Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: June 7, 2022
`
`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 MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: June 7, 2022
`
`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 MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`INTRODUCTION
`I.
`Petitioner Zynga Inc. filed a Petition (Paper 1, “Pet.”) requesting inter
`partes review of claims 1–18 of U.S. Patent No. 8,795,064 B2 (Ex. 1001,
`“the ’064 patent”). Patent Owner IGT filed a Preliminary Response (Paper
`6, “Prelim. Resp.”). With our authorization (Paper 7), Petitioner filed a
`Preliminary Reply to Patent Owner’s Preliminary Response (Paper 8,
`“Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 9,
`“Prelim. Sur-reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition and any response thereto
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons discussed below, we determine that Petitioner shows a
`reasonable likelihood that at least one of the challenged claims is
`unpatentable. Accordingly, we institute inter partes review of the ’064
`patent.
`
`A. Related Matters
`The parties state that the ’064 patent was asserted in IGT v. Zynga
`Inc., Case No. 6:21-cv-00331 (W.D. Tex.). Pet. 4; Paper 3, 1.
`Petitioner and Patent Owner are parties to the following additional
`inter partes review proceedings: IPR2022-00199 (U.S. Patent No.
`7,168,089), IPR2022-00223 (U.S. Patent No. 7,303,473), and IPR2022-
`00368 (U.S. Patent No. 8,266,212). Petitioner informs us that, other than
`being directed to the same general technological field, these patents are not
`directly related to the ’064 patent. Pet. 4.
`
`2
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`B. The ’064 Patent
`The ’064 patent is titled “Method and Apparatus for Outputting a
`Message at a Game Machine” and issued on August 5, 2014. Ex. 1001,
`codes (54), (45). The ’064 patent “relates to gaming devices” and more
`specifically “relates to methods and apparatus for providing messages to
`players at a gaming machine.” Id. at 2:31–34. The ’064 patent describes a
`system that “allows a casino, via a game machine, to output appropriate
`messages in an appropriate way to appropriate players at appropriate times.”
`Ex. 1001, 4:48–50.
`Figure 1 of the ’064 patent is reproduced below.
`
`
`Fig. 1 is a block diagram illustrating an example of gaming system 100. Id.
`at 2:63–64. Gaming system 100 includes one or more controllers 102 in
`communication with one or more game machines 104 via a network. Id.
`at 10:64–11:4. The ’064 patent discloses that “communication between the
`controller 102, the game machines 104, and/or third-party servers (not
`pictured), may be direct and/or via a network such as the Internet.” Id.
`at 11:16–19. “In operation, the controller 102 and the game machines 104
`may exchange information about the use of the game machines 104 by
`individual players, data about the players, messages, and the like.” Id.
`at 12:29–32.
`
`3
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`C. Challenged Claims
`Petitioner challenges claims 1–18. Pet. 1. Claims 1 and 9 are
`independent claims. Ex. 1001, 75:29–78:17. Claims 2–8 depend from claim
`1, and claims 10–18 depend (directly or indirectly) from claim 9. Id.
`Claim 1 is illustrative and is reproduced below with Petitioner’s
`labeling of the limitations added in bracketing.
`[1p] 1. A gaming system comprising:
`[1(i)] at least one output device;
`[1(ii)] at least one input device;
`[1(iii)] at least one processor; and
`[1(iv)] at least one memory device which stores a plurality of
`instructions, which when executed by the at least one processor,
`cause the at least one processor to operate with the at least one
`output device and the at least one input device to:
`[1(a)] (a) identify a player placing at [least1] one wager
`on at least one play of a game,
`[1(b)] (b) track information associated with the
`identified player,
`[1(c)] (c) if a first set of information associated with the
`identified player is tracked and a message trigger
`condition occurs in association with the identified player:
`(i) determine, based at least in part on the first set
`of tracked information, a first message, and
`(ii) output the determined first message to the
`identified player, and
`[1(d)] (d) if a second, different set of information
`associated with the identified player is tracked and the
`
`
`1 Claim 1 was corrected to replace “as” with “least.” Ex. 1001, Certificate
`of Correction.
`
`4
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`message trigger condition occurs in association with the
`identified player:
`(i) determine, based at least in part on the second
`set of tracked information, a second, different
`message, and
`(ii) output the determined second message to the
`identified player.
`Ex. 1001, 75:29–57.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–18
`103(a)
`Aristocrat2
`1–18
`103(a)
`Aristocrat and Boushy3
`Pet. 6, 20. We note that in the Petition, Petitioner treats the grounds above
`as single ground, with the label “Ground 1.” Id. Although we have listed
`the grounds separately above, as both Petitioner and Patent Owner do, we
`will treat the grounds together in our analysis below.
`Petitioner additionally provides a Declaration of Mr. David Crane
`(Ex. 1003).
`
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner contends we should exercise our discretion under 35
`U.S.C. § 314(a) to deny institution of inter partes review because the ’064
`patent is also challenged in IGT v. Zynga Inc., Case No. 6:21-cv-00331 in
`the Western District of Texas (“the district court litigation”). Prelim. Resp.
`
`
`2 Bennett et al., International Pub. No. WO 00/32286, published June 8,
`2000 (Ex. 1004) (“Aristocrat”).
`3 Boushy, U.S. Patent No. 5,761,647, issued June 2, 1998 (Ex. 1005)
`(“Boushy”).
`
`5
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`1–33 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv”)).
`Fintiv sets forth the factors that we weigh in determining whether to
`exercise our discretion to deny institution of the inter partes review
`proceeding here under 35 U.S.C. § 314(a). See Fintiv, Paper 11 at 5–6.
`These factors are:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. “These factors relate to whether efficiency, fairness, and the merits
`support the exercise of authority to deny institution in view of an earlier trial
`date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view
`of whether efficiency and integrity of the system are best served by denying
`or instituting review.” Id.
`For the reasons discussed below, we decline to exercise our discretion
`to deny institution under 35 U.S.C. § 314(a).
`1. Fintiv Factor 1
`Fintiv factor 1 recognizes that a stay of litigation pending resolution
`of a PTAB trial allays concerns about inefficiency and duplication of efforts,
`
`6
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`which strongly weighs against exercising the authority to deny
`institution. Fintiv, Paper 11 at 6.
`Petitioner asserts that it intends to file a motion to stay the district
`court litigation if this proceeding is instituted and argues that, until the
`motion is decided, it is merely speculation as to whether the district court
`will grant or deny a stay. Pet. 7; Prelim. Reply 1.
`Patent Owner argues that because the district court litigation is
`pending before Judge Albright of the U.S. District Court for the Western
`District of Texas, Waco Division, a stay will not be granted. Prelim.
`Resp. 8–15; Prelim. Sur-reply 1. According to Patent Owner, “Judge
`Albright’s long track-record amply demonstrates that he will deny
`Petitioner’s request for a stay, should Petitioner seek one.” Prelim. Resp. 9–
`10 (citing Exs. 2005–2008 (articles containing public comments by Judge
`Albright) and rulings by Judge Albright denying stays). Patent Owner
`argues that based on other rulings by the district court, the district court
`would deny any motion to stay. Prelim. Resp. 10–15.
`Petitioner responds that, here with respect to this particular litigation,
`there is no holding or indication in the district court litigation as to how the
`district court would rule on a motion to stay. Prelim. Reply 1. Thus,
`according to Petitioner, Patent Owner’s argument is mere speculation as to
`how the district court would rule. Id.
` On this record, it is unclear how the district court would proceed in
`this particular litigation, and we decline to speculate whether the district
`court will grant a stay if inter partes review is instituted. Accordingly, this
`factor is neutral.
`
`7
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`
`2. Fintiv Factor 2
`Fintiv factor 2 looks to the “proximity of the court’s trial date to the
`Board’s projected statutory deadline.” Fintiv, Paper 11 at 9. “If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally
`has weighed this fact in favor of exercising authority to deny institution
`under NHK.” Id.
`
`Petitioner indicates that the district court entered a scheduling order in
`the district court litigation. Pet. 7; Ex. 1006, 4. The district court’s
`scheduling order sets February 6, 2023, as a default date for “Jury
`Selection/Trial” and states that “[t]he Court expects to set these dates at the
`conclusion of the Markman Hearing.” Ex. 1006, 4. Petitioner argues that
`“[a]ssuming it is not rescheduled, trial would occur only a handful of months
`before the Board’s projected final written decision date here.” Pet. 7.
`Petitioner further argues that it is likely that the district court trial will
`be rescheduled because “[s]ubsequent to filing its petition, Zynga moved to
`transfer venue to the Austin Division of the Western District of Texas.”
`Prelim. Reply 2. Petitioner states “at the earliest, trial is almost a year away”
`and “[m]any events could occur between now and then—including, but not
`limited to, grant of Zynga’s motion to transfer—that could impact the trial
`date.” Id. Petitioner also contends that Patent Owner “has also itself
`significantly expanded the number of accused products which could lead to
`further delay.” Id.
`Patent Owner responds that “Petitioner fails to cite any actual
`evidence suggesting a transfer would be granted or evidence of what
`speculative events may occur prior to trial.” Prelim. Sur-reply 2 (footnotes
`omitted). And, according to Patent Owner, “Petitioner is also speculating by
`assuming that an intra-district transfer will affect the assigned judge or the
`
`8
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`schedule at all.” Id. Patent Owner further argues that “the number of
`accused products has not changed since IGT served its preliminary
`infringement contentions” and “[t]he only change is that Petitioner is now
`being compelled by the District Court to provide discovery on accused
`products for which it improperly withheld relevant information.” Id. at 3
`(citing Ex. 2010, 2, 7).
`Given the statutory deadlines, our latest possible date for issuance of a
`final written decision in this proceeding is June 10, 2023. 35 U.S.C.
`§§ 314(b) (2018), 316(a)(11); see also 37 C.F.R. § 42.100(c). Thus, the time
`period from the district court’s default trial date to our projected statutory
`deadline for a final written decision is approximately four months. In
`general, if the district court’s trial date is earlier than our projected statutory
`deadline for a final written decision, the Board usually has weighed this fact
`in favor of exercising authority to deny institution under NHK. Fintiv, Paper
`11 at 9. Where the trial date and the projected date of our final written
`decision are at or around the same time, however, as they are here, the
`efficiency and fairness concerns that underlie the Fintiv analysis are not as
`strong, and the decision whether to institute will instead implicate other
`factors. See Fintiv, Paper 11 at 9 (“If the court’s trial date is at or around the
`same time as the projected statutory deadline, . . . the decision whether to
`institute will likely implicate other factors discussed herein, such as the
`resources that have been invested in the parallel proceeding.”).
`Further, we recognize that a default trial date in February 2023, may
`be subject to change, for the reasons argued by Petitioner. Therefore, we
`give this factor less weight in considering whether efficiency and integrity of
`the system are best served by denying or instituting review.
`
`9
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`In light of the district court trial date scheduled approximately four
`months before a final written decision will be due in this proceeding, we find
`that this factor weighs slightly in favor of discretionary denial.
`3. Fintiv Factor 3
`Fintiv factor 3 considers the “investment in the parallel proceeding by
`the court and parties,” including “the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of
`the institution decision.” Fintiv, Paper 11 at 9.
`Patent Owner argues that “the District Court has already made
`significant investment in the case, including entering scheduling orders,
`holding a Markman hearing for the asserted patents, entering its rulings on
`claim construction, hearing argument on discovery disputes between the
`parties, and issuing an order on fact discovery disputes.” Prelim. Resp. 18;
`Prelim. Sur-reply 3.
`Petitioner states that the parties agreed that no claim terms of the ’064
`patent required construction and or were construed by the district court at the
`Markman hearing. Pet. 8–9 (citing Exs. 1007, 1008; Prelim. Reply 3 (citing
`Ex. 2004). Petitioner, thus, argues that the parties and the court did not
`invest effort of the ’064 patent during the Markman hearing. Pet. 9.
`Petitioner argues that “months of substantive work—including all
`depositions, additional fact discovery, expert discovery, and dispositive
`motion briefing—remain.” Prelim. Reply. 3.
`
`Fintiv states that, “[i]f, at the time of the institution decision, the
`district court has not issued orders related to the patent at issue in the
`petition, this fact weighs against exercising discretion to deny institution.”
`Fintiv, Paper 11 at 10. Although some exchanges have taken place in the
`district court litigation and some of the issues will have been briefed, neither
`
`10
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`party asserts that the district court has issued any substantive orders as to
`validity of the ’064 patent. The district court’s claim construction order does
`not address any claim terms of the ’064 patent. Ex. 2004. Although some
`investment has been made in the district court litigation, much work remains
`to be done.
`Petitioner also argues that it exercised diligence in filing the Petition
`because “the petition was assembled and filed only a handful of months after
`IGT first served district court infringement contentions.” Prelim. Reply 3–4
`(citing Fintiv). According to Petitioner, Petitioner “had no pre-suit notice of
`Patent Owner’s allegations of infringement of the ’064 patent” and “Patent
`Owner did not identify its asserted claims until its June 30, 2021 initial
`infringement contentions.” Pet. 9. Petitioner argues that it exercised
`diligence in preparing the Petition just over four months after Patent Owner
`identified the claim asserted in the district court. Id.
`Patent Owner argues that “Petitioner cannot argue both that institution
`is favored because relatively less resources were expended with respect to
`the ’064 patent than the other patents in the District Court proceeding . . .
`while at the same time arguing the number of patents and claims justifies its
`delay in filing the instant petition.” Prelim. Resp. 20–21 (citation omitted).
`We determine that Petitioner acted reasonably diligent in filing the
`Petition, given the overall circumstances in this case.
`Based on the limited investment by the district court relevant to the
`’064 patent, and in view of Petitioner’s diligence in filing the Petition, we
`weigh this factor against exercising discretion to deny institution.
`4. Fintiv Factor 4
`Fintiv factor 4 considers whether “the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`
`11
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`presented in the parallel proceeding.” Fintiv, Paper 11 at 12. If the issues in
`the Petition overlap substantially with those raised in the parallel proceeding,
`“this fact has favored denial.” Id. “Conversely, if the petition includes
`materially different grounds, arguments, and/or evidence . . . this fact has
`tended to weigh against exercising discretion to deny institution.” Id. at
`12–13.
`The grounds asserted in the Petition are a subset of the grounds
`asserted in the district court litigation. Prelim. Resp. 22 (citing Ex. 2011,
`69). Petitioner argues that its stipulation eliminates any overlap in issues.
`Pet. 10. Petitioner stipulates that “should the Board institute an IPR
`proceeding on the ’064 patent, Petitioner further stipulates that it will not
`pursue any instituted grounds as invalidity defenses in the district court.” Id.
`Patent Owner argues “[b]ecause Petitioner asserts the same references
`and makes the same arguments in its Petition as it does in the District Court
`case, and Petitioner at best provides a narrow stipulation that would not
`promote any meaningful efficiencies, Fintiv factor 4 favors discretionary
`denial of institution.” Prelim. Resp. 25–26.
`We determine that Petitioner’s stipulation somewhat mitigates the
`“concerns of inefficiency and the possibility of conflicting decisions” when
`grounds overlap. Petitioner’s stipulation is narrow, not a broad stipulation
`that includes “any ground raised, or that could have been reasonably
`raised.” See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper
`12 at 19 (PTAB Dec. 1, 2020) (precedential); see also Sand Revolution II,
`LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24
`at 12 n.5 (PTAB June 16, 2020) (informative) (noting that a broad
`stipulation better addresses concerns of duplicative efforts and potentially
`conflicting decisions in a much more substantial way).
`
`12
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`Further, the Petition challenges ten additional claims — independent
`claim 1 and dependent claims 2–8, 14, and 16 that are not at issue in the
`district court litigation. Pet. 10–11 (citing Ex. 1009, 2).
`Patent Owner argues that “the additional claims challenged in the
`Petition concern the same subject matter and are merely the system versions
`of the asserted method claims that add nothing material in terms of validity
`over the prior art.” Prelim. Resp. 23.
`Petitioner responds that “more than half [of] the claims challenged in
`the petition were not asserted” in the district court litigation and “certain of
`these challenged claims—including at least dependent claims 6, 8 and 14—
`include limits not present in any” of the claims asserted in the district court
`litigation. Prelim. Reply 4.
`Given Petitioner’s stipulation and the fact that more claims are
`challenged in this proceeding than in the district court litigation, we weigh
`this factor against exercising discretion to deny institution.
`5. Fintiv Factor 5
`Fintiv factor 5 looks to “whether the petitioner and the defendant in
`the parallel proceeding are the same party.” Fintiv, Paper 11 at 13. “If a
`petitioner is unrelated to a defendant in an earlier court proceeding, the
`Board has weighed this fact against exercising discretion to deny
`institution.” Id. at 13–14.
`Petitioner is the defendant in the district court litigation. Pet. 10. We
`weigh this factor slightly for exercising discretion to deny institution.
`6. Fintiv Factor 6
`Fintiv factor 6 looks to whether “other circumstances” exist that might
`“impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 14.
`
`13
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`Petitioner argues that the Petition “has significant substantive merit.”
`Pet. 11; see also Prelim. Reply 5–7. Patent Owner responds that the
`weakness of the Petition on the merits favor denying institution. Prelim.
`Resp. 27–28; Prelim. Sur-reply 6–7.
`We have reviewed the asserted prior art references and the arguments
`of both Petitioner and Patent Owner. As discussed in more detail below, we
`find the evidence and arguments presented by Petitioner persuasive on this
`preliminary record and sufficient to meet our standard for instituting inter
`partes review.
`Additionally, Patent Owner argues that the Petitioner has created
`inefficiencies because “Petitioner has filed, on a rolling basis, petitions on
`only a subset (four of six) of the patents asserted in the District Court
`proceeding.” Prelim. Resp. 28. Patent Owner, however, does not apprise us
`of any statute or rule that requires Petitioner to file for inter partes review of
`all patents on which it has been sued for infringement in order to be able to
`file a petition for inter partes review.
`We find that factor 6 is neutral.
`7. Conclusion
`Applying a holistic consideration of the relevant facts and the
`particular circumstances of this case, we conclude that the facts and factors
`counseling against exercising discretion collectively outweigh those
`counseling in favor of exercising discretion.
`We do not exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a).
`
`B. Principles of Law
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`
`14
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`The record at this stage of the proceeding does not include any
`argument or evidence directed to secondary considerations of
`nonobviousness.
`
`C. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (“POSITA”) at the time
`of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts:
`A POSITA in the technology field of the ’064 patent
`would have had a bachelor’s degree in computer science or a
`similar discipline and 2 years of professional programming
`experience in the gaming software industry. This POSITA
`would be aware of and generally knowledgeable about casino
`gaming systems as of the priority date for the ’064 patent,
`including the networks connecting various casino gaming
`machines and the manner in which casino gaming machines
`
`15
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`tracked player information and delivered messages to players.
`(Ex. 1003, Crane Decl. ¶¶ 35–37).
`Pet. 20. Patent Owner does not dispute this level of skill at this stage of the
`proceeding. See generally Prelim. Resp.
`For purposes of this Decision, we adopt Petitioner’s proposal as
`reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
`level of skill in the art).
`
`D. Claim Construction
`In an inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b). Thus, we apply the claim
`construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`In addition to the specification and prosecution history, we also
`consider use of the terms in other claims and extrinsic evidence including
`expert and inventor testimony, dictionaries, and learned treatises, although
`extrinsic evidence is less significant than the intrinsic record. Id.
`at 1312–17. Usually, the specification is dispositive, and it is the single best
`guide to the meaning of a disputed term. Id. at 1315.
`If the specification “reveal[s] a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise
`possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
`1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`16
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`(Fed. Cir. 2002)). Any special definition for a claim term must be set forth
`in the specification with “reasonable clarity, deliberateness, and precision.”
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`
` Petitioner asserts that “there are no terms in the ’064 patent that
`require an express construction for purposes of this petition and therefore all
`terms can be afforded their plain and ordinary meanings.” Pet. 14–15. For
`certain terms, Petitioner provides further discussion of their plain and
`ordinary meanings in its analysis. Pet. 15. In particular, Petitioner discusses
`the term “message.” Id. at 32.
`
`Likewise, in its analysis, Patent Owner discusses the term “message”
`and argues that Petitioner “relies on an interpretation of the term ‘message’
`contrary to the patent.” Prelim. Resp. 32; Prelim. Sur-reply 6–7.
`
`Petitioner also indicates that in the district court litigation, the parties
`agreed that certain terms would be given their plain and ordinary meaning.
`Pet. 15 (citing Exs. 1007, 1008). We note that the term “message” is not
`included in the certain terms (Ex. 1007, 7; Ex. 1008, 11) and the district
`court did not construe any of the terms of the ’064 patent (Ex. 2004).
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)). We need to only explicitly construe the claim term “message”
`in order to resolve the issues before us.
`“message”
`Independent claim 1 recites “a first message” and “a second, different
`
`message.” Ex. 1008, 75:46, 75:50–51. Independent claim 9 similarly recites
`a first and second message. Id. at 76:45–46, 76:55–56.
`
`17
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`Petitioner contends that the term “message” has a broad meaning
`based on its description in the ’064 patent and explains that the ’064 patent
`states that a message “‘may refer to any communication, in any form,
`intended to be presented to a player or other party.’” Pet. 32 (quoting
`Ex. 1001, 9:33–34 (emphases added in Pet.)); Prelim. Sur-reply 5. Petitioner
`points out that the ’064 patent discloses that a “message” may be output via
`text, audio, video, or images. Pet. 32 (citing Ex. 1001, 24:16–18); Prelim.
`Sur-reply 4. Given these disclosures from the ’064 patent, Petitioner equates
`the claimed message to a character’s disappearance or death in Aristocrat’s
`game. Pet. 35.
`Patent Owner responds that “Petitioner’s interpretation of ‘message’
`to include the gradual disappearance of a character is not supported by the
`[’064] patent.” Prelim. Resp. 32–33; Prelim. Sur-reply 6–7. Patent Owner
`assert that “[t]here is no support” for Petitioner’s interpretation because
`allegedly “[e]very example in the patent contains at least some words
`(written or spoken) that are outputted, and that communicate information, to
`a player.” Prelim. Resp. 32–33 (citing Ex. 1001, 4:8–13).
`On this record, we agree with Petitioner that the claim term
`“message”– of both the “first message” and “second, different message”
`limitations – are described broadly in the ’064 patent. In a section labeled
`“A. Terms” the ’064 patent states: “Throughout the description that follows
`and unless otherwise indicated, the following terms may include and/or
`encompass the example meanings provided in this section.” Ex. 1001, 5:57–
`60. With regards to the term “message,” the ’064 patent states that it “may
`refer to any communication, in any form, intended to be presented to a
`player or other party” and “[m]essages may be of one or a combination of
`types.” Id. at 9:32–35.
`
`18
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`In addition, contrary to Patent Owner’s argument, the ’064 patent
`discloses that “[m]essages may be output in a variety of different forms,
`including text, audio, video, and images.” Id. at 24:16–18. The ’064 patent
`includes discussion of representations of messages ((i.e., a method for
`formatting and outputting a message) that indicate that messages may
`include visual cues, such as animation, video, or icons. Id. at 40:11–42:2;
`see also id. at 41:14 (“Messages may be represented by pictures.”), 41:65–
`42:2 (“A portion of a game may be modified to indicate a message. . . . [A]
`message may be output by changing the design of a deck of cards in video
`poker.”), 44:5–56 (describing that messages outputted in a visual format,
`such as images, may include “alerts about activity-benefit offers may be
`animated to bounce up and down”).
`On this record, consistent with the disclosure of the ’064 patent, we
`determine that the claim term “message” encompasses “any communication,
`in any form, intended to be presented to a player or other party” including
`presentation in a combination “of different forms, including text, audio,
`video, and images.”
`E. Overview of the Asserted Prior Art
`1. Aristocrat
`Aristocrat is titled “Player Information Delivery” and published on
`June 8, 2000. Ex. 1004, codes (43), (54).
`Aristocrat describes a gaming machine that displays an animated
`character to communicate information to the player. Id., code (57). The
`character is independent of and appears asynchronously with respect to the
`game being played and is arranged to appear superimposed over any game
`screen currently displayed at the time the character is displayed. Id. Figure
`
`19
`
`
`
`IPR2022-00200
`Patent 8,795,064 B2
`7 of Aristocrat illustrates a gaming machine with a character displayed with
`a speech bubble and is reproduced below.
`
`
`As shown in Figure 7, slot machine 40 has “a video display screen 41 which
`displays a plurality of rotatable reels 42 carrying symbols 43” and “is
`arranged to pay a prize on the occurrence of a predetermined symbol or
`combination of symbols
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
