Case 6:21-cv-00331-ADA Document 61 Filed 03/01/22 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, IGT CANADA SOLUTIONS ULC,
` Plaintiffs
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`-vs-
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`ZYNGA INC.,
` Defendant
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`ORDER ON DISCOVERY
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`W-21-CV-00331-ADA
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`Before the Court is Plaintiffs’ motion to compel Defendant to produce technical
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`documents and source code “sufficient to show the operation of the accused product(s). After
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`considering the parties’ respective position statements submitted to the Court by email on
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`February 7, 2022, and the parties’ oral argument on February 16, 2022, Plaintiffs’ Motion is
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`GRANTED.
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`I.
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`BACKGROUND
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`IGT and IGT Canada Solutions ULC (collectively, “IGT” or Plaintiffs”) allege that
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`Defendant Zynga Inc. (“Zynga” or “Defendant”) improperly withheld discovery for the majority
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`of products identified in IGT’s preliminary infringement contentions. For each of the asserted
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`patents, IGT’s preliminary infringement contentions identify infringing instrumentalities in
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`Zynga’s gaming systems. IGT’s preliminary infringement contention charts correlate those
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`instrumentalities with each asserted claim. IGT clarified that such charted products were
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`“exemplary only” and “representative of and exhibit the same accused instrumentalities common
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`to all” identified products. Zynga only produced technical information for the subset of
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`exemplary products for which IGT included screenshots and withheld discovery on roughly 100
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`Case 6:21-cv-00331-ADA Document 61 Filed 03/01/22 Page 2 of 7
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`other accused products. IGT requests that the Court compel Zynga to provide discovery for each
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`product identified and accused in IGT’s contentions.
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`IGT’s preliminary infringement contentions allege that Zynga infringes, for example,
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`U.S. Patent No. 7,168,089 by “performing in the United States Zynga’s gaming methods
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`involving hardware and software for authorizing users to play Zynga’s various game offerings,
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`such as Words With Friends, Words With Friends 2, Harry Potter: Puzzles & Spells, FarmVille,
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`FarmVille 2, FarmVille 3, Zynga Poker, Hit It Rich! suits of slots games including, e.g., Mustang
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`Money, Game of Thrones Slots Casino, Willy Wonka Slots, Wizard of Oz Slots, Black Diamond
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`Casino slots, and other Zynga slots games, and other games listed in IGT_0004551 (Apple App
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`Store), IGT_0004583 (Google Play Store), and/or IGT_0004424 (Zynga.com/games/) (the
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`“Accused Methods”).” The documents IGT_0004551, IGT_0004583, and IGT_0004424
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`collectively list roughly 100 other games (the “uncharted games”) that form the basis of this
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`discovery dispute. Zynga refuses to produce discovery on the uncharted games because Zynga
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`feels the uncharted games are not fairly represented and because IGT has not provided separate
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`infringement contention charts that identify independent infringement theories.
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`II.
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`PARTY’S ARGUMENTS
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`IGT seeks source code and other discovery for the roughly 100 uncharted games without
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`individually charting each of the uncharted games. IGT contends that it needs discovery on the
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`uncharted games before it can provide meaningful infringement contention charts.
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`Zynga posits that Plaintiff must either separately chart each accused product or provide
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`meaningful analysis explaining how multiple accused products presented supposedly operate the
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`in the representative manner. Zynga argues that IGT has not met either burden. Zynga further
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`argues that the uncharted games are materially different from the charted games.
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`To illustrate its argument, Zynga uses an example of “airplane mode games.” Some
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`asserted claims require communication between a server and a mobile device. IGT alleges that
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`both the charted games and uncharted games perform the claimed communication. But Zynga
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`contends that many of the uncharted games are played without any communication with a server,
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`which IGT can confirm by playing the game on a device in airplane mode. According to Zynga,
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`these differences arose because different programmers from independent groups independently
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`developed the allegedly represented games to work in independent ways. Because of the
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`different, non-representative implementation techniques, Zynga argues IGT must either
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`demonstrate the difference in the implementation techniques does not affect its infringement
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`theories or explain its basis for contending that every accused product uses the same
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`implementation technique.
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`Zynga argues for proceeding in one of two ways, neither of which include discovery on
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`the roughly 100 uncharted products. First, Zynga proposes that if IGT believes multiple games
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`infringe for the same reason—for example, by using the same Zynga back end service to carry
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`out the accused functionality—then IGT should provide a chart disclosing that theory. But,
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`Zynga argues, IGT would need no additional discovery because Zynga already produced that
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`code. Second, if IGT believes Zynga’s games infringe because of game-specific functionality,
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`IGT must provide contentions explaining how each allegedly infringes. Zynga therefore argues it
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`should not be compelled to produce the source code for the games for which IGT has not
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`disclosed an infringement theory and that any such production would be unduly burdensome.
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`III. DISCUSSION
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`The Court “adheres to a policy of liberal discovery.” Bright Sols., Inc. v. Tire Seal, Inc.,
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`No. 5:06CV247, 2008 WL 11347983, at *4 (E.D. Tex. Jan. 14, 2008). This request comes at the
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`preliminary infringement stage. Unlike WSOU Investments LLC v. OnePlus Tech. (Shenzhen)
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`Co., the Court is not merging the preliminary and final infringement deadlines. 2022 WL
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`174517, at *2–3 (W.D. Tex. Jan. 18, 2022). Indeed, a higher standard of detailing claim charts
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`with specific descriptions of how each product is represented by a single charted product applies
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`to a plaintiff’s final infringement contentions. But at the preliminary infringement contention
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`stage, a plaintiff need only illustrate that the additional uncharted products are “reasonably
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`similar” to those specifically charted and accused in the preliminary infringement contentions.
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`Stambler v. Amazon.com, Inc., No. 2:09-CV-310 (DF), 2011 WL 13196261, at *3 (E.D. Tex.
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`May 13, 2011); see also Nichia Corp. v. Feit Elec. Co., Inc., No. CV 20-359-GW-EX, 2020 WL
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`7264546, at *3 (C.D. Cal. Nov. 19, 2020) (“A plaintiff need only provide enough information to
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`permit a reasonable inference that all accused products infringe.”) (internal quotation marks
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`omitted).
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`Here, IGT met the reasonably similar standard, but only barely so. The uncharted games
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`are all run by Zynga and alleged to work in the same way, and the accused communication to
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`servers remains unrebutted by Zynga’s arguments or any evidence. Thus, the Court agrees with
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`IGT: Zynga cannot refuse to comply with discovery just because Zynga believes it does not
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`infringe.
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`Zynga argues that the uncharted products cannot be reasonably similar to an exemplary
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`charted product based on material differences such as the ability of some uncharted games to
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`operate without any claimed communication to a server by operating in airplane mode. Zynga
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`argues that this difference requires Plaintiff to either demonstrate the difference does not affect
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`its infringement theories or show that the accused products use the same implementation
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`technique.
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`Despite Zynga’s argument, the Court finds it is reasonable, at this stage, that the
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`uncharted games that can function in airplane mode may nonetheless infringe when not in
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`airplane mode. The Court also discounts Zynga’s argument due to lack of evidentiary support
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`(e.g., a declaration or technical document showing that certain games never communicate with a
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`server). Such evidence sits at heart of the discovery that Plaintiffs seek in order to provide more
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`detailed final infringement contentions explaining why products are fairly represented. Thus, the
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`Court finds it appropriate to order such discovery and reject reliance on Zynga’s unilateral
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`argument that products are not fairly represented. The Court notes that plaintiffs should exhaust
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`publicly available information in providing preliminary infringement contentions. But even if
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`Zynga is correct that products are not fairly represented, Plaintiff is still entitled to discovery to
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`verify it when such information is not publicly available. Because the accused products remain
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`“reasonably similar” after considering Zynga’s positions, Zynga must provide the requested
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`discovery.
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`Defendant also alleges that the requested discovery is unduly burdensome. The Court
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`finds other remedies more appropriate than denial of discovery.
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`First, the parties can meet and confer to place the accused products in multiple
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`representative buckets. For example, Zynga argues that the games that are playable in “airplane”
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`mode fall into a separate representative bucket. Zynga could identify all games that fall into this
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`bucket and provide discovery on one or two exemplary games, such as a game chosen by each
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`party. After gathering discovery, the parties might agree that games in the “airplane” mode
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`bucket do not infringe and drop such products from the case. If the parties continue to disagree
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`about the infringement of products in the “airplane” mode bucket, then Plaintiffs, now armed
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`with discovery of one or two exemplary airplane mode products, can chart its representative
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`infringement contentions for all products in that bucket.
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`Second, if Plaintiffs fail to cooperate and work toward smaller, more reasonable
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`representative buckets and continue to insist that all products in a large bucket operate in the
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`same way, then Defendant may stipulate to the representation and produce discovery on one
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`representative product of Defendant’s choice (in addition to discovery on fairly charted
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`products). A defendant will naturally select a representative product that is least likely to infringe
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`and hold an uncooperative plaintiff to its own allegation that all other uncharted products operate
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`in the same way. To avoid this, a plaintiff may either cooperate and work toward smaller, more
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`reasonable representative buckets, initially chart more products under independent infringement
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`theories, or chart contentions based on smaller, more reasonably representative buckets.
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`Last, Defendant can seek alternative relief. The Court’s discovery procedure limited
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`Defendant to a 500-word argument, which may not have permitted Defendant to fully articulate
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`its basis for relief or submit the necessary evidence. A defendant may file a motion to dismiss
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`certain products from the case if the defendant believes those contentions are not plausible. A
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`defendant may file a motion for sanctions if the discovery is sought for an improper purpose such
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`as needlessly increasing the cost of litigation, if a plaintiff’s contentions lack a good faith basis,
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`if a plaintiff engages in discovery abuse, or if a Plaintiff fails to conduct a reasonable pre-suit
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`inquiry. A defendant may move for a protective order under Rule 26 if the burden or expense of
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`the discovery outweighs its likely benefit. Alternatively, the Defendant here may expedite
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`representative discovery, for example by producing full discovery on airplane mode products,
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`before filing an early motion for summary judgment with evidentiary support. But, given the
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`current record, the Court believes that Plaintiffs have done enough to warrant the requested
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`discovery.
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`IV. CONCLUSION
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`IT IS THEREFORE ORDERED that Plaintiffs’ discovery request is GRANTED. Zynga
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`is ORDERED to provide discovery for each product identified and accused in IGT’s contentions
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`or provide discovery of an exemplary product that Zynga stipulates is representative of the
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`uncharted games.
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`SIGNED this 1st day of March, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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