UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZYNGA INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
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`Case IPR2022-00200
`Patent 8,795,064
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZYNGA INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`
`
`Case IPR2022-00200
`Patent 8,795,064
`
`
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`
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`
`
`
`Case IPR2022-00200
`U.S. Patent No. 8,795,064
`
`Pursuant to the Board’s March 28, 2022 Order, Patent Owner submits this
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`preliminary sur-reply. As explained in Patent Owner’s Preliminary Response
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`(Paper 6, “POPR”) and further addressed below, the Board should deny institution
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`of the Petition.
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`A. Fintiv Factor 1: Petitioner fails to rebut Patent Owner’s “specific
`evidence” that the District Court will not grant a stay.
`Petitioner argues in broad strokes that Patent Owner is merely speculating
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`about the District Court not granting Petitioner’s potential stay (if it moves for
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`one). Paper 8 (“Reply”) at 1. However, there is in fact “specific evidence” that
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`Judge Albright will not a grant a stay if one is sought, including public statements
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`made by the Court, his long track record of denying stays pending inter partes
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`review (“IPR”), and an analysis of facts in other decisions in which he has denied
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`motions to stay pending IPR. POPR at 14–15 (citing Sand Revolution II, LLC v.
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`Cont’l Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB
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`June 16, 2020)); see also id. at 8–9 (citing Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020)).
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`B.
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`Fintiv Factor 2: Petitioner fails to provide justification for the
`Board departing from its practice of taking trial dates at face
`value.
`Petitioner cannot dispute that the District Court trial is scheduled to occur
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`more than four months before the Board’s statutory deadline for a Final Written
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`Decision (“FWD”), and that this fact favors exercise of the Board’s discretion to
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`Case IPR2022-00200
`U.S. Patent No. 8,795,064
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`deny institution. See POPR at 15–16; Ex. 1006 at 4.
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`Instead, Petitioner engages in the very speculation it accuses Patent Owner
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`of, arguing that its pending motion for intra-district transfer could result in the
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`“potential for a much later trial date” and that “[m]any events could occur between
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`now and” the trial date. Reply at 2 (emphasis added). But Petitioner fails to cite
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`any actual evidence suggesting a transfer would be granted1 or evidence of what
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`speculative events may occur prior to trial.2 Petitioner is talking out of both sides
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`of its mouth, as it told Judge Albright that “Austin’s less congested docket suggests
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`that the case may be resolved more quickly if transferred there, weighing in favor
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`of transfer.” Ex. 2012 at 14. Petitioner is also speculating by assuming that an
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`intra-district transfer will affect the assigned judge or the schedule at all. See, e.g.,
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`Ex. 2007 (“Once assigned to Judge Albright, he retains supervision of the matter
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`even if the case transfers later to Austin . . . at the request of the litigants.”); Ex.
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`2013 at 6 (Judge Albright transferring case from Waco to Austin Division but
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`keeping case on his docket without any change to case schedule).
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`1 Such as, for example, public statements made by the presiding judge about his
`likelihood or not to grant an intra-district transfer (see POPR at 10 (citing Exs.
`2005, 2006, 2007 & 2008)) and previous decisions on the issue (see id. at 10–15);
`all of which in fact suggest that the motion to transfer will be denied.
`2 The Board “generally take[s] courts’ trial schedules at face value absent sufficient
`evidence to the contrary.” Verizon Bus. Network Servs. LLC v. Huawei Techs.,
`IPR2020-01291, Paper 13 at 11 (PTAB Jan. 25, 2021).
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`U.S. Patent No. 8,795,064
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`Petitioner also misrepresents that Patent Owner “significantly expanded the
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`number of accused products, which could lead to further delay.” Reply at 2. On
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`the contrary, the number of accused products has not changed since IGT served its
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`preliminary infringement contentions. The only change is that Petitioner is now
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`being compelled by the District Court to provide discovery on accused products for
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`which it improperly withheld relevant information. Ex. 2010 at 2, 7.
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`C. Fintiv Factor 3: Petitioner misrepresents the District Court’s
`investment of resources in the case.
`Petitioner again misrepresents the record in arguing that the District Court
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`has not made “significant investments” in the case. Reply at 3. Although it is true
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`that the District Court entered a “three-page claim construction order” that did not
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`itself include any analysis (id. at 3), Petitioner ignores that the District Court issued
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`preliminary claim constructions (Ex. 2014) and held a three-hour claim
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`construction hearing. Thus, Petitioner ignores all of the actual effort that went into
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`the claim construction decision by the District Court and attempts to downplay that
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`involvement and effort based on the form of order entered.
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`Petitioner also ignores other significant investments of judicial resources by
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`the District Court, including hearings and written orders on discovery disputes
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`between the parties. Exs. 2010, 2015. The District Court also has likely put
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`resources towards resolving Petitioner’s partial motion to dismiss before Petitioner
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`sought to withdraw the motion after it had been fully briefed and pending for
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`Case IPR2022-00200
`U.S. Patent No. 8,795,064
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`nearly 10 months. Ex. 2016; see also Ex. 2015.
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`D. Fintiv Factor 4: Petitioner fails to explain how its promise to drop
`certain prior art combinations or the existence of non-overlapping
`claims will result in material differences between the issues raised
`in the Petition and in the District Court proceeding.
`Petitioner makes two arguments in an effort to address Fintiv factor 4,
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`neither of which are persuasive. First, Petitioner argues that, if its Petition is
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`instituted, it will drop from the District Court action the prior art combination at
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`issue. Reply at 4. But Petitioner does not, and cannot, dispute that other invalidity
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`arguments that Petitioner asserts in the District Court cannot be resolved in an IPR,
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`such as those regarding Sections 101 or 112. See Ex. 2017 at 92–94, 113–14.
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`Moreover, the grounds asserted in the Petition are substantially the same as those
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`asserted in the District Court. In fact, subsequent to the POPR’s filing, Petitioner
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`served Final Invalidity Contentions that wholly incorporate its Petition in the
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`District Court. Id. at 100. Thus, Petitioner confirmed that it is asserting at least the
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`same grounds in the District Court that are asserted in the Petition. POPR at 23–
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`24.
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`Moreover, Petitioner has only stipulated to drop “the same grounds” from
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`the District Court “if IPR is instituted.” Reply at 4. But nothing would prevent
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`Petitioner from asserting in the District Court other, different grounds involving
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`the same prior art asserted in the Petition. For example, in addition to the
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`Aristocrat/Boushy combination cited by Petitioner in its initial invalidity
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`U.S. Patent No. 8,795,064
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`contentions (Ex. 2011 at 69), Petitioner’s final contentions rely on Boushy in
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`combination with other prior art, including “Schneider in View of Walker ’919
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`and/or Boushy” and “D’Amico in View of Walker ’919, Boushy, Walker ’893,
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`and/or Barragan.” Ex. 2017 at 106, 110. Thus, even if Petitioner does withdraw
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`Aristocrat/Boushy from the District Court action, at least Boushy will continue to
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`be at issue, creating inefficiencies and allowing for a conflicting decision by the
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`District Court four months before the FWD for this Petition.
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`Second, Petitioner focuses on the claims challenged in the Petition that are
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`not asserted in the District Court action without addressing Patent Owner’s
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`arguments about the overlapping scope of those claims. Reply at 4. Petitioner
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`makes no attempt to show that those Petition-only claims “differ significantly in
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`some way” from the shared claims such that factor 4 weighs in Petitioner’s favor.
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`See POPR at 23–24 (citing Fintiv, Paper 11 at 13; Samsung Elecs. Co. v. Clear
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`Imaging Research, LLC, IPR2020-01399, Paper 13 at 22 (PTAB Feb. 3, 2021)).
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`Indeed, the majority of the ’064 patent claims challenged in the Petition that
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`are not asserted in the District Court are merely the system versions of the asserted
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`method claims, and the rest depend from a claim at issue in the Petition (or its
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`system counterpart) that add little of significance for validity purposes. Id. at 23.
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`Thus, Petitioner’s focus on the number of unasserted claims challenged in the
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`Petition divorced from any relevant context ignores the fact that there is substantial
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`U.S. Patent No. 8,795,064
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`overlap between the claims; a fact demonstrated by Petitioner’s invalidity
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`arguments, which rely on the same two references for all of the challenged claims.
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`E.
`Fintiv Factor 5: Petitioner asks the Board to ignore this factor.
`Petitioner admits the parties in the District Court action and the IPR are the
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`same, but argues only “[t]hat is true in most IPRs” (Reply at 5), apparently
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`suggesting that this factor should be discounted or ignored. However, Petitioner
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`cites no authority for the proposition that this or any other Fintiv factor should be
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`given less or no weight in the overall discretionary denial analysis because the
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`same facts are found in some number of other IPRs. It is undisputed that Fintiv
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`factor 5 favors the exercise of discretion in denying the instant Petition.
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`F.
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`Fintiv Factor 6: Petitioner attempts to argue the full merits of the
`case and overlooks the obvious hurdles its Petition will face.
`In its POPR, Patent Owner identified two fundamental deficiencies in the
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`merits of the grounds raised in the Petition, which support the Board’s exercise of
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`discretion in denying the Petition under Fintiv factor 6. See POPR at 28–33.
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`Petitioner fails to adequately respond to either argument.
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`First, Petitioner essentially concedes that it failed to support disclosure of
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`the trigger condition/tracked information/message limitations that appear in both
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`independent claims, but attempts to salvage its Petition by citing disclosure it relied
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`on for a separate limitation, arguing that it could also “be used to satisfy both
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`limitations.” Reply at 6–7. Second, Petitioner abandons the “plain and ordinary
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`U.S. Patent No. 8,795,064
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`meaning” it stipulated to before the District Court and advocated in its Petition in
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`favor of an argued construction of the term “message” that is so overly broad as to
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`include “the disappearance or change in the appearance of the animated character
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`in Aristocrat.” Id. at 5–6. Both arguments demonstrate the weakness of the
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`Petition’s merits. In an attempt to support its Petition on the merits, Petitioner
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`must resort to revisiting and reframing its original arguments in a manner that
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`concedes their deficiencies and contradicts Petitioner’s prior positions.
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`Thus, Fintiv factor 6 also favors the Board’s exercise of discretion in
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`denying the instant Petition.
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`Dated: April 18, 2022
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`Respectfully submitted,
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`Case IPR2022-00200
`U.S. Patent No. 8,795,064
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`
`
`/ Charles C. Carson /
`Charles C. Carson (Reg. No. 46,603)
`ccarson@bakerlaw.com
`Postal and Hand-Delivery Address:
`BAKERHOSTETLER
`1050 Connecticut Avenue, NW
`Suite 1100
`Washington, D.C. 20036
`Telephone: (202) 861-1771
`Facsimile: (202) 861-1783
`
`Leif R. Sigmond, Jr. (Reg. No. 35,680)
`lsigmond@bakerlaw.com
`Postal and Hand-Delivery Address:
`BAKERHOSTETLER
`One North Wacker Dr
`Suite 4500
`Chicago, IL 60606
`Telephone: (312) 416-6275
`Facsimile: (312) 416-6201
`
`Jennifer M. Kurcz (Reg. No. 54,481)
`jkurcz@bakerlaw.com
`Postal and Hand-Delivery Address:
`BAKERHOSTETLER
`One North Wacker Dr
`Suite 4500
`Chicago, IL 60606
`Telephone: (312) 416-6282
`Facsimile: (312) 416-6201
`
`Daniel J. Goettle (Reg. No. 50,983)
`dgoettle@bakerlaw.com
`Postal and Hand-Delivery Address:
`BAKERHOSTETLER
`1735 Market Street
`Suite 3300
`
`
`
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`
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`Case IPR2022-00200
`U.S. Patent No. 8,795,064
`
`Philadelphia, PA 19103-7501
`Telephone: (215) 564-8974
`Facsimile: (215) 568-3439
`
`Attorneys for Patent Owner
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`Case IPR2022-00200
`U.S. Patent No. 8,795,064
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
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`correct copy of the foregoing document by electronic service to the following
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`counsel on April 18, 2022:
`
`K. Patrick Herman
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`P52PTABDocket@orrick.com
`
`T. Vann Pearce, Jr.
`Orrick, Herrington & Sutcliffe LLP
`1152 15th Street, N.W.
`Washington, DC 20005
`TVPPTABDocket@orrick.com
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`Respectfully submitted,
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`
`
`/ Charles C. Carson /
`Charles C. Carson (Reg. No. 46,603)
`ccarson@bakerlaw.com
`Postal and Hand-Delivery Address:
`BAKERHOSTETLER
`1050 Connecticut Avenue, NW
`Suite 1100
`Washington, D.C. 20036
`Telephone: (202) 861-1771
`Facsimile: (202) 861-1783
`
`Attorney for Patent Owner
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