IGT et al v. ZYNGA INC.

Filing 61

ORDER ON DISCOVERY. IT IS THEREFORE ORDERED that Plaintiffs discovery request is GRANTED. Zynga is ORDERED to provide discovery for each product identified and accused in IGTs contentions or provide discovery of an exemplary product that Zynga stipulates is representative of the uncharted games.Signed by Judge Alan D Albright. (sv)

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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
IGT, IGT CANADA SOLUTIONS ULC,
Plaintiffs

-vsZYNGA INC.,

Defendant

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W-21-CV-00331-ADA

ORDER ON DISCOVERY
Before the Court is Plaintiffs’ motion to compel Defendant to produce technical
documents and source code “sufficient to show the operation of the accused product(s). After
considering the parties’ respective position statements submitted to the Court by email on
February 7, 2022, and the parties’ oral argument on February 16, 2022, Plaintiffs’ Motion is
GRANTED.
I.

BACKGROUND

IGT and IGT Canada Solutions ULC (collectively, “IGT” or Plaintiffs”) allege that
Defendant Zynga Inc. (“Zynga” or “Defendant”) improperly withheld discovery for the majority
of products identified in IGT’s preliminary infringement contentions. For each of the asserted
patents, IGT’s preliminary infringement contentions identify infringing instrumentalities in
Zynga’s gaming systems. IGT’s preliminary infringement contention charts correlate those
instrumentalities with each asserted claim. IGT clarified that such charted products were
“exemplary only” and “representative of and exhibit the same accused instrumentalities common
to all” identified products. Zynga only produced technical information for the subset of
exemplary products for which IGT included screenshots and withheld discovery on roughly 100

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other accused products. IGT requests that the Court compel Zynga to provide discovery for each
product identified and accused in IGT’s contentions.
IGT’s preliminary infringement contentions allege that Zynga infringes, for example,
U.S. Patent No. 7,168,089 by “performing in the United States Zynga’s gaming methods
involving hardware and software for authorizing users to play Zynga’s various game offerings,
such as Words With Friends, Words With Friends 2, Harry Potter: Puzzles & Spells, FarmVille,
FarmVille 2, FarmVille 3, Zynga Poker, Hit It Rich! suits of slots games including, e.g., Mustang
Money, Game of Thrones Slots Casino, Willy Wonka Slots, Wizard of Oz Slots, Black Diamond
Casino slots, and other Zynga slots games, and other games listed in IGT_0004551 (Apple App
Store), IGT_0004583 (Google Play Store), and/or IGT_0004424 (Zynga.com/games/) (the
“Accused Methods”).” The documents IGT_0004551, IGT_0004583, and IGT_0004424
collectively list roughly 100 other games (the “uncharted games”) that form the basis of this
discovery dispute. Zynga refuses to produce discovery on the uncharted games because Zynga
feels the uncharted games are not fairly represented and because IGT has not provided separate
infringement contention charts that identify independent infringement theories.
II.

PARTY’S ARGUMENTS

IGT seeks source code and other discovery for the roughly 100 uncharted games without
individually charting each of the uncharted games. IGT contends that it needs discovery on the
uncharted games before it can provide meaningful infringement contention charts.
Zynga posits that Plaintiff must either separately chart each accused product or provide
meaningful analysis explaining how multiple accused products presented supposedly operate the
in the representative manner. Zynga argues that IGT has not met either burden. Zynga further
argues that the uncharted games are materially different from the charted games.

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To illustrate its argument, Zynga uses an example of “airplane mode games.” Some
asserted claims require communication between a server and a mobile device. IGT alleges that
both the charted games and uncharted games perform the claimed communication. But Zynga
contends that many of the uncharted games are played without any communication with a server,
which IGT can confirm by playing the game on a device in airplane mode. According to Zynga,
these differences arose because different programmers from independent groups independently
developed the allegedly represented games to work in independent ways. Because of the
different, non-representative implementation techniques, Zynga argues IGT must either
demonstrate the difference in the implementation techniques does not affect its infringement
theories or explain its basis for contending that every accused product uses the same
implementation technique.
Zynga argues for proceeding in one of two ways, neither of which include discovery on
the roughly 100 uncharted products. First, Zynga proposes that if IGT believes multiple games
infringe for the same reason—for example, by using the same Zynga back end service to carry
out the accused functionality—then IGT should provide a chart disclosing that theory. But,
Zynga argues, IGT would need no additional discovery because Zynga already produced that
code. Second, if IGT believes Zynga’s games infringe because of game-specific functionality,
IGT must provide contentions explaining how each allegedly infringes. Zynga therefore argues it
should not be compelled to produce the source code for the games for which IGT has not
disclosed an infringement theory and that any such production would be unduly burdensome.
III.

DISCUSSION

The Court “adheres to a policy of liberal discovery.” Bright Sols., Inc. v. Tire Seal, Inc.,
No. 5:06CV247, 2008 WL 11347983, at *4 (E.D. Tex. Jan. 14, 2008). This request comes at the

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preliminary infringement stage. Unlike WSOU Investments LLC v. OnePlus Tech. (Shenzhen)
Co., the Court is not merging the preliminary and final infringement deadlines. 2022 WL
174517, at *2–3 (W.D. Tex. Jan. 18, 2022). Indeed, a higher standard of detailing claim charts
with specific descriptions of how each product is represented by a single charted product applies
to a plaintiff’s final infringement contentions. But at the preliminary infringement contention
stage, a plaintiff need only illustrate that the additional uncharted products are “reasonably
similar” to those specifically charted and accused in the preliminary infringement contentions.
Stambler v. Amazon.com, Inc., No. 2:09-CV-310 (DF), 2011 WL 13196261, at *3 (E.D. Tex.
May 13, 2011); see also Nichia Corp. v. Feit Elec. Co., Inc., No. CV 20-359-GW-EX, 2020 WL
7264546, at *3 (C.D. Cal. Nov. 19, 2020) (“A plaintiff need only provide enough information to
permit a reasonable inference that all accused products infringe.”) (internal quotation marks
omitted).
Here, IGT met the reasonably similar standard, but only barely so. The uncharted games
are all run by Zynga and alleged to work in the same way, and the accused communication to
servers remains unrebutted by Zynga’s arguments or any evidence. Thus, the Court agrees with
IGT: Zynga cannot refuse to comply with discovery just because Zynga believes it does not
infringe.
Zynga argues that the uncharted products cannot be reasonably similar to an exemplary
charted product based on material differences such as the ability of some uncharted games to
operate without any claimed communication to a server by operating in airplane mode. Zynga
argues that this difference requires Plaintiff to either demonstrate the difference does not affect
its infringement theories or show that the accused products use the same implementation
technique.

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Despite Zynga’s argument, the Court finds it is reasonable, at this stage, that the
uncharted games that can function in airplane mode may nonetheless infringe when not in
airplane mode. The Court also discounts Zynga’s argument due to lack of evidentiary support
(e.g., a declaration or technical document showing that certain games never communicate with a
server). Such evidence sits at heart of the discovery that Plaintiffs seek in order to provide more
detailed final infringement contentions explaining why products are fairly represented. Thus, the
Court finds it appropriate to order such discovery and reject reliance on Zynga’s unilateral
argument that products are not fairly represented. The Court notes that plaintiffs should exhaust
publicly available information in providing preliminary infringement contentions. But even if
Zynga is correct that products are not fairly represented, Plaintiff is still entitled to discovery to
verify it when such information is not publicly available. Because the accused products remain
“reasonably similar” after considering Zynga’s positions, Zynga must provide the requested
discovery.
Defendant also alleges that the requested discovery is unduly burdensome. The Court
finds other remedies more appropriate than denial of discovery.
First, the parties can meet and confer to place the accused products in multiple
representative buckets. For example, Zynga argues that the games that are playable in “airplane”
mode fall into a separate representative bucket. Zynga could identify all games that fall into this
bucket and provide discovery on one or two exemplary games, such as a game chosen by each
party. After gathering discovery, the parties might agree that games in the “airplane” mode
bucket do not infringe and drop such products from the case. If the parties continue to disagree
about the infringement of products in the “airplane” mode bucket, then Plaintiffs, now armed

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with discovery of one or two exemplary airplane mode products, can chart its representative
infringement contentions for all products in that bucket.
Second, if Plaintiffs fail to cooperate and work toward smaller, more reasonable
representative buckets and continue to insist that all products in a large bucket operate in the
same way, then Defendant may stipulate to the representation and produce discovery on one
representative product of Defendant’s choice (in addition to discovery on fairly charted
products). A defendant will naturally select a representative product that is least likely to infringe
and hold an uncooperative plaintiff to its own allegation that all other uncharted products operate
in the same way. To avoid this, a plaintiff may either cooperate and work toward smaller, more
reasonable representative buckets, initially chart more products under independent infringement
theories, or chart contentions based on smaller, more reasonably representative buckets.
Last, Defendant can seek alternative relief. The Court’s discovery procedure limited
Defendant to a 500-word argument, which may not have permitted Defendant to fully articulate
its basis for relief or submit the necessary evidence. A defendant may file a motion to dismiss
certain products from the case if the defendant believes those contentions are not plausible. A
defendant may file a motion for sanctions if the discovery is sought for an improper purpose such
as needlessly increasing the cost of litigation, if a plaintiff’s contentions lack a good faith basis,
if a plaintiff engages in discovery abuse, or if a Plaintiff fails to conduct a reasonable pre-suit
inquiry. A defendant may move for a protective order under Rule 26 if the burden or expense of
the discovery outweighs its likely benefit. Alternatively, the Defendant here may expedite
representative discovery, for example by producing full discovery on airplane mode products,
before filing an early motion for summary judgment with evidentiary support. But, given the

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current record, the Court believes that Plaintiffs have done enough to warrant the requested
discovery.
IV.

CONCLUSION

IT IS THEREFORE ORDERED that Plaintiffs’ discovery request is GRANTED. Zynga
is ORDERED to provide discovery for each product identified and accused in IGT’s contentions
or provide discovery of an exemplary product that Zynga stipulates is representative of the
uncharted games.

SIGNED this 1st day of March, 2022.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

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