UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Zynga Inc.,
`Petitioner,
`v.
`IGT,
`Patent Owner.
`
`
`U.S. Patent No. 8,795,064
`
`
`Inter Partes Review Case No.: IPR2022-00200
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Zynga Inc.,
`Petitioner,
`v.
`IGT,
`Patent Owner.
`
`
`U.S. Patent No. 8,795,064
`
`
`Inter Partes Review Case No.: IPR2022-00200
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2022-00200
`
`Page
`Table of Authorities .................................................................................................. ii
`Exhibit List ............................................................................................................... iii
`I.
`Introduction ...................................................................................................... 1
`II.
`Argument ......................................................................................................... 3
`A.
`The Reply Misinterprets the Predicate Clauses of Elements (c) and
`(d). ......................................................................................................... 3
`The Petition’s New Characterizations of Aristocrat are Incorrect. ..... 11
`The Reply Presents a New Invalidity Theory that Compounds the
`Prejudice of the Petition’s Mix-and-Match Approach. ....................... 16
`The Reply Fails to Address the Response’s Argument that
`Aristocrat and Boushy Fail to Teach Tracking Information
`“Associated with [an] Identified Player.” ........................................... 20
`III. Conclusion ..................................................................................................... 24
`
`
`B.
`C.
`
`D.
`
`
`
`
`
`i
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`
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`IPR2022-00200
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Andrea Electronics Corp.,
`949 F.3d 697 (Fed. Cir. 2020) ....................................................................... 10, 22
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 18
`Hytera Commc’ns Co. v. Motorola Sols., Inc.,
`841 F. App’x. 210 (Fed. Cir. 2021) ...................................................................6, 7
`Intelligent Bio-Sys. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 17
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 4
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 10
`SAS Inst., Inc. v. Iancu,
`138 S.Ct. 1348 (2018) ............................................................................................ 8
`Statutes
`35 U.S.C. § 316 ........................................................................................... 11, 15, 24
`Agency Decisions
`Alcon Inc. v. Amo Development, LLC,
`IPR2021-00841, Paper 52 (PTAB November 15, 2022) ..................................... 17
`Medtronic, Inc. v. Teleflex Innovations S.A.R.L.,
`IPR2020-01341, Paper 93 (PTAB February 7, 2022) ......................................... 15
`Rules
`37 C.F.R. § 42.104 ............................................................................................ 17, 19
`
`
`
`
`ii
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`IPR2022-00200
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`EXHIBIT LIST
`
`Exhibit
`
`2001
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`2002
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`2003
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`2004
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`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Description
`First Amended Complaint for Patent Infringement, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 7.
`
`Joint Notice of Agreed Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 38.
`
`Joint Notice Regarding Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 55.
`
`Claim Construction Order, IGT et al. v. Zynga Inc., No. 6:21-cv-
`00331-ADA (W.D. Tex.), Dkt. 64.
`
`Britain Eakin, West Texas Judge Says He Can Move Faster Than
`PTAB, LAW360 (Nov. 27, 2019), https://www.law360.com/-
`articles/1224105/west-texas-judge-says-he-can-move-faster-than-
`ptab.
`
`Ryan Davis, Albright Says He’ll Very Rarely put Cases On Hold For
`PTAB, LAW360 (May 11, 2021), https://www.law360.com/–
`articles/1381597/albright-says-he-ll- very-rarely-put-cases-on-hold-
`for-ptab.
`
`Move Over Marshall, There’s a New Sheriff in Town―The Rise of
`Waco and the Western District of Texas, THE NATIONAL LAW
`REVIEW (Feb. 28, 2022), https://www.natlawreview.com/article/-
`move-over-marshall-there-s-new-sheriff-town-rise-waco-and-
`western-district-texas
`
`Q1 in Review: New Uncertainties Spark Further Change as Reform
`Momentum Builds, RPX (Apr. 30, 2019), https://www.rpxcorp.com-
`/intelligence/blog/q1-in-review-new-uncertainties-spark-further-
`change-as-reform-momentum-builds.
`
`Docket Report, IGT et al. v. Zynga Inc., No. 6:21-cv-00331- ADA
`(W.D. Tex.) (generated March 9, 2022).
`
`Order on Discovery, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-
`ADA (W.D. Tex.), Dkt. 61.
`
`
`
`iii
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`IPR2022-00200
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`Exhibit
`
`2011
`
`Description
`Defendant’s Preliminary Invalidity Contentions, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.) (served Sept. 1, 2021).
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
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`2017
`
`2018
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`2019
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`2020
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`2021
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`Defendant’s Opposed Motion to Transfer Venue to the Austin
`Division of the Western District of Texas, IGT et al. v. Zynga Inc.,
`No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 63.
`
`ORDER GRANTING INTRA-DISTRICT TRANSFER OF VENUE,
`Datascape, Ltd. v. Dell Techs. Inc., No. 6:19-cv-00129-ADA
`
`E-mail to counsel re: IGT et al v. ZYNGA INC. (6:21-cv-00331-
`ADA) - Preliminary Constructions (Jan. 4, 2022).
`
`Docket Sheet, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.) (Apr. 18, 2022).
`
`Unopposed Motion to Withdraw Defendants Motion for Judgment on
`the Pleadings, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.), Dkt. 68.
`
`Defendant’s Final Invalidity Contentions, IGT et al. v. Zynga Inc.,
`No. 6:21-cv- 00331-ADA (W.D. Tex.).
`
`Declaration of Stacy Friedman
`
`Curriculum Vita of Stacy Friedman
`
`DICTIONARY OF COMPUTER AND INTERNET TERMS, 9th ed., pp. 256-7
`Barron’s (2006).
`
`IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONICS
`TERMS, 6th ed., p. 500 (1996).
`
`2022
`
`Disclaimer in Patent Under 37 C.F.R. § 1.321(a)
`
`2023
`
`Scheduling Order, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.), Dkt. 112.
`
`
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`iv
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`IPR2022-00200
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`I.
`
`INTRODUCTION
`Patent Owner’s Response demonstrates that the Petition’s invalidity
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`challenges are fatally flawed because the Challenged Claims’ elements (c) and (d)
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`are not performed even if the Aristocrat reference were considered to disclose
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`“message trigger conditions” (red) and “tracked information” (blue) as the Petition
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`argues:
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`Pet. (paper 1) at 39-40 (annotated)
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`POR (paper 14) § VII.B. Instead, Aristocrat operates according to a state machine
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`that periodically invokes an Analysis mode 81 (orange) that determines whether to
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`1
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`
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`invoke one of an Assistant mode 82 (blue), an Award mode 83 (brown) or a
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`Promotional mode 85 (purple):
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`IPR2022-00200
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`Invocation of any one of those modes 82, 83, or 85 causes a single message to be
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`output. Thereafter, the state machine returns to an idle state, called an Amorphous
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`mode 80 (yellow). Sometimes, the Analysis mode 81 invokes no other mode, and
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`the state machine returns directly to the Amorphous mode 80.
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`Aristocrat’s operation fails to teach or suggest the subject matter of the
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`Challenged Claims. Elements (c) and (d) of independent claims 1 and 9 both recite
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`that, if certain predicates are met, then a “determined first message” and a different
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`“determined second message” are output. Petitioner’s invalidity challenge,
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`however, fails because, accepting for the purposes of analysis that Aristocrat meets
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`the predicates of elements (c) and (d) (red, blue) as the Petition argues, Aristocrat’s
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`state machine outputs a single message, not first and second messages as claimed.
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`2
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`IPR2022-00200
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`Petitioner, therefore, failed to carry its burden to prove the Challenged Claims are
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`obvious on the proposed Ground.
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`Petitioner’s Reply (paper 18) backtracks from the Petition’s proposal to
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`interpret the claims according to their plain and ordinary meaning. The Reply also
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`conjures fanciful, speculative views of the Aristocrat reference that are contradicted
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`by Aristocrat’s disclosure. The Reply further presents new invalidity theories that
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`do not appear in the Petition. And the Reply distorts another argument from the
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`POR, that Aristocrat does not determine messages based on tracked information of
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`a player, so fundamentally that its reply argument is non-responsive. The Board
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`should reject all of these arguments because they are unsupported by law and the
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`evidence. Petitioner failed to carry its burden to prove invalidity on this inter partes
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`review.
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`II. ARGUMENT
`A. The Reply Misinterprets the Predicate Clauses of Elements (c)
`and (d).
`Independent claims 1 and 9, elements (c) and (d), recite that messages are
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`output when certain predicate conditions are met:
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`(c) if [1] a first set of information associated with the identified player is
`tracked and [2] a message trigger condition occurs in association with the
`identified player: … (ii) output the determined first message to the
`identified player, and
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`3
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`IPR2022-00200
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`(d) if [1] a second, different set of information associated with the
`identified player is tracked and [2] the message trigger condition occurs in
`association with the identified player: … (ii) output the determined
`second message to the identified player.
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`Ex. 1001 (bracketed numbers and emphases added). These elements are drafted
`
`using a familiar if-then convention that is well-recognized by people of ordinary skill
`
`in the art (“POSITAs”). See Ex. 2018 ¶¶ 70-71, Ex. 2020, Ex. 2021; POR § V.A.
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`The Petition acknowledges that the same message trigger condition is recited
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`in elements (c) and (d). See Pet. at 36-38 (characterizing “elements 1(c) and 1(d)
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`[as] virtually identical except for the requirement of a first and a second set of tracked
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`information and a first and a second message”). But the Petition fails to show that
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`an occurrence of this message trigger condition leads to output of first and second
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`messages when first and second sets of information also are tracked. The Petition’s
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`invalidity theory instead assumes that prior art can invalidate the claims if it “outputs
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`one of a first or second message to the player, depending on the information being
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`tracked.” Pet. (paper 1) at 1 (emphasis added).
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`Confronted with its blunder, Petitioner accuses Patent Owner of “focus[ing]
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`exclusively but erroneously on the claim language.” Reply at 3. But, of course, all
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`invalidity analyses evaluate claims. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
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`419 (2007) (“What matters is the objective reach of the claim.”). And, here, because
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`4
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`IPR2022-00200
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`both parties agree that the claims are to be given their plain and ordinary meaning
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`(Pet. § VI, POR § V), this plain meaning governs.
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`The Board should reject the Reply’s various arguments for ignoring the plain
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`meaning of this claim language, as explained below.
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`First, the Reply’s argument that claims 1 and 9 “do not reference or otherwise
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`require that output of the two messages be triggered by the same in-game event or
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`occurrence” (Reply at 3-5 (emphasis original)) is dead wrong. Claims 1 and 9 refer
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`directly to occurrences of this message trigger condition:
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`(c) if … [2] a message trigger condition occurs in association with the
`identified player: …
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`(d) if … [2] the message trigger condition occurs in association with the
`identified player: …
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`Ex. 1001 (bracketed numbers and emphases added). Because these elements use
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`identical language to refer to identical occurrences of the same message trigger
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`condition, elements (c)(ii) and (d)(ii) are performed in response to the same
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`occurrence of the same message trigger condition (assuming the predicates (c)[1]
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`and (d)[1] also are met).
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`Second, the Reply’s argument (p. 5-6) that Patent Owner’s “interpretation
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`effectively reads the word ‘if’ out of limitations (c) and (d)” has it backwards. Patent
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`Owner’s Response explains in detail how a POSITA, a computer scientist with two
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`5
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`IPR2022-00200
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`years’ professional experience, would interpret the “if” clauses of elements (c) and
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`(d). See POR § V.A. Specifically, a POSITA would understand that the “if” clauses
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`define predicates that lead to performance of elements (c)(ii) and (d)(ii) when they
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`are met. Id. (citing Ex. 2018 ¶¶ 70-71, Ex. 2020, Ex. 2021); see also Ex. 1010 at
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`45:9-13, 59:7-60:12, 64:2-23. Patent Owner’s construction applies simple,
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`straightforward claim language in its plain and ordinary way.
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`As an aside, the Reply’s argument “Patent Owner’s expert deliberately
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`omit[ed] the word ‘if’ when reading conditional claim elements (c) and (d)” (p. 5)
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`distorts the record. Mr. Friedman testified consistently that, under the claim
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`language, if the predicate conditions recited by elements (c) and (d) both are met,
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`elements (c)(i)-(ii) and (d)(i)-(ii) both are performed. See Ex. 1010 at 45:9-13, 59:7-
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`60:12, 64:2-23, 66:13-25. In Mr. Friedman’s words, “there’s a causation
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`relationship.” Id. at 45:17-18; see also id. at 97:15-25. Mr. Friedman applied the
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`plain and ordinary meaning of these “if” clauses. He omitted nothing.
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`Third, the Reply’s reliance on Hytera (pp. 5, 7) fails because Hytera supports
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`Patent Owner’s position, not Petitioner’s. There, the Federal Circuit held that a
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`claim element recited in an if/otherwise format “is not met unless the [prior art]
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`system is configured to perform each claimed responsive action in response to each
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`corresponding claimed prerequisite condition.” Hytera Commc’ns Co. v. Motorola
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`6
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`IPR2022-00200
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`Sols., Inc., 841 F. App’x. 210, 216 (Fed. Cir. 2021).1 Hytera never suggests that a
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`mere capability to perform a responsive action, as the Reply argues (p. 5), is
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`sufficient to meet claim elements drafted in conditional form. Instead, a prior art
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`system must be “configured to perform [the] claimed responsive action in response
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`to [its] corresponding claimed prerequisite condition.” Hytera, 841 F. App’x. at 216.
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`As applied here, when the same prerequisite condition leads to two responsive
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`actions, both responsive actions are performed in response thereto.
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`On this issue, the Board need not entertain the Reply’s hypotheticals (pp. 6-
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`7) over whether the claims apply to systems that do not track first or second
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`information. In this IPR, Petitioner asserted that the Aristocrat system tracks them
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`both (blue):
`
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`1 The Hytera claim recited that “if the timeslot is the current timeslot,” a selecting
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`step would be performed one way, and “otherwise,” the selecting step would be
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`performed another way. Id. at 215.
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`7
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`IPR2022-00200
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`Petition at 39-40 (annotated)
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`Here, the issue before the Board is whether Aristocrat teaches the claimed subject
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`matter accepting, for purposes of analysis, that the Petition properly identifies
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`“tracked information,” as recited in elements (c)[1] and (d)[1]. See SAS Inst., Inc. v.
`
`Iancu, 138 S.Ct. 1348, 1358 (2018) (“the petition [is] the centerpiece of the
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`proceeding both before and after institution”). As explained (POR § VII.B),
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`Aristocrat does not render the Challenged Claims obvious because Aristocrat does
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`not disclose outputting messages as recited in elements (c)(ii) and (d)(ii) “if … [2] a
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`message trigger condition occurs.”
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`8
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`IPR2022-00200
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`Fourth, the Reply’s argument (p. 7) that “Patent Owner’s narrow
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`interpretation also improperly grants a timing limitation onto the claims” is incorrect.
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`Patent Owner’s interpretation merely follows the plain and ordinary meaning of
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`straightforward claim language. See POR § V.A. Moreover, the construction aligns
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`well with the specification’s explanation that satisfaction of a message trigger
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`condition causes messages to be output. Ex. 1001, col. 4:23-27 (“a message may be
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`output to a player when a trigger condition occurs, thereby ensuring that the message
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`is output at an appropriate time”); see also id. cols. 10:35-37, 21:11-12, 50:11-12.
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`Fifth, the Reply’s argument (p. 8) that Patent Owner’s interpretation is
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`inconsistent with various embodiments disclosed in the ’064 Patent’s specification
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`is wrong. Elements (c)[2] and (d)[2] refer to the same occurrence of a message
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`trigger condition that leads to output of first and second messages as recited in
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`elements (c)(ii) and (d)(ii), when predicates (c)[1] and (d)[1] also are met. The
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`specification discloses an embodiment where this operation occurs:
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`’064 Patent (Ex. 1001), FIGS. 11A, 14B (annotated)
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`9
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`IPR2022-00200
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`See also Ex. 1001, cols. 4:23-27 (“a message may be output to a player when a
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`trigger condition occurs, thereby ensuring that the message is output at an
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`appropriate time”).
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`The Reply (p. 8-11) presumes that the Challenged Claims must be interpreted
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`to cover all embodiments disclosed in the specification. But this is not the law.
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`Apple Inc. v. Andrea Electronics Corp., 949 F.3d 697, 708 (Fed. Cir. 2020) (when a
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`patent describes multiple embodiments, every claim need not cover every
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`embodiment). Instead, one simply reads the claims in light of the specification.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). Here, the
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`claim language is clear, and it aligns well with disclosure from the ’064 Patent’s
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`specification.
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`Sixth, the Reply’s reference (p. 16-17) to obsolete infringement contentions
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`is a red herring. Petitioner knows full well that these preliminary infringement
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`contentions were replaced by updated contentions in the related district court action.
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`As the Reply notes (p. ii), Ex. 2011 is from June 2021. It was prepared before the
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`district court issued its claim construction and before meaningful discovery had
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`occurred. Ex. 2011 has been replaced by amended final infringement contentions
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`and by Mr. Friedman’s expert report on infringement, both of which were served
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`upon Petitioner before it filed its Reply in this inter partes review. See Ex. 1006,
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`p. 3 (setting final infringement contentions due on March 2, 2022), Ex. 2023
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`10
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`IPR2022-00200
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`(opening expert reports due November 10, 2022). And, of course, Petitioner
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`identifies no contradiction between these current infringement contentions and the
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`plain meaning construction that Petitioner now disavows.
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`In the end, the Petition proposes to interpret the Challenged Claims according
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`to their plain meaning. Pet. § VI. Patent Owner has shown that a POSITA would
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`recognize, on a plain meaning basis, that the “if” clauses of elements (c) and (d) lead
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`to output of both messages recited in elements (c)(ii) and (d)(ii) when they are
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`satisfied. POR § V.A. Patent Owner further has shown that Aristocrat does not
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`teach or suggest this operation. Id. § VII.B. Therefore, Petitioner failed to carry its
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`burden to prove the Challenged Claims are unpatentable. 35 U.S.C. § 316(e).
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`B.
`The Petition’s New Characterizations of Aristocrat are Incorrect.
`The Reply mischaracterizes the prior art’s disclosure when it argues that
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`Aristocrat discloses outputting multiple messages when a message trigger condition
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`occurs. Consider, first, Petitioner’s mockup of the Aristocrat state machine:
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`11
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`IPR2022-00200
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`Reply at 15 (Petitioner’s annotations)
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`The Reply hypothesizes that “there is no reason why Aristocrat’s system cannot
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`cycle through multiple modes following the end of a game.” Reply at 14.
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`Aristocrat’s disclosure, however, contradicts Petitioner’s conjecture.
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`Aristocrat discloses that the Amorphous mode 80 is a “standard state of the
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`machine from which it can transmute into another mode.” Ex. 1004 at 23. The state
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`machine transitions from the Amorphous mode 80 to the Analysis mode 81 “[o]n a
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`regular periodic basis.” Id. at 24. Once in the Analysis mode, the state machine
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`“determine[s] if any actions are required based on the present status.” Id. If so, it
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`transitions to an appropriate state, such as the Assistant mode 82, the Award mode
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`83, or the Promotional mode 85. Id. at 24-25. Aristocrat discloses that, in any of
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`these modes, the state machine outputs a single message and it returns to the
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`Amorphous mode 80:
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`12
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`IPR2022-00200
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`Assistant
`Mode 82:
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`Once the advice has been offered, the state machine will
`return to Amorphous mode 80.
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`Id. at 24.
`Once the award is completed, the state machine will again
`return to the Amorphous mode 80.
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`Award
`Mode 83:
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`Promotional
`Mode 85:
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`Id. at 25.
`Once a single promotional message has been given, the state
`machine will undergo a transition to Amorphous mode 80.
`Id.
`Aristocrat provides no hint or suggestion that the state machine “cycle[s] through
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`multiple modes,” as shown in Petitioner’s mockup.
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`To the contrary, a POSITA would recognize from Aristocrat’s disclosure that
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`there is no multi-cycle operation. Aristocrat discloses that the state machine enters
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`the Analysis mode 81 “[o]n a regular periodic basis.” Id. at 24. This disclosure
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`teaches what it says: The state machine performs one cycle of operation once a first
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`period elapses and, when it returns to the Amorphous mode 80, it waits until another
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`period elapses before commencing another cycle of operation. In some periods, the
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`state machine returns from the Analysis mode 81 directly to the Amorphous mode
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`80 without transitioning to these other states. Id. (“if none of the above, the state
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`machine should undergo a transition back to Amorphous mode 80.”). The Reply’s
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`suggestion that Aristocrat discloses “cycl[ing] through multiple modes following the
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`end of a game” (p. 14) should be rejected because Aristocrat’s disclosure contradicts
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`it directly.
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`13
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`IPR2022-00200
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`Consider also the Reply’s suggestion (p. 12-14) that, in Aristocrat, multiple
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`messages are queued for delivery at the end of a game. The Reply offers two
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`scenarios on which this might occur:
`
` First, “an end-of-game message of the type (1) in the table above may
`be queued for display with a message of type (3) after the end of the
`same game.”
` Second, “messages of (1) and (4) could similarly be displayed back-to-
`back after the end of a game” if a player did not bet on all lines and a
`game ended a session of free play.
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`Id. The Reply’s multi-message theory should be rejected as reflecting rank
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`hindsight. It foists upon Aristocrat teachings that appear nowhere in its disclosure.
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`Throughout this argument, the Reply speculates that Aristocrat “could” or
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`“can” perform different operations:
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`By way of example, an end-of-game message of the type (1) in the table
`above may be queued for display with a message of type (3) after the end
`of the same game:
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`This could occur, for instance, if at the end of a game (the single
`occurrence of a “message trigger condition”) it is determined that the
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`player has lost, and that both “[a] combination is spun up . . . that would
`have resulted in a win if the player had been betting on all of the lines” and
`“the gaming console recognises that the current player has not had a win
`for an unusually large number of games.” As another example, messages
`of (1) and (4) could similarly be displayed back-to-back after the end of a
`game. This could occur if the player did not bet on all lines and the just
`ended game represented the end of free play. These types of multiple-
`message displays are possible because in Aristocrat, “multiple” messages
`can be triggered by the same event or occurrence and Aristocrat employs
`an “animated character” that can readily transition from one state to
`another to “suppl[y] information through visual and audio mediums.”
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`Reply at 13-14 (citations omitted, emphases added). Speculation over what could
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`have been done reflects impermissible hindsight, not prior art disclosure. See
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`Medtronic, Inc. v. Teleflex Innovations S.A.R.L., IPR2020-01341, Paper 93, at 46
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`(PTAB February 7, 2022) (rejecting such speculation). The Reply cites no evidence
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`showing that Aristocrat actually teaches these possible “multiple-message displays,”
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`as Petitioner supposes.
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`Petitioner bears the burden to prove invalidity. 35 U.S.C. § 316(e). When a
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`Reply projects guesswork on operations that Aristocrat “could” perform, Petitioner
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`does not prove invalidity. Instead, it demonstrates that the Petition failed to carry its
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`burden. Medtronic.
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`C. The Reply Presents a New Invalidity Theory that Compounds the
`Prejudice of the Petition’s Mix-and-Match Approach.
`As explained in Patent Owner’s Response (§ VII.A), the Petition’s
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`indiscriminate application of Aristocrat messages to the Challenged Claims creates
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`prejudice to Patent Owner by failing to explain how the different messages relate to
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`the Challenged Claims’ “message trigger conditions” and “tracked information
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`associated with a player.” Petitioner’s Reply increases this prejudice by asserting
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`new combinations of disclosure from Aristocrat that were not presented in the
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`Petition. See Reply at 12 (citing messages “triggered from the same bet”).
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`Under the Reply new theory, Petitioner asserts that Aristocrat discloses
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`multiple “functions or features” that are triggered from a “same bet:”
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`In particular, Aristocrat explains that its system is able to output multiple
`messages in response to the occurrence of a single event satisfying a trigger
`condition. For instance, “[i]n cases where more than one different
`function or feature is triggered from the same bet, the functions or
`features will commence one at a time such that as one completes the next
`one will commence. All of the triggered functions or features will
`complete before the player is given the opportunity to bet on another
`game.” (Ex. 1004, 6:9-13; see also id., 26:34-36 (similarly explaining that
`“more than one of the different Mr. Cashman features” can be “triggered
`from the same bet”).).
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`Reply at 12 (emphasis added). The Petition, of course, never alleged that a “same
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`bet” corresponds to the Challenged Claims’ message trigger condition, or that these
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`IPR2022-00200
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`“functions or features” correspond to the Claims’ output messages. Instead, it
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`argued that Aristocrat disclosed two types of message trigger conditions (red),
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`namely, the end of a game, and a player’s rate of play:
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`Petition at 39-40 (emphasis added)
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`It is improper for Petitioner to switch theories now. Intelligent Bio-Sys. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016); Alcon Inc. v. Amo
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`Development, LLC, IPR2021-00841, Paper 52 at 58 (PTAB November 15, 2022).
`
`When a Petitioner relies on previously unidentified portions of a prior art
`
`reference to make a meaningfully distinct invalidity contention, the Board should
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`reject those new contentions. 37 C.F.R. § 42.104(b)(5) (a Petition must identify “the
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`IPR2022-00200
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`relevance of the evidence to the challenge raised, including identifying specific
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`portions of the evidence that support the challenge”); see also Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (the Board properly
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`rejected a Reply’s presentation of new theories from applied prior art.). Here, it is
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`clear that these Aristocrat “functions or features” to which the Reply now cites
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`(Reply at 12 (citing Ex. 1004 at 26:34-36)) are different from the output messages
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`discussed in the Petition.
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`Aristocrat discloses that the “functions or features” at issue in the Reply’s new
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`invalidity theory alter game play by, for example:
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`1. The Mr. Cashman character randomly spinning one or more reels and
`paying any win that arises from the new reel combination.
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`2. “The Money or the Box” feature in which a player chooses between a
`bag of coins or a wad of dollar bills, each of which leads to a prize.
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`3. The Mr. Cashman character randomly awarding a game-specific
`feature, such as scatter symbols that lead to a series of free games.
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`4. The Mr. Cashman character entering the game screen and giving a
`variable random bonus prize.
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`5. The Mr. Cashman character entering the game screen, commencing all
`of the reels spinning, climbing into the foreground of one of the
`spinning reels, and generating a wild symbol.
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`See Ex. 1004 at 26:34-28:2. Petitioner’s Reply does not assert that these operations
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`are related in any way to the “message trigger conditions” identified by the Petition,
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`IPR2022-00200
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`that they are based on any of the Petition’s so-called “tracked information.” None
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`of these operations are identified as output “messages” by the Petition. Thus, the
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`Reply draws a new combination of disclosure from Aristocrat that was not presented
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`in the Petition to make a new case of invalidity. This approach violates 37 C.F.R.
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`§ 42.104(b)(5), which requires “identifying specific portions of the evidence that
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`support the challenge.”
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`Even if it were proper to switch theories—it is not—Petitioner still fails to
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`identify how Aristocrat teaches all subject matter of the Challenged Claims under
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`these new theories. Aristocrat does not disclose, for example, that when “more than
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`one different function or feature is triggered from the same bet” (Ex. 1004 at 6),
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`these functions or features are “determine[d], based at least in part on the first set of
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`tracked information” or “second set of tracked information,” as the claims require.
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`This new invalidity theory is wholly underdeveloped, and it should be rejected.
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`Patent Owner’s Response predicted correctly that Petition would “present[] a
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`new combination of messages not presented already in analysis of element (c) and
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`(d) of claims 1 and 9.” POR at 17. Petitioner has done so by referring, in its Reply
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`for the first time, to “more than one different function or feature [that] is triggered
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`from the same bet” (Reply at 12) that appear nowhere in the Petition. The Board
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`should reject this new combination of elements because it was not presented in the
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`Petition from the outset of this IPR. 37 C.F.R. § 42.104(b)(5).
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`IPR2022-00200
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`D. The Reply Fails to Address the Response’s Argument that
`Aristocrat and Boushy Fail to Teach Tracking Information
`“Associated with [an] Identified Player.”
`The Reply (§ II) misunderstands the POR’s argument that Aristocrat and
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`Boushy fail to teach tracking information associated with an identified player or
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`determining output messages based on the tracked information. The POR never
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`argues that “information ‘associated with the identified player’ can only be non-
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`gameplay-related player information like the player’s identity or birthday.” Reply
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`at 17-18. Instead, the POR explains a POSITA would recognize that the Aristocrat
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`messages to which the Petition cites “are output generically based solely on a state
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`of a machine being played, and not based on information that has been tracked in
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`association with an ‘identified player.’” POR at 29. The Reply fails to address this
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`issue.
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`As Mr. Friedman explains (Ex. 2018 ¶ 123-128), a POSITA would recognize
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`that the messages Petitioner identifies in its invalidity theories are not determined
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`based on first and second sets of tracked information in association with a player
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`but, instead, based on state of the console on which a game is played:
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`Petition at 39-40 (annotated)
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`For example, the message that the player would have won if she had bet on more
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`lines is determined based on the game’s outcome, not any information tracked with
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`respect to the player. Ex. 2018 ¶ 123-124. Other messages are generated based on
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`machine state, rather than tracked information of an identified player. Id.2 Aristocrat
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`supports this understanding. See Ex. 1004 at 16:15-20 (describing triggers based on
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`“game state” and “machine state”); 24:4-7 (the Analysis mode 81 “conduct[s] an
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`analysis of the console status to determine if any actions are required” (emphasis
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`2 Mr. Friedman’s declaration is unrebutted.
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