Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 1 of 32
`
`ININ THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`v.
`
`ZYNGA INC.,
`
`Plaintiffs,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 6:21-CV-00331-ADA
`
`Judge: Honorable Alan D. Albright
`
`PUBLIC VERSION
`
`PLAINTIFFS’ MOTION FOR PARTIAL SUMMARY JUDGMENT
`OF NO INVALIDITY BASED ON ALLEGED SYSTEM PRIOR ART
`
`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 2 of 32
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`
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`TABLE OF CONTENTS
`
`I. 
`
`FACTUAL BACKGROUND ................................................................................................ 1 
`A. There Is No Record Evidence that Diablo II Was Publicly Known, Used, or on Sale
`Before the ’212 Patent’s Priority Date. ............................................................................ 1
`B. There Is No Record Evidence that Netrek Was Publicly Known, Used, or on Sale
`Before the ’212 Patent’s Priority Date. ............................................................................ 2
`C. There Is No Record Evidence that Hoyle Poker Was Publicly Known, Used, or on Sale
`Before the ’064 Patent’s Priority Date. ............................................................................ 3
`D. There Is No Record Evidence that ZipLock Was Publicly Known, Used, or on Sale
`Before the ’089 Patent’s Priority Date. ............................................................................ 4 
`II.  LEGAL STANDARDS ......................................................................................................... 6 
`A. Summary Judgment ......................................................................................................... 6
`B. Public Knowledge, Use, or Sale Under Pre-AIA 35 U.S.C. § 102(a), (b) ....................... 6 
`III.  ARGUMENT ......................................................................................................................... 8 
`A. Zynga Failed to Establish that Diablo II Qualifies As Prior Art ..................................... 8
`1. There Is No Evidence that the Version of Software Dr. Chatterjee Relied On Was
`Publicly Available or Sold in the U.S. ....................................................................... 9
`2. There Is No Evidence that the Diablo II Source Code Is Prior Art ......................... 11
`B. Zynga Failed to Establish that Netrek Qualifies as Prior Art ........................................ 13
`1. The Netrek Game That Dr. Chatterjee Relies on Is Not Prior Art ........................... 14
`2. The Source Code that Dr. Chatterjee Relies on Is Not Prior Art ............................. 16
`C. Zynga Failed to Establish that Hoyle Poker Qualifies as Prior Art ............................... 17
`D. Zynga Failed to Establish that the ZipLock System Qualifies as Prior Art ................... 22
`1. There Is No Evidence That Any Version of the ZipLock System Was Ever
`Available, Offered for Sale, Sold, Or Used in the U.S. ........................................... 22
`2. There Is No Evidence that The Version of the ZipLock System Mr. Crane Relied on
`Was Ever Available, Offered for Sale, Sold, Or Used in the U.S. .......................... 24 
`IV.  CONCLUSION .................................................................................................................... 25 
`
`
`i
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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 3 of 32
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Am. Seating Co. v. USSC Grp., Inc.,
`514 F.3d 1262 (Fed. Cir. 2008)..........................................................................................23, 24
`
`Carella v. Starlight Archery,
`804 F.2d 135 (Fed. Cir. 1986)....................................................................................................7
`
`Eli Lilly & Co. v. Barr Labs., Inc.,
`251 F.3d 955 (Fed. Cir. 2001)....................................................................................................7
`
`Finnigan Corp. v. Int'l Trade Comm'n,
`180 F.3d 1354 (Fed. Cir. 1999)............................................................................................9, 21
`
`Honeywell Intern. Inc. v. Universal Avionics Sys. Corp.,
`488 F.3d 982 (Fed. Cir. 2007)..................................................................................................23
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374 (Fed. Cir. 2005)..................................................................................................7
`
`Lujan v. Nat’l Wildlife Fed’n,
`497 U.S. 871 (1990) ...................................................................................................................6
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996)....................................................................................................7
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`564 U.S. 91 (2011) .....................................................................................................................6
`
`Pfaff v. Wells Elecs,
`525 U.S. 55 (1998) .....................................................................................................................7
`
`U.S. v. Adams,
`383 U.S. 39, 86 S. Ct. 708, 15 L. Ed. 2d 572 (1966) ...............................................................15
`
`United Servs. Auto. Ass’n v. PNC Bank N.A.,
`No. 2:20-CV-00319-JRG-RSP, 2022 WL 1465017 (E.D. Tex. May 3, 2022) ....................6, 21
`
`W.L. Gore & Assocs. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983)................................................................................................11
`
`Wi-LAN Inc. v. Sharp Elecs. Corp.,
`992 F.3d 1366 (Fed. Cir. 2021) .........................................................................................13, 14
`
`ii
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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 4 of 32
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`
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`Woodland Tr. v. Flowertree Nursery, Inc.,
`148 F.3d 1368 (Fed. Cir. 1998)................................................................................................11
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................................................7
`
`35 U.S.C. § 102(a) .............................................................................................................3, 5, 7, 23
`
`35 U.S.C. § 102(a), (b) .........................................................................................1, 5, 6, 7, 8, 11, 17
`
`35 U.S.C. §§ 102(a), (b), (g) and 103 ..............................................................................................1
`
`Rules
`
`Fed. R. Civ. P. 37(c) ......................................................................................................................13
`
`Fed. R. Civ. P. 56(a) ........................................................................................................................6
`
`Fed. R. Evid. 901(a) .............................................................................................................9, 15, 21
`
`
`
`iii
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 5 of 32
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`TABLE OF RELEVANT EXHIBITS
`
`Ex. 1 Description
`1
`Zynga’s Final Contentions That The ’212 Patent is Invalid Over Diablo II (Exhibit F-6)
`2
`Chatterjee’s Opening Expert Report on Invalidity of the ’212 Patent
`3
`IGT’s Second Supplemental Objections and Responses to Zynga’s First Set Of
`Interrogatories (Nos. 1–17)
`Chatterjee Deposition Transcript
`4
`Crane Opening Invalidity Report
`5
`Crane Dep. Tr. (Day 1)
`6
`Friedman Rebuttal Validity Report
`7
`“ZipLock 1”
`8
`“ZipLock 2”
`9
`“ZipLock 3”
`10
`“ZipLock 4”
`11
`12 ZipLock URL in ¶ 769 of Crane’s Report
`13
`Published application in ¶ 773 of Crane’s Report
`14
`https://blizzard.gamespress.com/The-Gates-of-Hell-are-Open-Diablo-II-Resurrected-
`Now-Live
`15 Melehani/Sneitzer Emails
`16 Declaration of
`17 ZYNGA00011192 (Netrek)
`18 www.mobygames.com
`19
`https://www.mobygames.com/game/hoyle-poker/release-info
`20
`https://www.mobygames.com/user/sheet/userSheetId,14180/
`21
`https://www.myabandonware.com/game/hoyle-poker-dk4
`22
`https://www.old-games.com/download/10285/hoyle-poker
`
` (BLIZ-SRC000641)
`
`1 Exhibit numbers refer to the exhibits to the Declaration of Jennifer Kurcz, which is being filed
`contemporaneously with this Motion.
`
`iv
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 6 of 32
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`
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`Zynga relies on alleged prior art systems, including Ziplock Systems, Hoyle Poker, Diablo
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`2, and Netrek, to try to invalidate the asserted claims of U.S. Patent Nos. 7,168,089 (“’089 Patent”);
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`8,795,064 (“’064 Patent”); and 8,266,212 (“’212 Patent”) under 35 U.S.C. §§ 102(a), (b), (g) and
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`103. But to prove invalidity based on alleged prior art systems under these provisions, Zynga must
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`prove not only that the systems included the elements of the Asserted Claims, but also that the
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`systems were either publicly available, publicly known, offered for sale or sold, or used before the
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`relevant filing dates of the Asserted Patents. Zynga has not met that burden. Specifically, Zynga’s
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`purported evidence is mostly unauthenticated hearsay, and none of it establishes that the alleged
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`systems were publicly available, known, offered for sale, sold, or used before the relevant filing
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`dates. Because Zynga failed to prove that any of the systems qualify as prior art, the Court should
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`grant this motion for partial summary judgment of no invalidity.
`
`I.
`
`FACTUAL BACKGROUND
`A.
`
`There Is No Record Evidence that Diablo II Was Publicly Known, Used, or
`on Sale Before the ’212 Patent’s Priority Date.
`
`In its final invalidity contentions, Zynga cites three pieces of alleged evidence to try to
`
`establish that Diablo II is prior art to the asserted claims of the ’212 Patent2 under § 102(a), (b): a
`
`user manual, an article, and a Youtube video. Ex. 1 at 1, 12, 18-19. Zynga’s expert, Dr. Chatterjee,
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`alleges that Diablo II is prior art based on alleged sales in the United States before the priority date
`
`of the ’212 Patent based on this same evidence. Ex. 2 ¶ 166. But none of this evidence, alone or
`
`in combination, establishes public knowledge, use, offer for sale, or sale of any version of Diablo
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`II. The user manual is undated and from an unknown source. The internet article makes no
`
`
`2 IGT contends, and Zynga has not disputed, that the ’212 Patent is entitled to a priority date of
`November 23, 2001 or, at the latest, April 10, 2002 based on its related patent applications’ filing
`dates. Ex. 3 at 18. For purposes of this motion only, IGT relies on the April 10, 2002 date as the
`priority date.
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`

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`mention of who the author is, whether the author is located in the United States, whether a working
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`version of Diablo 2 was publicly tested or released, or of any sale of Diablo II in the United States.
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`Ex. 4 at 107:4–13, 106:23–107:3, 112:3–9. And the Youtube video, also created and uploaded by
`
`an unknown person, was uploaded well after the priority date of the ’212 Patent. Id. at 116:13–
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`121:22. Moreover, none of the evidence that Zynga cited in its contentions or expert’s report
`
`identifies the version of Diablo II that was allegedly publicly available or on sale, let alone the
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`version that Zynga’s expert compared against the elements of the asserted claims.
`
`In addition, Dr. Chatterjee’s analysis of the functionalities of Diablo II is based on (1) his
`
`review of source code provided by Blizzard Entertainment and (2) his installation and play of
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`“Diablo II computer disks” on two networked computers that he asserts “mimic, from a
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`technological standpoint, the hardware and network environment that would have been used and
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`available prior to the priority date of the ’212 patent.” Ex. 2 ¶¶ 187-88. Not only is such evidence
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`unauthenticated hearsay, neither provides any evidence of public knowledge, use, or sale before
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`the ’212 patent’s priority date.
`
`B.
`
`There Is No Record Evidence that Netrek Was Publicly Known, Used, or on
`Sale Before the ’212 Patent’s Priority Date.
`
`Similar to Diablo II, Zynga fails to acknowledge that Netrek is not a monolithic entity, but
`
`a series of different versions of software that have been developed over many years. And like
`
`Diablo II, Zynga fails to present any evidence that the versions of the source code that it relies on
`
`in its invalidity analysis were publicly available before the priority date of the ’212 Patent. Zynga’s
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`final invalidity contentions for Netrek cite several allegedly corroborating documents, but none of
`
`them establish that the specific version of source code was available in the United States before
`
`the priority date of the ’212 Patent. For example, Zynga’s invalidity contentions and Dr.
`
`Chatterjee’s report only cite three documents that are supposedly archived before the priority date
`
`2
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`
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`of the ’212 Patent and none of them reference any specific version of source code or are tied to the
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`United States in any way. Ex. B at 1. The additional documents are all based on what is currently
`
`available on the internet. Neither Zynga nor Dr. Chatterjee provided any evidence to authenticate
`
`that these documents are authentic or non-hearsay, or reflect what was available in the early 2000s.
`
`Further, Netrek consists of client source code interacting with server source code. Ex. 2 ¶
`
`151. But Zynga presents no evidence that the particular versions of source code that he analyzed
`
`were ever used together in the game setup that Dr. Chatterjee points to as supposedly invalidating
`
`the asserted claims. Indeed, Zynga fails to establish any date that Netrek supposedly became prior
`
`art under § 102(a) or (b).
`
`C.
`
`There Is No Record Evidence that Hoyle Poker Was Publicly Known, Used,
`or on Sale Before the ’064 Patent’s Priority Date.
`
`Zynga’s expert, Mr. Crane, cites three websites and one copyright date on a CD-ROM to
`
`try to establish that Hoyle Poker is prior art to the asserted claims of the ’064 Patent. Ex. 5 ¶ 1276.
`
`The three websites on which Mr. Crane relies are not supported by any declarations from the
`
`website hosts, or persons with personal knowledge of the information contained therein. The
`
`Hoyle Poker CD-ROM that Mr. Crane relied upon for his report does have a label with a purported
`
`copyright date of 1996, however, as fleshed out at his deposition, that CD-ROM was purchased
`
`on eBay from an unknown seller on an unknown date, was unsealed, and its history over the last
`
`20+ years is unknown. See, e.g., Ex. 6 at 229:11–16, 235:5–9, 236:2–4, 236:2–24, 241:9–11.
`
`Mr. Crane provided no evidence supporting his conclusion that the copyright date on the
`
`CD-ROM accurately demonstrated the public release of the game, and it was merely his
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`“assum[ption]” that the copyright date on the CD-ROM “is an accurate representation of when the
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`product was published” and to confirm would require information “from someone at [the Hoyle
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`Poker developer] Sierra.” Ex. 6 at 237:22–238:4. But in fact, no contact with Sierra or any
`
`3
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 9 of 32
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`possibly related or parent company was sought. Id. at 238:5–9, 239:1–5, 240:9–16.
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`Most troubling, the CD-ROM that Mr. Crane relied upon was never provided to IGT for
`
`inspection. Rather, a second CD-ROM was provided with no forewarning that this second CD-
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`ROM was different from the CD-ROM relied upon by Mr. Crane; a fact that Mr. Crane confirmed
`
`only in his deposition. Ex. 6 at 229:21–230:4, 233:7–234:6; see also Ex. 7 ¶¶ 280–82. When
`
`pressed, Mr. Crane admitted that he did not recall where he had obtained the second CD-ROM—
`
`whether it had also come from eBay or from some “other non-eBay type source[]”—and he further
`
`admitted that he never compared the contents of the two CD-ROMs or even verified that each had
`
`the same listed copyright date to ensure that they were identical. Ex. 6 at 229:20–230:4, 230:11–
`
`231:16, 232:11–233:3.
`
`D.
`
`There Is No Record Evidence that ZipLock Was Publicly Known, Used, or
`on Sale Before the ’089 Patent’s Priority Date.
`
`Mr. Crane asserts an alleged prior art system that he refers to as the “ZipLock System”
`
`against the ’089 Patent. Ex. 5 ¶¶ 766–67. He opines that this system renders obvious the Asserted
`
`Claims, but he does not opine that it anticipates any claim. Ex. 6 at 150:4–10. Importantly, neither
`
`Mr. Crane nor Zynga has produced any direct evidence tending to show that such a system was
`
`ever publicly available, known, offered for sale, sold, or used in before the ’089 Patent’s critical
`
`date. For example, there is no contemporaneous source code, user manual, white paper, invoice,
`
`or other technical or sales documentation produced in this case showing how any particular version
`
`of the ZipLock System worked or where it may have been publicly available, known, offered for
`
`sale, sold, or used at any point in time. In fact, Mr. Crane admitted at his deposition that he had
`
`not “heard of the Ziplock system prior to [his] involvement in this case,” that he learned of the
`
`ZipLock System because “[i]t was disclosed to [him],” and that he does not “know for sure where
`
`any version of the Ziplock system may have been used or sold.” Ex. 6 at 209:4–11 (agreeing),
`
`4
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 10 of 32
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`222:25–223:2 (same).
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`Instead, to support his opinions, Mr. Crane relies on circumstantial evidence including five
`
`printouts from the so-called Wayback Machine and one published patent application.3 Ex. 5 ¶¶
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`767–75; Ex. 6 at 214:9–21 (testifying that “those are the six that I used to form my opinion”).
`
`From these, Mr. Crane contends that the ZipLock System constitutes prior art to the ’089 Patent
`
`under §§ 102(a) and (b). Ex. 5 ¶ 775. Notably, nowhere in Mr. Crane’s expert report does he
`
`clarify which theory of invalidity under either § 102(a) or (b) he is asserting. For example, when
`
`asked at his deposition whether the six documents on which he relies constitute invalidating printed
`
`publications or whether the ZipLock System itself was an invalidating public use, Mr. Crane first
`
`testified that “it would have been the latter” but then changed his answer to “[i]t could certainly be
`
`either or both but I believe it to at least have been a product.” Ex. 6 at 209:12–22.
`
`Critically, in the body of Mr. Crane’s limitation-by-limitation invalidity analysis—other
`
`than to suggest that gaming software was known (Ex. 5 ¶¶ 1095–99, 1130–34) and that
`
`conventional PCs could be gaming machines (id. ¶ 1142)4—Mr. Crane cites a single, four-page
`
`document to attempt to show the allegedly invalidating functionality for every limitation. See
`
`generally Ex. 5 ¶¶ 1086–1192 (citing exclusively to ZYNGA00010575–78 throughout, which is
`
`attached as Ex. 10).
`
`
`3 For the Court’s convenience, and as referenced herein, all six of these documents are attached.
`See Ex. 8 (“ZipLock 1,” which was produced at ZYNGA00010563), Ex. 9 (“ZipLock 2,” which
`was produced at ZYNGA00010560), Ex. 10 (“ZipLock 3,” which was produced at
`ZYNGA00010575), Ex. 11 (“ZipLock 4,” which was produced at ZYNGA00062839), Ex. 12 (the
`URL Mr. Crane cites in ¶ 769 of his expert report, see Ex. 5, which was produced at
`ZYNGA00011031), and Ex. 13 (the published application Mr. Crane cites in ¶ 773 of his expert
`report, see Ex. 5, which was produced at ZYNGA00063240).
`4 In these paragraph, Mr. Crane cites other documents including other alleged prior art on which
`Mr. Crane relies for the ’089 Patent, such as the Stinson, Molnick, and Kerr references, but
`provides zero motivation for a POSITA to consult such references let alone to combine any of their
`disclosures with any particular ZipLock System reference.
`
`5
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 11 of 32
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`
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`II.
`
`LEGAL STANDARDS
`A.
`
`Summary Judgment
`
`“The court shall grant summary judgment if the movant shows that there is no genuine
`
`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
`
`Civ. P. 56(a). “A ‘material fact’ is one that ‘might affect the outcome’ of the case, and a dispute
`
`about a material fact is ‘genuine’ when the evidence is ‘such that a reasonable jury could return a
`
`verdict for the nonmoving party.’” United Servs. Auto. Ass’n v. PNC Bank N.A., No. 2:20-CV-
`
`00319-JRG-RSP, 2022 WL 1465017, at *2 (E.D. Tex. May 3, 2022) (quoting Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 248–55 (1986)), report and recommendation adopted, No. 2:20-CV-
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`00319-JRG-RSP, 2022 WL 1463771, at *1 (E.D. Tex. May 9, 2022). “If the moving party does
`
`not have the ultimate burden of persuasion at trial”—like IGT here, with respect to the validity of
`
`its patents—“the party ‘must either produce evidence negating an essential element of the
`
`nonmoving party’s claim or defense or show that the nonmoving party does not have enough
`
`evidence of an essential element to carry its ultimate burden of persuasion at trial.’” United Servs.
`
`Auto. Ass’n, 2022 WL 1465017, at *2 (quoting Intellectual Ventures I LLC v. T Mobile USA, Inc.,
`
`No. 2:17-cv-00577-JRG, 2018 WL 5809267, at *1 (E.D. Tex. Nov. 6, 2018)). It is appropriate to
`
`enter summary judgment against a party bearing the burden of proof on an issue when that party
`
`merely presents conclusory evidence to meet its burden. Lujan v. Nat’l Wildlife Fed’n, 497 U.S.
`
`871, 884–89 (1990).
`
`B.
`
`Public Knowledge, Use, or Sale Under Pre-AIA 35 U.S.C. § 102(a), (b)
`
`A patent is presumed valid and must be proved invalid by clear and convincing evidence.
`
`See Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). A “moving party seeking to have
`
`a patent held not invalid at summary judgment must show that the nonmoving party, who bears
`
`the burden of proof at trial, failed to produce clear and convincing evidence on an essential element
`
`6
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`

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`
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`of a defense upon which a reasonable jury could invalidate the patent.” Eli Lilly & Co. v. Barr
`
`Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001).
`
`Under pre-AIA 35 U.S.C. § 102, a reference can constitute prior art if it was “known or
`
`used by others in this country” before the patented invention or if it was “in public use or on sale
`
`in this country” more than one year before the patent application date. 35 U.S.C. § 102(a), (b)
`
`(2010). “The statutory language, ‘known or used by others in this country’ (35 U.S.C. § 102(a)),
`
`means knowledge or use which is accessible to the public.” Carella v. Starlight Archery, 804 F.2d
`
`135, 139 (Fed. Cir. 1986).
`
`To qualify as public use under § 102(b), the purported use must have been: (1) “accessible
`
`to the public” or (2) “commercially exploited.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d
`
`1374, 1380 (Fed. Cir. 2005). Commercial exploitation requires more than a secret offer for sale,
`
`and takes into consideration evidence relevant to experimentation as well as the nature of the
`
`activity that occurred in public; public access to the use; confidentiality obligations imposed on
`
`members of the public who observed the use; and commercial exploitation. Id.
`
`The on-sale bar under § 102(b) “applies when two conditions are satisfied before the
`
`critical date.” Pfaff v. Wells Elecs, 525 U.S. 55, 67 (1998). “[T]he product must be the subject of
`
`a commercial offer for sale” and “the invention must be ready for patenting.” Id. Ready for
`
`patenting requires “proof of reduction to practice before the critical date” or “proof that prior to
`
`the critical date the inventor had prepared drawings or other descriptions of the invention that were
`
`sufficiently specific to enable a person skilled in the art to practice the invention.” Id. at 67-68.
`
`The challenger to a patent’s validity bears the burden of proving, by clear and convincing
`
`evidence, that an asserted invalidating reference qualifies as prior art. Mahurkar v. C.R. Bard,
`
`Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) (“By challenging the validity of the ’155 patent, Bard
`
`7
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`

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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 13 of 32
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`bore the burden of persuasion by clear and convincing evidence on all issues relating to the status
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`of the Cook catalog as prior art.”).
`
`III. ARGUMENT
`A.
`
`Zynga Failed to Establish that Diablo II Qualifies As Prior Art
`
`Zynga’s expert claims that “Diablo II” is prior art to the ’212 Patent under 35 U.S.C. §§
`
`102(a) and (b) because it was allegedly sold in the United States on June 29, 2000. Ex. 2 ¶¶ 166,
`
`511. Dr. Chatterjee’s conclusion is based on two documents: a user manual and an internet article.
`
`Id. But Diablo II is not a monolithic entity; it is the trade name for a game that has been released
`
`many times with many different versions of software. In fact, Diablo II has released new versions
`
`of its software as recently as 2021. See Ex. 14.
`
`By Dr. Chatterjee’s own admission, however, neither the manual nor internet article make
`
`any indication of the version of Diablo II that they reference; neither includes the alleged prior art
`
`date of June 29, 2000; neither shows that anything was sold in the United States; Zynga’s counsel
`
`apparently obtained the documents and provided them to Dr. Chatterjee; and Dr. Chatterjee made
`
`no attempt to date either of the documents or confirm their authenticity. Ex. 4 at 106:23–107:3,
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`107:4–13, 108:1–5, 109:7–12, 112:3–9.
`
`The only other evidence that Zynga cites to try to establish the public availability of Diablo
`
`II before the priority date is a link to a game play video on Youtube. Ex. 2 ¶ 174. However,
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`neither Zynga nor Dr. Chatterjee make any attempt to authenticate this video, do not know who
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`made or uploaded the video, and have no evidence that the video was uploaded in the United
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`States. Ex. 4 at 117:16–118:7, 118:23–119:1. Further, the game play video was uploaded well
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`after the priority date and appears to be based on game version 1.13. Id. at 119:20–22. Not only
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`does Zynga fail to point to any evidence showing when game version 1.13 was released, the game
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`is connected to the battle.net server in the video. Thus, even if the game software being run is
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`version 1.13, there is no evidence the functionality of the battle.net server would be the same as
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`what was available in the early 2000s. See, e.g., Ex. 4 at 120:23–121:1 (“A. … whenever the video
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`was made, it would be connecting with the battle.net servers that were available at that time.”).
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`Further, even if the Court were to find that this evidence is sufficient to support a jury
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`finding that some version of “Diablo II” was publicly used, known, or on sale as of June 29, 2000,
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`there is no evidence that the version of Diablo II that Dr. Chatterjee used to perform his analysis
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`was. Indeed, Dr. Chatterjee’s determination that Diablo II had functionality that invalidates the
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`’212 Patent is based on a CD disk with an unknown version of software and inadmissible source
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`code. Zynga presents no evidence showing when the versions of software on the CD or the source
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`code were sold or publicly available in the United States.
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`1.
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`There Is No Evidence that the Version of Software Dr. Chatterjee
`Relied On Was Publicly Available or Sold in the U.S.
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`The record is devoid of any evidence that the CD that Dr. Chatterjee used in his analysis
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`was sold in the U.S. or that the version of software on the CD was available in the U.S. before the
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`priority date of the ’212 Patent. First, Dr. Chatterjee makes no attempt to authenticate that this
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`CD—that is allegedly over 20-years-old—was actually sold, that it wasn’t tampered with, or even
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`how it was acquired. Ex. 4 at 141:4-6 (“Q. How did you obtain the CD? A. That one, again, I don't
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`recall exactly, but I believe I was provided it by counsel.”). Nor does Dr. Chatterjee point to any
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`personal knowledge of the version of Diablo II that was sold back in the early 2000’s. Without
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`more, Dr. Chatterjee cannot even meet the authentication requirement of Fed. R. Evid. 901(a). See
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`Rule 901(a) (‘To satisfy the requirement of authenticating … an item of evidence, the proponent
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`must produce evidence sufficient to support a finding that the item is what the proponent claims it
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`is.’); see also Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)
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`(‘[C]orroboration is required of any witness whose testimony alone is asserted to invalidate a
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`Case 6:21-cv-00331-ADA Document 149 Filed 02/09/23 Page 15 of 32
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`patent, regardless of his or her level of interest.’).
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`Further, the record does not establish what version of Diablo II was on the game play disk.
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`Though Dr. Chatterjee relies heavily on screenshots of this game play video throughout his report,
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`it was not until his deposition that either Zynga or Dr. Chatterjee made any assertion as to what
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`version of Diablo II was on the disk. But his explanation provides no additional evidence that a
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`jury could rely on to establish that this particular version of software was publicly used or sold.
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`At his deposition, Dr. Chatterjee claimed that he had based his invalidity analysis on Diablo II
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`version 1.09. But when pressed, he admitted that the CD he used was actually labeled version 1.03
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`and he believed that, “for some reason, [version 1.03 did] … not work for some reason” but
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`“there’s also a 1.09 patch, and then when the 1.09 patch was installed, it worked.” Ex. 4 at 139:23–
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`141:3. Thus, Zynga cannot establish that this unknown version 1.09 of Diablo II software was
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`publicly available or on sale before the priority date of the ’212 Patent.
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`Further, upon investigation of Dr. Chatterjee’s claims that the game he played was some
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`amalgamation of various versions of Diablo II software, IGT’s counsel asked Zynga to identify
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`where on the disk this 1.09 patch was located. Zynga’s counsel responded with a screen shot of
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`where to locate the patch. Ex. 15. The screen shot that Zynga provided shows that this patch has
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`a last modified date of December 6, 2001, after the November 21, 2000 date that Dr. Chatterjee
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`alleges version 1.09was released. Id.
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`And when asked whether, based on these anomalies, the CD that Dr. Chatterjee relied on
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`might have included versions or updates beyond version 1.09, he admitted that he did not know:
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`A. [] My recollection is that it has the 1.03 software and then
`separately it has the 1.09 patch that could be applied to it.
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`Q. Do you know if it has any other patches?
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`A. I don't recall off the top of my head.
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`Ex. 4 at 142:15-18.
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`Q. All right. So could it also have the 1.15 patch?
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`A. I don't recall if it did. I don't believe so, but I don't recall. Like if
`you show me the CD, I can take a quick look at it.
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`Id. at 149:4–8
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`Finally, even assuming that the CD disk was version 1.03 with a version 1.09 patch, Zynga
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`has adduced no evidence that this CD was publicly used or sold before the priority date of the ’212
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`Patent and summary judgment should be granted on those grounds alone. See Woodland Tr. v.
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`Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998) (“It is rare indeed that some
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`physical record (e.g., a written document such as notes, letters, invoices, notebooks, or a sketch or
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`drawing or photograph showing the device, a model, or some other contemporaneous record) does
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`not exist.”).
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`2.
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`There Is No Evidence that the Diablo II Source Code Is Prior Art
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`The only other evidence that Dr. Chatterjee presents to support his assertion that Diablo II
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`invalidates the ’212 Patent is source code that was produced by Blizzard. As an initial matter, the
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`source code itself is confidential and proprietary, and therefore not prior art under § 102(a), (b).
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`Ex. 4 at 99:6–10 ; W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (“If
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`the details of an inventive process are not ascertainable from the product sold or displayed and the
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`third party has kept the invention as a trade secret then that use is not a public use and invali