Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Case No. 6:21-cv-00331-ADA
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§§
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`Plaintiffs
`
`v.
`
`Zynga Inc.,
`
`Defendant.
`
`ZYNGA INC.’S MOTION FOR SUMMARY JUDGMENT ON THE ’089 PATENT
`
`PUBLIC VERSION
`
`

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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 2 of 22
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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`TABLE OF EXHIBITS ................................................................................................................ iv
`I.
`INTRODUCTION ............................................................................................................. 1
`II.
`BACKGROUND ............................................................................................................... 1
`III.
`LEGAL STANDARD ........................................................................................................ 3
`IV. ARGUMENT ..................................................................................................................... 3
`A.
`Zynga Does Not Infringe Any Asserted Claim Of The ’089 Patent. ..................... 3
`1.
`Zynga Does Not Authorize Transfers Of “Gaming Software.” ................. 3
`2.
`The Court Should Reject IGT’s Equivalents Theory. ................................ 6
`The Asserted Claims of the ’089 Patent Are Invalid Under § 101. ....................... 8
`1.
`The Asserted Claims Are Directed To The Abstract Idea Of
`Controlling Access To Information. .......................................................... 8
`The Asserted Claims Do Not Contain Any Inventive Concept. .............. 12
`2.
`CONCLUSION ................................................................................................................ 14
`
`V.
`
`B.
`
`-i-
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009)..................................................................................................3
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................3, 10, 12, 14
`
`Berkheimer v. HP Inc.,
`890 F.3d 1369 (Fed. Cir. 2018)................................................................................................13
`
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)................................................................................................14
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014)................................................................................................13
`
`Data Scape Ltd. v. W. Digit. Corp.,
`816 F. App’x 461 (Fed. Cir. 2020) ............................................................................................5
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)................................................................................................10
`
`Dropbox, Inc. v. Synchronoss Techs., Inc.,
`815 F. App’x 529 (Fed. Cir. 2020) ..........................................................................................11
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)................................................................................................12
`
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000)..................................................................................................3
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..........................................................................................10, 11
`
`Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd.,
`955 F.3d 1317 (Fed. Cir. 2020)........................................................................................8, 9, 10
`
`FairWarning IP, LLC v. Iatric Sys., Inc.,
`839 F.3d 1089 (Fed. Cir. 2016)..................................................................................................9
`
`Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
`324 F.3d 1308 (Fed. Cir. 2003)..................................................................................................6
`
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 4 of 22
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`Mortg. Grader, Inc. v. First Choice Loan Servs., Inc.,
`811 F.3d 1314 (Fed. Cir. 2016)................................................................................................12
`
`OIP Techs., Inc. v. Amazon.com, Inc.,
`788 F.3d 1359 (Fed. Cir. 2015)................................................................................................13
`
`PersonalWeb Techs. LLC v. Google LLC,
`8 F.4th 1310 (Fed. Cir. 2021) ..............................................................................................9, 10
`
`Pharma Tech Sols., Inc. v. LifeScan, Inc.,
`942 F.3d 1372 (Fed. Cir. 2019)..................................................................................................7
`
`Prism Techs. LLC v. T-Mobile USA, Inc.,
`696 F. App’x 1014 (Fed. Cir. 2017) ..........................................................................................9
`
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)................................................................................................11
`
`In re TLI Commc’ns LLC Patent Litig.,
`823 F.3d 607 (Fed. Cir. 2016)..................................................................................................10
`
`Trading Techs. Int’l, Inc. v. Open E Cry, LLC,
`728 F.3d 1309 (Fed. Cir. 2013)..................................................................................................7
`
`Zafer Taahhut Insaat ve Ticaret A.S. v. United States,
`833 F.3d 1356 (Fed. Cir. 2016)..................................................................................................3
`
`-iii-
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 5 of 22
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`TABLE OF EXHIBITS
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`Exhibit No.
`Exhibit 1
`Exhibit 2
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`Exhibit 3
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`Exhibit 4
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`Exhibit 5
`Exhibit 6
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`Exhibit 7
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`Exhibit 8
`
`Description.
`U.S. Patent No. 7,168,089 (IGT_0000045)
`Relevant excerpts from Expert Report of Dr. Craig E. Wills Regarding
`Zynga’s Infringement of U.S. Patent Nos. 7,168,089 and 8,266,212
`Relevant excerpts from IGT Substantive Motion 1 (For Judgment Based On
`No Interference-In-Fact) as filed on June 4, 2010 in Patent Interference No.
`105,747 and produced by Zynga (ZYNGA00006207-266)
`Relevant excerpts from the January 10, 2023 deposition transcript of Craig
`E. Wills
`Relevant excerpts from U.S. Patent Application No. 10/658,836
`Relevant excerpts from the January 11, 2023 deposition transcript of Craig
`E. Wills
`Relevant excerpts from the Rebuttal Expert Report of Dr. Craig E. Wills
`Regarding the Validity of U.S. Patent Nos. 7,168,089 and 8,266,212
`Relevant excerpts from the Expert Report of David Crane Regarding
`Invalidity
`
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`I.
`
`INTRODUCTION
`
`IGT’s U.S. Patent No 7,168,089 (the “’089 patent”) is neither valid nor infringed. First,
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`each asserted claim of the ’089 patent requires authorizing transfers of “gaming software,” which
`
`the Court has construed to exclude “data alone.” But there is no dispute that the information that
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`IGT accuses of being “gaming software” here is only data and nothing else.
`
`Second, like many claims that have been invalidated by the Federal Circuit, the claims of
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`the ’089 patent are directed to an abstract idea for controlling access to resources. The ’089 patent
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`applies this abstract idea in the field of gaming machines using generic computer components and
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`methods, and includes no inventive concept.
`
`II.
`
`BACKGROUND
`
`IGT’s ’089 patent describes and claims methods for securely transferring gaming software
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`between networked gaming machines. The patent explains that, in prior-art systems, machines
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`within a casino could be networked together “via local dedicated networks” that, for security
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`reasons, did not allow communication “with devices located outside of the casino.” Ex. 1 (’089
`
`patent) at 3:36-40. The patent also explains that for locations “such as bars, convenience stores,
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`and supermarkets” that had only “a small number of gaming machines,” the expense of providing
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`“a dedicated communication network” for those machines “[was] usually not justified.” Id. at
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`3:17-28. To update software on gaming machines that were not connected to a dedicated network,
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`technicians would have to travel to the machine’s location and perform manual updates. Id. at 4:9-
`
`18. This was expensive and time-consuming. Id. The ’089 patent sought to solve this problem
`
`through a “software authorization agent” capable of: (1) “receiving a gaming software transaction
`
`request” from a gaming device; (2) authenticating that device’s identity; and then (3) “approv[ing]
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`or reject[ing] the transfer of gaming software from a second gaming device” to the first gaming
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`device. Id. at 4:41-56. The patent asserts that this approach would create “secure communication
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`methods” for the “transfer [of] gaming software and gaming information between two gaming
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`devices.” Id. at 4:34-36. IGT asserts claims 29, 84, and 90. Claim 84 is independent and recites:
`
`84. In a first gaming device, a method of transferring gaming software to a
`second gaming device, said method comprising:
`
`[a] receiving a gaming software transaction request from the second gaming
`device;
`
`[b] sending the gaming software transaction request to a gaming software
`authorization agent that approves or rejects the transfer of gaming software;
`
`[c] receiving an authorization message from the gaming software
`authorization agent wherein the authorization message includes information
`indicating whether the first gaming device is authorized to transfer the
`gaming software to the second gaming device; and
`
`[d] transferring the gaming software to the second gaming device;
`
`[e] wherein the gaming software is for at least one of a) a game of chance
`played on a gaming machine, b) a bonus game of chance played on a gaming
`machine, c) a device driver for a device installed on a gaming machine, d)
`a player tracking service on a gaming machine and e) an operating system
`installed on a gaming machine.
`
`Claim 29 depends from independent claim 28, and recites essentially the same method as
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`claim 84 but from the perspective of the software authorization agent. Claim 29 also adds that the
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`second gaming device is “at least one of a game server and a gaming machine.” Id. at 43:44-46.
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`Claim 90, which depends from claims 89 and 84, adds more detail about the information contained
`
`within the “gaming software transaction request.” Id. at 48:27-36.
`
`At claim construction, this Court construed “gaming machine” and “gaming software” to
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`have their plain meaning, and held, based on statements IGT made during prosecution, that “data
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`alone is not gaming software.” Dkt. 64 at 1. The Court construed “software authorization agent”
`
`as “a device that authorizes (that is approves or rejects) specific transfers of gaming software based
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`on applicable rules, and monitors (that is tracks) these transfers.” Id.
`
`IGT accuses Zynga of infringement insofar as Zynga’s devices allegedly authorize
`
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`transfers of “account and game state information” from a Zynga server to a customer device that
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`already has a Zynga game running on it. Ex. 2 (Wills Inf. Rpt.) ¶ 115.
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`III.
`
`LEGAL STANDARD
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`“[A]n entry of summary judgment is appropriate against” a plaintiff “who fails to make a
`
`showing sufficient to establish the existence of an essential element to its case, and on which it
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`will bear the burden of proof at trial.” Zafer Taahhut Insaat ve Ticaret A.S. v. United States, 833
`
`F.3d 1356, 1362-63 (Fed. Cir. 2016) (citation omitted).
`
`For noninfringement, a court first construes the claims, and then “compar[es] … the
`
`properly construed claims to the accused” product or process. Abbott Labs. v. Sandoz, Inc., 566
`
`F.3d 1282, 1288 (Fed. Cir. 2009). IGT, as the patentee, “must show the presence of every element”
`
`of a claim, “or its substantial equivalent in the accused device.” Elekta Instrument S.A. v. O.U.R.
`
`Sci. Int’l, Inc., 214 F.3d 1302, 1306 (Fed. Cir. 2000) (citation omitted).
`
`For patent ineligibility, courts apply a two-step test. Alice Corp. Pty. Ltd. v. CLS Bank
`
`Int’l, 573 U.S. 208, 217-18 (2014). At step one, a court asks if the asserted claims are “directed
`
`to” an abstract idea. Id. at 217. If so, the court then determines whether the elements of the claim,
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`“both individually and as an ordered combination,” contain an “inventive concept” that
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`“transform[s]” the claim “into a patent-eligible application.” Id. at 217.
`
`IV.
`
`ARGUMENT
`
`A.
`
`Zynga Does Not Infringe Any Asserted Claim Of The ’089 Patent.
`
`1.
`
`Zynga Does Not Authorize Transfers Of “Gaming Software.”
`
`Zynga does not infringe the limitations in all asserted claims requiring approval of transfers
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`of “gaming software”—e.g., steps [b] and [d] in claim 84. The Court ruled “gaming software” has
`
`its plain and ordinary meaning, and that “data alone is not gaming software.” Dkt. 64.
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`The Court reached the latter conclusion, at least in part, based on IGT’s statements during
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`prosecution. The ’089 patent was the subject of an interference proceeding against a patent
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`application filed by Legal iGaming, Inc. (“iGaming”). In that proceeding, IGT explicitly
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`distinguished transfers of the “gaming information” allegedly described in iGaming’s application
`
`from the transfers of “gaming software” as claimed by the ’089 patent. In particular, IGT told the
`
`Patent Office that “one of ordinary skill in the art would understand that ‘gaming information’ as
`
`recited in iGaming’s claims describes the ‘information generated or exchanged during play of a
`
`gaming machine,’ not the underlying software code that is executed on the gaming machine to
`
`play the game.” Ex. 3 (ZYNGA00006207) at 6216. Thus, IGT made clear that its claims do not
`
`pertain to authorizations for or transfer of “data alone.”
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`IGT is now taking the opposite position—i.e., that its claims cover the transfer of data that
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`does not contain anything else (e.g., executable software code) and instead consists of “data alone.”
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`Specifically, the only thing that IGT has accused of being the required gaming software in Zynga’s
`
`systems is the
`
`
`
` And he does not
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`1
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`identify anything else (such as any executable software code) that accompanies this data. Id.
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`IGT and Dr. Wills nonetheless contend that the accused
`
`
`
` qualifies as “gaming software” and is not “data alone.” In particular, they argue that
`
`because
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` are not, for example, isolated
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`data resting in memory,” but must be “loaded by the client software and processed in some way,”
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`it is not data alone.2 Ex. 2 (Wills Inf. Rpt.) ¶ 116. Dr. Wills further expressed the view that while
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`the
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` is data while it is being transferred, it becomes part of
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`the software at runtime when the data is ingested and processed by the software resident on the
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`receiving device. Ex. 4 (Wills Dep. Tr.) at 105:20-109:11.
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`First, the fact that data is processed by software once it is received does not help IGT. As
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`an initial matter, all computer data is processed after it is received because at a basic level, that’s
`
`what computers are for—processing data. E.g., Data Scape Ltd. v. W. Digit. Corp., 816 F. App’x
`
`461, 464 (Fed. Cir. 2020) (explaining that “storing, transferring, and processing data” are the
`
`“standard functions” of a computer). Put differently, if merely processing data after it is
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`transmitted meant that it was not “data alone,” the Court’s construction (and the distinction that
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`IGT made between gaming information and gaming software) would have no meaning. Indeed,
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`Dr. Wills acknowledged that, under his interpretation, even the transmission of images, movies, or
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`text would qualify as the transfer of software because they are processed after they are received.
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`Ex. 4 (Wills Dep. Tr.) at 105:20-109:11 (testifying that even the novel “Moby Dick” could be
`
`“gaming software” if it was displayed by an application after transmission).
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`Second, the relevant claim limitations use the term “gaming software” to refer to the files
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`2 This mirrors the position that IGT advanced, and the Court apparently rejected during claim
`construction. See Dkt. 33 (IGT Responsive Claim Construction Brief) at 9-11 (arguing that
`“gaming software” should not be construed to exclude data).
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 11 of 22
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`or information that is authorized for transfer (in step [b]) and transferred (in step [d]). Therefore,
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`it is the specific files or information that are requested, authorized and sent between the two
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`gaming machines that must be more than “data alone.” IGT cannot point to other software that
`
`the data is later combined with to show that what was transferred is software. In other words, IGT
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`has to point to something that is authorized for transfer and transferred that (1) consists of more
`
`than just data and (2) qualifies as gaming software. But even Dr. Wills acknowledges that what is
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`actually transferred—
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`—is only data. In
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`particular, Dr. Wills admitted that the accused information “is simply data that is transferred over
`
`the network and received by the client device.” Ex. 4 (Wills Dep. Tr.) at 109:5-11. And,
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`conversely, he acknowledged it did not contain executable instructions. Id. at 89:7-21.
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`The bottom line is that there is no factual dispute about how this part of Zynga’s system
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`works. Both parties agree that the transferred
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` (i) is data
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`provided in a data interchange format and (ii) does not contain anything else (such as executable
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`instructions). The only dispute is whether this data file qualifies as “data alone” under the Court’s
`
`construction or whether, because that data is ultimately processed after it is received, it is not data
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`alone and instead qualifies as software. That dispute does not require a trial, and the Court should
`
`therefore rule that Zynga does not literally infringe the asserted claims of the ’089 patent.
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`2.
`
`The Court Should Reject IGT’s Equivalents Theory.
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`As a backup argument, IGT attempts to invoke the doctrine of equivalents (“DOE”).
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`Specifically, IGT seeks to offer a doctrine of equivalents theory that “[a]ny differences between
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`transferring data alone from the Poker server to the user’s client device, as opposed to transferring
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`other software components along with such data, would be insubstantial.” Ex. 2 (Wills Inf. Rpt.)
`
`¶ 117. This theory fails as a matter of law for two reasons.
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`First, IGT’s DOE theory vitiates the “data alone” limitation. See Lockheed Martin Corp.
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`v. Space Sys./Loral, Inc., 324 F.3d 1308, 1321 (Fed. Cir. 2003) (rejecting a DOE theory that would
`
`vitiate a limitation required under the proper claim construction). IGT’s assertion that
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`“transferring data alone” is equivalent to “not transferring data alone” would be directly contrary
`
`to the Court’s construction. Ex. 2 (Wills Inf. Rpt.) ¶ 117.
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`Second, IGT’s DOE argument is barred by the doctrine of prosecution history estoppel.
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`That doctrine “applies as part of an infringement analysis to prevent a patentee from using the
`
`doctrine of equivalents to recapture subject matter surrendered from the literal scope of a claim
`
`during prosecution.” Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1322 (Fed.
`
`Cir. 2013). “Clear assertions made during prosecution in support of patentability,” will cause
`
`estoppel, even when those assertions are not “required to secure allowance of the claim.” See
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`Pharma Tech Sols., Inc. v. LifeScan, Inc., 942 F.3d 1372, 1380 (Fed. Cir. 2019) (citations omitted).
`
`The statements that IGT made regarding the scope of the “gaming software” limitation
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`during the interference proceeding trigger prosecution history estoppel here. In particular, during
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`the interference proceedings against iGaming, IGT argued that iGaming’s competing application
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`did not disclose “a request for … the transfer of ‘gaming software’ (i.e., ‘one or more software
`
`components executed on a gaming machine to play a game’), as recited in all of IGT’s independent
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`claims.” Ex. 3 (ZYNGA00006207) at 6216. IGT argued that iGaming’s application instead
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`disclosed a request for the transfer of “gaming information.” Id. Notably, IGT pointed to passages
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`in the iGaming application that described “a plurality of player records of information” being sent
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`over the network, and information reflecting “the state of the game that is being played,” and
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`argued that “gaming information” should be construed to mean “information generated or
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`exchanged during play of a gaming machine.” See Ex. 3 (ZYNGA00006207) at 6214-15 (citing
`
`Ex. 5 (U.S. Pat. App. No. 10/658,836) ¶¶ [0056], [0102]). Then, IGT specifically argued that
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`because iGaming’s claims only transferred “gaming information,” “a transfer of ‘gaming software’
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`cannot lie within the scope of iGaming’s involved claims.” Ex. 3 (ZYNGA00006207) at 6216.
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`This is fatal to IGT’s DOE argument because the types of information described in
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`iGaming’s application, (i.e., “player records” and “the state of the game that is being played”), are
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`the same types of information that IGT now asserts are “gaming software.” Ex. 2 (Wills Inf. Rpt.)
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`¶ 115. Because IGT specifically distinguished these types of data from “gaming software” during
`
`the interference, it cannot use the DOE to recapture that subject matter.
`
`B.
`
`The Asserted Claims of the ’089 Patent Are Invalid Under § 101.
`
`1.
`
`The Asserted Claims Are Directed To The Abstract Idea Of
`Controlling Access To Information.
`
`The Asserted Claims are directed to the abstract idea of controlling access to resources via
`
`software. In particular, they are directed to authorizing and monitoring the transfer of gaming
`
`software between a first and second gaming device using a software authorization agent.
`
`Independent claim 84 recites a four-step process of [a] receiving a request for a software transfer,
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`[b] sending the request to a “software authorization agent” for approval, [c] receiving a response,
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`and then [d] transferring the software. Ex. 1 (’089 patent) at 47:53-48:7. To this basic process the
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`claims add only [e] that the transferred software falls into at least one of several broad types or is
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`used for one of several purposes. Independent Claim 28 (from which asserted claim 29 depends)
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`recites the same process, but from the perspective of the software authorization agent.
`
`The Federal Circuit has “repeatedly found the concept of controlling access to resources
`
`via software to be an abstract idea.” See Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955
`
`F.3d 1317, 1327 (Fed. Cir. 2020) (collecting cases). In Ericsson, the court held that claims were
`
`directed to the abstract idea of controlling access to resources because they focused on a “controller
`
`for controlling [apps’] access” to services on a platform such as a smartphone; the controller would
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`“receiv[e] a request” and then “determin[e] if the request … should be granted.” Id. at 1326. The
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`Asserted Claims are highly analogous. Indeed, the function of the claimed software authorization
`
`agent is identical, with the added function that it monitors or “tracks” the approved transfers. Of
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`course, tracking is just another abstract idea. See FairWarning IP, LLC v. Iatric Sys., Inc., 839
`
`F.3d 1089, 1097 (Fed. Cir. 2016) (finding claims directed to “monitoring audit log data” were
`
`abstract and ineligible). Other Federal Circuit cases in the same vein include PersonalWeb Techs.
`
`LLC v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021), where the court found that claims were
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`directed to “controlling access to data items,” and Prism Techs. LLC v. T-Mobile USA, Inc., 696
`
`F. App’x 1014, 1016 (Fed. Cir. 2017), where the court found that claims were directed to
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`“control[ling] access to protected computer resources by authenticating identity data.”
`
`Because the idea of controlling access to resources “is pervasive in human activity,”
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`Ericsson, 955 F.3d at 1327, it is easy to analogize the asserted claims to real-world activity. For
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`example, a librarian could (a) receive a request for a software transfer (e.g., a library patron asking
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`to check out a video game, or a copy of Microsoft Windows), (b) forward the request to an
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`“authorization agent” for approval (by asking a supervisor, or—for a “software authorization
`
`agent”—looking up the patron’s credentials on a computer), (c) receive a response (such as a
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`message telling the librarian that the user is authorized to borrow the software) and then (d)
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`transferring the software and tracking that transfer (by passing a CD with the software on it to the
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`patron and ensuring they received it). This analogy is especially apt because (as the ’089 patent
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`acknowledges) the purpose of the invention was to use computer networks to replace a task that
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`was traditionally performed by humans. See Ex. 1 (’089 patent) at 4:9-18.
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`The analogy set forth in the previous paragraph also closely resembles analogies that the
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`Federal Circuit has used for other claims directed to the abstract idea of controlling access to
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`resources using software. For example, in both Ericsson and PersonalWeb, the Federal Circuit
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`analogized the challenged claims to a library receiving requests for access to books and other
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`materials, evaluating the requests, and “loaning materials only to card-holding members.”
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`Ericsson, 955 F.3d at 1327; PersonalWeb, 8 F.4th at 1317. Similarly, office buildings “allow[]
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`certain employees entrance to only certain floors,” while banks “offer[] or deny[] loans to
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`applicants based on suitability and intended use.” Ericsson, 955 F.3d at 1327. And the Postal
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`Service receives requests to send mail, evaluates whether the mail has sufficient postage
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`(depending on the type of mail and sender), and delivers only properly paid mail. Thus, the
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`software authorization agent’s function here merely computerizes an unpatentable method of
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`organizing human activity. Alice, 573 U.S. at 219-20.
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`Nothing in the Asserted Claims changes this result. First, “limit[ing] the abstract idea to
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`[the] particular environment” of gaming machines “does not make the[m] any less abstract.” In re
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`TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). Inventors cannot evade the
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`“prohibition against patenting abstract ideas” by cabining the application of an abstract idea “to a
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`particular technological environment.” Alice, 573 U.S. at 222 (citation omitted). That is especially
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`true here because IGT asserts that “gaming machines” are not specialized devices but can instead
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`be any general-purpose computer used to play a game. Ex. 6 (Wills Dep Tr.) at 316:3-317:11
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`(admitting that a conventional laptop could be any of the three claimed devices).
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`Second, the claims here do not “overcome a problem specifically arising in the realm of
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`computer networks,” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
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`2014), or “improv[e] … computer capabilities,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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`1336 (Fed. Cir. 2016). Again, the specification explains that transferring gaming software to
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`gaming machines was a task that was previously performed by humans, and not a task that is
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 16 of 22
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`specific to computer networks. See Ex. 1 (’089 patent) at 4:9-18. In fact, the problem that the
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`’089 patent purports to solve is the drudgery of relying on a human to upload new gaming software.
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`Id. The patent purports to solve this problem by having computers distribute and approve software,
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`so that a person does not need to drive around to different locations to perform them. Id. at 4:18-
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`24. That process is just using computer networks “merely as a tool” for their intended purposes,
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`not providing any “improvement in computer [or network] capabilities.” Enfish, 822 F.3d at 1336.
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`The claims also do not recite any improvement to network functionality—indeed, the word
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`“network” does not even appear in the claims. Dropbox, Inc. v. Synchronoss Techs., Inc., 815 F.
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`App’x 529, 533 (Fed. Cir. 2020) (rejecting proposed technological solution when it was not evident
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`in the claims). But even assuming that a network is required, the ’089 patent does not claim any
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`new way of transferring software over a network or require any special kind of network. Instead,
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`the patent, at best, purports to make use of generic networks——such as “the Internet” and “local
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`area network[s]”—and generic computers—such as a “network interface” and a “processor”—to
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`implement the recited functions. Ex. 1 (’089 patent) at 5:8-12, 10:48-55, 24:32-36. Where “the
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`specification makes clear that off-the-shelf computer technology is usable” to perform the process,
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`the claims are not “directed to improvements in the way computers and networks carry out their
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`basic functions.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
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`Similarly, that the claims are structured such that the gaming device that receives the
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`transfer request gets permission from a separate “authorization agent” does not make the idea any
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`less abstract. Asking for permission before you take an action is, in itself, an abstract concept.
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`Counsel asks for permission from the Court before providing a document to a witness. Put
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`differently, claiming the idea of asking another entity for permission to provide a resource does
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`make the claims any less directed to an abstract idea. At most, it simply adds another abstract idea
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`Case 6:21-cv-00331-ADA Document 146 Filed 02/09/23 Page 17 of 22
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`to the claims. And “combin[ing]” multiple abstract ideas does not save claims from abstraction at
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`step one. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
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`2.
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`The Asserted Claims Do Not Contain Any Inventive Concept.
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`The claims fail Alice step two because nothing in them either individually or as a whole
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`“transform[s] them into patent-eligible applications of the abstract idea at their core.” Id.
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`First, the Asserted Claims rely on generic computer components to carry out the abstract
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`idea. In particular, the “software authorization agent” does not have any specific physical
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`structure, nor does it require the use of a particular data structure. Neither side argued for such a
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`limitation during claim construction, and the specification makes clear that the software
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`authorization agent (and the gaming devices) consist of generic and conventional components such
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`as “a network interface” and “a processor.” Ex. 1 (’089 patent) at 9:53-60, 10:48-55; see also id.
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`at 24:32-35 (the software authorization agent may consist of “conventional data server[s],” such
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`as “a router” or “a network interface,”), 10:35-36 (the gaming device might consist of “a hand-
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`held computing device” or “a portable memory device.”).
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`Similarly, the specification does not purport to require any kind of new or specialized
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`network, but instead purports to work over generic and conventional networks such as “the
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`Internet.” Ex. 1 (’089 patent) at 5:8-12. And there can be no argument that the various categories
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`of software that might b