The Board Declines To Apply Interference Estoppel

On June 14, 2022, the Board instituted Zynga Inc.’s (“Zynga”) petition for IPR towards 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 towards IGT and the ’089 patent, together with an interference continuing initiated in 2010 (see Int. No. 105,747) and a patent infringement swimsuit 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 data 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, nevertheless, 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 throughout the interference. In response, IGT argued that interference estoppel beneath 37 C.F.R. § 41.127(a)(1) utilized, and that Zynga was prohibited from elevating arguments that might have, however weren’t, made throughout the interference. As such, in response to IGT, Zynga couldn’t elevate an argument based mostly on the brand new prior-art references throughout the inter partes evaluation. The Board disagreed, discovering that interference estoppel didn’t apply and permitting Zynga to current the brand new prior-art references.

In analyzing the difficulty, the Board defined that the preliminary focus throughout an interference beneath 37 C.F.R. § 41.201 is whether or not threshold points would deprive the opponent of standing, similar to lack of written description of an concerned software. 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 difficulty 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 beneath the AIA. The Board concluded that it will be “unfair” to impose interference estoppel towards Zynga, and to the extent interference estoppel utilized, the Board exercised its discretion beneath 37 C.F.R. § 42.5(b) to waive its software.

After contemplating the deserves of the petition, the Board decided that Zynga had demonstrated an inexpensive chance of prevailing with respect to at the least one of many challenged claims and instituted IPR.

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