[00:00:00] Speaker 03:
The next case for argument is 23-2263, IGT versus Zynga.

[00:00:08] Speaker 03:
Mr. Gannon, whenever you're ready.

[00:00:09] Speaker 03:
Good morning.

[00:00:10] Speaker 03:
Good morning.

[00:00:10] Speaker 01:
May it please the court.

[00:00:13] Speaker 01:
After IGT, IGT filed its pat and honor response.

[00:00:17] Speaker 01:
It was an avalanche from the board and Zynga of new theories, new passages, new embodiments, completely new

[00:00:28] Speaker 01:
claim construction theories on reply, which was and in the final written decision, which was totally improper.

[00:00:34] Speaker 01:
Let me start with the claim construction issue.

[00:00:36] Speaker 01:
There were two claim construction issues.

[00:00:39] Speaker 01:
One was a message trigger condition.

[00:00:42] Speaker 01:
The claim is very clear.

[00:00:44] Speaker 01:
In claim one, element one D, the claim says the message trigger condition

[00:00:52] Speaker 01:
And the antecedent basis for that is in element 1c, which is a message trigger condition.

[00:00:59] Speaker 01:
And the board said that the message trigger condition in element d can be a completely different message trigger condition than in element 1c.

[00:01:10] Speaker 02:
And the words that you just used are synonyms

[00:01:16] Speaker 02:
that the identical condition at different times you're treating as a different condition?

[00:01:24] Speaker 01:
What the board and Zynga said is that, well, the example they gave was end of game.

[00:01:31] Speaker 01:
It's a type of condition.

[00:01:32] Speaker 01:
There could be an end of a game and then an end of another game.

[00:01:36] Speaker 01:
Those two things are different triggers.

[00:01:39] Speaker 01:
They're not the same.

[00:01:40] Speaker 02:
OK.

[00:01:42] Speaker 01:
The board.

[00:01:43] Speaker 02:
And do I get the right member, right?

[00:01:47] Speaker 02:
The board said, I think what you just said, that the same condition at different times, end of game, but end of game one, end of game two, we think are really just the same condition because it's the same type.

[00:02:05] Speaker 02:
But didn't it also say?

[00:02:11] Speaker 02:
independently on a finding that even if you're talking about a single condition at a single time that the prior art here shows two different What it was it messages and I mean I have to write Well, so what the board did a couple things the board yeah two different messages Yeah a couple things that the board did one in the final written decision

[00:02:40] Speaker 01:
The board came up with an entirely new theory of validity.

[00:02:44] Speaker 01:
The board said, even if the priority doesn't teach a single message with two messages, a single trigger condition with two messages, it would have been obvious.

[00:02:55] Speaker 01:
Nobody argued that in the petition.

[00:02:58] Speaker 01:
It wasn't even in the reply that came up for the first time.

[00:03:02] Speaker 03:
Where in the board decision did it say that?

[00:03:05] Speaker 01:
That's in Appendix 36.

[00:03:08] Speaker 01:
And I'm going to get to Judge Sharanto's question, but I think the fact that the board brought up an entirely new theory of indolentity in the final written decision, completely improper.

[00:03:19] Speaker 03:
We were on page 36.

[00:03:20] Speaker 03:
It's appendix.

[00:03:22] Speaker 03:
I'm on 36.

[00:03:24] Speaker 01:
It's appendix 36.

[00:03:30] Speaker 01:
It's near the bottom.

[00:03:32] Speaker 01:
It's where the paragraph starts.

[00:03:34] Speaker 01:
Even if a risk regret did not expressly disclose multiple messages being provided to a player based on a single trigger condition, we do not see a great logical lead for a person of ordinary skill in the art to provide one message or alternatively multiple messages based on a single trigger condition.

[00:03:51] Speaker 01:
That was never even argued by Zynga at all.

[00:03:55] Speaker 01:
Not even in the reply.

[00:03:59] Speaker 03:
The reference in that paragraph is to the testimony of the expert, Mr. Crane.

[00:04:05] Speaker 03:
So wasn't he talking about that during the proceeding?

[00:04:07] Speaker 03:
He was not.

[00:04:08] Speaker 01:
He was not, because in the petition where Mr. Crane was cited in the petition, this new theory wasn't even addressed by the expert in the petition.

[00:04:23] Speaker 01:
And so, again, Zynga and their expert

[00:04:28] Speaker 01:
This new theory that the board articulated on page 36, nowhere to be found in Zynga's papers or the expert declaration.

[00:04:38] Speaker 01:
Because again, the expert was supporting the petition.

[00:04:42] Speaker 01:
And when IGT pointed out the flaws in that petition and the patent owner response, all of a sudden we get this new theory from Zynga saying, well,

[00:04:53] Speaker 01:
Actually, it doesn't have to be the same trigger.

[00:04:56] Speaker 02:
It can be a different trigger Which makes no sense because the claim doesn't say that so I know that you wanted to get back to so my question is about page 32

[00:05:07] Speaker 01:
Not page 36.

[00:05:09] Speaker 02:
Right in the middle of the paragraph, the only paragraph that begins, right smack in the middle.

[00:05:15] Speaker 02:
We also agree with petitioner that even if the claims are understood to encompass the output of two messages based on the single occurrence of a trigger condition, aristocrat teaches this as well.

[00:05:28] Speaker 02:
That's not a, I don't think that, I'll ask the question.

[00:05:33] Speaker 02:
That's a different point from the point you just made about

[00:05:37] Speaker 02:
at page 36.

[00:05:38] Speaker 02:
So I guess the question is, even if the board acted improperly at page 36, why doesn't this support what the board did?

[00:05:49] Speaker 01:
Your Honor, could you just tell me what page you were on?

[00:05:51] Speaker 02:
It's appendix 32.

[00:05:53] Speaker 01:
Oh, 32.

[00:05:54] Speaker 01:
I'm sorry.

[00:05:56] Speaker 01:
I'm sorry.

[00:05:56] Speaker 01:
32.

[00:05:57] Speaker 01:
OK.

[00:06:03] Speaker 01:
OK.

[00:06:04] Speaker 01:
So what the board did

[00:06:07] Speaker 01:
In addition to the new theory, the board in the final written decision cited to a new passage of aristocrat, which was improper, saying, well, aristocrat, we're looking – I look at – you know, the board said, we're looking at this passage, and we see a single message – a single trigger with multiple messages.

[00:06:30] Speaker 01:
But the passage that the board relied on was completely new.

[00:06:34] Speaker 03:
Well, it was in the record, so it's not completely new.

[00:06:38] Speaker 03:
They're citing the petitioner's reply.

[00:06:41] Speaker 03:
Did the petitioner's reply not include or cover this passage from a aristocrat?

[00:06:48] Speaker 01:
The passage that the board relied on was not identified by Zynga in their petition.

[00:06:58] Speaker 01:
What the third did.

[00:06:59] Speaker 02:
But was in the petition to reply.

[00:07:03] Speaker 02:
The petition to reply does make this point.

[00:07:06] Speaker 02:
So one would have a dynamic, which I think is maybe not that unusual.

[00:07:12] Speaker 02:
Never mind whether it's improper.

[00:07:14] Speaker 02:
Which a petition says, we made this claim to mean x under that, this, and then

[00:07:20] Speaker 02:
The patent owner's response comes in and says, you're reading it wrong.

[00:07:24] Speaker 02:
And the reply says, well, even if we agree with the patent owner, even if you wouldn't agree with the patent owner about that reading, the prior art that we have been relying on actually teaches that, too.

[00:07:36] Speaker 01:
Right.

[00:07:37] Speaker 02:
And so the problem is that they can't do that.

[00:07:38] Speaker 01:
That they cannot do that.

[00:07:40] Speaker 01:
And the reason why is because what you're citing to on page 32 is a new embodiment from the reference.

[00:07:47] Speaker 01:
And that embodiment

[00:07:48] Speaker 01:
different from the passage that we were just referring to.

[00:07:51] Speaker 01:
The new embodiment was not mentioned at all in the petition.

[00:07:56] Speaker 01:
It came up for the first time in reply.

[00:07:58] Speaker 01:
And we cite cases that are very clear with respect to this issue.

[00:08:08] Speaker 02:
Court photonics talks about this.

[00:08:09] Speaker 01:
Yeah.

[00:08:10] Speaker 01:
The Wasackia finance case, the Ariosa Verinata case, and the Apple Massacino case.

[00:08:19] Speaker 01:
It's very clear that in a reply, the petitioner cannot shift gears and go to an entirely new embodiment.

[00:08:29] Speaker 01:
And that's what they did.

[00:08:31] Speaker 01:
And just so it's clear, I want to be perfectly clear about this.

[00:08:34] Speaker 01:
Zynga admits that what they relied on on page 32 is a new embodiment.

[00:08:39] Speaker 01:
They admit that it's a new embodiment.

[00:08:42] Speaker 02:
Was there still reply practice on this point?

[00:08:45] Speaker 01:
There was a sure reply, but IGT did not get a chance to file any declaration from its expert explaining why this new embodiment.

[00:08:56] Speaker 02:
And by the way... And when you say didn't get a chance, you didn't ask for a chance, right?

[00:09:00] Speaker 01:
That's correct.

[00:09:01] Speaker 01:
But again, at the time, it was IGT's belief that

[00:09:07] Speaker 01:
this new embodiment was improper and that us asking to, you know, asking for another declaration and a sub-reply would have been denied.

[00:09:18] Speaker 01:
It would have been fruitless to do that.

[00:09:20] Speaker 01:
I mean, in other words, if that was true, we would have to, like, anticipate all these other different embodiments and put that in our expert declaration.

[00:09:28] Speaker 01:
There's no requirement that we... Wait a minute.

[00:09:30] Speaker 03:
I don't understand what you're saying.

[00:09:32] Speaker 03:
Sure.

[00:09:32] Speaker 03:
You say the petitioner put something new in its reply that wasn't in the petition.

[00:09:37] Speaker 03:
So you would need a chance to respond.

[00:09:42] Speaker 03:
You did respond to that.

[00:09:44] Speaker 03:
But then you said you didn't do ask for a declaration, which you could have asked to submit a declaration because of other embodiments.

[00:09:53] Speaker 03:
I mean, we're only talking about this embodiment, right?

[00:09:56] Speaker 01:
That's right.

[00:09:56] Speaker 01:
We did not ask for another declaration because

[00:10:00] Speaker 01:
we believe that the board would not have permitted further evidence on this particular issue when you're talking about completely new embodiment.

[00:10:09] Speaker 01:
And just to be clear, I want to make sure.

[00:10:11] Speaker 03:
Well, why did you believe that?

[00:10:13] Speaker 03:
You said when we're talking about an entirely new embodiment, that would be a reason that the board would grant you the ability to do it, not let you do it.

[00:10:22] Speaker 01:
Well, so again, Your Honor,

[00:10:28] Speaker 01:
At that point in time, asking the board to open up the evidence and have our expert on it, sir, reply, be talking about some other embodiment, which Zynga admits is a new embodiment, which wasn't put in their petition.

[00:10:43] Speaker 01:
And that's the problem with this whole case, is the petition failed.

[00:10:49] Speaker 01:
And we pointed it out in our patent owner response

[00:10:52] Speaker 01:
And after that, it was wide open.

[00:10:55] Speaker 01:
New theories, new passages, new embodiments.

[00:10:57] Speaker 01:
You can't do that.

[00:10:58] Speaker 01:
That's not fair to IGT.

[00:11:00] Speaker 01:
It's not fair, especially when Zynga admitted that the passages that we're referring to that Judge Carano mentioned, it's at page 6, 9 through 13, and page 26 of line 34 to 27.

[00:11:19] Speaker 01:
Those are the passages from aristocrat.

[00:11:23] Speaker 01:
And at the hearing, Zynga admitted that those passages were not mentioned at all by them or their expert.

[00:11:32] Speaker 03:
In the petition.

[00:11:33] Speaker 01:
Correct.

[00:11:34] Speaker 01:
Correct, Your Honor, in the petition.

[00:11:36] Speaker 01:
Zynga, in their red brief on page 26, acknowledged that

[00:11:48] Speaker 01:
They talk about on page 26 of their red brief, these different embodiments.

[00:11:52] Speaker 01:
They're talking about the other embodiments.

[00:11:55] Speaker 01:
And they're referring to that other embodiment, pointed out by Judge Torano, as a different embodiment.

[00:12:03] Speaker 01:
They're saying the board recognized combining different embodiments.

[00:12:06] Speaker 01:
They're saying that is a different embodiment.

[00:12:10] Speaker 01:
And you cannot do that on reply.

[00:12:14] Speaker 01:
It's improper.

[00:12:15] Speaker 01:
And the cases that we cited on that, no risk.

[00:12:19] Speaker 02:
Can I just ask, in the certify, and I'm looking at the certify, which is, I think, page 378 of the appendix, did you make this as an argument in certify that you have many arguments here in certify?

[00:12:37] Speaker 02:
Is one of them that the petitioners reply

[00:12:43] Speaker 02:
introduced a new argument based on a different, an embodiment of aristocrat not previously relied on?

[00:12:51] Speaker 01:
Yeah, the answer, I'm flipping through it here, Your Honor.

[00:12:53] Speaker 01:
The answer's yes.

[00:13:09] Speaker 01:
Page 16 of the reply presents a new invalidity.

[00:13:14] Speaker 02:
This is Appendix page 398.

[00:13:15] Speaker 01:
That's page 16.

[00:13:20] Speaker 01:
Yeah, it's not in the Appendix.

[00:13:22] Speaker 01:
It is page 16 of the server file.

[00:13:25] Speaker 02:
It's in here.

[00:13:27] Speaker 02:
It's not in here.

[00:13:27] Speaker 01:
It is in here.

[00:13:28] Speaker 01:
That's the page.

[00:13:29] Speaker 01:
Page 16 of the server file?

[00:13:30] Speaker 02:
Yeah.

[00:13:32] Speaker 02:
Appendix 398.

[00:13:33] Speaker 02:
It's in Mike's version, unless I'm looking at the wrong thing.

[00:13:39] Speaker 02:
Well, what do you want to say about it?

[00:13:40] Speaker 02:
You have it.

[00:13:41] Speaker 02:
You have the appendix numbers on it.

[00:13:43] Speaker 01:
That we.

[00:13:43] Speaker 01:
That's 398.

[00:13:44] Speaker 03:
I mean, they're on the wrong page.

[00:13:54] Speaker 03:
OK.

[00:14:00] Speaker 01:
Yeah.

[00:14:01] Speaker 01:
Yeah.

[00:14:01] Speaker 01:
It's 398.

[00:14:02] Speaker 01:
So there was a discussion of this new embodiment and how they're shifting their theory in their reply for the first time.

[00:14:10] Speaker 03:
Can I ask you?

[00:14:12] Speaker 03:
It's been a long week, and I've got a lot of stuff in my brain.

[00:14:15] Speaker 03:
But everything we've been talking about on page 32, et cetera, only matters if this was an alternative argument for the board, even if its construction is wrong.

[00:14:25] Speaker 03:
So if we agree with the board's construction, all of these arguments are irrelevant.

[00:14:29] Speaker 01:
For this particular claim element, I would agree with that.

[00:14:33] Speaker 01:
If you were going to read the claim in a way that

[00:14:35] Speaker 01:
Doesn't make sense.

[00:14:38] Speaker 01:
The trigger has to be the same trigger.

[00:14:41] Speaker 01:
It's clear.

[00:14:44] Speaker 01:
I'm into my bubble time.

[00:14:46] Speaker 03:
Yeah.

[00:14:48] Speaker 03:
Were there other issues that you want to spend a couple minutes on just to be complete?

[00:14:52] Speaker 01:
Yeah, there are, Your Honor.

[00:14:54] Speaker 03:
Don't overdo it.

[00:14:56] Speaker 01:
OK, so I think we've talked about the trigger condition.

[00:15:00] Speaker 01:
I want to mention the identify a player limitation.

[00:15:05] Speaker 01:
That was interesting, because the parties agreed before the board that identify a player means you're identifying the player.

[00:15:14] Speaker 01:
It's not just that somebody's playing.

[00:15:17] Speaker 01:
It's who is actually playing.

[00:15:19] Speaker 01:
That's the point of the patent.

[00:15:22] Speaker 02:
So the computer has to say norm.

[00:15:24] Speaker 01:
It has to know who it is that's playing, right?

[00:15:28] Speaker 01:
So you could insert a card that could be tied to you.

[00:15:31] Speaker 01:
The computer knows it's you.

[00:15:33] Speaker 01:
It's not just.

[00:15:35] Speaker 01:
It's not just the games doing certain things.

[00:15:38] Speaker 03:
I mean, the petition, they argued in the petition, they cited stuff from Aristocrat, that Aristocrat does all this stuff with birthdays that seem to encompass identifying the player, right?

[00:15:51] Speaker 01:
Well, so if you look at the chart, we made a chart in our blue brief.

[00:15:59] Speaker 01:
where they put forth all of the different messages and stuff, information that's being tracked, and then the output, the messages tracked, and then the information tracked.

[00:16:13] Speaker 01:
I need a page.

[00:16:14] Speaker 01:
Sorry, yeah, let me find it.

[00:16:16] Speaker 01:
Page 46, for example.

[00:16:18] Speaker 01:
It's cited throughout our briefing, but page 46 of our blueberry, that's a table that they prepared where they're saying, okay, look, the trigger conditions, the end of the game, the track information, the players' losses and the players' bets, and there's messages outputted.

[00:16:34] Speaker 01:
The problem is all those examples are agnostic to who's actually playing.

[00:16:38] Speaker 01:
playing the game.

[00:16:39] Speaker 01:
That evidence is just there's somebody playing the game.

[00:16:44] Speaker 01:
The point about identifying a player that's bizarre in this case is that all the parties agreed.

[00:16:49] Speaker 01:
Identify a player means you have to know who the player is.

[00:16:53] Speaker 01:
And then in the final written decision, the board came back and said, you don't have to identify a player.

[00:16:59] Speaker 01:
You don't have to know who's playing.

[00:17:01] Speaker 01:
It's just that somebody's playing.

[00:17:03] Speaker 01:
Somebody's playing, but you don't need to know who.

[00:17:05] Speaker 01:
And that came up for the first time in the final written decision, even after the parties agreed that you have to know who it is that's playing the game.

[00:17:16] Speaker 01:
And so why is that significant?

[00:17:18] Speaker 01:
Well, the claim term that we're concerned about here is tracking information associated with an identified player.

[00:17:27] Speaker 03:
I'm not seeing where the board said you don't need to identify.

[00:17:30] Speaker 03:
Are we dealing with one A or one B?

[00:17:33] Speaker 03:
Because the board seems to say it 19.

[00:17:36] Speaker 01:
Yeah, it's Appendix 39.

[00:17:42] Speaker 01:
Here's where the board said it.

[00:17:44] Speaker 01:
Board said for the first time on Appendix 39, quote, the claims do not require ascertaining a person's personal identity.

[00:17:54] Speaker 01:
And so the board basically said, hey, that chart that you provided where you're not identifying, that's just console information, that meets the claim.

[00:18:05] Speaker 01:
And when IGT got the opinion, we were shocked.

[00:18:10] Speaker 01:
We're like, nobody's even arguing that.

[00:18:13] Speaker 01:
We were saying you had to identify the player.

[00:18:16] Speaker 01:
So what the board did was the board changed the construction, which was wrong, and then said all of the

[00:18:23] Speaker 01:
Information about the console, the information that Zynga provided in their petition, met the claim.

[00:18:30] Speaker 01:
Again, the information that Zynga provided was, it doesn't matter who's playing, it's just that someone's playing.

[00:18:39] Speaker 01:
That you're tracking, you know, what's going on with the console.

[00:18:43] Speaker 01:
And that just clearly doesn't meet the claim.

[00:18:47] Speaker 01:
Identify a player.

[00:19:09] Speaker 00:
May it please the court, Lauren Weber on behalf of Zynga.

[00:19:13] Speaker 00:
As IGT concedes, the court does not need to reach any of those procedural or substantial evidence arguments for the message trigger condition limitations if the court agrees with the board's construction.

[00:19:24] Speaker 00:
And even if the court disagrees with that construction, substantial evidence supports the board's conclusion that aristocrat teaches those limitations under IGT's interpretation for

[00:19:35] Speaker 00:
the reason identified at appendix 32, where the board relied on the passage, we cited.

[00:19:39] Speaker 03:
Yeah, but then they bring in all of their APA kind of process claims with respect to at least the alternative construction.

[00:19:46] Speaker 03:
So what say you to those?

[00:19:48] Speaker 00:
Sure.

[00:19:48] Speaker 00:
So in our reply, we were responding to a brand new claim construction theory that IGT raised for the first time after institution.

[00:19:57] Speaker 00:
They changed course from their position in the district court, where their preliminary infringement contentions

[00:20:02] Speaker 00:
followed our claim construction and the board's claim construction.

[00:20:05] Speaker 00:
You can see this at page 28 of our brief.

[00:20:08] Speaker 00:
The contentions are at appendix 1533.

[00:20:10] Speaker 00:
They accused different messages at the ends of different Zynga games of satisfying the message trigger condition limitations.

[00:20:18] Speaker 00:
We think that's the right construction.

[00:20:20] Speaker 00:
And that's what we were dealing with in the district court.

[00:20:22] Speaker 00:
So we proceeded with that theory in our petition.

[00:20:25] Speaker 00:
And then it was only after institution that IGT argued for the first time

[00:20:30] Speaker 00:
that a single occurrence of a message trigger condition must output two different messages.

[00:20:35] Speaker 00:
So under Axonics and Andrea, we were entitled to respond to that in our reply.

[00:20:39] Speaker 00:
We continued to rely on the exact same functionality, the same message trigger conditions, the same tracked information, the same messages.

[00:20:48] Speaker 00:
All we did was say, OK, if you think you need two different messages from a single occurrence of a trigger condition, here's an example of where Aristocrat does that.

[00:20:57] Speaker 02:
But that particular passage, the column six passage, the four lines, and yes, and maybe column 26 also had not been relied on in the petition.

[00:21:10] Speaker 02:
Correct.

[00:21:10] Speaker 02:
And is it fair?

[00:21:11] Speaker 02:
I don't have it in front of me.

[00:21:12] Speaker 02:
I mean, I do have it, but I don't remember.

[00:21:16] Speaker 02:
Is that a different embodiment

[00:21:19] Speaker 00:
I don't think it is, Your Honor, because we continue to rely on the same functionality.

[00:21:23] Speaker 00:
We've consistently advanced a mix and match theory of aristocrat.

[00:21:26] Speaker 00:
Our expert explained that all of the embodiments are essentially interchangeable.

[00:21:30] Speaker 00:
They just represent different ways of delivering messages or different messages.

[00:21:35] Speaker 00:
You look at the way aristocrat uses the word embodiment at appendix 1243 to 1244, for example.

[00:21:41] Speaker 00:
It's often talking about different versions of the character delivering a message.

[00:21:45] Speaker 00:
It might be Mr. Cashman or a slot machine, or sometimes it's a tiger.

[00:21:49] Speaker 00:
These are not fundamentally different ways of carrying out the invention.

[00:21:52] Speaker 00:
They're just different cartoon characters.

[00:21:56] Speaker 00:
But even if the court believes that it's a new embodiment, IGT has not articulated any reason why we couldn't point to a new embodiment in reply.

[00:22:04] Speaker 00:
But they changed claim constructions after institution.

[00:22:08] Speaker 00:
Their briefs ignore that fact, and they pretend that they did not raise a new claim construction.

[00:22:13] Speaker 00:
But we were entitled to respond to that.

[00:22:15] Speaker 02:
On the language at page six, aristocrat is a little bit squishy about whether the sentence that begins, however, changes embodiments, maybe.

[00:22:29] Speaker 02:
And not the how or the next sentence, in cases where more than those are the lines relied on.

[00:22:35] Speaker 00:
I'm sorry.

[00:22:35] Speaker 00:
Could you say that again?

[00:22:37] Speaker 02:
1227 in the appendix, lines 9 through 13.

[00:22:41] Speaker 02:
That, I think, is what you all relied on in the reply and what they challenged in the surreply and what the board ends up relying on, right?

[00:22:51] Speaker 00:
And correct, in appendix 1227.

[00:22:52] Speaker 02:
It says in cases where more than one different function or feature is triggered from the same bet, the functions or features will, et cetera.

[00:23:01] Speaker 02:
That paragraph uses the word embodiment a few times.

[00:23:05] Speaker 02:
entirely sure whether that's changing embodiments, but maybe that's more a, as they say, semantics than something else.

[00:23:16] Speaker 00:
Right.

[00:23:16] Speaker 00:
That's what we believe.

[00:23:17] Speaker 00:
But again, even if the court disagrees,

[00:23:20] Speaker 00:
Under Exonix and Andrea, we were entitled to respond to IGT's new claim construction argument.

[00:23:25] Speaker 00:
And they have not put forth any reason why we couldn't rely on a new embodiment in response to that brand new claim construction argument.

[00:23:32] Speaker 00:
They also, as the court recognized, could have asked to submit a new declaration with their cert reply.

[00:23:38] Speaker 00:
They just didn't do it.

[00:23:39] Speaker 00:
As Exonix notes, new evidence is not typically allowed with cert replies.

[00:23:44] Speaker 00:
But the board can waive or suspend those requirements in appropriate cases.

[00:23:48] Speaker 00:
IGT just never asked to do it, so they now can't complain that they didn't get the opportunity to submit new evidence with their cert reply.

[00:23:59] Speaker 00:
And unless the court has further questions on the message trigger conditions, turning to identify a player, any error in the board's construction there is harmless because we showed below that both Aristocrat and Boushey separately teach identifying a player

[00:24:16] Speaker 00:
in a personally identifying way as with the happy birthday messages, IGT never disputed that the prior art teaches that limitation under its preferred construction.

[00:24:25] Speaker 00:
So there's no reason to reverse or remand where it's clear that the prior art teaches this even under their interpretation.

[00:24:33] Speaker 00:
And they're blurring two limitations together as well where they're pointing them to the tracked information associated with the identified player.

[00:24:41] Speaker 00:
That's a distinct requirement from

[00:24:44] Speaker 00:
Identifying the player itself happens at an earlier step, and then the tracked information just needs to be associated with that player.

[00:24:51] Speaker 00:
It needs to have some commonality.

[00:24:53] Speaker 00:
There is no requirement that the tracked information in and of itself be personally identifying.

[00:24:59] Speaker 02:
But did the board conclude that, under the claim language, to identify a player includes recognizing somebody has started playing the game.

[00:25:11] Speaker 02:
This person who's playing is now the person that I identified as the player.

[00:25:20] Speaker 00:
Yes, that's what the board said.

[00:25:22] Speaker 03:
I'm looking on page 39.

[00:25:24] Speaker 03:
They said, it doesn't require a player's personal identity.

[00:25:27] Speaker 03:
But then it goes on to say, simply requires determining that a bet has been placed on the machine and the game has been started.

[00:25:33] Speaker 03:
The person who placed the bet and is playing the game is then the identified player.

[00:25:37] Speaker 03:
So is that your understanding?

[00:25:38] Speaker 00:
Yes, that is what the board said.

[00:25:40] Speaker 00:
But if that's an error, it's harmless.

[00:25:42] Speaker 02:
And you think he has yet said, here's why it's not an error.

[00:25:47] Speaker 02:
I'm sorry.

[00:25:47] Speaker 02:
I don't think I've heard you in the last three minutes say, here's why it's not wrong.

[00:25:53] Speaker 00:
We don't dispute that it was a procedural error, the Suez-Bonte construction.

[00:25:56] Speaker 00:
Our position is that it was both harmless and forfeited.

[00:25:59] Speaker 00:
And our response brief here again, for example, we showed that Bushi teaches personally identifying a player and the board found that a skilled artisan would have been motivated to combine aristocrat and Bushi.

[00:26:11] Speaker 00:
IGT's reply brief does not say a word about Boushi.

[00:26:14] Speaker 00:
So they have forfeited any argument that the prior art doesn't teach identifying a player under their preferred construction.

[00:26:21] Speaker 02:
And I don't remember.

[00:26:22] Speaker 02:
So did the board say about Boushi what you just said?

[00:26:28] Speaker 02:
Or are you just saying, look at the evidence, it's clear, as opposed to here's a fact finding on that question?

[00:26:34] Speaker 00:
The board certainly said that a skilled artisan would have been motivated to combine aristocrat and Boushi.

[00:26:40] Speaker 00:
Let me find the page number for you.

[00:26:48] Speaker 00:
That's at appendix 48 to 49.

[00:26:51] Speaker 00:
The board concluded that we provided sufficient articulated reasons supported by evidentiary underpinnings to explain why a person of ordinary skill in the art would have combined aristocrat and boucher.

[00:27:05] Speaker 00:
And there was never any dispute either below or here.

[00:27:08] Speaker 00:
that Bushi teaches identifying a player by ascertaining their personal identity.

[00:27:14] Speaker 03:
But the board doesn't cite Bushi for that.

[00:27:16] Speaker 03:
I mean, is there something in the board opinion that the board calls out that?

[00:27:21] Speaker 00:
No.

[00:27:22] Speaker 00:
The board does find that motivation to combine, though.

[00:27:35] Speaker 00:
Unless the court has any further questions.

[00:27:38] Speaker 00:
Our briefs and think asks that you affirm.

[00:27:40] Speaker 03:
Thank you Will restore two minutes of rebuttal if you need two minutes.

[00:27:58] Speaker 03:
Yeah, okay.

[00:27:58] Speaker 03:
Thank you real quick on the

[00:28:05] Speaker 01:
On the aristocrat reference, I want to make sure it's clear.

[00:28:09] Speaker 01:
So Judge Taranto, you mentioned page six.

[00:28:14] Speaker 01:
I think that's the summary of the invention early on in the reference.

[00:28:18] Speaker 01:
If you direct your attention to the second portion, which is sort of the meat of what they were relying on.

[00:28:24] Speaker 02:
That's the page 26 point?

[00:28:27] Speaker 01:
Yeah, it's page correct.

[00:28:28] Speaker 01:
It's on page 26.

[00:28:30] Speaker 01:
If you look at page 26, that's appendix 447, that's the discussion of this random, you know, this feature's randomly generated.

[00:28:40] Speaker 01:
You can see that on page 26.

[00:28:43] Speaker 01:
Now, go back to page 25 and look at the bottom of page 25.

[00:28:49] Speaker 01:
At the very bottom, the paragraph starts, in one particularly preferred embodiment.

[00:28:54] Speaker 01:
A generic character, and it talks about this cash man,

[00:28:59] Speaker 01:
And it starts talking about, in this particular embodiment, there's this random generation of messages.

[00:29:06] Speaker 01:
This clearly is a new embodiment, just as, again, Zynga admitted in their red brief.

[00:29:16] Speaker 01:
With respect to the case log, I just want to make sure it's really clear on this new embodiment issue.

[00:29:26] Speaker 01:
So the cases that we cited.

[00:29:36] Speaker 01:
We cited the Wasea, Finance, Ariosa, Apple.

[00:29:40] Speaker 01:
Zynga relies on this Axionics versus Medtronix case where the patent owner response happened, and then there was information that came up in the reply.

[00:29:52] Speaker 01:
And just to be clear, in that particular case, there was no dispute as to whether that was a new embodiment.

[00:30:00] Speaker 01:
No one was arguing that it was a new embodiment.

[00:30:02] Speaker 01:
It was the same embodiment.

[00:30:04] Speaker 01:
And in fact, in that case,

[00:30:06] Speaker 01:
the Axionics case, the court said that it would leave for another day.

[00:30:11] Speaker 01:
The question of whether when presented with a new flame construction, a petitioner can rely on its reply on a new embodiment.

[00:30:20] Speaker 01:
It left that for another day because in that case, there was no issue with the same embodiment.

[00:30:25] Speaker 01:
So the cases that we cite,

[00:30:30] Speaker 01:
say that you can't do that.

[00:30:33] Speaker 01:
You can't be putting in new embodiments.

[00:30:35] Speaker 01:
It's just not fair in a reply brief.

[00:30:38] Speaker 01:
And with respect to identify a player, I just want to show you what Zynga said with respect to identify a player below at appendix 148.

[00:30:54] Speaker 01:
This is Zynga now saying, quote, aristocrat system is able to identify which specific player is playing a machine not only to send appropriate messages, including birthday wishes, to the identified player.

[00:31:12] Speaker 01:
Zynga was saying it has to be an identified player in their petition.

[00:31:17] Speaker 02:
And again, we all thought that's... I don't think she disputes that.

[00:31:21] Speaker 01:
OK.

[00:31:21] Speaker 01:
And that's...

[00:31:23] Speaker 01:
The board, in the final written decision, doesn't dispute that a new construction popped out.

[00:31:30] Speaker 01:
You don't have to identify the player.

[00:31:31] Speaker 01:
It just has to be console information, which was incorrect.

[00:31:37] Speaker 01:
And then I guess the last point I'd like to make, identify a player.

[00:31:43] Speaker 01:
Zynga argues that, well, you know, we waived the argument.

[00:31:48] Speaker 01:
We didn't waive the argument.

[00:31:50] Speaker 01:
Identify a player, we all understood it meant you had to identify the player.

[00:31:55] Speaker 01:
What we were talking about was tracking information associated with an identified player.

[00:32:00] Speaker 01:
And all the information in their chart didn't identify any, wasn't based on any particular player.

[00:32:05] Speaker 01:
So we did not waive it.

[00:32:10] Speaker 03:
Thank you.

[00:32:11] Speaker 03:
We thank both sides for taking the time.

[00:32:13] Speaker 01:
Thank you.