The Board Declines To Apply Interference Estoppel | Jones Day

[co-author: Ryan Camp]*

On June 14, 2022, the Board instituted Zynga Inc.’s (“Zynga”) petition for IPR in opposition to U.S. Patent No. 7,168,089 (the “’089 patent”), rejecting Patent Owner IGT’s argument that interference estoppel ought to preclude establishment. Zynga, Inc. v. IGT, IPR2022-00199, Paper 11 (Institution Decision). Zynga (and its predecessor-in-interest) have been concerned in a number of proceedings in opposition to IGT and the ’089 patent, together with an interference continuing initiated in 2010 (see Int. No. 105,747) and a patent infringement go well with within the Western District of Texas. See IGT et al. v. Zynga Inc., 6:21-cv-00331 (W.D. Tex. 2021). The ’089 patent relates usually to gaming machines and safe communications for transferring gaming software program and knowledge between gaming machines and a gaming server.

In 2010, the predecessor-in-interest to Zynga provoked the interference proceedings involving IGT’s ’089 patent. During the interference, Zynga filed a movement for unpatentability, together with claims of obviousness based mostly on three prior-art references. The Board, nonetheless, discovered Zynga’s specification didn’t present ample written description assist for its claims and terminated the interference in February 2014, dismissing Zynga’s movement for unpatentability as moot.

In November 2021, Zynga filed its petition for IPR and asserted that the ’089 patent was apparent over three prior-art references totally different from these raised in the course of the interference. In response, IGT argued that interference estoppel below 37 C.F.R. § 41.127(a)(1) utilized, and that Zynga was prohibited from elevating arguments that would have, however weren’t, made in the course of the interference. As such, in keeping with IGT, Zynga couldn’t elevate an argument based mostly on the brand new prior-art references in the course of the inter partes assessment. The Board disagreed, discovering that interference estoppel didn’t apply and permitting Zynga to current the brand new prior-art references.

In analyzing the problem, the Board defined that the preliminary focus throughout an interference below 37 C.F.R. § 41.201 is whether or not threshold points would deprive the opponent of standing, akin to lack of written description of an concerned utility. See 37 C.F.R. § 41.201(2)(ii). The Board reasoned that when it terminated the interference and dismissed Zynga’s motions as moot, the Board didn’t “analyze or resolve any problems with unpatentability based mostly on prior artwork.” Institution Decision, Paper 11 at 9. Therefore, as a result of the Board didn’t attain the problem of obviousness within the interference, interference estoppel didn’t apply, and Zynga was permitted to make further obviousness arguments within the IPR. The Board additional remarked that Zynga had provoked the interference two years previous to the promulgation of interference estoppel below the AIA. The Board concluded that it will be “unfair” to impose interference estoppel in opposition to Zynga, and to the extent interference estoppel utilized, the Board exercised its discretion below 37 C.F.R. § 42.5(b) to waive its utility.

After contemplating the deserves of the petition, the Board decided that Zynga had demonstrated an affordable probability of prevailing with respect to not less than one of many challenged claims and instituted IPR.

* Ryan Camp is a summer season affiliate in Jones Day’s Chicago Office.

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