UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZYNGA INC.,
`Petitioner,
`v.
`IGT,
`Patent Owner.
`
`____________________________
`
`U.S. Patent No. 7,168,089
`Case No. IPR2022-00199
`
`DECLARATION OF DAVID CRANE
`
`-1-
`
`Zynga Ex. 1003, p. 1
` Zynga v. IGT
` IPR2022-00199
`
`

`

`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ......................................................................................... 4
`EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS ............................................................. 4
`III. ASSIGNMENT AND MATERIALS CONSIDERED ............................. 10
`IV. UNDERSTANDING OF THE LAW ......................................................... 11
`V.
`LEVEL OF SKILL IN THE ART ............................................................. 15
`VI. THE ’089 PATENT’S EFFECTIVE FILING DATE .............................. 17
`VII. THE ’089 PATENT ..................................................................................... 17
`A. Overview ............................................................................................. 17
`B.
`Prosecution History of the ’089 Patent ............................................... 20
`C.
`The ’089 Patent’s Claims .................................................................... 22
`VIII. CLAIM CONSTRUCTION ........................................................................ 27
`A.
`“Gaming Software” ............................................................................. 28
`B.
`“Software authorization agent” ........................................................... 30
`C.
`“Gaming machine” .............................................................................. 32
`D. Other Terms ......................................................................................... 33
`IX. UNPATENTABILITY ANALYSIS ........................................................... 33
`A. Overview of the Prior Art .................................................................... 33
`1.
`Background Information ...........................................................34
`a.
`HTML .............................................................................34
`b.
`Browser Cache ................................................................35
`Goldberg ....................................................................................35
`Olden .........................................................................................41
`D’Souza .....................................................................................45
`
`2.
`3.
`4.
`
`-2-
`
`Zynga Ex. 1003, p. 2
` Zynga v. IGT
` IPR2022-00199
`
`

`

`B. Ground 1: Claims 28-29, 31-33, 47-48, 84-86, 90-92, and 99-100
`Are Obvious Over Goldberg and Olden .............................................. 47
`1.
`Claim-By-Claim Analysis .........................................................47
`a.
`Claim 28 ..........................................................................47
`b.
`Claim 29 ..........................................................................84
`c.
`Claim 31 ..........................................................................84
`d.
`Claim 32 ..........................................................................85
`e.
`Claim 33 ..........................................................................87
`f.
`Claim 47 ..........................................................................89
`g.
`Claim 48 ..........................................................................90
`h.
`Claim 84 ..........................................................................90
`i.
`Claim 85 ..........................................................................95
`j.
`Claim 86 ..........................................................................95
`k.
`Claim 89 ..........................................................................96
`l.
`Claim 90 ..........................................................................97
`m. Claim 91 ..........................................................................97
`n.
`Claim 92 ..........................................................................98
`o.
`Claim 99 ..........................................................................99
`p.
`Claim 100 ........................................................................99
`2. Motivation to Combine ...........................................................100
`C. Ground 2: Claims 49 and 50 Are Obvious Over Goldberg and
`Olden in Further View of D’Souza ................................................... 110
`1.
`Claim-by-Claim Analysis .......................................................111
`a.
`Claim 49 ........................................................................111
`b.
`Claim 50 ........................................................................114
`2. Motivation to Combine ...........................................................116
`Secondary Considerations of Non-Obviousness ............................... 118
`
`D.
`
`-3-
`
`Zynga Ex. 1003, p. 3
` Zynga v. IGT
` IPR2022-00199
`
`

`

`I, David Crane, declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Zynga Inc. (“Zynga”) as an independent expert
`
`consultant in this proceeding before the United States Patent and Trademark Office
`
`(“PTO”). I am not an employee of Zynga or any affiliate or subsidiary of Zynga.
`
`2.
`
`I have been asked to consider whether certain references teach or
`
`suggest the features recited in certain claims of U.S. Patent No. 7,168,089, which I
`
`refer to herein as the ’089 patent.
`
`3.
`
`4.
`
`My opinions and the bases for my opinions are set forth below.
`
`I am being compensated at my ordinary and customary rate of $500 per
`
`hour for my work, plus reimbursement for any reasonable expenses. My
`
`compensation is based solely on the amount of time that I devote to activity related
`
`to this case and is in no way contingent on the nature of my findings, the presentation
`
`of my findings in testimony, or the outcome of this or any other proceeding. I have
`
`no other financial interest in this proceeding.
`
`II.
`
`EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS
`5.
`My curriculum vitae (“CV”) is attached hereto as Attachment A and
`
`provides an accurate identification of my background and experience.
`
`6.
`
`I am a world-renowned video game designer and game industry
`
`pioneer. I received a Bachelor of Science in Electronic Engineering Technology in
`
`-4-
`
`Zynga Ex. 1003, p. 4
` Zynga v. IGT
` IPR2022-00199
`
`

`

`1975 from DeVry Institute of Technology, Phoenix, Arizona. This degree course of
`
`study included grounding in all areas of electronic circuitry and computer
`
`programming.
`
`7.
`
`I have an engineering, gaming, and programming background going
`
`back more than 40 years. I built my first computer—an unbeatable Tic-Tac-Toe
`
`computer—at the age of 14 and graduated high school able to program IBM
`
`mainframe computers in 3 languages.
`
`8.
`
`I began my professional engineering career at National Semiconductor
`
`in 1975 developing integrated circuits and working with early analog-to-digital and
`
`digital-to-analog converters. I brought microprocessor automation techniques to the
`
`IC development and testing processes.
`
`9.
`
`In 1977, I joined Nolan Bushnell’s Atari Inc., developing games for the
`
`Atari Video Computer System. In a period of one year, my games generated
`
`approximately $15 million in sales revenues for the company. While at Atari I
`
`developed a number of programming techniques incorporated in dozens, if not
`
`hundreds of video games. I developed for publication several game products while
`
`at Atari, including an electronic Slot Machine game program in 1978.
`
`10.
`
`In 1979, I co-founded Activision, Inc., the first third-party publisher of
`
`video game cartridges. Activision grew to over $300 million in value in three years
`
`-5-
`
`Zynga Ex. 1003, p. 5
` Zynga v. IGT
` IPR2022-00199
`
`

`

`and is now the largest video game publisher in the world with a market capitalization
`
`of over $13 billion.
`
`11. During my tenure at Activision, I designed and programmed many hit
`
`games with unit sales over 500,000. One such example is the game Pitfall!™ which
`
`sold over 3,500,000 copies and held the #1 spot on the Billboard Charts for 64
`
`consecutive weeks. Pitfall!™ generated over $50 million in wholesale revenues and
`
`spawned numerous other products including many sequels, toys, and a Saturday
`
`morning cartoon.
`
`12.
`
`Throughout my 40+ year career I have focused on video game
`
`technology as it evolved, creating and publishing more than 80 commercial game
`
`products generating over $400 million in revenues. I have designed and
`
`programmed games on virtually every video game system invented, from the early
`
`days of Atari and Magnavox through to present-day systems such as the iPhone and
`
`iPad.
`
`13.
`
`I left Activision in 1987 to work on the Hasbro ISIX device, which was
`
`a revolutionary game machine featuring interactive full-motion video.
`
`14.
`
`Following that design project, I joined Absolute Entertainment, Inc.
`
`designing more award-winning video games. One such game was “A Boy and His
`
`Blob”, a whimsical game which was awarded the 1990 Parent’s Choice award for
`
`“high quality software,” “intelligent design,” and “positive human values.”
`
`-6-
`
`Zynga Ex. 1003, p. 6
` Zynga v. IGT
` IPR2022-00199
`
`

`

`15.
`
`I have received many other awards for my work and career. Most
`
`notably, I received one of the Academy of Interactive Arts and Sciences lifetime
`
`honors: The Pioneer Award, celebrating my foundational and continuing work in the
`
`creation and development of the video game business. This singular honor,
`
`presented to me in 2010, was the inaugural award in a new category. I was the first
`
`to receive this award out of everyone who had ever worked in the video game
`
`industry throughout its entire history.
`
`16. Additional awards include Game Designer of the Year (twice), the
`
`prestigious 2003 Game Developer Choice Award for contribution to the field, and
`
`the Lifetime Achievement Award in Video Games from Classic Gaming Expo. In
`
`addition to these personal honors, many of the individual games that I have
`
`developed have also received numerous awards.
`
`17.
`
`I am a regular speaker and/or panelist at video game industry trade
`
`events such as the D.I.C.E. Summit (Design, Innovate, Communicate & Entertain),
`
`and GDC (Game Developers Conference). I have spoken at gatherings of game
`
`business executives (such as at the Pepperdine University Graziadio School of
`
`Business and Management), and I am featured annually at many consumer-focused
`
`game events. I have been profiled in national press publications including Forbes
`
`Magazine and Newsweek, and I have been interviewed by such diverse publications
`
`as television’s 20/20 News Magazine and the G4 Television Network.
`
`-7-
`
`Zynga Ex. 1003, p. 7
` Zynga v. IGT
` IPR2022-00199
`
`

`

`18. A partial list of the published game titles for which I am responsible for
`
`the game design and/or programming would include: Canyon Bomber, Outlaw, Slot
`
`Machine, Pitfall!, Pitfall II, Lost Caverns, Freeway, Laser Blast, Fishing Derby,
`
`Dragster, Grand Prix, A Boy and His Blob, The Rescue of Princess Blobette,
`
`Ghostbusters, Skateboardin’, Super Skateboardin’, The Activision Decathlon,
`
`T*O*Y*S, Transformers, the computer game, David Crane’s Amazing Tennis, Bart
`
`Simpson’s Escape from Camp Deadly, CHOMP, Arcade Bowling, Ten Pin
`
`Championship Bowling, Stellar Blast, Arcade Hoops, 3 Point Hoops, QB Pass
`
`Attack, Field Goal Frenzy, Lotto Letters, Super Swish, Stellar Blast, Mariner Hybrid
`
`Infomercial, Lacrosse, Beach Volleyball, Spiderman Climbing game, Miller Seat
`
`Salsa, Super Cocoa Man, Break the Rules Hoops, Downfield Strike, Mini
`
`Motocross, Robopup Run, Toyota 4runner Challenge, Tyco RC Speed Wrench,
`
`Vertical Jam, E.T.’s Adventure, Bubble Yum Home Run Derby, Bubble Yum
`
`Bullpen Blast, Gummi Savers Egg Hunt, Foul Shot Shootout, Life Savers Water
`
`Park Pinball, Field Goal Challenge, Crème Savers Bowling, Golf Solitaire,
`
`Skyworks Lanes Bowling, Carefree on Ice, Gummi Savers Rock-N-Skate, YIPES!
`
`Photo Safari, Ice Breakers Slap Shot Shootout, Southpark Pinball, Breath Savers
`
`Road Rally, Ford NASCAR racing challenge, MTv Cranks Dirt Bike Game, Ice
`
`Breakers Ultimate Bobsled, Breath Savers Billiards, Snackwells Chocolate Factory
`
`Pinball, Snowboard Big Air, Skate Rage Inline Skating, Candystand Miniature Golf,
`
`-8-
`
`Zynga Ex. 1003, p. 8
` Zynga v. IGT
` IPR2022-00199
`
`

`

`Hole In One Golf, Lifesavers Word Challenge, Candystand Open Tennis, Mountain
`
`Climbing, 3 Point Shootout, Grand Slam Pinball, Nabisco World Team Racing,
`
`Soccer Shootout, LifeSavers Treasure Hunt, Oreo Adventure, LifeSavers Roll-A-
`
`ball, Air Crisps Slam Dunk, Fruit Chews BMX, and Postopia Bowling.
`
`19. More than 50 of the games noted in my CV, (those listed as “Online
`
`Casual Games”), communicated online between a game computer and a central
`
`game server either before, during, or after game play. These games include those
`
`where a server communicated with, and synchronized game play between client
`
`computers, those in which the game was managed by the game server, and those in
`
`which the server was used to keep and track game statistics.
`
`20.
`
`I have also been involved in the design and development of numerous
`
`games that are meant to be downloaded to a client device from a server (and later
`
`updated if necessary) over the public Internet.
`
`21. As explained in my CV, I am also extensive familiar with a variety of
`
`different programming languages, including mainframe computer languages like
`
`FOTRAN, COBL, and BASIC, numerous microprocessor assembly languages,
`
`several microprocessor programming languages like C and JAVA, scripting
`
`languages like JavaScript and HTML, and engineering languages employed by
`
`modern mobile devices like SPICE and VHDL.
`
`-9-
`
`Zynga Ex. 1003, p. 9
` Zynga v. IGT
` IPR2022-00199
`
`

`

`III. ASSIGNMENT AND MATERIALS CONSIDERED
`22.
`I have been asked to provide analysis and explain the subject matter of
`
`the ’089 patent, including the state of the art when the ’089 patent application was
`
`filed. I have also been asked to consider, analyze, and explain certain prior art to
`
`the ’089 patent, including how that art relates to the challenged claims of the ’089
`
`patent and to provide my opinions regarding whether that art invalidates the claimed
`
`subject matter.
`
`23.
`
`The opinions expressed in this declaration are not exhaustive of
`
`opinions I may offer in the future regarding the unpatentability of the claims of
`
`the ’089 patent. Therefore, the fact that I do not address a particular point should
`
`not be understood to indicate an agreement on my part that any claim complies with
`
`the requirements of any applicable patent or other rule.
`
`24.
`
`I reserve the right to amend and supplement this declaration in light of
`
`additional evidence, arguments, or testimony presented during this IPR or related
`
`proceedings on the ’089 patent.
`
`25.
`
`In forming the opinions set forth in this declaration, I have considered
`
`and relied upon my education, knowledge of the relevant field, knowledge of
`
`scientific and engineering principles, and my experience. I have also reviewed and
`
`considered the ’089 patent (Exhibit 1001), its prosecution history (Exhibit 1002),
`
`and the following additional materials:
`
`-10-
`
`Zynga Ex. 1003, p. 10
` Zynga v. IGT
` IPR2022-00199
`
`

`

`Exhibit
`
`Description
`
`1004
`
`1005
`
`1006
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`U.S. Patent No. 5,823,879 (“Goldberg”)
`
`U.S. Patent No. 6,460,141 (“Olden”)
`
`IGT’s Opposition to Zynga’s Substantive Motion 3 from Zynga
`Inc. v. IGT, Patent Interference No. 105,747 (RES).
`
`U.S. Patent No. 6,944,817 (“Danneels”)
`
`U.S. Patent No. 6,144,991 (“England”)
`
`U.S. Patent No. 6,135,881 (“Abbott)
`
`U.S. Patent No. 6,745,224 (“D’Souza”)
`
`U.S. Patent No. 5,894,516 (“Brandenburg”)
`
`U.S. Patent No. 7,931,533 (“LeMay”)
`
`U.S. Patent No. 6,806,977 to Freeny et al.
`
`U.S. Patent No. 6,636,966 (“Lee”)
`
`U.S. Pub. 2001/0034668 (“Whitworth”)
`
`U.S. Patent 6,216,121 (“Klassen”)
`
`IV. UNDERSTANDING OF THE LAW
`26.
`I am not an attorney but have been instructed in and applied the law as
`
`described in this section.
`
`27.
`
`I understand that the first step in comparing an asserted claim to the
`
`prior art is for the claim to be properly construed. I address how a person of ordinary
`
`skill in the art (“POSITA”) would have understood the claims of the alleged
`
`invention in Section VIII below.
`
`-11-
`
`Zynga Ex. 1003, p. 11
` Zynga v. IGT
` IPR2022-00199
`
`

`

`28.
`
`I have been further instructed and understand that a patent claim is
`
`unpatentable and invalid as obvious if the subject matter of the claim as a whole
`
`would have been obvious to a POSITA of the claimed subject matter as of the time
`
`of the invention at issue. I understand that when assessing the obviousness of
`
`claimed subject matter, the following factors are evaluated: (1) the scope and content
`
`of the prior art; (2) the difference or differences between each claim of the patent
`
`and the prior art; and (3) the level of ordinary skill in the art at the time the patent
`
`was filed.
`
`29.
`
`I understand that claimed subject matter may be obvious in view of
`
`more than one item of prior art. I understand, however, that it is not enough to show
`
`simply that all the limitations of the claimed subject matter are spread throughout
`
`the prior art. Instead, for claimed subject matter to be obvious over multiple
`
`references, there must be some reason or motivation for a POSITA to combine the
`
`prior art references to arrive at the claimed subject matter.
`
`30.
`
`I have been informed that, in seeking to determine whether an invention
`
`that is a combination of known elements would have been obvious to a POSITA at
`
`the time of the invention, one must consider the references in their entirety to
`
`ascertain whether the disclosures in those references render the combination obvious
`
`to such a person.
`
`-12-
`
`Zynga Ex. 1003, p. 12
` Zynga v. IGT
` IPR2022-00199
`
`

`

`31.
`
`I have been informed and understand that, while not required, the prior
`
`art references themselves may provide a teaching, suggestion, motivation, or reason
`
`to combine, but other times the motivation linking two or more prior art references
`
`is common sense to a POSITA at the time of the invention.
`
`32.
`
`I understand that a particular combination may be proven obvious by
`
`showing that it was obvious to try the combination. I have been informed that, if a
`
`technique has been used to improve one device, and a POSITA would recognize that
`
`it would improve similar devices in the same way, using the technique is obvious
`
`unless its actual application is beyond his or her skill.
`
`33.
`
`I further understand that an obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references also may be supplied by the direction of the
`
`marketplace. For example, when there is a design need or market pressure to solve
`
`a problem and there are a finite number of identified, predictable solutions, a
`
`POSITA has good reason to pursue the known options within his or her technical
`
`grasp because the result is likely the product not of innovation but of ordinary skill
`
`and common sense.
`
`34.
`
`I have been informed that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than yield
`
`predictable results. Thus, where all of the elements of a claim are used in
`
`-13-
`
`Zynga Ex. 1003, p. 13
` Zynga v. IGT
` IPR2022-00199
`
`

`

`substantially the same manner, in devices in the same field of endeavor, the claim is
`
`likely obvious.
`
`35. Additionally, I understand that a patent is likely to be invalid for
`
`obviousness if a POSITA can implement a predictable variation or if there existed
`
`at the time of the invention a known problem for which there was an obvious solution
`
`encompassed by the patent’s claims. Therefore, when a work is available in one
`
`field of endeavor, design incentives and other market forces can prompt variations
`
`of it, either in the same field or a different one.
`
`36.
`
`I further understand that combining embodiments related to each other
`
`in a single prior art reference would not ordinarily require a leap of inventiveness.
`
`37.
`
`I also understand that a POSITA must have had a reasonable
`
`expectation of success when combining references for claimed subject matter to be
`
`obvious.
`
`38.
`
`I have been informed and I understand that factors referred to as
`
`“objective indicia of non-obviousness” or “secondary considerations” are also to be
`
`considered when assessing obviousness when such evidence is available. I
`
`understand that these factors can include: (1) commercial success; (2) long-felt but
`
`unresolved needs; (3) copying of the invention by others in the field; (4) initial
`
`expressions of disbelief by experts in the field; (5) failure of others to solve the
`
`problem the claimed subject matter solved; and (6) unexpected results.
`
`-14-
`
`Zynga Ex. 1003, p. 14
` Zynga v. IGT
` IPR2022-00199
`
`

`

`39.
`
`I also understand that evidence of objective indicia of non-obviousness
`
`must be commensurate in scope with the claimed subject matter. I further
`
`understand that there must be a relationship, sometimes referred to as a “nexus,”
`
`between any such secondary indicia and the claimed invention.
`
`40.
`
`Finally, I have been informed that one cannot use hindsight to
`
`determine that an invention was obvious.
`
`41.
`
`I provide my opinions in this declaration based on the guidelines set
`
`forth above.
`
`V.
`
`LEVEL OF SKILL IN THE ART
`42.
`I have been informed and understand that the level of ordinary skill in
`
`the relevant art at the time of the invention is relevant to inquiries such as the
`
`meaning of claim terms, the meaning of disclosures found in the prior art, and the
`
`reasons a POSITA may have for combining references.
`
`43.
`
`I have been informed and understand that factors that may be
`
`considered in determining the level of ordinary skill include: (1) the education of the
`
`inventor; (2) the type of problems encountered in the art; (3) prior art solutions to
`
`those problems; (4) rapidity with which innovations are made; (5) sophistication of
`
`the technology; and (6) education level of active workers in the relevant field. I have
`
`been further informed and understand that a person of ordinary skill in the art
`
`(“POSITA”) is also a person of ordinary creativity.
`
`-15-
`
`Zynga Ex. 1003, p. 15
` Zynga v. IGT
` IPR2022-00199
`
`

`

`44. A POSITA in the technology field of the ’089 patent would, in my
`
`opinion, have had a degree in computer engineering, computer science, or a similar
`
`discipline, along with 2 years of professional experience in the fields of networking
`
`and network-based systems or applications, such as client-server and web-based
`
`systems, in the specific context of gaming or an equivalent level of skill, knowledge,
`
`and experience. This POSITA would be aware of and generally knowledgeable
`
`about casino gaming systems, including the types of software running on casino
`
`gaming machines, the types of software casinos employ to allow customers to
`
`engage in remote gaming, and the types of authentication and network security
`
`systems employed by casinos at the time the ’089 patent was filed.
`
`45.
`
`In my opinion, a POSITA would have had the same basic level of skill
`
`and background knowledge regardless of whether the ’089 patent is entitled to a
`
`December 2000 or April 2002 filing date.
`
`46.
`
`In view of my educational background (e.g., a Bachelor of Science in
`
`electrical engineering obtained in 1975) and decades of computer programming
`
`experience—including experience with downloadable games, online gaming, and
`
`casino-themed games as discussed above in Section II—I was a person of more than
`
`the ordinary level of skill in the art as of both December 2000 and April 2002. In
`
`forming my opinion, I have drawn on my academic background and professional
`
`-16-
`
`Zynga Ex. 1003, p. 16
` Zynga v. IGT
` IPR2022-00199
`
`

`

`experiences. My opinions herein, however, were formed taking into account the
`
`perspective of an ordinarily skilled artisan.
`
`VI. THE ’089 PATENT’S EFFECTIVE FILING DATE
`47.
`I understand that the application leading to the ’089 patent was filed on
`
`April 3, 2002.
`
`48. Based on my review of the ’089 patent, I note that it also identifies itself
`
`as a continuation-in-part of an application filed December 7, 2000.
`
`49.
`
`For purposes of this declaration, I have been instructed to use December
`
`7, 2000 as the effective filing date of the ’089 patent. My opinions in this declaration
`
`were formed from the perspective of a POSITA as of December 7, 2000, including
`
`both the knowledge of a POSITA at that time as well as how a POSITA would have
`
`understood the prior art. Regardless, the opinions I express in this declaration would
`
`be the same regardless of whether the ’089 patent has a December 7, 2000 or a later
`
`April 3, 2002 effective filing date.
`
`VII. THE ’089 PATENT
`A.
`Overview
`50.
`The ’089 patent relates to “game playing services for gaming
`
`machines such as slot machines and video poker machines.” (Ex. 1001, 1:16-18.)
`
`51.
`
`The patent explains that “[a]s technology in the gaming industry
`
`progresses, more and more gaming services are being provided to gaming
`
`-17-
`
`Zynga Ex. 1003, p. 17
` Zynga v. IGT
` IPR2022-00199
`
`

`

`machines via communication networks that link groups of gaming machines to a
`
`remote computer that provides one or more gaming services.” (Id., 1:49-53.)
`
`52. As part of this, the ’089 patent states that there is a “desire within the
`
`gaming industry” for “electronically download[ing] gaming software” to “enable
`
`gaming machines to be quickly reconfigured.” One benefit of “electronically”
`
`downloading, according to the ’089 patent, is that it avoids the “time consuming
`
`process” of “manually load[ing]” software onto machines that require it. (Id., 4:1-
`
`11.)
`
`53. However, according to the ’089 patent, the “complexity and costs of
`
`the dedicated communication networks currently used in the gaming industry”
`
`were purportedly a “barrier” to “centralized network gaming services.” (Id., 3:50-
`
`54.)
`
`54. Moreover, despite the fact that it is more time consuming, the ’089
`
`patent states that in some circumstances a manual game software loading process is
`
`required because “gaming software is … very highly regulated and in most gaming
`
`jurisdictions only approved gaming software may be installed on a gaming
`
`machine.” (Id., 4:11-14.) Manual loading also “prevent[s] the source code from
`
`being obtained by individuals which might use the source code to try to find ways
`
`of cheating the gaming machine.” (Id., 4:14-18; see also id., 24:56-63.)
`
`-18-
`
`Zynga Ex. 1003, p. 18
` Zynga v. IGT
` IPR2022-00199
`
`

`

`55.
`
`The ’089 patent attempts to address these purported issues. It
`
`“provid[es] gaming machines that may securely communicate with devices over a
`
`public network such as the Internet.” (Id., 4:28-30.)
`
`56.
`
`“[G]aming software may be transferred between various game
`
`devices” over a “gaming software distribution network” “after receiving
`
`authorization from a gaming software authorization agent 50.” (Id., 24:28-32.)
`
`57.
`
`This “software authorization agent” functions to “approve[] all
`
`gaming software transactions between two gaming devices in the gaming software
`
`distribution network and stores a record of the gaming software transactions.” (Id.,
`
`24:38-42; see also id., 4:41-56.) Use of this “gaming software authorization
`
`agent … allow[s] gaming software to be electronically transferred between gaming
`
`devices … in a manner that may be easily monitored and regulated.” (Id., 25:1-5.)
`
`58.
`
`Figure 9, reproduced below for reference, provides an example.
`
`-19-
`
`Zynga Ex. 1003, p. 19
` Zynga v. IGT
` IPR2022-00199
`
`

`

`(Id., Fig. 9.)
`
`59.
`
`“A gaming software distributor, such as 53 and 60, … maintain[s] a
`
`plurality of gaming software titles, versions of gaming software titles and gaming
`
`software components that may be transferred to another gaming device … for an
`
`electronic download.” (Id., 26:27-31.) The distributor may be a “game server[] …
`
`maintained by a gaming entity such as a casino.” (Id., 26:31-34.)
`
`60. Again, “the software authorization agent 50 is used to authorize
`
`gaming software transfer ….” (Id., 28:37-39.)
`
`61.
`
` “[I]f a gaming device … can not be identified and authenticated by
`
`the software authorization agent 50, then the software authorization agent 50 will
`
`deny the request for the transfer of gaming software.” (Id., 28:50-54.)
`
`62.
`
`If transfer is authorized, then software can be transmitted and
`
`downloaded over a “network” like the “Internet 304.” (Id., 26:63-27:3.)
`
`Prosecution History of the ’089 Patent
`B.
`63. As noted above, I have reviewed the ’089 patent’s prosecution history.
`
`64.
`
`The originally filed claims were rejected by the Examiner as obvious
`
`over a combination of two references: U.S. Patent No. 6,805,634 to Wells (“Wells”)
`
`and U.S. Patent No. 5,643,086 to Alcorn (“Alcorn”). (Ex. 1002, pp. 606-614.)
`
`65.
`
`In response, the applicant amended all the independent claims,
`
`including independent claims 28 and 84 discussed in this declaration, to require
`
`-20-
`
`Zynga Ex. 1003, p. 20
` Zynga v. IGT
` IPR2022-00199
`
`

`

`sending of “an authorization message” from a “software authorization agent” to a
`
`“first gaming device” that “indicat[es] whether the first gaming device is authorized
`
`to transfer the gaming software to a second gaming device.” (Id., pp. 633-653.)
`
`66.
`
`In addition to amending the claims, the applicant argued that the
`
`“claims are related to communications between three devices, a software
`
`authorization agent, a first gaming device and a second gaming device.” (Id.,
`
`p. 654.)
`
`67.
`
`The applicant then argued that neither Wells nor Alcorn teach these
`
`required “three devices”: in “Wells and Alcorn, software transfer between a source
`
`device and a target device is described” and “[p]rior to the transfer the source can
`
`request identification information from the target.” (Id.) But these references,
`
`according to applicant, did not include a “third device separate from the target device
`
`and the source” that functions as an authorization agent to “approve or reject the
`
`gaming software transaction request” and send “an authorization message to the first
`
`gaming device” so as to allow the transfer of software to the “second gaming
`
`device.” (Id.)
`
`68.
`
`This amendment and applicant argument led to allowance of the claims
`
`without further rejection or explanation from the examiner. (See id., pp. 661-668.).
`
`-21-
`
`Zynga Ex. 1003, p. 21
` Zynga v. IGT
` IPR2022-00199
`
`

`

`C.
`69.
`
`The ’089 Patent’s Claims
`For reference, claims 28-29, 31-33, 47-50, 84-86, 90-92, and 99-100
`
`of the ’089 patent are reproduced below:
`
`28. In a software authorization agent, a method of
`regulating a transfer of gaming software between two
`gaming devices, the method comprising:
`
`receiving a gaming software download request
`message with gaming software
`transaction
`information from a first gaming device;
`
`validating the gaming software download request
`using
`the
`gaming
`software
`transaction
`information;
`
`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 an