Zynga Inc v. Igt

1. Case Identification

• Case #: IPR2022-00199
• Patent #: 7,168,089
• Filed: November 19, 2021
• Petitioner(s): Zynga Inc.
• Patent Owner(s): IGT
• Challenged Claims: 28-29, 31-33, 47-50, 84-86, 90-92, and 99-100

2. Patent Overview

• Title: Secured Virtual Network In A Gaming Environment
• Brief Description: The ’089 patent discloses methods for securely authorizing the transfer and download of gaming software from a "first gaming device" (e.g., a server) to a "second gaming device" (e.g., a user's gaming machine) via a network. The system uses a separate "software authorization agent" to receive requests, validate them, and approve or deny the software transfer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goldberg and Olden - Claims 28-29, 31-33, 47-48, 84-86, 90-92, and 99-100 are obvious over Goldberg in view of Olden.

• Prior Art Relied Upon: Goldberg (Patent 5,823,879) and Olden (Patent 6,460,141).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Goldberg taught the core architecture of the challenged claims. Goldberg disclosed a system for playing online casino games where a "game controller" on a website (the first gaming device) provides gaming software (e.g., customized HTML files via CGI scripts) to a user's device (the second gaming device). Goldberg also disclosed a separate "player registration and playing status database" that functions as the claimed "software authorization agent" by verifying a player's identity before game software is transferred. However, Goldberg provided limited detail about the internal workings of its authorization agent. Petitioner asserted that Olden, which taught a detailed and robust security and access management system, supplied these missing details. Olden disclosed separate authorization servers that receive authorization requests from web servers, validate user credentials and entitlements against a database, log transactions, and return an authorization message (e.g., ALLOW or DENY) to the web server, which then transfers the requested software to the user.
  • Motivation to Combine: A POSITA seeking to implement Goldberg’s online gaming system would have been motivated to incorporate the detailed, secure, and customizable authorization system of Olden. Goldberg’s database was functionally described but lacked implementation details. Olden provided a well-defined, "out-of-the-box" solution for the very authorization and access control functions required by Goldberg. A POSITA would combine Olden to enhance Goldberg’s system with improved security, reliability (via redundant servers), customizability (via "smart rules"), and robust logging capabilities, all of which are highly desirable in a regulated gaming environment.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because both references related to managing user access to software over a network. Olden’s system was explicitly designed to be flexible and integrated with existing web-based infrastructure like that described in Goldberg.

Ground 2: Obviousness over Goldberg, Olden, and D'Souza - Claims 49 and 50 are obvious over Goldberg and Olden in further view of D'Souza.

• Prior Art Relied Upon: Goldberg (Patent 5,823,879), Olden (Patent 6,460,141), and D’Souza (Patent 6,745,224).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Goldberg and Olden from Ground 1 to address the limitations of dependent claims 49 and 50, which required the transferred gaming software to be used to "upgrade" or "correct an error" in a software component on the second gaming device. Petitioner argued that while Goldberg and Olden taught the authorized transfer of software, D'Souza taught the specific functionality of automatically updating it. D’Souza disclosed a system that runs on a user's computer to monitor a remote server for changes to content (such as HTML files or executable programs) and automatically download updated versions to maintain a current local copy.
  • Motivation to Combine: A POSITA would combine D'Souza's teachings with the Goldberg/Olden system for the common and predictable goal of ensuring users have the most up-to-date and error-free version of the gaming software. This functionality would be particularly useful in Goldberg's system to allow for seamless software patching and feature enhancement. D'Souza's automated, "unattended" updating during idle times would be an attractive feature to minimize disruption to the user.
  • Expectation of Success: Success would be expected because D'Souza was designed to update the same type of web content (HTML files, executable programs) that the Goldberg/Olden system was designed to transfer. The subject matter was highly similar, making integration straightforward.

4. Key Claim Construction Positions

• "Gaming software": Petitioner proposed this term meant "instructions that are executed to run a game or component of a game, as distinct from stand-alone data." This construction was argued to include not just complete games but also components like device drivers, operating systems, and modules that change a game's "look and feel," as supported by the patent's specification.
• "Software authorization agent": Petitioner proposed this term meant "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." This construction emphasized the dual function of both authorization and monitoring/tracking, which Petitioner argued was essential for the regulated gaming environment described in the patent.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv because the parallel district court case was in its early stages, with no trial date set and minimal discovery conducted. Petitioner stated its intent to file a motion to stay the district court case if the inter partes review (IPR) was instituted and stipulated that it would not pursue in court any invalidity grounds on which the IPR is instituted, thereby avoiding duplicative efforts.
• Petitioner also argued that denial under §325(d) would be inappropriate because the primary references, Goldberg and Olden, were never considered during the original prosecution. These references were argued to be substantively different from the art previously considered, as they specifically taught the use of a separate authorization agent that approves or rejects a software transfer and sends a corresponding message, a key feature purportedly missing from the prosecution art.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 28-29, 31-33, 47-50, 84-86, 90-92, and 99-100 of the ’089 patent as unpatentable.