IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`
`
`
`
`ZYNGA INC.,
`
`
`
`
`
`Defendant.
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`C.A. No. 6:21-CV-00331-ADA
`
`Judge: Honorable Alan D. Albright
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS
`
`Pursuant to Paragraphs 1 and 2 of the Court’s Order Governing Proceedings – Patent Case
`
`(singed June 24, 2021), Plaintiffs IGT (“IGT US”) and IGT Canada Solutions ULC (“IGT
`
`Canada”) (together, “IGT”) hereby provide these Preliminary Infringement Contentions to
`
`Defendant Zynga Inc. (“Zynga”).
`
`Fact discovery has not yet begun and IGT’s investigation is ongoing. IGT expressly
`
`reserves the right to revise, amend, and/or supplement these infringement contentions, including
`
`after Zynga provides discovery or any other pertinent information, after the Court provides its
`
`Claim Construction Order, or for any other reason(s) contemplated by the Federal Rules of Civil
`
`Procedure, the Court’s Local Rules, or as allowed by the Court. IGT also reserves all rights to rely
`
`upon additional information and documents in support of its contentions and to revise its
`
`contentions.
`
`I.
`
`Identification of Asserted Claims and Accused Products
`
`Based on the information currently and reasonably available to IGT, in view of IGT’s
`
`present understanding of the proper construction of each of the claims listed below (collectively,
`
`the “Asserted Claims”) and based on IGT’s present understanding of the function and operation of
`
`the Zynga instrumentalities listed below (collectively, the “Accused Products”), Zynga has
`
`Zynga Ex. 1009, p. 1
`Zynga v. IGT
`IPR2022-00200
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`
`
`
`
`ZYNGA INC.,
`
`
`
`
`
`Defendant.
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`C.A. No. 6:21-CV-00331-ADA
`
`Judge: Honorable Alan D. Albright
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`PLAINTIFFS’ PRELIMINARY INFRINGEMENT CONTENTIONS
`
`Pursuant to Paragraphs 1 and 2 of the Court’s Order Governing Proceedings – Patent Case
`
`(singed June 24, 2021), Plaintiffs IGT (“IGT US”) and IGT Canada Solutions ULC (“IGT
`
`Canada”) (together, “IGT”) hereby provide these Preliminary Infringement Contentions to
`
`Defendant Zynga Inc. (“Zynga”).
`
`Fact discovery has not yet begun and IGT’s investigation is ongoing. IGT expressly
`
`reserves the right to revise, amend, and/or supplement these infringement contentions, including
`
`after Zynga provides discovery or any other pertinent information, after the Court provides its
`
`Claim Construction Order, or for any other reason(s) contemplated by the Federal Rules of Civil
`
`Procedure, the Court’s Local Rules, or as allowed by the Court. IGT also reserves all rights to rely
`
`upon additional information and documents in support of its contentions and to revise its
`
`contentions.
`
`I.
`
`Identification of Asserted Claims and Accused Products
`
`Based on the information currently and reasonably available to IGT, in view of IGT’s
`
`present understanding of the proper construction of each of the claims listed below (collectively,
`
`the “Asserted Claims”) and based on IGT’s present understanding of the function and operation of
`
`the Zynga instrumentalities listed below (collectively, the “Accused Products”), Zynga has
`
`Zynga Ex. 1009, p. 1
`Zynga v. IGT
`IPR2022-00200
`
`
`
`infringed and continues to infringe at least the following Asserted Claims in violation of 35 U.S.C.
`
`§ 271(a) by making, using, offering to sell, or selling within the United States, or by importing
`
`into the United States, at least the following Accused Products. Additionally, on information and
`
`belief, Zynga has developed and tested Accused Products in this District. As noted below, IGT
`
`provides its preliminary contentions regarding Zynga’s infringement of each of the Asserted
`
`Claims by the Accused Products in the attached charts.
`
`• Exhibit A: Claims 1, 4, 5, 7, 8, and 13 of U.S. Patent No. 8,708,791 (“’791 Patent”).
`
`• Exhibit B: Claims 1, 4–8, 10, and 13–17 of U.S. Patent No. 9,159,189 (“’189 Patent”).
`
`• Exhibit C: Claims 28–29, 31–33, 47–50, 84–86, 89–92, 99, and 100 of U.S. Patent
`
`No. 7,168,089 (“’089 Patent”).
`
`• Exhibit D: Claims 1–4, 6–12, 14–18, 20–24, and 26–37 of U.S. Patent No. 7,303,473
`
`(“’473 Patent”).
`
`• Exhibit E: Claims 9–13, 15, and 17–18 of U.S. Patent No. 8,795,064 (“’064 Patent”).
`
`• Exhibit F: Claims 24, 27–29, 31 and 34–36 of U.S. Patent No. 8,266,212 (“’212
`
`Patent”).
`
`Although discovery has not yet begun, Exhibits A–F contain charts identifying examples
`
`of where each element of each Asserted Claim is found in the Accused Products. Based on the
`
`information currently and reasonably available to IGT and based on IGT’s present understanding
`
`of the function and operation of the Accused Products, each element of the Asserted Claims is
`
`present in the Accused Products literally or under the doctrine of equivalents. IGT reserves all
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`rights to respond more fully regarding the doctrine of equivalents if and after Zynga provides
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`discovery (including, to the extent Zynga contends that it does not literally infringe any Asserted
`
`Claim, the basis for such contention) and/or after the Court provides its Claim Construction Order.
`
`
`
`2
`
`Zynga Ex. 1009, p. 2
`Zynga v. IGT
`IPR2022-00200
`
`
`
`IGT further reserves the right to revise, amend, and/or supplement the attached claim charts to the
`
`full extent contemplated by the Federal Rules of Civil Procedure, the Court’s Local Rules, or as
`
`allowed by the Court, including after Zynga provides discovery or any other pertinent information
`
`and after the Court provides its Claim Construction Order.
`
`Additionally, as set forth in IGT’s First Amended Complaint for Patent Infringement,
`
`which is incorporated herein by reference, Zynga has infringed and continues to infringe at least
`
`one Asserted Claim of each of the ’189 and ’473 Patents in violation of 35 U.S.C. §§ 271(b), (c),
`
`and (f). (See, e.g., Dkt. 7 ¶¶ 43–46, 76–79.)
`
`Further, as set forth in IGT’s First Amended Complaint for Patent Infringement, Zynga’s
`
`infringement of the Asserted Claims has been willful. (See, e.g., Dkt. 7 ¶¶ 27, 47, 60, 80, 92, 107.)
`
`IGT’s investigation is ongoing, and IGT reserves the right to identify additional Accused
`
`Products if it learns through discovery or otherwise that additional Zynga instrumentalities infringe
`
`any of the Asserted Claims.
`
`II.
`
`Identification of Priority Dates
`
`Based on the information currently and reasonably available to IGT, each of the Asserted
`
`Claims is entitled to the preliminary priority dates identified below:
`
`• The ’791 Patent is a divisional of U.S. Patent Application Ser. No. 11/480,713, which
`
`was filed on July 3, 2006. Based on IGT’s current investigation, Asserted Claims of
`
`the ’791 Patent are entitled to a priority date no later than July 3, 2006.
`
`• The ’189 Patent claims priority to U.S. Provisional Patent Application Ser. No.
`
`61/586,547, which was filed on January 13, 2012. Based on IGT’s current
`
`investigation, Asserted Claims of the ’189 Patent are entitled to a priority date no later
`
`than January 13, 2012.
`
`
`
`3
`
`Zynga Ex. 1009, p. 3
`Zynga v. IGT
`IPR2022-00200
`
`
`
`• The ’089 Patent is a continuation-in-part of U.S. Patent Application Ser. No.
`
`09/732,650, which was filed on December 7, 2000. Based on IGT’s current
`
`investigation, Asserted Claims of the ’089 Patent are entitled to a priority date no later
`
`than December 7, 2000.
`
`• The application from which the ’473 Patent issued was filed on February 25, 2002.
`
`Based on IGT’s current investigation, Asserted Claims of the ’473 Patent are entitled
`
`to a priority date no later than February 25, 2002.
`
`• The ’064 Patent claims priority to U.S. Provisional Patent Application Ser. No.
`
`60/418,397, which was filed on October 11, 2002. Based on IGT’s current
`
`investigation, Asserted Claims of the ’064 Patent are entitled to a priority date no later
`
`than October 11, 2002.
`
`• The ’212 Patent claims priority to U.S. Provisional Patent Application Ser. No.
`
`60/332,593, which was filed on November 23, 2001. Based on IGT’s current
`
`investigation, Asserted Claims of the ’212 Patent are entitled to a priority date no later
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`than November 23, 2001.
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`Additionally, contemporaneously with these Preliminary Infringement Contentions, IGT is
`
`producing copies of the file histories for each of the Patents-in-Suit.
`
`IGT’s investigation is ongoing. In the event that any of the Asserted Claims is found to
`
`not be entitled to the claimed priority date, such Asserted Claim(s) are entitled to claim priority to
`
`at least the date of the next-filed priority application, and are entitled to a priority date of no later
`
`than the date of filing of the application from which the Asserted Claims issued. IGT identifies
`
`the above priority dates for patents that claim priority to an earlier application expressly without
`
`waiver to asserting earlier invention dates. IGT reserves the right to assert invention dates earlier
`
`
`
`4
`
`Zynga Ex. 1009, p. 4
`Zynga v. IGT
`IPR2022-00200
`
`
`
`than the aforementioned priority dates based on the earlier conception and/or reduction to practice
`
`of the Asserted Claims.
`
`
`
`Dated: June 30, 2021
`
`Respectfully submitted,
`
`
`
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`
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`
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`
`
`By:
`
` /s/ Leif R. Sigmond Jr.
`Deron R. Dacus
`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Telephone: 903-705-1117
`Facsimile: 903-581-2543
`ddacus@dacusfirm.com
`
`
`Leif R. Sigmond Jr.
`Illinois State Registration No. 6204980
`Baker & Hostetler LLP
`One North Wacker Drive
`Suite 4500
`Chicago, IL 60606-2841
`Telephone: 312-416-6275
`Facsimile: 312-416-6201
`LSigmond@bakerlaw.com
`
`Attorneys for IGT and IGT Canada
`Solutions ULC
`
`5
`
`Zynga Ex. 1009, p. 5
`Zynga v. IGT
`IPR2022-00200
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 30, 2021, I caused the foregoing document to be served by
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`electronic mail on the following counsel of record for defendant:
`
`
`Zynga/IGT_Service@orrick.com
`
`Robert L. Uriarte
`ruriarte@orrick.com
`Li Shen
`lshen@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`
`Clement Seth Roberts
`croberts@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`405 Howard Street
`San Francisco, CA 94105-2669
`
`Kristina McKenna
`kmckenna@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`222 Berkeley Street
`Suite 2000
`Boston, MA 02116
`
`Mark D. Siegmund
`mark@waltfairpllc.com
`Law Firm of Walt, Fair PLLC
`1508 North Valley Mills Drive
`Waco, TX 76710
`
`
` /s/ Leif R. Sigmond Jr.
`Leif R. Sigmond Jr.
`
`
`
`
`
`
`
`
`
`
`
`Zynga Ex. 1009, p. 6
`Zynga v. IGT
`IPR2022-00200
`
`
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