PTAB Doubles Down On Interference Estoppel Issue – Patent

The Patent Trial and Appeal Board held all challenged claims of
IGT’s patent unpatentable as obvious over two prior art
patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so,
the PTAB further held that, contrary to IGT’s
position, there was no interference estoppel.

The patent at issue, U.S. Patent No. 7,168,089 (“the
‘089 patent”), relates to gaming machines and methods for
securing communications for transferring gaming software and
information between a gaming machine and a gaming server. The PTAB
focused its analysis on independent claims 28 and 84, which the
other challenged claims depends on.

A central issue with claim 28 was whether prior art U.S. Patent
No. 5,823,879 (“Goldberg”) discloses the transfer of
gaming software, as asserted by Zynga. Specifically, Zynga argued
that Goldberg teaches the transmittal of HTML web pages, and that
the HTML pages were analogous to gaming software because they
allowed gameplay of blackjack and other games of chance on a
user’s device. IGT countered that Zynga was relying on
hindsight by mischaracterizing HTML web pages as high-level
executable programs.

In its Final Written Decision, the PTAB explained that the issue
of whether Goldberg taught the transfer of gaming software depended
on the meaning of the term “gaming software.” The PTAB
looked to the specification and the claims and construed
“gaming software” broadly. The PTAB also credited
Zynga’s expert, who testified that the HTML web pages would be
understood as gaming software because they changed the “look
and feel” of the game’s user interface. And, as the PTAB
acknowledged, HTML script was often referred to as software in the
prior art. Consequently, the PTAB found that Golberg did teach the
transfer of gaming software, without having to rely on
hindsight.

The PTAB turned to whether there was motivation to combine
Goldberg with the other prior art patent (“Olden”), which
according to Zynga, taught player verification. Zynga reasoned that
a POSITA implementing Goldberg would have also been familiar with
Olden. IGT argued that Goldberg did not function as any software
authorization agent because it performs ordinary database
operations, and that a POSITA would find it counter-productive to
use the technique from Oden. The PTAB sided with Zynga, finding
that Olden was intended to be integrated with web-based
applications for games like blackjack (i.e., Goldberg).

With respect to claim 84 and the other challenged claims, the
PTAB was persuaded by Zynga that the claims were sufficiently
similar to claim 28, so the same arguments for obviousness
applied.

In addressing IGT’s argument that interference estoppel
applied, the PTAB simply recited the procedural history. The PTAB
explained that earlier in the IPR, IGT had raised interference estoppel in its
Preliminary Response to the Petition. The PTAB, in the Decision to
Institute, waived the requirements of Section 41.127(a)(1) to the
extent that interference estoppel applied. IGT then filed a Request
for Rehearing and Precedential Opinion Panel Review, which was
denied. Finally, USPTO Director Vidal sua sponte affirmed
the PTAB’s Institution, determining that interference estoppel
did not apply, regardless of the PTAB’s waiver.

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