Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`IGT and IGT CANADA SOLUTIONS ULC,
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`v.
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`ZYNGA INC.,
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`Plaintiffs,
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`Defendant.
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`)
`)
`)
`)
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`)
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`C.A. No. 6:21-CV-00331-ADA
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`Judge: Honorable Alan D. Albright
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`PUBLIC VERSION
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`PLAINTIFFS’ MOTION FOR PARTIAL SUMMARY JUDGMENT
`OF NO INVALIDITY UNDER § 112
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`

`

`
`
`I. 
`
`II. 
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 2 of 21
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`TABLE OF CONTENTS
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`Page
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`FACTUAL BACKGROUND ............................................................................................. 1 
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`LEGAL STANDARDS ...................................................................................................... 2 
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`A. 
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`Summary Judgment ................................................................................................ 2 
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`B.  Written Description ................................................................................................. 3 
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`C. 
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`Indefiniteness .......................................................................................................... 3 
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`III. 
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`ARGUMENT ...................................................................................................................... 4 
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`A. 
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`The ’089 Patent’s Asserted Claims Are Not Invalid Under § 112 ......................... 5 
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`1. 
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`The ’089 Patent’s Asserted Claims Do Not Lack Written
`Description .................................................................................................. 5 
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`The ’089 Patent’s Asserted Claims Are Not Indefinite .......................................... 6 
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`The ’212 Patent’s Asserted Claims Are Not Invalid Under § 112 ......................... 9 
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`B. 
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`C. 
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`1. 
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`2. 
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`The ’212 Patent’s Asserted Claims Do Not Lack Written
`Description .................................................................................................. 9 
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`The ’212 Patent’s Asserted Claims Are Not Indefinite ............................ 11 
`
`a. 
`
`b. 
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`High-Level Function ......................................................................11 
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`Accepting the Subscription Request ..............................................13 
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`IV. 
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`CONCLUSION ................................................................................................................. 15 
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`i
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 3 of 21
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
`811 F.3d 1334 (Fed. Cir. 2016)..............................................................................................3, 4
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..............................................................................3, 4
`
`Falko-Gunter Falkner v. Inglis,
`448 F.3d 1357 (Fed. Cir. 2006)................................................................................................10
`
`Lujan v. National Wildlife Federation,
`497 U.S. 871 (1990) ...................................................................................................................3
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`564 U.S. 91 (2011) .....................................................................................................................2
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...............................................................................................................3, 4
`
`REC Software USA, Inc. v. Bamboo Sols. Corp.,
`No. C11–0554JLR, 2012 WL 3780352 (W.D. Wash. Aug. 31, 2012) ......................................4
`
`Streck, Inc. v. Research & Diagnostic Sys., Inc.,
`665 F.3d 1269 (Fed. Cir. 2012)..................................................................................................3
`
`SynQor, Inc. v. Vicor Corp.,
`No. 2:14-CV-287-RWS-JBB, 2022 WL 6218360 (E.D. Tex. Sept. 26, 2022)..........................4
`
`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) ..........................2
`
`Zoltek Corp. v. U.S.,
`815 F.3d 1302 (Fed. Cir. 2016)................................................................................................10
`
`Statutes
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`35 U.S.C. § 112 ................................................................................................1, 2, 3, 4, 5, 8, 10, 15
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`35 U.S.C. § 282(a) ...........................................................................................................................2
`
`Rules
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`Fed. R. Civ. P. 56(a) ........................................................................................................................2
`
`ii
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 4 of 21
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`TABLE OF RELEVANT EXHIBITS
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`Ex. 1 Description
`2
`Expert Report of Sandeep Chatterjee, Ph.D. Regarding Invalidity of US Patent No.
`8,266,212 (served Mar. 16, 2022)
`Expert Report of David Crane Regarding Invalidity (served Nov. 10, 2022)
`5
`23 Certified copy of the ’089 Patent
`24 Certified copy of the ’212 Patent
`25 Zynga’s Final Invalidity Contentions – Cover Pleading (served Mar. 16, 2022)
`26 Expert Report of Dr. Craig E. Wills Regarding Zynga’s Infringement of U.S. Patent
`Nos. 7,168,089 and 8,266,212 (served Nov. 10, 2022)
`27 Rebuttal Expert Report of Dr. Craig E. Wills Regarding the Validity of U.S. Patent
`Nos. 7,168,089 and 8,266,212 (served Dec. 22, 2022)
`28 Adaptix, Inc., v. Alactael-Lucent USA, Inc., Civil Action No. 6:12-cv-22, Dkt. No. 667
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`
`
`
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`
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`1 Exhibit numbers refer to the exhibits to the Declaration of Jennifer M. Kurcz, which is being
`filed contemporaneously with this Motion.
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`iii
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 5 of 21
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`Defendant Zynga Inc. (“Zynga”) contends that certain Asserted Claims of U.S. Patent Nos.
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`7,168,089 and 8,266,212 are invalid under 35 U.S.C. § 112 for lacking written description and
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`indefiniteness. But, with one exception discussed below, all of Zynga’s § 112 arguments are
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`improperly premised, not on the patents’ actual disclosures, but on Zynga’s subjective and
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`incorrect interpretation of IGT’s infringement theories. IGT’s infringement theories are irrelevant
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`to whether the Asserted Claims of the ’089 and ’212 Patents lack written description or are
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`indefinite. At bottom, none of the claim terms challenged by Zynga are indefinite or lack adequate
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`written description when properly analyzed in view of the patents’ disclosures. Plaintiffs IGT and
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`IGT Canada Solutions ULC (“IGT”) therefore request that the Court enter judgment that the
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`Asserted Claims of the ’212 and ’089 Patents are not invalid under § 112.
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`I.
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`FACTUAL BACKGROUND
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`IGT filed its operative second amended complaint on April 26, 2022, asserting
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`infringement of, among others, U.S. Patent Nos. 7,168,089 (“the ’089 Patent) and 8,266,212 (“the
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`’212 Patent”). Dkt. 70 (counts III and VI). Certified copies of the ’089 and ’212 Patents are
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`attached as Exhibits 23 and 24, respectively. On May 10, 2022, Zynga filed its Answer to IGT’s
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`Second Amended Complaint, alleging a defense that the claims of those patents are supposedly
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`invalid for failure to satisfy the conditions of patentability under Pre-AIA 35 U.S.C. § 112. Dkt.
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`72 at 39 (Third Defense – Invalidity).
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`Zynga served its Final Invalidity Contentions on March 16, 2022. The cover pleading to
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`those contentions, which included Zynga’s § 112 arguments for both the ’089 and ’212 Patents, is
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`attached as Exhibit 25. On November 10, 2022, Zynga served its opening expert reports
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`challenging the validity of the Asserted Patents. Specifically, attached as Exhibit 5 is the Expert
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`Report of David Crane Regarding Invalidity, which contains Zynga’s § 112 arguments for the ’089
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`Patent, and attached as Exhibit 2 is the Expert Report of Sandeep Chatterjee, Ph.D. Regarding
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 6 of 21
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`Invalidity of U.S. Patent No. 8,266,212, which contains Zynga’s § 112 arguments for the ’212
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`Patent. On that same day, IGT also served the Expert Report of Dr. Craig E. Wills Regarding
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`Zynga’s Infringement of U.S. Patent Nos. 7,168,089 and 8,266,212, which is attached as Exhibit
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`26. Finally, on December 22, 2022, IGT served the Rebuttal Expert Report of Dr. Craig E. Wills
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`Regarding the Validity of U.S. Patent Nos. 7,168,089 and 8,266,212, which is attached as Exhibit
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`27 and contains IGT’s responses to Zynga’s § 112 arguments for those patents.
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`II.
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`LEGAL STANDARDS
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`“A patent shall be presumed valid.” 35 U.S.C. § 282(a). This presumption “requires an
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`invalidity defense to be proved by clear and convincing evidence.” Microsoft Corp. v. i4i Ltd.
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`P’ship, 564 U.S. 91, 95 (2011). Additionally, the Court applies the following legal standards.
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`A.
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`Summary Judgment
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`“The court shall grant summary judgment if the movant shows that there is no genuine
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`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
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`about a material fact is ‘genuine’ when the evidence is ‘such that a reasonable jury could return a
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`verdict for the nonmoving party.’” United Servs. Auto. Ass’n v. PNC Bank N.A., No. 2:20-CV-
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`00319-JRG-RSP, 2022 WL 1465017, at *2 (E.D. Tex. May 3, 2022) (quoting Anderson v. Liberty
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`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
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`not have the ultimate burden of persuasion at trial”—like IGT here, with respect to the validity of
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`its patents—“the party ‘must either produce evidence negating an essential element of the
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`nonmoving party’s claim or defense or show that the nonmoving party does not have enough
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`evidence of an essential element to carry its ultimate burden of persuasion at trial.’” United Servs.
`
`Auto. Ass’n, No. 2:20-CV-00319-JRG-RSP, 2022 WL 1465017, at *2 (E.D. Tex. May 3, 2022)
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`2
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`(quoting Intellectual Ventures I LLC v. T Mobile USA, Inc., No. 2:17-cv-00577-JRG, 2018 WL
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`5809267, at *1 (E.D. Tex. Nov. 6, 2018)). It is appropriate to enter summary judgment against a
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`party bearing the burden of proof on an issue when that party presents conclusory evidence to meet
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`its burden. Lujan v. National Wildlife Federation, 497 U.S. 871, 884–89 (1990).
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`B. Written Description
`
`Under Section 112, “[t]he specification shall contain a written description of the
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`invention.” This “written description requirement” is “separate from enablement.” Ariad
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`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test for
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`adequate written description is “whether the disclosure ‘conveys to those skilled in the art that the
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`inventor had possession of the claimed subject matter as of the filing date.’” Streck, Inc. v.
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`Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012) (quoting Ariad Pharms.,
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`Inc., 598 F.3d at 1351). “This test requires an ‘objective inquiry into the four corners of the
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`specification from the perspective of a person of ordinary skill in the art.’” Id. “Compliance with
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`the written description requirement is a question of fact but is amenable to summary judgment in
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`cases where no reasonable fact finder could return a verdict for the nonmoving party.” Id. (quoting
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`PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008)).
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`C.
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`Indefiniteness
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`In a valid patent, “[t]he specification shall conclude with one or more claims particularly
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`pointing out and distinctly claiming the subject matter which the applicant regards as his
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`invention.” 35 U.S.C. § 112, para. 2 (pre-AIA). “[A] patent is invalid for indefiniteness if its
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`claims, read in light of the specification delineating the patent, and the prosecution history, fail to
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`inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). Indefiniteness is a question
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`of law. Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016). In
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`3
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 8 of 21
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`deciding indefiniteness, it is appropriate to consider underlying facts, but this does not preclude
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`summary judgment. See id. (affirming summary judgment of no indefiniteness).
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`III. ARGUMENT
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`Zynga contends that certain claims of the ’089 and ’212 Patents are invalid because they
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`lack sufficient written description and are indefinite. Importantly, “the hallmark of written
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`description is disclosure.” Ariad Pharms., Inc. v. Elis Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
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`2010). And, for indefiniteness, the claims must be “read in light of the specification delineating
`
`the patent, and the prosecution history.” Nautilus, Inc., 572 U.S. at 901. But, with one exception
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`described below, none of Zynga’s § 112 arguments are even based on the disclosures of the patents
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`at all; rather, Zynga’s arguments are mostly based on its subjective interpretation of IGT’s
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`infringement theories. A patentee’s infringement positions are irrelevant to whether a patent is
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`valid as a matter of law. There is therefore no dispute of any material fact as to whether the
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`asserted ’089 and ’212 Patent claims are valid under 35 U.S.C. § 112 because IGT’s infringement
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`positions are immaterial to this analysis. See SynQor, Inc. v. Vicor Corp., No. 2:14-CV-287-RWS-
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`JBB, 2022 WL 6218360, at *11 (E.D. Tex. Sept. 26, 2022) (granting Plaintiff’s motion for
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`summary judgment of no § 112 invalidity because Defendant’s “§ 112 challenges are based on
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`[Plaintiff’s] previous infringement allegations and related alleged claim scope”), report and
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`recommendation adopted, No. 214CV00287RWSJBB, 2022 WL 5319268 (E.D. Tex. Oct. 6,
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`2022); Ex. 28 (Adaptix, Inc. v. Alcatel-Lucent USA, Inc., No. 6:12-CV-22, Dkt. 667 (Mar. 30,
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`2016)) at 7–12 (granting judgment as a matter of law to plaintiff because defendants only written
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`description evidence was plaintiff’s infringement contentions); REC Software USA, Inc. v.
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`Bamboo Sols. Corp., No. C11–0554JLR, 2012 WL 3780352, at *11 & n.6 (W.D. Wash. Aug. 31,
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`2012) (denying defendant’s summary judgment motion on written description for focusing on the
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`“propriety of the court’s Markman construction” and plaintiff’s “infringement theory,” rather than
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 9 of 21
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`“examining the disclosures of the specification and the claim language”). Thus, Zynga has not
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`raised any genuine dispute that the Asserted Claims are valid under § 112, and the Court should
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`enter summary judgment affirming the validity of the claims.
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`Additionally, even if the Court were to consider IGT’s infringement theories as part of its
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`§ 112 analysis, this Motion nevertheless should be granted. As set forth in detail below, based on
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`the relevant disclosures of the ’089 and ’212 Patents, there is no genuine dispute as to any material
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`fact pertaining to written description or definiteness and IGT is entitled to judgment as a matter of
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`law of no invalidity under §112.
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`A.
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`The ’089 Patent’s Asserted Claims Are Not Invalid Under § 112
`1.
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`The ’089 Patent’s Asserted Claims Do Not Lack Written Description
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`To be clear, Zynga does not argue that the ’089 Patent fails to provide adequate written
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`description for any particular element of the Asserted Claims. For example, Zynga does not
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`suggest, let alone dispute, that the ’089 Patent provides voluminous written description support for
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`the claimed “first gaming device” and “software authorization agent.” E.g., Ex. 23 at 5:5–16,
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`8:23–37, 9:31–50, 10:4–11:27, 24:27–30:16, 30:40–40:40; see also id. at Figs. 8–15. Rather,
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`Zynga argues that, under IGT’s apparent interpretation of the claims, claims 28 and 84 of the ’089
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`Patent are invalid for lack of written description. Ex. 25 at 62–63; Ex. 5 ¶¶ 1201–04. Specifically,
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`Zynga argues that IGT’s interpretation of the claimed “first gaming device” and “authorization
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`agent” includes that these elements “can be the same device or included within the same device.”
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`Ex. 25 at 62; Ex. 5 ¶ 1202. For this reason, Zynga argues that the claims lack adequate written
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`description because, in the ’089 Patent, “the ‘authorization agent’ is repeatedly and consistently
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`characterized as separate from, and not part of, the ‘first gaming device.’” Ex. 5 ¶ 1204.
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`But even if Zynga’s reading of the ’089 Patent was correct—which it is not, at least because
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`claim 84, unlike claim 28, does not require any separateness between these elements—the premise
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`5
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 10 of 21
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`of Zynga’s argument is wrong. Specifically, IGT does not contend that the accused authorization
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`agent and first gaming device “can be the same device or included within the same device,” as
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`Zynga suggests. Rather, IGT is accusing two separate Amazon EC2 server instances of meeting
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`these elements. Ex. 26 ¶ 150. Thus, Zynga’s argument is really an attempt to redo claim
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`construction by injecting into the claims a requirement that the authorization agent and first gaming
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`device be physically separate or discrete hardware devices. But neither claims 28 nor 84 require
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`physical separateness; indeed, claim 84 does not require separateness at all. Because the accused
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`servers are not combined into a single server instance, and because no claim of the ’089 Patent
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`requires that these elements be physically separate, a reasonable juror could not find that claims
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`28 or 84 lack written description under Zynga’s theory.
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`2.
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`The ’089 Patent’s Asserted Claims Are Not Indefinite
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`Like Zynga’s written description argument, Zynga’s indefiniteness theories for the ’089
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`Patent improperly depend on Zynga’s apparent interpretation of IGT’s infringement theories. Ex.
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`5 ¶¶ 1205–20. Each of Zynga’s arguments fails.
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`First, Zynga argues, through Mr. Crane, that claim 28’s reference to “validating the gaming
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`software download request” is indefinite because “both the claim and the specification fail to
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`provide any meaningful guidance regarding what does and does not constitute ‘validating.’” Ex.
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`5 ¶ 1208. But Mr. Crane does not provide any evidence to support this assertion. Rather, Mr.
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`Crane suggests that claim 28 is indefinite because it is not clear—to Mr. Crane—whether the
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`claimed validating step “simply entails approving or denying a gaming software download request,
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`or if more is somehow required.” Id. But, as a matter of law, claim 28 does not require “more”
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`than its limitations. By hypothesizing whether “more is somehow required,” Mr. Crane is injecting
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`indefiniteness into a presumptively definite claim. Moreover, the ’089 Patent provides numerous
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`examples of validating. See, e.g., Ex. 23 at 20:61–65, 22:15–18, 23:35–43, 29:23–29, 32:25–34,
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`6
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`34:46–64, 36:13–19, 37:63–66, 38:62–39:10, 40:1–6. In each of these examples, “validating” a
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`request simply means “determining whether the request is valid.” Thus, no reasonable juror could
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`find that claim 28’s “validating” step is indefinite under Zynga’s theory.
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`Second, Zynga argues claim 28’s reference to “wherein the first gaming device and the
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`second gaming device are separate from the software authorization agent” is indefinite because,
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`“[a]s IGT interprets this term, one can arbitrarily draw a box around certain parts of a single device
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`and label one part the ‘first gaming device’ and another part the ‘software authorization agent.’”
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`Ex. 5 ¶¶ 1209–10. But there is nothing “arbitrary” about the separate components IGT accused of
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`infringement. Rather, as explained, IGT is accusing two separate Amazon server instances of
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`meeting these elements. Ex. 26 ¶ 150. Mr. Crane does not address this fact. Moreover, in the
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`context of the written description support for the “first gaming device” and “software authorization
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`agent” cited above, “separate from” simply means “not the same as.” Thus, no reasonable juror
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`could find that claim 28’s “separate” requirement is indefinite under Zynga’s theory.
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`Third, Zynga argues that claim 28’s references to “receiving a gaming software download
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`request message … from a first gaming device” and to “sending an authorization message to the
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`first gaming device” are indefinite because, as Mr. Crane “understand[s] how IGT interprets these
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`terms, they can embrace entirely internal operations that are not ‘received’ from or ‘sent’ to
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`anywhere.” Ex. 5 ¶ 1213; see also id. ¶ 1214. Here, again, even if it was appropriate for Zynga
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`to assert an indefiniteness argument based on IGT’s infringement theories, rather than on the actual
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`disclosures of the ’089 Patent, Zynga’s argument still fails. For example, IGT is not accusing
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`“internal operations that are not ‘received’ from or ‘sent’ to anywhere,” as Mr. Crane suggests.
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`Rather, IGT’s infringement expert, Dr. Wills, identified and described in detail the specific
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`messages that are transmitted in Zynga’s accused system, including the components that send and
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 12 of 21
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`receive such messages, as required by claim 28. Ex. 26 § X.B.1, ¶¶ 126–34 (the “receiving” step),
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`¶¶ 145–50 (the “sending” step). Moreover, Mr. Crane does not explain what he means by “entirely
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`internal operations,” which are not mentioned anywhere in claim 28. These claim terms simply
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`mean what they say: receiving and sending messages from and to the claimed components. Thus,
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`no reasonable juror could find that claim 28’s “receiving” and “sending” elements are indefinite.
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`Fourth, Zynga argues that claim 28’s final “wherein” clause is indefinite because, based
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`on Mr. Crane’s interpretation of IGT’s infringement theories, “IGT renders the phrases ‘played on
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`a gaming machine,’ ‘on a gaming machine,’ and ‘installed on a gaming machine’ meaningless and
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`makes it impossible to ascertain with reasonable certainty whether the steps of the claimed method
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`are being practiced.” Ex. 5 ¶¶ 1215–1217. But IGT is not accusing gaming software “regardless
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`of whether it is ‘on a gaming machine.’” Id. ¶ 1216. Rather, IGT is accusing gaming software
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`that is “for” several of the purposes required by claim 28—all of which are “on a gaming machine.”
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`Ex. 26 ¶¶ 151–156. This is consistent with the plain language of the claim term, which simply
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`requires that the gaming software is “for” at least one of five different choices on a gaming
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`machine, not that the gaming software “is” itself one of those choices on a gaming machine. Thus,
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`no reasonable juror could find claim 28’s final “wherein” clause indefinite under Zynga’s theory.
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`Fifth, Zynga argues that claim 29 is indefinite because “rather than being limited to just a
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`‘gaming machine,’ claim 29, which depends on claim 28, embraces both a ‘gaming machine’ or a
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`‘gaming2 server’ improperly expanding the scope of ‘gaming software’ the claim embraces.” Ex.
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`5 ¶ 1218. As previewed above, this appears to be the only § 112 argument Zynga makes that is
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`actually based on the disclosures of an Asserted Patent, rather than on Zynga’s interpretation of
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`IGT’s infringement theories. Regardless, Zynga is still wrong. Claim 29 explicitly narrows claim
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`2 Claim 29 does not refer to a “gaming server,” but rather to a “game server.” Ex. 23 at 43:45.
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`Case 6:21-cv-00331-ADA Document 150 Filed 02/09/23 Page 13 of 21
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`28 by further requiring the broader “second gaming device” of claim 28 to be limited to either a
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`“game server” or a “gaming machine.” The claim is satisfied whenever gaming software is
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`transferred from a first gaming device either to a game server or to a gaming machine (assuming
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`the other claim steps are met), provided that the transferred gaming software is “for” one of the
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`purposes required by claim 28. Thus, no reasonable juror could find claim 29 indefinite.
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`Finally, although Zynga originally asserted in its invalidity contentions various
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`indefiniteness arguments for claim 84, it appears to have abandoned those arguments, which Mr.
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`Crane does not address. Compare Ex. 25 at 65–66, with Ex. 5 ¶¶ 1205–1220. Thus, no reasonable
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`juror could find that claim 84 is invalid as indefinite.
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`B.
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`The ’212 Patent’s Asserted Claims Are Not Invalid Under § 112
`1.
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`The ’212 Patent’s Asserted Claims Do Not Lack Written Description
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`Zynga argues that, under IGT’s apparent interpretation, claims 24 and 31 of the ’212 Patent
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`are invalid for lack of written description. Ex. 2 at 284–288. Specifically, Zynga’s expert argues
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`that the “publishing,” “receiving a request to subscribe to a published high-level function,” and
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`“accepting the subscription request” steps are not disclosed in the Patent because: “the ’212 patent
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`specifically discloses use of the publish/subscribe model, where the same published messages are
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`provided to all subscribers to the particular service. To the extent that IGT contends that this claim
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`is broad enough to cover unique and particular messages transmitted between a node and a gaming
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`machine, then it is my opinion that one of ordinary skill in the art would not recognize that the
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`named inventor(s) had possession of the full scope of this claim limitation.” Ex. 2 at 284–286.
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`Zynga is essentially reasserting its failed claim construction argument that “‘publishing’
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`refers to the well-known publish-and subscribe method.” Dkt. 39 at 8. But the Court rejected
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`these arguments and gave the term “publishing” its plain and ordinary meaning. Dkt. 64. A
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`POSITA would have no reason to believe that the inventors were only contemplating some
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`particularized definition of publish and subscribe. And because “publish” and “subscribe” are
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`ordinary terms that a POSITA would understand, no additional disclosure of examples is required
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`to meet the written description requirement. Zoltek Corp. v. U.S., 815 F.3d 1302, 1308 (Fed. Cir.
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`2016) (‘The written description need not include information that is already known and available
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`to the experienced public.’). If IGT were attempting to construe “publish” or “subscribe” in a
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`specialized manner, disclosure of embodiments applying these terms in that specialized manner
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`might be necessary to show that the inventors had possession of the invention. But IGT is doing
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`the opposite and applying these everyday terms in their everyday context, so no explicit
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`embodiments are required under § 112 to satisfy the written description requirement. See Id.;
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`Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006) (“A claim will not be
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`invalidated on section 112 grounds simply because the embodiments of the specification do not
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`contain examples explicitly covering the full scope of the claim language.).
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`Nonetheless, the ’212 Patent provides ample description for publishing a specific and
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`distinct message to distinct subscribers. Ex. 24 at 23:56–57 (“The publisher 2128 may publish (or
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`provide) services that one or a plurality of subscribers (or consumers) may consume.”) (emphasis
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`added), Fig. 22 (describing example involving only one subscriber), 17:63–65 (describing using
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`“IP protocol,” which would
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`involve specific request and response messages, “for
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`intercommunication between each of the modules”), 4:34–35 (describing embodiment that
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`includes general step of “receiving, from the node, a request to subscribe to the published first
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`high-level function”). Of course, a message with a single intended recipient is a “specific
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`message.”
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`The’212 Patent specification also describes several examples of receiving and accepting
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`subscription requests. See e.g., Ex. 24 at claims 21, 24; id. at 18:12–14 (describing embodiment
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`wherein a “broadcast packet” contains “data identifying the specialized device and describing its
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`location and capabilities”), 17:63–65 (describing an embodiment that uses “the IP protocol for
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`intercommunication between each of the modules shown in Fig. 9.”), 17:65–18:2 (describing
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`“[o]ther existing or future protocols [that] may also be used such as, for example, IPX from
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`NOVEL; however, the IP protocol is universally used for the Internet and many communicating
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`products and components support it.”), 18:29–34 (“the server(s) 112 may register (subscribe) with
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`the specialized devices for the list of events that are of interest. Then, the event notification process
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`running in the specialized device may produce a call back to the server(s) 112 (thus the name
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`callback) in order to pass details on the event information when it occurs.”), 24:28–36 (“The
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`services provided by the publishing nodes…may be consumed independently by one subscribing
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`node…; for example, network connected printers installed in gaming machines may publish a
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`range of services and a maintenance server may subscribe to, e.g., a paper jam alert and the paper
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`low alert services such that the maintenance server may forward a job order to a technician on his
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`or her mobile device.”). As another example, claim 24 describes a “method for distributed gaming
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`over a communication bus,” including the steps of “receiving, from the node, a request to subscribe
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`to the published first high-level function” and then “accepting the subscription request.” Id. at
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`claim 24.
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`Further, Zynga mischaracterizes IGT’s infringement contentions. Contrary to its
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`assertions, IGT does not contend “publishing” is by user devices or that the “request to subscribe”
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`consists of “simple request/response message to a server.” See Ex. 2 at 284.
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`2.
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`The ’212 Patent’s Asserted Claims Are Not Indefinite
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`a.
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`High-Level Function
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`Zynga also tries to reassert its failed claim construction argument that “high-level function”
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`is indefinite. Dkt. 39 at 10-13; Dkt. 64. The Court already rejected this contention though, instead
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`finding that the term was entitled to its plain and ordinary meaning. Dkt. 42 (Joint Claim
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`Construction Statement) at 7, Dkt. 25 (Zynga’s Opening Claim Construction Brief) at 23-27
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`(Zynga previously arguing “high-level function” was indefinite); Dkt. 64 (Claim construction
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`order) at 2 & Dkt. 53 (Markman Tr.) at 29:20-50:18 (Court ordering that “high-level function” is
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`entitled to plain and ordinary meaning). Nonetheless, Zynga, through Dr. Chatterjee, claims that
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`“the asserted ’212 patent claims are indefinite because the specification does not objectively define
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`the ‘level’ at which a function is considered ‘high-level’ versus ‘non-high-level.’ The intrinsic
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`record’s only guidance is a series of non-limiting examples. . . the non-limiting examples provide
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`no objective boundaries even within their own scope.” Ex. 2 ¶ 703.
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`But, as explained during claim construction, the ’212 Patent distinguishes between “high-
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`level” and “low-level” functions. On one hand, the specification explains that an API may be
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`offered to an audit engine—a high-level function. Ex. 24 at 11:44–48, 13:29–38, 44–47, 56. On
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`another hand, the specification explains that “low level details necessary to operate the specialized
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`device are not made available to the high-level software module.” Id. at 13:49–51. The ’212 patent
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`also provides examples of high-level functions: “[t]he at least one high-level function may include
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`a business function, an audit function, an authentication function, a biometric identification
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`function, a graphics rendering computation function and/or an outcome determination function, to
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`name but a few of the possible high-level functions.” Id. at 3:30–34; see also id. at 5:14–18.
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`Several possible high-level functions are also defined in the claims. See, e.g., id. at claims 10, 27,
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`34. Because each of these possible functions enable vendor-agnostic commun