Director_PTABDecision_Review@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
` Paper 17
`
`
` Date: August 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY AND
`DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK
`OFFICE
`____________
`
`ZYNGA INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`IPR2022-00199
`Patent 7,168,089 B2
`____________
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`
`
`DECISION
`Granting Sua Sponte Director Review and Affirming the Decision on
`Institution
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
` Paper 17
`
`
` Date: August 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY AND
`DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK
`OFFICE
`____________
`
`ZYNGA INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`IPR2022-00199
`Patent 7,168,089 B2
`____________
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`
`
`DECISION
`Granting Sua Sponte Director Review and Affirming the Decision on
`Institution
`
`
`
`
`
`
`
`
`
`
`IPR2022-00199
`Patent 7,168,089 B2
`
`
`The Office received a rehearing request and a request for Precedential
`Opinion Panel (POP) review challenging the Board’s June 14, 2022
`Institution Decision (Paper 11, hereinafter “Decision”). See Paper 13;
`Ex. 3002. In its requests, Patent Owner argues that the Board improperly
`waived interference estoppel under 37 C.F.R. § 41.127(a)(1), to the extent it
`applied, to determine that Petitioner is not barred from pursuing inter partes
`review of U.S. Patent 7,168,089 B2. Paper 13, 6–14; see Decision. The
`Patent Owner cites the following language from the Decision:
`Accordingly, to the extent Section 41.127(a)(1) applies,
`pursuant to 37 C.F.R. § 42.5(b), we waive the requirements of
`Section 41.127(a)(1) as applied to Zynga’s unpatentability
`challenges in this proceeding. See 37 C.F.R. 42.5(b) (“The
`Board may waive or suspend a requirement of parts 1, 41, and
`42 and may place conditions on the waiver or suspension.”).
`
`
`Decision at 10. The Patent Owner asks the Precedential Opinion Panel to
`resolve the following issue which the Patent Owner submits is of
`precedential importance:
`May the Board retroactively waive the scope and effect of a
`final judgment resulting from a prior interference proceeding?
`Ex. 3002.
`I have reviewed the Board’s Decision, the Papers, and the Exhibits of
`record in this proceeding. I determine that sua sponte Director review of the
`Board’s Decision is appropriate. See Interim process for Director review1
`§ 10 (setting forth issues that may warrant Director review), § 22 (providing
`for sua sponte Director review of institution decisions in AIA proceedings
`and explaining that “the parties to the proceeding will be given notice” if
`
`
`1 Available at https://www.uspto.gov/patents/patent-trial-and-appeal-
`board/interim-process-director-review.
`2
`
`
`
`
`
`IPR2022-00199
`Patent 7,168,089 B2
`
`Director review is initiated sua sponte). Concurrent with this Order, the
`POP has dismissed the request for POP review.
`Upon consideration of the requests and the record, I affirm the
`Board’s result that Petitioner should not be barred from pursuing inter partes
`review based on interference estoppel. Because I find that interference
`estoppel does not apply, as discussed below, I need not reach the issue of
`whether the Board properly waived interference estoppel.
`Title 37, Chapter I, Subchapter A, Part 42 of the Code of Federal
`Regulations governs trial practice, including preliminary proceedings, before
`the Board. 37 C.F.R. §§ 42.1(a), 42.2.2 Part 42 incorporates certain sections
`of Part 1. Id. § 42.1(a). Specifically, Part 42 states that “Sections 1.4, 1.7,
`1.14, 1.16, 1.22, 1.23, 1.25, 1.26, 1.32, 1.34, and 1.36 of this chapter also
`apply to proceedings before the Board, as do other sections of [P]art 1 of this
`chapter that are incorporated by reference into this part.” Id. Part 42,
`however, does not incorporate Part 41, or more specifically, the interference
`estoppel provisions of 37 C.F.R. § 41.127(a)(1). See id. As a result,
`§ 41.127 does not apply to trial and preliminary proceedings before the
`Board.
`Even if interference estoppel under 37 C.F.R. § 41.127(a)(1) applied
`to trial and preliminary proceedings before the Board, such estoppel would
`not apply here because the Board terminated the interference based on the
`threshold issue of written description. Ex. 2001, 2 (citing 37 C.F.R.
`§ 41.201 (“Threshold issue means an issue that if resolved in favor of the
`movant would deprive the opponent of standing in the interference.”)). In
`
`
`2 Section 42.1(a) refers to “proceedings,” and Section 42.2 defines
`“[p]roceeding” as “a trial or preliminary proceeding.”
`
`
`
`3
`
`
`
`IPR2022-00199
`Patent 7,168,089 B2
`
`doing so, the Board dismissed as moot Petitioner’s motions asserting
`unpatentability over prior art and did not authorize any motion or make any
`determination on unpatentability under 35 U.S.C. §§ 102–103. Ex. 2001, 2;
`see also Decision 9–10. As a result, interference estoppel would not apply
`because the Board’s termination based on a threshold issue prevents the
`judgment from disposing of all issues that were, or by motion could have
`properly been, raised and decided. 37 C.F.R. § 41.127(a)(1). Because I
`affirm on alternative grounds, I need not reach the issue presented by Patent
`Owner as that issue is now moot.
`Accordingly, based on the foregoing, it is:
`ORDERED that sua sponte Director review is granted;
`FURTHER ORDERED that Patent Owner’s Request for Rehearing is
`dismissed as moot; and
`FURTHER ORDERED that the matter is remanded to the original
`merits panel for further proceedings consistent with this opinion.
`
`
`
`
`4
`
`
`
`IPR2022-00199
`Patent 7,168,089 B2
`
`
`FOR PETITIONER:
`K. Patrick Herman
`T. Vann Pearce, Jr.
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`P52ptabdocket@orrick.com
`tvpptabdocket@orrick.com
`
`
`FOR PATENT OWNER:
`Jeffrey Lesovitz
`Leif Sigmond
`Jennifer Kurcz
`Daniel Goettle
`BAKERHOSTETLER
`jlesovitz@bakerlaw.com
`lsigmond@bakerlaw.com
`jkurcz@bakerlaw.com
`dgoettle@bakerlaw.com
`
`
`
`5
`
`
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