Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`Plaintiffs,
`
`vs.
`
`ZYNGA INC.,
`
`Defendant.
`
`Case No. 6:21-cv-00331-ADA
`
`ZYNGA INC.’S REPLY CLAIM CONSTRUCTION BRIEF
`
`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 2 of 23
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`TABLE OF CONTENTS
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`Page(s)
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`“SOFTWARE AUTHORIZATION AGENT” (’089 PATENT) .........................................1
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`“GAMING SOFTWARE” (’089 PATENT) ........................................................................2
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`“GAMING MACHINE” (’089 PATENT)...........................................................................3
`
`“WEBSITE SERVER” (’473 PATENT) .............................................................................4
`
`“FIRST GAMING SERVER” (’473 PATENT) ..................................................................7
`
`“PUBLISHING” (’212 PATENT) .......................................................................................8
`
`“HIGH-LEVEL FUNCTION” (’212 PATENT) ...............................................................10
`
`“NODE” (’212 PATENT) ..................................................................................................14
`
`“DETERMINE INSTANCES OF PROBABLE COLLUSION BETWEEN
`PLAYERS” (’791 PATENT) .............................................................................................14
`
`10.
`
`“ESTABLISHING” AND “RE-ESTABLISHED” “COMMUNICATIONS LINK”
`(’189 PATENT) .................................................................................................................16
`
`i
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 3 of 23
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`448 F.3d 1324 (Fed. Cir. 2006) .............................................................................................................. 4
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017) ...................................................................................................... 1, 2, 5
`
`Dyfan, LLC v. Target Corp.,
`No. W-19-CV-00179-ADA, 2020 WL 8617821 (W.D. Tex. Nov. 24, 2020)...................................... 15
`
`Ethicon LLC v. Intuitive Surgical, Inc.
`847 F. Appp’x 901, 907 (Fed. Cir. 2021) ....................................................................................... 12
`
`Hakim v. Cannon Avent Grp., PLC,
`479 F.3d 1313 (Fed. Cir. 2007) .............................................................................................................. 6
`
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008) ............................................................................................................ 11
`
`Nautilius, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ............................................................................................................................. 12
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) ............................................................................................................ 15
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .............................................................................................................. 7
`
`Pall Corp. v. PTI Techs., Inc.,
`259 F.3d 1383 (Fed. Cir. 2001) .............................................................................................................. 5
`
`Uship Intellectual Props., LLC v. United States,
`714 F.3d 1311 (Fed. Cir. 2013) .............................................................................................................. 7
`
`ii
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 4 of 23
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`Exhibits to Opening Brief:
`
`TABLE OF EXHIBITS
`
`Exhibit
`1.
`2.
`3.
`4.
`5.
`6.
`7.
`
`8.
`9.
`
`10.
`
`11.
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`12.
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`13.
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`14.
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`15.
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`16.
`
`17.
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`18.
`
`19.
`
`20.
`
`21.
`
`22.
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`23.
`
`24.
`
`25.
`
`Title
`Intentionally omitted
`U.S. Patent No. 7,168,089
`U.S. Patent No. 7,303,473
`U.S. Patent No. 8,266,212
`U.S. Patent No. 8,708,791
`U.S. Patent No. 9,159,189
`IGT Opp’n to Zynga’s Substantive Mot. 3, Pat. Interf. No. 105,747 (RES), bearing
`Bates numbers ZYNGA00006355-ZYNGA00006386 [IGT Opp. 3]
`Declaration of Michael T. Goodrich PhD Regarding Claim Construction
`Excerpts from Microsoft Computer Dictionary (5th ed. 2002), bearing Bates numbers
`ZYNGA00006387-ZYNGA00006389
`IGT Substantive Mot. 1, Pat. Interf. No. 105,747 (RES), bearing Bates numbers
`ZYNGA00006207-ZYNGA00006266
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`November 3, 2004 (Non-Final Rejection)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`February 3, 2005 (Response)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`July 15, 2005 (Non-Final Rejection)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`November 18, 2005 (Response)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`April 17, 2007 (Final Rejection)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`June 14, 2007 (Response)
`Excerpt from the Prosecution History of U.S. Patent No. 7,303,473, dated
`August 7, 2007 (Notice of Allowance)
`Excerpts from IEEE 100. The Authoritative Dictionary of IEEE Standards Terms
`(7th ed. 2000), bearing Bates numbers ZYNGA00006390-ZYNGA00006396
`Excerpts from Beginning Java Networking (2001), bearing Bates numbers
`ZYNGA00006435-ZYNGA00006438
`Excerpt from the Prosecution History of U.S. Patent No. 8,266,212, dated June 8, 2011
`(Non-Final Rejection)
`Excerpt from the Prosecution History of U.S. Patent No. 8,266,212, dated October 3,
`2011 (Response to Non-Final Rejection)
`Specification comparison of application number 10/120,635, the ’212 patent’s claimed
`parent application, and 11/842,147, the continuation-in-part application that issued as
`the ’212 patent
`Excerpt from the Parent Prosecution History of U.S. Patent No. 8,266,212, dated
`December 17, 2004 (Amendment)
`Excerpt from the Parent Prosecution History of U.S. Patent No. 8,266,212, dated May
`22, 2006 (Response to Comm. re 10/120,635 Application)
`Excerpt from the Prosecution History of U.S. Patent No. 8,266,212, dated May 2, 2012
`
`iii
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 5 of 23
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`Exhibit
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`Title
`(Final Rejection)
`Excerpts from Webster’s New World Computer Dictionary (10th Edition 2003),
`bearing Bates numbers ZYNGA00006405-ZYNGA00006412
`Excerpts from the Dictionary of Computer and Internet Terms (6th Edition 1998),
`bearing Bates numbers ZYNGA00006418-ZYNGA00006425
`Excerpts from Wiley Electrical and Electronics Engineering Dictionary (2004), bearing
`Bates numbersZYNGA00006439-ZYNGA00006448
`Excerpts from Microsoft Computer Dictionary (4th ed. 1999), bearing Bates numbers
`ZYNGA00006426-ZYNGA00006434
`Excerpts from Bill Brogden, SOAP Programming with Java (2002), bearing Bates
`numbers ZYNGA00006397-ZYNGA00006404
`Excerpts from Mark Nadelson and Tom Hagan, C++ Objects for Making UNIX and
`WinNT Talk, (2000), bearing Bates numbers ZYNGA00006468-ZYNGA00006491
`
`Exhibits to Reply Brief:
`
`Exhibit
`32.
`33.
`
`34.
`35.
`
`Title
`Amendment A in re Application of Nguyen, et al., dated May 25, 2006
`Second Declaration of Michael T. Goodrich, PhD Regarding Claim Construction dated
`December 3, 2021 (and Exhibits A-D thereto)
`U.S. Patent No. 6,409, 602
`Summary of 9/15 Interview, dated September 20, 2011
`
`iv
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 6 of 23
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`Zynga’s constructions are consistent with the intrinsic evidence, concessions IGT made
`
`in prosecution, and how a POSITA would understand the terms. In response, IGT has proposed
`
`entirely new constructions that were not previously disclosed. Even were the Court to consider
`
`these untimely constructions, they should be rejected as contrary to the evidence.
`
`1.
`
`“software authorization agent” (’089 patent)
`
`Zynga’s Construction
`“a device that authorizes (that is approves or rejects) specific
`transfers of gaming software based on applicable rules, and
`monitors (that is tracks) these transfers”
`IGT concedes that during an interference involving the ’089 patent “IGT had initially
`
`IGT’s Construction
`No construction necessary
`(plain and ordinary meaning)
`
`proposed the construction” (proposed now by Zynga) that a “software authorization agent” both
`
`(i) “authorizes” “specific transfers of gaming software based on applicable rules” and
`
`(ii) “monitors” these transfers. IGT Br. at 6-7; Ex. 7 at 3. According to IGT, that is how a
`
`POSITA would understand the term.
`
`IGT does not dispute that a patent owner is bound by constructions proposed in post-
`
`issuance proceedings. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir.
`
`2017). Instead, IGT attempts to avoid its prior construction by claiming that the PTO “expressly
`
`rejected” it. IGT Br. at 7. The PTO did no such thing. In fact, the PTO did not have an occasion
`
`to address the substance of IGT’s construction it because it was presented in opposition to a
`
`Zynga motion that the PTO declined to consider. See IGT Ex. A at 15. IGT cannot escape the
`
`fact that it unambiguously notified the public that its “software authorization agent” is a device
`
`that authorizes and monitors specific transfers of gaming software based on applicable rules.1
`
`1 IGT makes much of the fact that PTO held that “authorization agent” in a Zynga patent
`application cannot be limited to devices that authorize “software” transfers (since the claim did
`not use the word “software”). See id. at 8. But the PTO said nothing about the rest of IGT’s
`proposed construction and the term here references “software.” Thus, the PTO never addressed,
`let alone “rejected,” IGT’s admission that its patent’s “software authorization agent” must
`monitors and authorizes specific transfers of software based on applicable rules.
`1
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 7 of 23
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`IGT should be held to that representation.
`
`IGT also argues that “if any definition from the interference is relevant, it is Zynga’s
`
`definition….” IGT Br. at 7. IGT therefore concedes that definitions proposed in the interference
`
`should be given effect, but nonsensically argues that a third party’s construction—not the patent
`
`owner’s—is binding. The case law makes clear that patentee’s statements control. See Aylus
`
`Networks, 856 F.3d at 1360.
`
`Next, IGT ignores its unqualified admission that “software authorization agent” “lacks a
`
`clear and ordinary and customary meaning” (Ex. 7 at 3) and now takes the opposite position.
`
`IGT Br. at 8. A “plain and ordinary meaning” construction would be improper here because
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`there is—by IGT’s prior admission—no such thing.
`
`IGT contradicts itself again by implying a “software authorization agent” is “not
`
`necessarily a standalone device, but may be a component of a device, like a processor.” IGT Br.
`
`at 8. To obtain allowance, IGT argued its claims require “three devices, a software authorization
`
`agent, a first gaming device and a second gaming device.” Ex. 32, 5/25/06 Amend. at 22. The
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`prior art, according to IGT, employed an authorization component within one of its gaming
`
`devices. Thus, it lacked a “third device.” Id. It follows that per the claims and IGT’s admission,
`
`the ’089 patent requires a “separate” and “standalone” “software authorization agent.”
`
`2.
`
`“gaming software” (’089 patent)
`
`IGT’s Construction
`Zynga’s Construction2
`No construction necessary (plain and
`“instructions that are executed to run a game or a
`ordinary meaning)
`component of a game, as distinct from stand-alone data”
`The dispute is whether data, which is neither instructions nor code, and cannot be
`
`executed, is “gaming software.” It is not. IGT admitted as much in a previous proceeding when
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`2 “Stand-alone” was added to Zynga’s construction to clarify that while data can be included
`along with gaming software, data is not itself gaming software.
`2
`
`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 8 of 23
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`it “defined ‘gaming software’ to refer to software ‘components’ that may be executed….”3 IGT
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`Br. at 11. Data is not executed and, thus, not “gaming software.”4
`
`Zynga’s construction is consistent with the specification, which describes “gaming
`
`software” as “executed on a gaming machine to play” a game. ’089 patent, 25:38-39; see also
`
`24:51-53; 25:42-48; 25:48-50; 25:54-59. Data may be used by software, but it is not “executed”
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`by the computer and, thus, not “gaming software.” See Ex. 33, 2nd Goodrich Decl., ¶¶ 5-17.
`
`IGT notes that the ’089 patent provides examples of “gaming software.” IGT Br. at 9
`
`(citing ’089 patent, claim 1, 8:38-44, and 25:38-39). But all of these examples are executed by
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`the gaming machine to provide game play functionality (e.g., a component of a game). Ex. 33,
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`2nd Goodrich Decl., ¶¶ 6, 9. There is no example where “data” (separate from software) is
`
`identified as “gaming software.” To the contrary, the patent repeatedly contrasts “gaming
`
`software” (which is executed to play a game) from “data” (which can be used or generated by
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`software but is not itself executed). See, e.g., ’089 patent, Abstract, 4:34-37, 17:32-38; 18:1-10;
`
`27:4-10; 27:31-36; 27:55-59. The claims require “gaming software,” not “gaming data.”
`
`3.
`
`“gaming machine” (’089 patent)
`
`IGT’s Construction
`Zynga’s Construction
`Original: No construction necessary (plain and ordinary
`“a special purpose machine like
`meaning)
`a slot machine, not a general
`Now: “a machine on which a game is played” (IGT Br. at 12).
`purpose computer”
`The parties agree that a special purpose machine, like a slot located in a casino, is a
`
`“gaming machine.” See IGT Br. at 12. The dispute is whether the term is so broad that it also
`
`3 Throughout this brief, all emphasis is added unless otherwise noted.
`4 IGT concedes the patent distinguishes between “gaming software” and gaming “data” or
`“information” to “distinguish[] certain types of data that potentially related to gaming… as
`unrelated to a computer’s operation.” Id. Software (instructions executed by a computer)
`dictate a computer’s operation. Data is “unrelated to a computer’s operation” because it cannot
`be executed. Zynga’s construction gives effect to IGT’s representations.
`3
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 9 of 23
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`encompasses a general purpose computer. To support its expansive construction, IGT
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`misleadingly cites passages in the specification that describe a “gaming device,” not a “gaming
`
`machine.” See, e.g., id. at 12 (citing ‘089 patent, 13:18-21 (gaming device may be a cell
`
`phone)). But the asserted claims distinguish between a “gaming device” and a “gaming
`
`machine” and these different terms have different meanings. See, e.g.,’189 patent, claim 1;
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`Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006).
`
`IGT does not attempt to explain the difference between its claimed “gaming machine”
`
`and “gaming device.” At best, it posits that a gaming machine is “a machine on which a game is
`
`played.” IGT Br. at 12. But that cannot define a gaming machine (as distinct from a gaming
`
`device) because the specification explains that a “portable gaming device [] may be carried by a
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`player and used to play a game of chance.” ’189 patent, 27:43-44. In other words, a gaming
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`device is also “a machine on which a game is played,” leaving IGT with no way to differentiate
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`between a gaming device and a gaming machine. The difference—as made clear by the
`
`specification—is that a gaming machine is a special purpose machine (like those “located in a
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`store[,]” “casino” or “riverboat”, see id. at 27:39-44), whereas a gaming device need not be (id.
`
`at 13:18-21 (a gaming device may be a cell phone or PDA)). IGT has no evidence where a
`
`“gaming machine” includes a general purpose computer. Zynga’s proposed construction gives
`
`effect to the fact that the ’089 patent requires both a “gaming device” and a “gaming machine”
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`and those terms must have different meanings.
`
`4.
`
`“website server” (’473 patent)
`
`Zynga’s Construction
`“a server that provides websites to other devices wherein
`said server is a separate device from the first gaming
`server/apparatus and the second gaming server/apparatus”
`For claim 36: “a server that provides websites to other
`devices wherein said server is a separate device from the
`
`IGT’s Construction
`Originally: No construction
`necessary (plain and ordinary
`meaning)
`Now: “hardware or software that
`services a website” (IGT Br. at 14).
`
`4
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 10 of 23
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`gaming apparatus”
`There are three disputes on this term. First, the parties disagree whether a “website
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`server” “provides websites to other devices” (Zynga) or “services a website” (IGT). IGT did not
`
`raise this issue previously and does not explain what it means by “services a website,” but a
`
`POSITA would understand that a “website server” provides (e.g., “serves”) websites.5
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`Second, the parties disagree whether the claimed “website server” must be a separate
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`device from the gaming server/apparatus. The file history provides the answer. There, to
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`overcome prior art, IGT repeatedly, clearly, and unambiguously argued that the website server
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`and gaming servers/apparatuses are physically distinct. Ex. 12, 2/1/05 Response, at 2-7
`
`(distinguishing prior art on the ground it “utilize[d] the same computer for all server
`
`functionality” and arguing the same server distinction for every claim); see also Ex. 16, 6/14/07
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`Response, at 2-4. IGT explained that its claims require “at least three separate servers” each of
`
`which is a “separate device.” Ex. 12, 2/1/05 Response, at 2; see also Ex. 16, 6/14/07 Response,
`
`at 3. IGT’s acknowledgement that the servers are “separate devices” each with its own controller
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`makes clear the servers must be physically separate. IGT cannot now argue its claimed servers
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`need not be separate. Aylus Networks, 856 F.3d at 1360 (claims cannot be construed one way to
`
`obtain allowance and another to prove infringement); see also Pall Corp. v. PTI Techs., Inc., 259
`
`F.3d 1383, 1392 (Fed. Cir. 2001) (“prosecution history limits the interpretation of claim terms so
`
`as to exclude any interpretation that was disclaimed during prosecution”).
`
`IGT emphasized the use of separate computers at every turn during prosecution. For
`
`example, after the Examiner found it would be obvious to modify Wiltshire to include a system
`
`with games running on “at least two server/host computers,” (Ex. 13, 7/15/05 Non-final
`
`5 Something that merely services a website is not a website server. For example, a spell-check
`program might service a website to correct spelling, but it is in no way a website server.
`5
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`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 11 of 23
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`Rejection, at 14), IGT argued the claims require three separate servers, specifically such that the
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`web server computer and the two gaming server computers are separate devices. Ex. 14,
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`11/15/05 Response, at 2; see also, 3-8 (same argument for other claims); see also, Zynga Br. at
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`13-15. If IGT intended to rescind or alter its repeated disclaimers that separate devices were
`
`required, IGT was obligated “to inform the examiner that the previous disclaimer, and the prior
`
`art that it was made to avoid, may need to be re-visited.” Hakim v. Cannon Avent Grp., PLC,
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`479 F.3d 1313, 1318 (Fed. Cir. 2007). IGT did not do this and, thus, is bound by its disclaimers.
`
`Third, IGT incorrectly argues the claimed “website server” can be purely software, which
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`is contrary to the claim language and prosecution history. Asserted independent claims 1, 9, 16
`
`require a “website server” that “comprises” physical components such as a controller with a
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`processor and memory and a “network communications circuit coupled to said controller.” ’473
`
`patent. The fact that dependent claim 36 further requires that claim 32’s “website computing
`
`apparatus” is a “website server” does not support IGT’s argument that a “website server” can be
`
`purely software. Instead, claim 36 just specifies that the hardware “website computing
`
`apparatus” is a website server. Similarly, a claim to a wheeled vehicle followed by a dependent
`
`claim specifically reciting a car does not mean that a car is not a wheeled vehicle.
`
`IGT’s argument that a website server could just be software is an attempted end-run
`
`around the claims’ requirement and IGT’s arguments the “website server” is a hardware
`
`“device.” See Ex. 12, 2/1/05 Response, at 2 (“website server” is “a separate device that includes
`
`its own controller with a processor and memory.”); Ex. 14, 11/15/05 Response, at 2 (“the website
`
`server[] is also a separate device…”). And, as discussed, IGT distinguished Wiltshire’s host
`
`computer, which includes server/host interface programs (i.e., software) to implement server
`
`functions, because it “utiliz[es] the same computer for all server functionality.” See Ex. 34,
`
`6
`
`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 12 of 23
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`Wiltshire, 5:50-57; Ex. 16, 6/14/07 Response, at 4.
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`IGT’s new contention that the claims cover a single device with multiple software servers
`
`cannot be squared with the claim scope IGT ceded during prosecution. Omega Eng’g, Inc. v.
`
`Raytek Corp., 334 F.3d 1314, 1323-24 (Fed. Cir. 2003). And, it would be error to adopt a “plain
`
`meaning” construction in view of IGT’s clear and unambiguous disclaimer. See, e.g., Uship
`
`Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315-16 (Fed. Cir. 2013) (rejecting
`
`plain meaning construction where it did not give jury clear guidance on the scope of a claim term
`
`subject to disclaimer).
`
`5.
`
`“first gaming server” (’473 patent)
`
`IGT’s Construction
`Zynga’s Construction
`Original: No construction necessary (plain and
`“a first gaming server wherein said server
`ordinary meaning)
`is a separate device from the second
`Now: “hardware or software that facilitates play of
`gaming server and the website
`a game” (IGT Br. at 17).
`server/website computing apparatus”
`IGT repeats for “first gaming” server the same arguments it raised for “website server,”
`
`and they fail for the same reasons. IGT argues the “first gaming server” can be purely software.
`
`IGT is wrong. During prosecution IGT referred to the “gaming servers” as “devices.” Ex. 12,
`
`2/1/05 Response, at 2 (“The first and second gaming servers are separate devices…”); 3-4 (claim
`
`9 arguments are “similar to claim 1” and claim 16 arguments are “similar to claim 9”); Ex. 14,
`
`11/15/05 Response, at 2, 3-5 (same). And, to overcome rejection of claim 16–which did not
`
`recite hardware details for the gaming servers–IGT distinguished Wiltshire because it “utiliz[ed]
`
`the same computer for all server functionality.” Ex. 16, 6/14/07 Response, at 4. IGT’s current
`
`argument (that different software running on the same computer could meet the “server”
`
`limitations) is a blatant attempt to recapture scope relinquished to obtain the patent.
`
`In addition, the specification teaches that the “first gaming server” is a hardware device
`
`and does not suggest it could merely be software running on the website server. ’473 patent,
`
`7
`
`

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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 13 of 23
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`6:64-7:4 (“gaming server” may include various hardware components). The patent discusses
`
`various “gaming routines” but notes these routines are performed by the gaming servers (i.e.,
`
`devices). Id., 3:25-29, Figure 2C (“a block diagram of one of the gaming servers” that shows a
`
`device with multiple hardware components).
`
`The Court should adopt Zynga’s construction of “second gaming server” for the reasons
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`set forth in this section and in Zynga’s Opening Brief with respect to “first gaming server.”
`
`6.
`
`“publishing” (’212 patent)
`
`Zynga’s Construction
`“communicating information
`on a specific topic to one or
`more subscribers without
`needing to know any
`subscriber’s identity”
`The parties disagree whether “publishing” refers to the well-known publish-and-
`
`IGT’s Construction
`Originally: No construction necessary (plain and ordinary meaning)
`Now: “providing, exposing, or making a high-level function available
`to another device over a communication bus” (IGT Br. at 21).
`
`subscribe method (Zynga’s construction) or broadly encompasses any form of “providing,
`
`exposing, or making a high-level function available to another device over a communication
`
`bus,” as IGT contends. IGT’s expert summarized the dispute when he agreed “the ’212 patent
`
`refers to a publish-and-subscribe architecture as one possible method… for accomplishing
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`‘publishing’” but disagreed “that the term as it appears in claim 24 requires publish-and-
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`subscribe architecture.” Wills Decl. at ¶ 68.
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`Asserted claims 24 and 31 provide the answer. Both describe a method whereby a first
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`device (the gaming machine or first node) performs the step of “publishing… a high-level
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`function over the communication bus.” Thereafter, that device may receive “a request to
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`subscribe to the published high-level function” and, if so, provides “call backs [that] return a
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`result of the execution of the high-level function.” This is the classic publish-and-subscribe
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`model where information on a specific topic is advertised as available (published) and another
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 14 of 23
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`device can “subscribe” to that function and receive updates. The specification is of accord. See
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`’212 Patent at Abstract, 15:19-26.
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`While IGT nitpicks Zynga’s construction, IGT does not dispute that it reflects the
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`essential features of the well-known publish-and-subscribe architecture. See IGT Br. at 19-21;
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`Wills Decl. at ¶¶ 65, 67-68. IGT instead argues that the claims are not limited to a publish-and-
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`subscribe architecture, relying upon embodiments IGT believes provide “other possible methods
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`or topologies.” Wills Decl. at ¶ 68; IGT Br. at 19. But these are not “alternatives” to publish-
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`and-subscribe, nor does the patent describe them as such; rather, they are ways a publish-and-
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`subscribe architecture may be implemented. For example, IGT cites embodiments where packets
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`“may contain data identifying the specialized device” and “[e]ach specialized device may… be
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`configured to supply its identity to the central server(s) 112.” IGT Br. at 19 (citing ’212 patent,
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`18:9-17 and 13:56-57). This makes clear that while the identity “may” be known, it is not
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`required for publishing. This matches Zynga’s construction. The same is true of IGT’s other
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`example of publishing using the IP protocol. IGT Br. at 19. For example, the IP protocol could
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`publish to one or more receivers through “multicast routing,” which does not require the sender
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`to know the recipients’ identity. Ex. 33, 2nd Goodrich Decl., ¶¶ 44-46.
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`Thus, publishing can occur whether or not the publisher knows the subscriber’s identity.
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`Zynga is not proposing a “negative limitation” and is not excluding embodiments. IGT Br. at 19.
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`By disputing the “without needing to know” aspect of Zynga’s construction, IGT’s narrow
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`construction would limit publication to when the publisher knows the subscriber’s identity. This
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`is unsupported and would read out embodiments in the specification, such as the embodiment
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`using the JAVA 2 Platform where “publishers and subscribers are generally anonymous.” Ex.
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`22; see IGT Br. at 20 (acknowledging the JAVA 2 Platform embodiment).
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 15 of 23
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`Significantly, IGT agrees that “the applicant distinguished prior art by arguing that it does
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`not teach the ‘publishing’ function in the claims.” IGT Br. at 22. During prosecution, IGT
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`explained that the alleged invention used the publish-and-subscribe model:
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`Ex. 35, 9/20/11 summary of 9/15 Interview. Thus, IGT argued that prior art that satisfies IGT’s
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`current construction (art that “provided” or “made available” an authentication function where
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`the player’s account number and PIN are validated) did not meet the claim because it “does not
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`teach or suggest any publishing function.” Id.; Ex. 21 at 5-6, 8-9. Having successfully
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`overcome prior art based on the “publishing” limitation, IGT cannot now broaden the term to
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`encompass any form of “providing, exposing, or making a high-level function available to
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`another device over a communication bus.”6
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`7.
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`“high-level function” (’212 patent)
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`Zynga’s Construction
`Indefinite
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`IGT’s Construction
`Originally: No construction necessary (plain and ordinary meaning)
`Now: “a function that may be used or consumed by devices from
`more than one vendor, as opposed to a low-level function configured
`for one specific device” (IGT Br. at 23).
`IGT initially argued that “high-level function” does not require construction and should
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`be given its “plain and ordinary meaning.” Faced with compelling evidence that the term is an
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`indefinite term of degree, IGT now contends it is “a term of art” (which would require
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`construction), and that a “high-level function” is “a function that may be used or consumed by
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`6 IGT’s citations confirm that publishing is one way of providing or exposing a service. IGT Br.
`at 22 (citing ’212 patent, 16:43-54 and 23:56-58). That is consistent with publish-and-subscribe,
`but it does not mean that anything that provides or exposes a service constitutes “publishing.”
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 16 of 23
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`devices from more than one vendor, as opposed to a low-level function configured for one
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`specific device.” IGT Br. at 23 and 24.
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`IGT does not dispute that if the Court concludes “high-level function” is a term of degree,
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`then it is indefinite. Instead, IGT argues that there is a binary choice between the claimed “high-
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`level function” and a “low-level function.” IGT Br. at 23. IGT is wrong. Neither the patent nor
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`its prosecution history refer to a “low-level function” and there is nothing to suggest that a
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`function must be either high- or low-level. As Zynga and Dr. Goodrich explained, “high-level
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`function” is a term of degree and, thus, indefinite because there is no guidance beyond non-
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`limiting examples of what may constitute a “high-level function.” Zynga Br. at 23-27; Ex. 8,
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`Goodrich Decl., ¶¶ 33-39.
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`Even if, as IGT argues, there were a binary choice – a function is either “high-level” or
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`“low-level” – the term still would be indefinite. In a similar case, the Federal Circuit found a
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`claim directed to a “fragile gel” indefinite even though there was a binary choice – a gel is either
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`fragile or strong. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir.
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`2008). The Federal Circuit rejected the argument IGT makes here – that “high-level function” is
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`definite because “the specification also provides examples of ‘high-level functions,’” (IGT Br. at
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`26) – because these “are merely preferred embodiments of the invention… and thus ‘[high-level
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`function]’ as used in the independent claims is not limited to those embodiments.” Halliburton,
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`514 F.3d at 1250. The Court found the claims indefinite because the patent owner “had
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`produced no evidence of ‘precisely how… ‘strong’ a gel must be—for that fluid to exhibit
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`‘fragile gel behavior.’” Id. at 1248. The ’212 patent suffers from this same defect: it “fail[s] to
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`inform, with reasonable certainty,” what makes a function “high-level” (and, thus, could possibly
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`meet the limitation). Nautilius, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014).
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`Case 6:21-cv-00331-ADA Document 39 Filed 12/03/21 Page 17 of 23
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`Trying to save its claims, IGT proposes a construction without intrinsic support. IGT
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`seeks to read in a negative limitation that a high-level function cannot be “configured for one
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`specific device.” IGT Br. at 24. But IGT cannot show how “such exclusion[] find[s] support
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`either in the words of the claims” or in the specification. See Ethicon LLC v. Intuitive Surgical,
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`Inc. 847 F. Appp’x 901, 907 (Fed. Cir. 2021) (internal quotati