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
`
`Case No. IPR2022-00200
`
`__________________________________________________________________
`
`PETITIONER’S SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
`__________________________________________________________________
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`ZYNGA INC.,
`Petitioner,
`v.
`IGT,
`Patent Owner.
`
`____________________________
`
`U.S. Patent No. 8,795,064
`
`Case No. IPR2022-00200
`
`__________________________________________________________________
`
`PETITIONER’S SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
`__________________________________________________________________
`
`
`
`Pursuant to the Board’s March 14, 2023 order (see Paper No. 27), Petitioner
`
`submits the following supplemental brief regarding interpretation of conditional
`
`limitations (c) and (d) in claims 1 and 9 of the ’064 patent.
`
`To begin, it is not necessary for the Board to resolve this issue. Aristocrat
`
`teaches tracking the claimed “first” and “second” “set[s] of information.” It also
`
`teaches outputting both a “first” and “second” “message” after occurrence of a
`
`“message trigger condition.” Further, in Aristocrat, multiple messages can be output
`
`at the end of one game. (See, e.g., Ex. 1004, 6:9-13, 26:34-27:2.) Alternatively,
`
`different sets of information can be tracked at different times leading to message
`
`output at different times. (See, e.g., id., 11:8-16 (referencing “one or more” “player
`
`activit[ies]”); see also id., 4:25-29 (bonus award message can be output during a
`
`“bought game”); 22:20-21 (message output indicating end of “free game series”).)
`
`Next, putting aside Aristocrat’s teachings, the presence of the conditional “if”
`
`limitations in claims 1 and 9 of the ’064 patent means that Aristocrat teaches more
`
`than what the claims require. Claims 1 and 9 raise different issues. Claim 9 is
`
`directed to a method with a number of steps, including conditional steps (c) and (d).
`
`Claim 1, however, is directed to a system. This system includes a “memory device”
`
`that “stores … instructions” for performing the same method of claim 9.
`
`Because claim 9 is directed to a method, and steps (c) and (d) are conditional,
`
`it is not necessary to perform those steps to practice the claimed method. Per the
`
`-1-
`
`
`
`claim, the message “determination” and “output” steps (c)(i) and (c)(ii) only need to
`
`be performed if two conditions are met: (1) “a first set of information” is “tracked,”
`
`and (2) “a message trigger condition occurs.” Similarly, steps (d)(i) and (d)(ii) only
`
`need to be performed if: (1) “a second set of information” is “tracked,” and (2) “the
`
`message trigger condition occurs.” Because the claimed messages are only
`
`determined and output upon occurrence of these conditions, it follows that claim 9
`
`can practiced by performing only steps (a) and (b) if neither a “first” nor “second”
`
`“set of information” is tracked.
`
`The Board discussed the import of conditional limitations in Ex Parte
`
`Schulhauser, 2016 WL 6277792 (P.T.A.B. Apr. 28, 2016) (precedential). The claims
`
`at issue there required “triggering an alarm” “if” certain data was “not within [a]
`
`threshold.” Id., *3. A different “determining” step was to be performed if the data
`
`was “within the threshold.” Id. The Board explained that due to their use of
`
`conditional language, “logically, the ‘triggering’ and ‘determining steps do not need
`
`to be performed … if the condition precedent recited in each step is not met.” Id.
`
`(emphasis added). The Board went on to explain that the two steps are “mutually
`
`exclusive.” Id. Thus, the claim effectively covers “two methods, one in which the
`
`prerequisite condition for the triggering step is met and one in which the prerequisite
`
`condition for the determining step is not met.” Id., *4. According to the Board, prior
`
`art teaching either method renders the claim unpatentable. Id.
`
`-2-
`
`
`
`The approach of Schulhauser is also not limited to circumstances where the
`
`BRI standard applies. The claims in Applera Corp. v. Illumina, Inc., 375 F. App’x
`
`12 (Fed. Cir. 2010) were directed to a method for sequencing DNA. Id. at 14. The
`
`final limitation required “(c) repeating steps (a) and (b) until the sequence of
`
`nucleotides is determined.” Id. at 19. The Federal Circuit agreed with a district
`
`court claim construction holding that “step (c)” is “conditional, meaning that there
`
`is no need for repetition if the sequence of polynucleotides has been fully determined
`
`in the first cycle.” Id. at 21. Thus, the claim can be satisfied by performing only
`
`steps (a) and (b), and not repetition step (c) if that step’s condition is not met. Id.
`
`Again, the claim effectively embraced two different methods: one that entailed
`
`performing only steps (a) and (b), and another that entailed performing steps (a), (b),
`
`and (c). See also Cybersettle, Inc. v. Nat’l Arb. Forum, Inc., 243 F. App’x 603, 607
`
`(Fed. Cir. 2007) (“If the condition for performing a contingent step is not satisfied,
`
`… the step need not be carried out….”); Microsoft Corp. v. Uniloc 2017 LLC, 2021
`
`WL 189216, *6, 8 (P.T.A.B., Jan. 19, 2021) (similar); Microsoft Corp. v. Uniloc
`
`2017 LLC, 2020 WL 6276372, *20-22 (P.T.A.B., Oct. 26, 2020) (collecting cites).
`
`Here, due to its use of conditional limitations, claim 9 effectively embraces at
`
`least four different methods: (1) only steps (a) and (b) are performed but neither a
`
`“first” nor a “second” set of information are tracked, (2) steps (a), (b), and (c) are all
`
`performed, but a “second” set of information is not tracked, (3) steps (a), (b), and (d)
`
`-3-
`
`
`
`are all performed, but a “first” set of information is not tracked, and (4) all of steps
`
`(a), (b), (c), and (d) are performed. Per Schulhauser, prior art teaching any of these
`
`claimed methods renders the claim unpatentable. While this level of disclosure was
`
`not required, Aristocrat teaches at least (2) and (3) by tracking just one set of
`
`information and (4) by tracking multiple sets of information.
`
`No other case requires the contrary. For instance, Lincoln Nat’l Life Ins. Co.
`
`v. Transamerica Life Ins. Co. addressed a method claim relating to annuity payment.
`
`609 F.3d 1364, 1365 (Fed. Cir. 2010). The claim’s final limitation required making
`
`payment “even if the account value is exhausted before all payments have been
`
`made.” Id. at 1366 (emphasis added). While this limitation included the term “if”,
`
`the Federal Circuit held that it nonetheless required a system “configured to make
`
`payments regardless of account value.” Id. at 1370. This claim is different from
`
`claim 9 of the ’064 patent. Claim 9 includes no limitation requiring performance of
`
`a step “even if” a certain condition occurs. Claim 9 requires performance of steps
`
`(c) and (d) only if certain conditions are satisfied.
`
`Another case, Ex Parte Gopalan, 2018 WL 2386111 (P.T.A.B. May 21, 2018),
`
`addressed a method claim with only two limitations, both of which were conditional.
`
`Id., *1. The Board found that the claim embraced only “one method.” Id., *3.
`
`Further, the claim could only be satisfied if both steps were performed (otherwise,
`
`the claim would require nothing). Id., *2-3. In contrast, claim 9 does embrace
`
`-4-
`
`
`
`multiple different methods and continues to require performance of at least steps (a)
`
`and (b) even if the conditions of steps (c) and (d) are not satisfied.
`
`And, in Hytera Comm’c Co. v. Motorola Sols, Inc., 841 F. App’x 210 (Fed.
`
`Cir. Jan. 19, 2021), the claims at issue were directed to a “system” for performing a
`
`communication timeslot selection “method.” Id., 212. The claims required
`
`“knowing” two different sets of synchronization patterns, and “selecting” one of the
`
`sets in two “mutually exclusive” circumstances. Id., 217. Thus, the claim taught
`
`only “one method”: “knowing” the two sets and deciding which to use. See id., 218.
`
`Again, claim 9 embraces multiple distinct methods.
`
`Finally, as noted, claim 1 is directed to a system. Because of this, prior art
`
`must be at least capable of tracking a “first” and “second” set of information and
`
`outputting a “first” and “second” message to fall within the claim scope (otherwise
`
`the system would lack the “instructions” the claim requires). See, e.g., Schulhauser,
`
`2016 WL 6277792, *7 (distinguishing method and system claims with conditional
`
`limitations). Put another way, while performance of just steps (a) and (b) can satisfy
`
`the method of claim 9, a system must include instructions that are at least capable of
`
`performing steps (a), (b), (c), and (d) to satisfy claim 1. But, as petitioner has
`
`explained, the claim includes no requirement that (c) and (d) be performed at any
`
`particular time, let alone at the same time. (See, e.g., Paper 18, Reply at 4-8.) And,
`
`even if it did, Aristocrat teaches it. See supra, p. 1.
`
`-5-
`
`
`
`Dated: March 17, 2023
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`/K. Patrick Herman/
`K. Patrick Herman, Reg. No. 75,018
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`T: 212-506-3596; F: 212-506-5151
`Email: P52PTABDocket@orrick.com
`
`Attorney for Petitioner Zynga Inc.
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing paper was caused to be
`
`served on March 17, 2023 via email upon the following counsel of record for
`
`Patent Owner:
`
`Charles C. Carson (ccarson@bakerlaw.com)
`Leif R. Sigmond, Jr. (lsigmond@bakerlaw.com)
`Jennifer M. Kurcz (jkurcz@bakerlaw.com)
`Daniel J. Goettle (dgoettle@bakerlaw.com)
`Robert L. Hails, Jr. (rhails@bakerlaw.com)
`BAKERHOSTETLER
`
`/K. Patrick Herman/
`K. Patrick Herman, Reg. No. 75,018
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`T: 212-506-3596; F: 212-506-5151
`Email: P52PTABDocket@orrick.com
`
`-7-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
