Zynga Inc v. Igt

1. Case Identification

• Case #: IPR2022-00368 (Zynga Inc. v. IGT)
• Patent #: 8,266,212
• Filed: December 30, 2021
• Petitioner(s): Zynga Inc.
• Patent Owner(s): IGT
• Challenged Claims: 24-37

2. Patent Overview

• Title: Game Talk Service Bus
• Brief Description: The ’212 patent relates to a distributed multi-player gaming system that allows heterogeneous devices (gaming machines, servers, mobile PCs) to communicate over a network using a "game service bus" that provides a publish-and-subscribe messaging framework.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cordero and Skeen - Claims 24-37 are obvious over Cordero in view of Skeen.

• Prior Art Relied Upon: Cordero (Application # 2001/0044339) and Skeen (Patent 5,187,787).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Cordero and Skeen teaches every limitation of the challenged claims. Cordero discloses a distributed, multi-player gaming system designed to facilitate gameplay among various hardware platforms, addressing the same interoperability problem as the ’212 patent. It describes both client-server and peer-to-peer architectures where client devices, such as game consoles, can provide multi-player game functionality to other clients. While Cordero suggests using various communication protocols, it lacks specific implementation details for a publish-subscribe model. Skeen remedies this deficiency by teaching a machine-independent communication system using a detailed publish-subscribe framework to allow diverse software modules to communicate without direct knowledge of each other. Skeen explicitly discloses the core concepts of the claims: publishing "services" (which meet the construction of "high-level functions"), receiving "subscription requests," and providing "callbacks" to return data to a subscriber in response to events. Petitioner asserted that applying Skeen's specific publish-subscribe communication mechanism to Cordero's general distributed gaming system architecture renders the methods of independent claims 24 and 31, and their respective dependent claims, obvious.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Cordero and Skeen to achieve a predictable result. Cordero expressly states its system can operate with different communication protocols to connect heterogeneous devices, effectively inviting a POSITA to implement a suitable protocol. Skeen provides such a protocol, teaching a well-known publish-subscribe model designed to solve the exact problem of interoperability between diverse systems that Cordero identifies. Skeen itself notes its broad applicability to real-time, event-driven applications. A POSITA would have recognized that applying Skeen’s robust, decoupled communication architecture to Cordero’s gaming environment was a logical step to enable the cross-platform functionality Cordero desired.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success. Both references describe distributed communication systems for facilitating interaction between different platforms, hardware, and software. The combination involves applying a known communication model (Skeen) to a specific, suitable application (Cordero's gaming system), which is a routine design choice that would yield the predictable benefits of a publish-subscribe system, such as scalability and flexibility.

4. Key Claim Construction Positions

• "High-level function": This term was central to the invalidity argument. Petitioner, for the purposes of the inter partes review (IPR), adopted the Patent Owner's proposed construction from the parallel district court litigation: "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." Petitioner argued that the functionality disclosed in Cordero (e.g., authentication, matchmaking) and the "services" disclosed in Skeen (e.g., news retrieval) meet this definition because they are explicitly designed to be device-independent.
• "node" and "publishing": Petitioner proposed constructions for these terms but argued that the Board did not need to resolve any dispute because the prior art disclosed the relevant limitations under either party's proposed construction.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, asserting that the relevant factors weighed in favor of institution. Key arguments included that:
  • There was minimal investment in the parallel district court proceeding, with no expert discovery or summary judgment motions filed.
  • There was a significant lack of overlap between the IPR and the district court case. Petitioner challenged claims (25, 30, 32, and 37) that were not asserted in the litigation.
  • Petitioner stipulated that if the IPR were instituted, it would not pursue any instituted grounds in the district court, thereby eliminating any potential for duplicative efforts or inconsistent results.
• §325(d): Petitioner argued that denial under 35 U.S.C. §325(d) would be inappropriate because the petition raised new grounds based on prior art not considered during prosecution. Petitioner asserted that Cordero and Skeen were not before the Examiner and were substantively different from the previously considered art. Specifically, the Examiner allowed the claims after the applicant argued that the prior art of record failed to teach "any steps of publishing or subscribing, by any gaming machine." Petitioner contended that the combination of Cordero and Skeen directly remedies this deficiency.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 24-37 of the ’212 patent as unpatentable.