Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 1 of 24
`
`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 THAT ASSERTED PATENT
`8,266,212 IS NOT INFRINGED OR PATENT ELIGIBLE
`
`PUBLIC VERSION
`
`

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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 2 of 24
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ......................................................................................................... ii
`TABLE OF EXHIBITS ................................................................................................................ iv
`I.
`INTRODUCTION ............................................................................................................. 1
`II.
`BACKGROUND ............................................................................................................... 1
`A.
`The ’212 Patent ...................................................................................................... 1
`B.
`Accused Products ................................................................................................... 2
`LEGAL STANDARD ........................................................................................................ 2
`III.
`IV. ARGUMENT ..................................................................................................................... 3
`A.
`Zynga Does Not Infringe The ’212 Patent. ............................................................ 3
`1.
`IGT Identified No Instance Of Zynga Providing Multiple Call
`Backs. ......................................................................................................... 3
`Zynga Does Not Perform The Step Of “Providing A Node” Or
`“Providing A First Gaming Machine Coupled To The
`Communication Bus” Nor Direct Or Control Others Who May Do
`So. .............................................................................................................. 5
`The ’212 Patent’s Asserted Claims Are Ineligible Under § 101. ........................ 11
`1.
`The Asserted Claims Are Directed To The Abstract Idea Of
`Requesting And Receiving Services Over A Network. ........................... 11
`The Asserted Claims Do Not Contain Any Inventive Concept. .............. 13
`2.
`CONCLUSION ................................................................................................................ 16
`
`V.
`
`2.
`
`B.
`
`i
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 3 of 24
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009)..................................................................................................3
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)................................................................................................12
`
`Akamai Techs., Inc. v. Limelight Networks, Inc.,
`797 F.3d 1020 (Fed. Cir. 2015)......................................................................................8, 10, 11
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................3, 13, 15, 16
`
`Apple Inc. v. MPH Techs. Oy,
`28 F.4th 254 (Fed. Cir. 2022) ....................................................................................................4
`
`BSG Tech LLC v. Buyseasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)................................................................................................14
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)......................................................................................12, 13, 16
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)..........................................................................................14, 16
`
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000)..................................................................................................3
`
`Eli Lilly & Co. v. Teva Parenteral Medicines, Inc.,
`845 F.3d 1357 (Fed. Cir. 2017)..................................................................................................9
`
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012)................................................................................................5, 6
`
`ESW Holdings, Inc. v. Roku, Inc.,
`No. 6-19-CV-00044-ADA, 2021 WL 1069047 (W.D. Tex. Mar. 18, 2021) ...................8, 9, 11
`
`Lone Star Tech. Innovations, LLC v. ASUSTeK Comput. Inc.,
`No. 6:19-CV-00059-RWS, 2020 WL 6803249 (E.D. Tex. Jan. 14, 2020)..............................11
`
`SAP Am., Inc., v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)................................................................................................14
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 4 of 24
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`Travel Sentry, Inc. v. Tropp,
`877 F.3d 1370 (Fed. Cir. 2017)..................................................................................7, 9, 10, 11
`
`Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
`874 F.3d 1329 (Fed. Cir. 2017).................................................................................... 12, 14-15
`
`Zafer Taahhut Ticaret A.S. v. United States,
`833 F.3d 1356 (Fed. Cir. 2016)..................................................................................................2
`
`Statutes
`
`35 U.S.C. § 101 ......................................................................................................................1, 3, 11
`
`-iii-
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 5 of 24
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`Exhibit No.
`Exhibit 1
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 11
`
`Exhibit 12
`
`Exhibit 13
`
`TABLE OF EXHIBITS
`
`Description.
`U.S. Patent No. 8,266,212 (IGT_0000184)
`Relevant excerpts from Rebuttal Expert Report of Michael J. Donahoo
`Regarding Noninfringement
`Relevant excerpts from August 5, 2022 deposition transcript of Martin
`Sarabura
`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 January 10, 2023 deposition transcript of Craig E.
`Wills
`Relevant excerpts from August 30, 2022 deposition transcript of William
`Watters
`Relevant excerpts from August 9, 2022 deposition transcript of Allen
`Rutledge
`Order Granting Motion for Summary Judgment, Estech Sys., Inc. v. Howard
`Midstream Energy Partners, Case No. 6:20-cv-777-ADA, Dkt. 141,
`abbreviated herein as “Estech Summary Judgment Order”
`“Provide Definition & Meaning” from merriam-
`webster.com/dictionary/provide
`Relevant excerpts from August 23, 2022 deposition transcript of Andrea
`Courant
`Relevant excerpts from Expert Report of Sandeep Chatterjee, Ph.D.
`Regarding Invalidity of U.S. Patent No. 8,266,212
`Relevant excerpts from 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 January 11, 2023 deposition transcript of Craig E.
`Wills
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 6 of 24
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`I.
`
`INTRODUCTION
`
`IGT’s U.S. Patent No. 8,266,212 (“the ’212 patent”) is not infringed and is invalid. IGT
`
`has no evidence that Zynga’s accused products meet at least two limitations of the ’212 patent
`
`asserted claims, so summary judgment of no infringement is proper. Additionally, the ’212 patent
`
`is not patent eligible under 35 U.S.C. § 101 because its claims are directed to the abstract idea of
`
`requesting and receiving services over a network, and include no inventive concept.
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’212 Patent
`
`The ’212 patent describes and claims a networked gaming system. The patent discloses
`
`various ways for different “gaming machines, servers, workstations, mobile PCs, [and] handheld
`
`devices,” which may be “manufactured by dozens of vendors,” to “talk together over a network”
`
`and “understand one-another.” Ex. 1 (’212 patent), Abstract.
`
`As relevant here, the ’212 patent claims the use of “publish-and-subscribe” methods of
`
`communicating. Publish-and-subscribe is a protocol for communicating among multiple servers
`
`and devices, or nodes, on a network. Ex. 2 (Donahoo Rpt.) ¶ 51. In a publish-and-subscribe
`
`system, a central “broker”—which can be a server or other node—receives and publishes (i.e.,
`
`distributes), data to subscribed clients over the network. Id. Clients can publish data to the broker
`
`or subscribe to get data from it. Id. Clients that subscribe to data automatically receive updated
`
`data from the broker. Id.
`
`IGT asserts claims 27, 28, 31, 34, 35. Claim 31, the only asserted independent claim,
`
`provides:
`
`31. A method for distributed gaming over a communication bus,
`comprising:
`
`[a] providing a first node and coupling the first node to the
`communication bus;
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 7 of 24
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`[b] publishing, by the first node, a high-level function over the
`communication bus;
`
`[c] providing a first gaming machine coupled to the communication
`bus;
`
`[d] receiving, from the first gaming machine, a request to subscribe
`to the published high-level function;
`
`[e] accepting the subscription request;
`
`[f] initiating a gaming session on the first gaming machine, and [g]
`responsive to updates occurring during the gaming session,
`providing call backs, by the first node, the call backs returning a
`result of the execution of the high-level function to the first gaming
`machine over the communication bus.
`
`At claim construction, this Court determined that “publishing” and “high-level function”
`
`should be construed according to their plain meaning. Dkt. 64 at 2. This Court construed “node”
`
`to mean “a device that is connected as part of a computing network.” Id.
`
`B.
`
`Accused Products
`
`IGT accuses the in-app purchasing feature of certain Zynga games of infringing the
`
`asserted claims of the ’212 patent. Zynga’s in-app purchasing feature allows players to make
`
`purchases from a third-party store while using Zynga’s apps. Ex. 3 (Sarabura Dep. Tr.) at 77:6-
`
`79:5, 80:11-16. For purposes of showing infringement, the parties have agreed that the Outfox
`
`version of Zynga’s “Zynga Poker” game is representative of how the in-app purchasing feature
`
`operates for all games accused of infringing the ’212 patent. Ex. 4 (Wills Inf. Rpt.) ¶ 87.
`
`III.
`
`LEGAL STANDARD
`
`“[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
`
`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).
`
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`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 invalidity under § 101, courts apply a two-step test to determine whether claims are
`
`patent-eligible. 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” a patent-ineligible concept, such as an abstract
`
`idea. Id. at 217. If claims are directed to an abstract idea, the court then determines whether the
`
`elements of the claim, “both individually and as an ordered combination,” contain an “inventive
`
`concept” that “transform[s]” the claim “into a patent-eligible application.” Id.
`
`IV.
`
`ARGUMENT
`
`A.
`
`Zynga Does Not Infringe The ’212 Patent.
`
`Zynga’s accused products do not infringe the Asserted Claims of the ’212 patent for two
`
`independent two reasons on which there is no genuine dispute of material fact.
`
`1. IGT Identified No Instance Of Zynga Providing Multiple Call Backs.
`
`The Court should grant summary judgment of no infringement because IGT has no
`
`evidence that Zynga has ever provided multiple call backs during a single gaming session or to
`
`any single client device. Claims 24 and 31—from which all the Asserted Claims depend—are
`
`method claims that require, inter alia:
`
`responsive to updates occurring during the gaming session,
`providing call backs, … the call backs returning a result of the
`execution of the first high-level function … over the communication
`bus.
`
`Ex. 1 (’212 patent), Claim 31 (emphasis added). Because the claims require plural call backs, at
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 9 of 24
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`least two call backs must be sent. See Apple Inc. v. MPH Techs. Oy, 28 F.4th 254, 261 (Fed. Cir.
`
`2022) (“In accordance with common English usage, we presume a plural term refers to two or
`
`more items.”). And these multiple call backs must be performed during a single gaming session
`
`because the claim says that they are “responsive to updates occurring during the gaming session.”
`
`In other words, the claim limitation calls for a plurality of updates that cause a plurality of call
`
`backs during “the” (singular) gaming session.
`
`IGT contends that the call back in Zynga’s system is the “
`
`” message sent
`
`from the server to the client device
`
`
`
`. Ex. 4 (Wills Inf. Rpt.) ¶¶ 259, 318. It is undisputed that Zynga sends
`
`one and only one “
`
`” message per in-game purchase. See Ex. 5 (Wills Dep. Tr.) at
`
`232:10-12 (“
`
`”), 252:13-25 (“
`
`
`
`
`
`”). Thus, the only way that
`
`multiple “call backs” could occur during a single gaming session (under the only theory that IGT
`
`has offered) is if multiple items were purchased during a session.
`
`But IGT has no evidence that anyone has ever made two or more purchases during a
`
`gaming session. Indeed, IGT’s expert expressly admitted that he did not “
`
`because “
`
`
`
`”
`
`
`
`” See Ex. 5 (Wills Dep. Tr.) at 250:4-12.
`
`IGT also has no evidence that Zynga made multiple in-app purchases during a gaming
`
`session while testing its products. When pressed at his deposition, IGT’s exert, Dr. Wills, stated
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`that any evidence he might have for this behavior “
`
`” cited
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`in ¶ 242 of his noninfringement report. See id. at 250:13-251:11. The testimony cited in that
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`paragraph
`
`90:24-105:18 (clarifying that “
`
`See Ex. 6 (Watters Dep. Tr.) at
`
`
`
`
`
`”); Ex. 7 (Rutledge Dep. Tr.) at 26:18-27:9, 28:15-31:20, 41:1-51:20 (only confirming that
`
`). Thus, IGT has no evidence that Zynga ever
`
`provided multiple call backs during a gaming session as a result of testing.
`
`IGT’s failure of proof warrants summary judgment. IGT must provide evidence that Zynga
`
`carried out the claimed methods, not merely establish that it would be possible for someone to
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`infringe using Zynga’s system. Put differently, because all the asserted claims are method claims,
`
`IGT must show that every step of an asserted method actually was performed, and cannot simply
`
`speculate that Zynga’s system is capable of sending multiple call backs. See ePlus, Inc. v. Lawson
`
`Software, Inc., 700 F.3d 509, 521 (Fed. Cir. 2012) (method claim not infringed simply because the
`
`accused product or system has the capability of being used in a manner that infringes); Ex. 8
`
`(Estech Summary Judgment Order) at 11-13 (granting summary judgment because this Court
`
`found that the “evidence at best shows that the RingCentral system is capable of” infringement).
`
`Because IGT has no evidence that Zynga ever performed the claimed step of sending multiple call
`
`backs during a gaming session it cannot show infringement as a matter of law.
`
` Or
`2. Zynga Does Not Perform The Step Of Providing A Node
`Providing A First Gaming Machine Coupled To The Communication
`Bus
` Nor Direct Or Control Others Who May Do So.
`
`Zynga’s accused products also do not infringe the Asserted Claims because Zynga does
`
`not perform the step of “providing a node coupled to the communication bus” as required by claims
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 11 of 24
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`27 and 28, or the analogous step of “providing a first gaming machine coupled to the
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`communication bus,” as required by claim 31 and its dependents. To “provide” means “to supply
`
`or make available (something wanted or needed).” Ex. 9. According to IGT, the “node” and the
`
`“first gaming machine” are a customer’s smartphone or laptop and the “communication bus” is the
`
`Internet. Ex. 4 (Wills Inf. Rpt.) ¶¶ 236-239, 294-297. This creates a major problem for IGT’s
`
`infringement theory because Zynga does not supply or make available smart phones or Internet
`
`connections. Id. ¶¶ 89-90. Instead, Zynga’s software is loaded onto devices (e.g., smartphones
`
`and laptops) provided by third parties after those third parties connect their devices to the Internet,
`
`e.g., by contracting with an unrelated ISP. Id. None of these facts are disputed. Instead, IGT
`
`makes two arguments as to how this state of affairs constitutes Zynga “providing” a user device
`
`coupled to a communication bus.1
`
`IGT’s first theory is that Zynga provides the user’s device
`
`
`
` Ex. 4 (Wills
`
`Inf. Rpt.) ¶¶ 237, 295 (emphasis added).2 This theory does not work.
`
`As an initial matter, the Court’s construction of the term “node” is “a device that is
`
`connected as part of a computing network.” Dkt. 64 at 2 (emphasis added). And the term “first
`
`gaming machine” likewise refers to a piece of hardware. The software that Zynga provides is not
`
`a device, instead, it is code that is installed and run on the device. Put differently, before a user
`
`can download and run the Zynga Poker application from an app-store, the user must already have
`
`1 IGT also advances a third theory—that Zynga “provides” devices to its employees for testing
`purposes. That theory is not a subject of this motion. This motion seeks summary determination
`that Zynga does not infringe any claim of the ’212 patent due to its interactions with customers.
`2 Nakama is a third-party server that automatically updates a client device following an in-app
`purchase. See Ex. 6 (Watters Dep. Tr.) at 32:10-33:24.
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`the device and that device must already be connected to the Internet. Ex. 10 (Courant Dep. Tr.) at
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`40:4-41:24, 44:22-45:3. In other words, unless the user already has provided a “node” or “gaming
`
`machine” that is coupled to the Internet, they cannot even get Zynga’s software onto that device.
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`Thus, downloading the software does not “provide” the device or its Internet connection—as those
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`things already existed before the software was downloaded. The same thing is true with respect
`
`to the Nakama connection. As Dr. Wills’s quote above makes clear, a Nakama connection is a
`
`kind of connection that is made over the Internet. Thus, for Zynga’s software to make that
`
`connection, the user’s device must already be connected to the Internet. Conversely, if the user
`
`hadn’t already provided an Internet-connected device, Zynga’s servers wouldn’t be able to
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`communicate with it or establish any kind of connection. Id.
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`IGT’s second argument acknowledges that Zynga does not actually provide the player
`
`device or the Internet connection and instead accuses Zynga of joint infringement. According to
`
`IGT, Zynga infringes “by directing and controlling users to provide [a device] for installing and
`
`playing Zynga’s games and connecting their devices to the Internet at the time they install and play
`
`the games.” Ex. 4 (Wills Inf. Rpt.) ¶ 239. In particular, IGT contends that Zynga requires users
`
`to accept Zynga’s Terms of Service before they install and play Zynga games, and that the Terms
`
`of Service direct players to “provide the equipment (computer, phone, tablet, etc.) and pay any
`
`fees to connect to the Internet and app stores.” Id. According to IGT, these statements alone mean
`
`that (a) Zynga conditions use of its services upon the player’s performance of the step of providing
`
`the client device as a node and (b) Zynga establishes the timing and manner of that step. Id. This
`
`theory also doesn’t work.
`
`Direct infringement of a method claim “occurs where all steps … are performed by or
`
`attributable to a single entity.” Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1376 (Fed. Cir. 2017);
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`see also ESW Holdings, Inc. v. Roku, Inc., No. 6-19-CV-00044-ADA, 2021 WL 1069047, at *2
`
`(W.D. Tex. Mar. 18, 2021) (same). If multiple parties are required to perform every step of a
`
`method, there is no infringement, absent the limited exception of joint infringement. The joint
`
`infringement exception applies only if “the acts of one [entity] are attributable to the other such
`
`that a single entity is responsible for the infringement.” Akamai Techs., Inc. v. Limelight Networks,
`
`Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015). And “an entity” is only “responsible for others’
`
`performance of method steps in two sets of circumstances: (1) where that entity directs or controls
`
`others’ performance, and (2) where the actors form a joint enterprise.” Id.3
`
`“[T]o survive a motion for summary judgment of no direct infringement … [IGT] must
`
`raise a genuine issue of material fact as to whether [Zynga] directed or controlled its users in their
`
`performance of the method claim steps.” ESW Holdings, Inc., 2021 WL 1069047, at *3. Direction
`
`and control can be established “when an alleged infringer [i] conditions participation in an activity
`
`or receipt of a benefit upon performance of a step or steps of a patented method and [ii] establishes
`
`the manner or timing of that performance.” Akamai, 797 F.3d at 1023. Zynga does neither.
`
`First, Zynga does not condition play on a user’s provision of a smartphone or other device.
`
`Indeed, Zynga is completely agnostic as to who provides the device and the Internet connection.
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`For example, a user can play Zynga Poker online from a computer in a public library without
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`“providing” any device. Instead, the library (or, perhaps, the taxpayers) provided the device and
`
`its Internet connection. Thus, Zynga does not condition the use of its games—much less the use
`
`of the Accused Features—on the user performing the step of providing a device connected to the
`
`Internet. Put differently, Zynga has not told users “you can only play these games if you provide
`
`the device” but has instead made its games available to users who have access to Internet-
`
`3 IGT does not claim that Zynga has formed a joint enterprise with anyone.
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 14 of 24
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`connected equipment whether they provided that equipment or not.
`
`Zynga’s agnosticism to who provides the device distinguishes this case from others where
`
`the Federal Circuit found joint infringement. In particular, the same party that receives the benefit
`
`(here, the ability to play Zynga’s games) must also perform the accused step (providing the device)
`
`for joint infringement to apply. For example, in Travel Sentry, the Federal Circuit noted that
`
`“whatever benefits flow to TSA from identifying luggage with Travel Sentry’s dual-access locks
`
`and from opening these locks with the passkeys that Travel Sentry provided can only be realized
`
`if TSA performs the final two claim steps.” 877 F.3d at 1382-83 (emphasis added). In other words,
`
`TSA itself had to perform the claim steps or it would not receive the benefit. The same was true
`
`in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357, 1364-65 (Fed. Cir. 2017).
`
`In that case, patients and doctors jointly infringed: a patient engaged in a pre-treatment (taking
`
`two vitamins) and then the doctor would administer a chemotherapeutic agent. If the patient did
`
`not take the pre-treatment, the doctor would not administer the chemotherapy. Thus, the doctor
`
`conditioned the benefit (chemotherapy) on the patient’s performance of a claimed step. Here, in
`
`contrast, there is no “evidence that a [user] hoping to obtain access to certain benefits”—playing
`
`Zynga games or making in-app purchases—“can only do so if it performs certain steps identified
`
`by the defendant”—providing an Internet-connected device—“and does so under the terms
`
`prescribed by the defendant.” Travel Sentry, 877 F.3d at 1380; see also, e.g., ESW Holdings, Inc.,
`
`2021 WL 1069047, at *4 (Roku did not condition a benefit and was not liable for divided
`
`infringement of method claims where “users may enjoy the accused feature without performing
`
`the method steps at issue”). Zynga users can provide an Internet-connected device under any
`
`terms, including using a device provided by someone else and connected to the Internet.
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`Second, Zynga does not establish the manner or timing of users’ performance of any step
`
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 15 of 24
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`of the method claimed by the ’212 patent. As explained below, Zynga’s users are free to determine
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`if, when, and how they perform the accused step of “providing” the player device. For example,
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`users decide completely on their own (i) what kind of device to purchase, borrow or use, (ii) what
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`kind of Internet service to obtain, (iii) how to connect to that service and (iv) when, if at all, to use
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`that service to access Zynga’s games. Ex. 3 (Sarabura Dep. Tr.) at 141:20-143:22.
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`Again, Travel Sentry provides a useful contrast on the degree and type of control necessary
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`to establish manner and timing of another party’s performance of a method step. There, the
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`operative agreement between Travel Sentry and TSA effectively provided TSA with a roadmap to
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`performing the steps of the method: “Travel Sentry entered into the MOU with TSA, [and]
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`provided TSA with passkeys and instructional materials,” and “[t]he MOU sets forth the steps TSA
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`would need to follow in order to use Travel Sentry’s standard and obtain the associated benefits.”
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`877 F.3d at 1383. In contrast, Zynga does not purport to tell users anything about how or when
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`they must access the Internet to play Zynga’s games.
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`Akamai is also instructive. In that case the Federal Circuit held that the “jury heard
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`substantial evidence from which it could find that Limelight directs or controls its customers’
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`performance,” where Limelight’s “integration process” for customers “include[d] the [infringing]
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`tagging step” and where Limelight’s Installation Guidelines gave its customer “further information
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`on tagging content.” 797 F.3d at 1024-25. As the Court noted, Limelight provided “step-by-step
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`instructions to its customers telling them how to integrate Limelight’s hostname into its webpages
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`if the customer wants to act as the origin for content,” and if the “customers do not follow these
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`precise steps, Limelight’s service will not be available.” Id.
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`Zynga does none of that. Its Terms of Service—IGT’s only evidence of direction and
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`control—do nothing to establish the timing or manner of the user “providing” hardware,
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 16 of 24
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`connecting that hardware to the Internet, or any other step. And, as explained above, gameplay is
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`not conditioned on providing the hardware at all. Cases like Travel Sentry and Akamai have
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`concluded that control over timing or manner could be established where the accused infringer
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`provided highly detailed, controlling, and binding guidance on how a user should perform the
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`relevant step. But liability for joint infringement does not lie where the Terms of Service on which
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`IGT focuses say nothing about the “how” and leave the “if” and “when” up to the user.4
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`Accordingly, the Court should grant summary judgment of non-infringement of the ’212
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`patent as to IGT’s claims that Zynga infringes as a result of its interactions with its customers.
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`B.
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`The ’212 Patent’s Asserted Claims Are Ineligible Under § 101.
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`1. The Asserted Claims Are Directed To The Abstract Idea Of Requesting
`And Receiving Services Over A Network.
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`Claims 24 and 31 claim a series of steps for requesting and receiving services over a
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`network.5 In particular, the claims recite a process for “sending requests and functional outputs
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`between a gaming machine and a node.” Ex. 11 (Chatterjee Report) at 291. More specifically,
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`the claims describe a method in which a device publishes a “high-level function” on the network,
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`other devices “subscribe” to the function, and the subscribing devices then receive “call backs”
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`from the first device in response to things that happen while playing a game. Ex. 1 (’212 patent)
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`at 29:45-61, 30:21-37.
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`4 Moreover, even if the Terms of Service did instruct users to perform the step of providing a node,
`this Court has made clear that mere instruction does not suffice to prove direction and control of a
`third-party for the purposes of divided infringement. See ESW Holdings, Inc., 2021 WL 1069047,
`at *3-4. And “[e]ven assuming that [Zynga] provides its users with instructions detailing how the
`users may [perform the claimed step] in an infringing manner,” this alone is not enough. Id. Were
`it otherwise, “every claim of induced infringement would also state a claim of divided
`infringement.” Id. (quoting Lone Star Tech. Innovations, LLC v. ASUSTeK Comput. Inc., No.
`6:19-CV-00059-RWS, 2020 WL 6803249, at *7 (E.D. Tex. Jan. 14, 2020)).
`5 Claims 24 and 31 are substantively identical for purposes of the § 101 analysis because they
`simply swap which generic computers are referred to as the node and first gaming machine.
`Although claim 24 itself is not asserted, claim 27 and claim 28 depend from claim 24.
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`Case 6:21-cv-00331-ADA Document 147 Filed 02/09/23 Page 17 of 24
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`The idea of using computer networks to send messages between devices (here, “nodes” or
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`“gaming machines”) is an abstract one. In ChargePoint, Inc. v. SemaConnect, Inc., for example,
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`the invalidated patents purported to enable individual charging stations for electric vehicles “to be
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`networked together to allow site hosts, drivers, and utility companies to communicate in real time.”
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`, 920 F.3d 759, 763-764 (Fed. Cir. 2019). Although the inventors “had the good idea to add
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`networking capabilities to existing charging stations” the claims did not “improve[]” the charging
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`stations “from a technical perspective,” change how the charging stations operated, or “overcom[e]
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`some sort of technical difficulty in adding networking capability to the charging stations.” Id. at
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`768, 770. Thus, the Federal Circuit concluded that the asserted claims were directed to “the
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`abstract idea of communication over a network for interacting with a device.” Id. at 768.
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`ChargePoint is also not unique in holding that claims directed to sending messages over a
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`network are directed to an abstract idea. For example, in Two-Way Media Ltd. v. Comcast Cable
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`Communications, LLC, the Federal Circuit found that patents claiming “a way to transmit one
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`packet of information to multiple recipients” over the Internet were directed to an abstract idea
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`because they merely recited “the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
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`‘monitoring,’ and ‘accumulating records’” rather than a particular way to accomplish those
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`functions. 874 F.3d 1329, 1333, 1337 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v.
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`DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (claims directed to an abstract idea where
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`they focused on “providing out-of-region access to regional broadcast content” over a network).
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`The same thing is true here. Walking through exemplary Claim 31, one can see that it
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`provides no information about how the recited communications should be accomplished b