Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 1 of 7
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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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`Plaintiffs
`
`v.
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`Zynga Inc.,
`
`Defendant.
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`Case No. 6:21-cv-00331-ADA
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`JURY TRIAL DEMANDED
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`ZYNGA’S MOTION FOR LEAVE TO FILE SUPPLEMENTAL BRIEF IN SUPPORT
`OF ITS MOTION FOR SUMMARY JUDGMENT REGARDING
`ASSERTED PATENT 8,266,212
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`Plaintiff IGT and IGT Canada Solutions ULC’s (collectively, “IGT”) made statements
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`during inter partes review (“IPR”) proceedings that are directly relevant to, and contradictory to,
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`positions it has taken in opposition to Zynga’ Motion for Summary Judgment Regarding Asserted
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`Patent 8,266,212 (“the ’212 patent”). Specifically, IGT confirmed in the IPR oral hearing that the
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`phrase “responsive to updates occurring during the gaming session, providing call backs” in claims
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`24 and 31 requires multiple call backs. IGT made these statements after Defendant Zynga Inc.
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`(“Zynga”) filed its Reply in support of its Motion for Summary Judgment Regarding Asserted
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`Patent 8,266,212. Dkt. 195. Accordingly, Zynga respectfully moves for leave to file a
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`supplemental brief presenting IGT’s statements, which are contradictory to its arguments that the
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`phrase in the claims requires only a single call back. Dkt. 171 at 2-4.
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`I.
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`BACKGROUND
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`On February 2, 2023, Zynga filed its Motion for Summary Judgment Regarding Asserted
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`Patent 8,266,212 (“Motion”). Dkt. 129. On February 23, 2023, IGT filed its opposition to Zynga’s
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`Motion. Dkt. 171. On March 9, 2023, Zynga filed its reply in support of its Motion. Dkt. 195.
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`-1-
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`Plaintiffs
`
`v.
`
`Zynga Inc.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`Case No. 6:21-cv-00331-ADA
`
`JURY TRIAL DEMANDED
`
`ZYNGA’S MOTION FOR LEAVE TO FILE SUPPLEMENTAL BRIEF IN SUPPORT
`OF ITS MOTION FOR SUMMARY JUDGMENT REGARDING
`ASSERTED PATENT 8,266,212
`
`Plaintiff IGT and IGT Canada Solutions ULC’s (collectively, “IGT”) made statements
`
`during inter partes review (“IPR”) proceedings that are directly relevant to, and contradictory to,
`
`positions it has taken in opposition to Zynga’ Motion for Summary Judgment Regarding Asserted
`
`Patent 8,266,212 (“the ’212 patent”). Specifically, IGT confirmed in the IPR oral hearing that the
`
`phrase “responsive to updates occurring during the gaming session, providing call backs” in claims
`
`24 and 31 requires multiple call backs. IGT made these statements after Defendant Zynga Inc.
`
`(“Zynga”) filed its Reply in support of its Motion for Summary Judgment Regarding Asserted
`
`Patent 8,266,212. Dkt. 195. Accordingly, Zynga respectfully moves for leave to file a
`
`supplemental brief presenting IGT’s statements, which are contradictory to its arguments that the
`
`phrase in the claims requires only a single call back. Dkt. 171 at 2-4.
`
`I.
`
`BACKGROUND
`
`On February 2, 2023, Zynga filed its Motion for Summary Judgment Regarding Asserted
`
`Patent 8,266,212 (“Motion”). Dkt. 129. On February 23, 2023, IGT filed its opposition to Zynga’s
`
`Motion. Dkt. 171. On March 9, 2023, Zynga filed its reply in support of its Motion. Dkt. 195.
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`-1-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 2 of 7
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`On April 5, 2023, an oral hearing was held during inter partes review proceedings before the Patent
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`Trial and Appeal Board relating to the ’212 patent. See Ex. 1 (“IPR Transcript”).1
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`In that hearing, IGT made statements demonstrating its position that claims 24 and 31 of
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`the ’212 patent require multiple call backs, contrary to its position before this Court that only a
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`single call back is needed. IGT explicitly argued:
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`• “In a plain meaning basis a subscription is something that -- in our view -- has
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`persistence and it’s something that lasts for a while.” IPR Tr. at 25:15-16.2
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`• The prior art reference’s “figure on the matchmaker functionality didn’t say it showed
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`multiple callback messages, right. It showed a single response; and again… he’s
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`providing those things -- in our view -- in a single message.” Id. at 52:13-16.
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`II.
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`ARGUMENT
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`A.
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`Legal Standard
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`The Court’s local rule, Rule CV-7(f) provides that “A party may file a reply in support of
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`a motion. Absent leave of court, no further submissions on the motion are allowed.” However,
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`Courts allow out-of-time submissions when the party seeking to make the submission has good
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`cause. In determining whether a party has shown good cause when seeking leave, courts consider
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`four factors:
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`(1) the explanation for the failure to meet the deadline;
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`(2) the importance of the thing that would be excluded;
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`(3) potential prejudice in allowing the thing that would be excluded; and
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`(4) the availability of a continuance to cure such prejudice.
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`
`1 This transcript was published by the PTAB on May 4, 2023.
`2 All emphases are added unless otherwise noted.
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`-2-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 3 of 7
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`Kinetic Concepts, Inc. v. BlueSky Med. Corp., No. SA-08-CV-102-RF, 2009 WL 10664413, at *1
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`(W.D. Tex. Dec. 21, 2009) (quoting Arbitron, Inc. v. Int’l Demographics, Inc., No. 2:06–CV–434,
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`2009 WL 166555, *1 (E.D. Tex. Jan. 16, 2009)).
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`B.
`
`Zynga Should Be Granted Leave to File a Short Supplemental Brief in
`support of its Motion for Summary Judgment Regarding Asserted
`Patent 8,266,212
`
`
`Zynga should be granted leave to file its short Supplemental Brief in support of its Motion
`
`for Summary Judgment Regarding Asserted Patent 8,266,212. See Ex. A. As explained below,
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`each of the foregoing factors considered by courts in determining whether good cause exists
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`weighs in favor of allowing Zynga’s Supplemental Brief submission.
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`First, Zynga has not technically failed to meet any deadline, and the new information Zynga
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`seeks to bring to the Court’s attention regards events that occurred after Zynga’s reply in support
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`of its motion for summary judgment was due. Because Zynga could not have raised IGT’s
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`statements that had not happened yet, Zynga’s has a good reason for its inability to bring IGT’s
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`inconsistent positions to the Court’s attention. This factor therefore supports granting leave.
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`Second, the content of Zynga’s Supplemental Brief is highly significant and will assist the
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`Court in assessing IGT’s belated attempt to selectively construe the claims as not requiring
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`multiple call backs for purposes of infringement, but requiring multiple call backs for purposes of
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`the prior art. This factor also favors allowing the supplemental brief.
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`Third, there is no prejudice to IGT if the Court allows Zynga to submit its short
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`supplemental brief. The new evidence cited is all statements made by counsel for IGT in public
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`IPR proceedings. On the contrary, there would be significant prejudice to Zynga if IGT is
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`permitted to take tactical advantage of the staggered deadlines in these parallel proceedings to
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`-3-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 4 of 7
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`make inconsistent arguments with impunity. Accordingly, this factor favors allowing the
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`supplemental brief.
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`Fourth, there is no need for a continuance to permit this supplemental brief. A hearing has
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`not yet been set on Zynga’s Motion, and trial is scheduled for October, leaving plenty of time for
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`the issues raised in Zynga’s supplemental brief to be considered before any significant litigation
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`event occurs in this case. Zynga can file its supplemental brief promptly upon receiving leave
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`from the Court. Accordingly, this factor too favors granting Zynga’s request for leave.
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`III. CONCLUSION
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`For the foregoing reasons, Zynga’s Motion for Leave to File a Supplemental Brief in
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`support of its Motion for Summary Judgment Regarding Asserted Patent 8,266,212 should be
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`granted.
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`-4-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 5 of 7
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`Dated: June 9, 2023
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`Respectfully submitted,
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`By: /s/ Mark D. Siegmund
`
`Mark D. Siegmund
`Texas Bar No. 24117055
`CHERRY JOHNSON SIEGMUND JAMES, PLLC
`400 Austin Ave., 9th Floor
`Waco, Texas 76701
`msiegmund@cjsjlaw.com
`Telephone: (254) 732-2242
`Facsimile: (866) 627-3509
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`Clement Seth Roberts, Bar No. 209203 (Pro Hac Vice)
`croberts@orrick.com
`Elizabeth R. Moulton, Bar No. 286937 (Pro Hac Vice)
`emoulton@orrick.com
`Will Melehani, Bar No. 285916 (Pro Hac Vice)
`wmelehani@orrick.com
`Sarah K. Mullins, Bar No. 324558 (Pro Hac Vice)
`sarahmullins@orrick.com
`The Orrick Building
`405 Howard Street
`San Francisco, CA 94105
`Telephone: +1 415 773 5700
`Facsimile: +1 415 773 5799
`
`Bas de Blank, Bar No. 191487 (Pro Hac Vice)
`basdeblank@orrick.com
`1000 Marsh Rd.
`Menlo Park, CA 94025
`Telephone: +1 650 614 7400
`Facsimile: +1 415 773 5799
`
`Alyssa Caridis, Bar No. 260103 (Pro Hac Vice)
`acaridis@orrick.com
`Isaac S. Behnawa, Bar No. 342441 (Pro Hac Vice)
`ibehnawa@orrick.com
`777 South Figueroa Street
`Suite 3200
`Los Angeles, CA 90017
`Telephone: +1 213 629 2020
`Facsimile: +1 213 612 2499
`
`Sten Jensen, Bar No. 443300 (Pro Hac Vice)
`sjensen@orrick.com
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`-5-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 6 of 7
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`Chris Childers, Bar No. 1719610 (Pro Hac Vice)
`cchilders@orrick.com
`Columbia Center
`1152 15th St NW
`Washington, DC 20005
`Telephone: +1 202 339 8400
`Facsimile: +1 202 339 8500
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`Attorneys for Defendant Zynga Inc.
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`-6-
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`Case 6:21-cv-00331-ADA Document 221 Filed 06/09/23 Page 7 of 7
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`CERTIFICATE OF SERVICE
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`A true and correct copy of the foregoing instrument was served or delivered electronically
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`to all counsel of record, on this 9th day of June 2023, via the Court’s CM/ECF system.
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`
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`/s/
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`
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`Mark D. Siegmund
`Mark D. Siegmund
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`-7-
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