`571-272-7822
`
`Paper 27
`Date: March 14, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZYNGA INC.,
`Petitioner,
`v.
`IGT,
`Patent Owner.
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, SCOTT A. DANIELS, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`DANIELS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`
`1.
`
`A. GENERAL INSTRUCTIONS
`The Board requests analysis and input from the parties as to the
`interpretation of claim limitations [1(c)] and [1(d)] in the ’064 patent
`A dispute between the parties is whether claim limitations [1(c)] and
`[1(d)] in the ’064 patent are conditional because both limitations start with
`the word “if.” A question raised by the Board during the hearing was
`whether or not, due to this language, any, either, or both limitations [1(c)]
`and [1(d)] need to be performed for the claimed method to occur. In other
`words, considering the language recited in limitations [1(c)] and [1(d)], it
`appears that these steps only happen, for example, “if a first set of
`information associated with the identified player is tracked and a message
`trigger condition occurs.” Ex. 1001, 42–44. Thus, the question arises if the
`conditions in [1(c)] and [1(d)] never occur, must these steps in claim 1 be
`performed?
`We acknowledge that a method claim may contain conditional
`language. However, limitations [1(c)] and [1(d)] simply begin with, “if,”
`apparently with no alternative condition or functional limitation should “a
`message trigger condition [not] occur.” Ex. 1001, 75:42–57; see also C.f.
`Hytera Commc’ns Co. v. Motorola Sols., Inc., 841 F. App’x 210, 218 (Fed.
`Cir. 2021) (The Federal Circuit explaining that where an alternative
`condition was recited, “the Board [] correctly determined claim 7 to be one
`method in which the response to either alternative condition in the
`“selecting” step must be performed.”). Different from Hytera, in Ex Parte
`Schulhauser, Appeal No. 2013-007847 (PTAB Apr. 28, 2016), the Board
`determined that not all the “if” type conditional limitations need be met by
`the prior art to render the claims obvious under 35 U.S.C. § 103(a). See
`
`2
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`Schulhauser at 3, (The Board explaining that “the ‘triggering’ and
`‘determining’ steps of this claim are mutually exclusive. If the electrocardiac
`signal data is not within the threshold electrocardiac criteria, then an alarm is
`triggered and the remaining method steps need not be performed.”).
`The claim interpretation questions for which the Board seeks input
`and analysis from the parties are as follows:
`(1) Are limitations [1(c)] and [1(d)] conditional limitations, that is
`in the form of a condition and a response? If not, why?
`(2) Are limitations [1(c)] and [1(d)] mutually exclusive or
`alternatives?
`(3) Do any, either, or both limitations [1(c)] and [1(d)] need to be
`performed for the claimed method to occur?
`As discussed during oral argument, Petitioner’s five page brief is due
`March, 17, 2023 and Patent Owner’s five page reply brief is due March 24,
`2023.
`
`Accordingly, it is
`
`
`
`ORDERED that Petitioner is authorized to file a five page claim
`construction brief due March, 17, 2023 and Patent Owner is authorized to
`file a five page claim construction reply brief due March 24, 2023.
`
`
`
`3
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`FOR PETITIONER:
`
`K. Patrick Herman
`T. Vann Pearce, Jr.
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`p52ptabdocket@orrick.com
`tvpptabdocket@orrick.com
`
`For PATENT OWNER:
`
`Charles C. Carson
`Leif Sigmond
`Jennifer Kurcz
`Daniel Goettle
`BAKER HOSTETLER
`ccarson@bakerlaw.com
`lsigmond@bakerlaw.com
`jkurcz@bakerlaw.com
`dgoettle@bakerlaw.com
`
`4
`
`
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