Zynga Inc v. Igt

1. Case Identification

• Case #: IPR2022-00200
• Patent #: 8,795,064
• Filed: November 19, 2021
• Petitioner(s): Zynga Inc.
• Patent Owner(s): IGT
• Challenged Claims: 1-18

2. Patent Overview

• Title: Method and Apparatus for Outputting a Message at a Game Machine
• Brief Description: The ’064 patent describes a gaming system that identifies and tracks information associated with a player. Based on the occurrence of a message trigger condition, the system determines and outputs one of a first or second message to the player, depending on the specific set of information being tracked.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aristocrat, optionally in view of Boushy - Claims 1-18 are obvious over Aristocrat, either alone or in further view of Boushy.

• Prior Art Relied Upon: Aristocrat (International Publication No. WO 00/32286) and Boushy (Patent 5,761,647).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Aristocrat discloses the core features of the challenged claims. Aristocrat teaches a gaming machine with an information-delivery mechanism that uses an animated character to entertain and instruct a player. The system monitors game states and player activity, such as a player's wins, losses, and rate of play. Petitioner argued that these monitored activities constitute the "tracked information" required by independent claims 1 and 9. Aristocrat then uses specific "trigger conditions," such as the end of a game or the player's rate of play falling below a threshold, to output different messages. For example, after a game ends (trigger), Aristocrat can output a first message encouraging the player to bet on more lines (based on tracked win/loss information) or a second message awarding a bonus game (based on tracked performance information, such as not having won a bonus game). Petitioner contended that these teachings map directly to the limitations of claims 1(c) and 1(d), which require outputting different messages based on different sets of tracked information when a trigger condition occurs. For claims 17 and 18, which require a data network and the internet, Petitioner argued that Aristocrat's disclosure of networked machines and credit card readers renders these limitations obvious. Alternatively, Petitioner asserted that Boushy, which explicitly discloses customer tracking systems across multiple casinos using LANs and WANs (including the internet), could be combined with Aristocrat to teach these networking limitations.
  • Motivation to Combine (for §103 grounds): Petitioner argued that a person of ordinary skill in the art (POSITA) would combine Aristocrat with Boushy to enhance the player experience, an objective shared by both references. Combining Boushy's robust networking and cross-property player tracking with Aristocrat's dynamic messaging system would increase the utility of player tracking, allow for larger progressive jackpots across a network, and provide a more consistent and engaging player experience. This combination would be a predictable integration of known technologies to achieve improved results.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying Boushy's well-known networking principles to Aristocrat's gaming system, which Petitioner characterized as a straightforward modification yielding predictable outcomes.

4. Key Claim Construction Positions

• Petitioner argued that no terms in the ’064 patent required express construction for the purposes of the petition and that all terms should be given their plain and ordinary meaning.
• Petitioner noted that in the parallel district court litigation, the parties had agreed that several terms—including "processor," "track information," "output device," and "data network"—should be given their plain and ordinary meaning.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under Fintiv would be inappropriate. The core arguments were:
  • The district court had not yet invested significant resources, with no trial date scheduled, limited discovery conducted, and no claim construction hearing held.
  • The trial date in the parallel proceeding was uncertain and not expected until well after the projected date for a Final Written Decision (FWD) from the Board.
  • There was minimal overlap between the IPR and the district court case, as Petitioner challenged ten claims in the IPR (1-8, 14, 16) that the Patent Owner had not asserted in the litigation.
  • Petitioner stipulated that, if an IPR is instituted, it would not pursue any instituted grounds as invalidity defenses in the district court, thereby eliminating any potential overlap of issues.
  • The petition presented strong merits based on prior art (Aristocrat and Boushy) that was not considered during the original prosecution.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-18 of the ’064 patent as unpatentable.