computer and may be displayed on a remote terminal or a remote
`gaming device. Where is the game run here? On the host computer, not the
`user's device. All that is sent to the user's device is the software needed for
`display. So this is no different from Goldberg.
`
`And Patent Owner's response to this is that, in this embodiment, there
`is no role for the software authorization agent, and that's just wrong. The
`software authorization agent plays the same role here as it does in all the
`'089 patent's embodiments. It just determines whether the remote terminal is
`authorized to receive software. Just, here, the software is components
`needed for display, not the entire game.
`
`The slide 15 -- so similar teachings are also present in other places.
`As shown here, the '089 patent incorporates, by reference and application, by
`LeMay. And what does LeMay teach? That the game flow logic could be
`on the server, while, on the game, presentation logic is sent to gaming
`machines.
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`Again, this shows that the '089 Patent is indifferent to where the game
`is run. It does not need to be on a user device, and once again, this makes
`clear that the game presentation software can be the only thing sent to user
`devices.
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`Now, moving on to slide 16, the examples of gaming software in the
`specification provide yet another reason why Patent Owner is wrong. What
`can gaming software be? So, column 25 of the '089 Patent, which is shown
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`on this slide, explains that it could be banking modules, or security modules,
`or bet modules, or pay lines. So none of that has anything to do with the
`running of a game or the game logic, yet it's all classified in the patent as
`gaming software.
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`JUDGE DANIELS: Mr. Herman, let me ask if -- so is HTML -- I'm
`looking at the claim construction we adopted in our institution decision, the
`parallel district courts, and the plain and ordinary meaning, at least in the
`district court, is -- includes that data alone is not gaming software.
`
`Is -- what is HTML? Is it just data as, I guess, Patent Owner has
`alluded to?
`
`MR. HERMAN: No, Your Honor. It's a series of instructions that are
`relayed from one place to another, that are then executed by a user's web
`browser to produce a result. So the result can be a display or the provision
`of an interface to a user and the collection of specific types of user input, and
`then relaying that input back to a web server. So HTML is, in fact, a series
`of executable instructions. Those instructions are executed by the user's web
`browser.
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`So, if you were to draw a continuum between software and data,
`HTML is on the software side of the line, not the data side of the line.
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`JUDGE DANIELS: Thank you.
`
`MR. HERMAN: So, slide 17 --
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`JUDGE PARVIS: This is Judge Parvis. On slide 16, a portion of the
`specification that Patent Owner refers to, it says some examples of gaming
`software components. Are gaming software components the same as
`gaming software?
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`IPR2022-00199 (Patent 7,168,089 B2)
`IPR2022-00200 (Patent 8,795,064 B2)
`IPR2022-00223 (Patent 7,303,473 B2)
`
`MR. HERMAN: Yes, Your Honor. So the -- and even the claim -- so
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`I'll point you to claim 48 in the '089 Patent -- provides that gaming software
`can be a gaming software component, as opposed to an entire game, right?
`So the claims, themselves, specify that the term gaming software includes
`within its scope, not just complete games, but components.
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`Now, slide 17, as we just see in the '089 Patent, gaming software
`embraces a variety of different software components. So what does
`Goldberg's system transfer? And the slide includes an expert from Patent
`Owner's expert declaration, and there's no dispute that Goldberg transfers
`HTML pages that allow for the play of blackjack games on a user device.
`And those transferred pages include the game interface.
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`I'm going to skip to slide 19. And there's also no dispute that HTML
`pages that Goldberg transfers are necessary for gameplay. The user can't
`play a blackjack game without them. And you see Patent Owner's expert,
`Dr. Wills, admitting that, repeatedly, on this slide at his deposition; that's
`exhibit 1018. Dr. Wills agrees that Goldberg transfers HTML pages to
`facilitate the display of a game and collects input and that the user cannot
`play without those game pages.
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