UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.,
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners
`
`v.
`
`MICROGRAFX, LLC
`Patent Owner
`
`__________________
`
`
`Case IPR2014-00532
`Patent 5,959,633
`
`
`
`______________________________________________________
`
`
`
`SECOND DECLARATION OF DR. ANSELMO LASTRA
`
`
`
`Page 1 of 44
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`GOOGLE-1011
`Google Inc. v. Micrografx LLC
`IPR2014-00532
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.,
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners
`
`v.
`
`MICROGRAFX, LLC
`Patent Owner
`
`__________________
`
`
`Case IPR2014-00532
`Patent 5,959,633
`
`
`
`______________________________________________________
`
`
`
`SECOND DECLARATION OF DR. ANSELMO LASTRA
`
`
`
`Page 1 of 44
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`GOOGLE-1011
`Google Inc. v. Micrografx LLC
`IPR2014-00532
`
`
`
`
`
`I, Dr. Anselmo Lastra, of Chapel Hill, NC, declare that:
`
`INTRODUCTION
`1.
`On March 24, 2014, I provided an initial Declaration in the IPR2014-00532
`
`proceeding. See GOOGLE1003 for IPR2014-00532. I provide this Second Declaration in
`
`response to statements made in the November 21, 2014 Patent Owner’s Response and the
`
`accompanying November 21, 2014 Declaration of Garry Kitchen (“Kitchen Declaration”)
`
`submitted in this proceeding. Also, in this Second Declaration, I respond to some of the
`
`technical errors and mischaracterizations of my prior testimony that are contained in the
`
`Patent Owner Response and/or the supporting Kitchen Declaration.
`
`2.
`
`I have reviewed the '633 patent (GOOGLE1001) and its prosecution history
`
`(GOOGLE1002) from the view point of a person of ordinary skill in the art at the time of the
`
`filing of the ‘633 patent based on my experience as a computer programmer, researcher,
`
`and instructor in the areas of computer graphics, graphics hardware, computer architecture,
`
`3D computer animation, image generation, and other subjects. Additionally, I have
`
`reviewed the following patents and publications:
`
` U.S. Patent No. 5,883,639 to Walton et al. (“Walton,” GOOGLE1004);
`
` U.S. Patent No. 5,564,048 to Eick et al. (“Eick,” GOOGLE1005);
`
` Inside Visual C++, Second Edition: Version 1.5 by David J. Kruglinski,
`
`September 1, 1994 (“Kruglinski,” GOOGLE1006)
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`Page 2 of 44
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`
`
`
`
` The C++ Programming Language, Second Edition by Bjarne Stroustrup, June
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`1993 (“Stroustrup,” GOOGLE1014)
`
` U.S. Patent No. 5,475,817 to Waldo et al. (“Waldo,” GOOGLE1019)
`
`3.
`
`I also have reviewed the Petition for Inter Partes Review in the IPR2014-
`
`00532 proceeding, and my initial Declaration signed on March 24, 2014 (GOOGLE1003). I
`
`also have reviewed the August 12, 2014 Board Decision in this proceeding, the Patent
`
`Owner’s Response submitted on November 21, 2014, the accompanying Kitchen
`
`Declaration (Ex. 2005), the other accompanying exhibits (including Exhibit 2004 (transcript
`
`of my November 6, 2014 Deposition in this proceeding), and the transcript of the February
`
`4, 2015 deposition of Mr. Kitchen (GOOGLE1012).
`
`
`
`REPLY TO PATENT OWNER’S CLAIM INTERPRETATION ARGUMENTS
`4.
`On pages 9-12 of the Patent Owner’s Response, Patent Owner (Micrografx
`
`LLC) argues that the term “external shape stored outside the computer program” (claims 1
`
`and 8) means “computer code stored outside the computer program that can be developed
`
`and provided for use by the computer program without modifying the computer program.”
`
`See also Ex. 2005 at ¶¶ 29-32. I find this proposed definition to be erroneous for three
`
`reasons: 1) the suggested requirement that an external shape be “provided for use by the
`
`computer program without modifying the computer program” is found nowhere in the claim
`
`language but is instead (at most) improperly imported from the ‘633 patent specification; 2)
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`Page 3 of 44
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`the specification of the ‘633 patent does not include any lexicographic definition of the term
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`“external shape” that requires that an external shape be “provided for use by the computer
`
`program without modifying the computer program”; and 3) this proposed interpretation
`
`includes no requirement that an “external shape” can be used to produce a shape or
`
`graphical image.
`
`5.
`
`The Patent Owner’s Response cites to Mr. Kitchen’s declaration (e.g., ¶ 30)
`
`for purported support that this new phrase (“provided for use by the computer program
`
`without modifying the computer program”) should be imported from the specification, but Mr.
`
`Kitchen’s analysis is flawed and contrary to the broadest reasonable interpretation standard
`
`(refer to ¶ 21 of my first declaration) for a number of reasons. First, Mr. Kitchen’s asserts
`
`that the phrase “external capabilities” in claims 1 and 8 somehow requires importation of the
`
`added phrase “an external shape [is] added to a computer program without modifying the
`
`existing program.” See Ex. 2005 at ¶ 30. But, as indicated by the Petitioner and recognized
`
`by the Board, the ‘633 patent provides an express lexicographer definition for the term
`
`“external capabilities” as “computer code stored outside a computer program, comprising
`
`action methods, symbol methods, or any other functions, that allow the generation of
`
`information required to produce a graphical image.” See Petition at 9; Institution Decision at
`
`9; GOOGLE1001 at 3:30-67. Based on my analysis of the ‘633 patent and my knowledge
`
`and experience in this field, I believe that a person of ordinary skill in the art would have
`
`recognized that the claim phrase “external capabilities” is already defined by this above-
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`Page 4 of 44
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`
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`quoted sentence, and that importing the added requirement in which the “external shape [is]
`
`added to a computer program without modifying the existing program” is different from the
`
`express lexicographic definition and furthermore contrary to the broadest reasonable
`
`interpretation standard. Therefore, this assertion that the claim language indicating that
`
`external shapes include external capabilities somehow means that “an external shape [is]
`
`added to a computer program without modifying the existing program” is off base. A person
`
`of ordinary skill in the art at the time would have understood that there is no indication in the
`
`plain language of the claims that an external shape must be “provided for use by the
`
`computer program without modifying the computer program,” especially under the broadest
`
`reasonable interpretation standard.
`
`6.
`
`Second, on pages 11-12 of the Patent Owner’s Response, Patent Owner
`
`argues that statements in the ‘633 patent specification such as “[t]he invention also provides
`
`an architecture that allows for the integration of additional shapes with an existing computer
`
`program without modifying that existing program” must be imported into the claims from the
`
`specification. See also Ex. 2005 at ¶¶ 29-32. Based on my analysis of the ‘633 patent and
`
`my knowledge and experience in this field, I note there are numerous other statements in
`
`the ‘633 patent specification describe what the “invention provides,” yet Patent Owner and
`
`Mr. Kitchen selected only one of these “invention provides” statements for importation into
`
`the claims while ignoring all others. See, e.g., Id. at 2:1-3 (“the invention provides for the
`
`modular production of additional shapes.”); 1:60-63 (“The invention provides several
`
`Page 5 of 44
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`
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`
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`technical advantages [including that] shapes may be developed by third parties, addressing
`
`particular markets.”); 3:43-44 (“[T]he invention provides . . . .”); 4:27-32 (“[T]he present
`
`invention contemplates . . . .”). Patent Owner and Mr. Kitchen offer no rationale as to why
`
`some of these statements of “the invention provides” should be imported into claims and not
`
`others. See GOOGLE1012 at 30:25-31:23 (acknowledging that several other “invention
`
`provides” statements from the specification should not be imported into the claims despite
`
`his earlier contention that another “invention provides” statement must be part of the claim
`
`interpretation).
`
`7.
`
`Further responsive to pages 9-12 of the Patent Owner’s Response and ¶¶ 29-
`
`32 of the Kitchen Declaration, a person of ordinary skill in the art at the time would have
`
`recognized that the portions of the ‘633 specification (cited by Patent Owner and Mr.
`
`Kitchen for the proposition that the system of the ‘633 patent must be limited to a function
`
`“without rewriting the underlying computer program” or “without modifying that existing
`
`program”) are not tied explicitly or implicitly to the claim term “external shape,” and certainly
`
`not under the broadest reasonable interpretation standard set forth in ¶ 21 of my first
`
`declaration. Based on my analysis of the ‘633 patent, my knowledge and experience in this
`
`field, and the broadest reasonable interpretation standard that is applied in this proceeding,
`
`there is no basis for importing this requirement (“can be developed and provided for use by
`
`the computer program without modifying the computer program”) into the claim
`
`interpretation of the term “external shape” as proposed by Patent Owner and Mr. Kitchen,
`
`Page 6 of 44
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`
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`as the broadest reasonable interpretation must not import such language from the
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`specification where the ‘633 patent includes no express lexicographic definition of “external
`
`shape” that mandates importation of such language. See GOOGLE1012 at 22:19-23:1 (“I
`
`don’t recall seeing a specific definition for the phrase [external shape] in the patent or patent
`
`specification”).
`
`8.
`
`Third, responsive to pages 9-12 of the Patent Owner’s Response, the
`
`interpretation of “external shape stored outside the computer program” offered by Patent
`
`Owner is plainly erroneous as it ignores the claim language of “external shape” by
`
`excluding any requirement for any type of shape or graphical image. See Patent Owner’s
`
`Response, at pp. 9-12 (referring only generically to “computer code stored outside the
`
`computer program” without requiring that the code is used in creating a shape or graphical
`
`image). Based on my analysis of the ‘633 patent and my knowledge and experience in this
`
`field, I believe that a person of ordinary skill in the art would have recognized that
`
`Microgafx’s proposal excludes any type of “shape” or graphical image from the claims and is
`
`thus unreasonable. Later, Mr. Kitchen recognized this flaw in the Patent Owner’s
`
`Response too, and I agree with Mr. Kitchen’s conclusion that Mr. Kitchen’s “corrected” claim
`
`interpretation is different from the claim interpretation proposed in pages 9-12 of the Patent
`
`Owner’s Response. GOOGLE1012 at 20:6-21:14. For at least the foregoing reasons, the
`
`proposed interpretation of the term “external shape stored outside the computer program”
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`Page 7 of 44
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`
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`offered in the Patent Owner’s Response is unsupported by Mr. Kitchen’s testimony and is
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`furthermore contrary to the broadest reasonable interpretation standards.
`
`9.
`
`Also, responsive to ¶¶ 29-32 of Mr. Kitchen’s declaration (and his follow-up
`
`deposition testimony on that topic), I note that Mr. Kitchen admitted during his deposition the
`
`interpretation of “external shape stored outside the computer program” offered by Patent
`
`Owner at pages 9-12 of the Patent Owner’s Response is incorrect before going on to import
`
`even more narrowing limitations into the already narrow interpretation of “external shape”
`
`advanced in the Patent Owner’s Response and Mr. Kitchen’s accompanying declaration.
`
`See GOOGLE1012 at 21:4-14; 24:9-25:25. For example, Mr. Kitchen explained in his
`
`deposition that the imported phrase “can be developed and provided for use” actually
`
`included an “optional aspect” (the “developed” verb) and a “required aspect” (the “provided
`
`for use” verb). GOOGLE1012 at 29:20-30:18. In another example, Mr. Kitchen further
`
`narrowed his already narrow interpretation of “external shape” by indicating that he applied
`
`a qualifier to the imported phrase “without modifying the existing program” to limit
`
`“modifying” to a way that is “specific to allowing the external shape to be used.”
`
`GOOGLE1012 at 24:23-25:5. Mr. Kitchen indicated that under his interpretation of the
`
`imported phrase (“without modifying the existing program”) “[i]f someone had to go in and
`
`delete lines or else the external shape would not work, then that would qualify as
`
`‘modifying’” but that “if the program is modified because there is a bug in it that has nothing
`
`to do with external shapes or it’s modified to be compatible with the next version of the
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`Page 8 of 44
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`windows operating system, I don’t read that into this claim construction.” Id. at 24:17-26:4.
`
`Given that Mr. Kitchen relied upon this narrowing assumptions in his conclusions as to why
`
`the prior art allegedly fails to disclose the claimed “external shape stored outside the
`
`computer system,” this testimony by Mr. Kitchen reveals his conclusions regarding the claim
`
`term “external shape stored outside the computer system” were in fact based on a far
`
`narrower interpretation than what is actually recited in ¶ 32 of his declaration:
`
`Compare Ex. 2005 at ¶ 32, with GOOGLE1012 at 15:17-16:16 (Mr. Kitchen adding
`
`the phrase “that defines a graphical image” to his original text in ¶ 32); at 29:19-
`
`
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`Page 9 of 44
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`
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`30:18 (Mr. Kitchen explaining that the “provided for” verb is actually a “required
`
`aspect,” not merely an optional “can be” limitation); at 24:17-26:4 (adding a qualifier
`
`to what type of “modifying”).
`
`10.
`
`Based on my analysis of the ‘633 patent, my knowledge and experience in
`
`this field, and the broadest reasonable interpretation standard that is applied in this
`
`proceeding, I believe that a person of ordinary skill in the art at the time would have
`
`understood that both of Mr. Kitchen’s proposed interpretations (shown above) are far
`
`narrower than the broadest reasonable interpretation of the claim phrase “external shape
`
`stored outside the computer system,” and that any of Mr. Kitchen’s conclusions regarding
`
`the prior art based on any of Mr. Kitchen’s proposed interpretations (shown above) are
`
`lacking a proper basis. As shown above, Mr. Kitchen’s conclusions regarding the prior art
`
`references appear to be based on numerous additional limitations added to the term
`
`“modifying” (which in itself should not be imported into the claim) further highlights the
`
`improperly narrow claim interpretation employed in Mr. Kitchen’s analysis. To the extent that
`
`the opinions in Mr. Kitchen’s declaration are based on an interpretation of the claims that is
`
`even narrower than the already narrow interpretation offered in his original declaration, I
`
`believe that his opinions as to certain features allegedly not being taught by the prior art are
`
`lacking a meaningful and reasonable foundation.
`
`11.
`
`Lastly, responsive to Patent Owner’s improper characterization of my earlier
`
`testimony (on page 12 of the Patent Owner’s Response) alleging I was “unable to offer an
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`Page 10 of 44
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`
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`opinion as to whether [my] construction or the Board’s proposed construction [of the term
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`‘external shape’] was more correct,” I disagree with conclusions drawn by Patent Owner.
`
`My actual testimony here (comparing my originally proposed construction and the Board’s
`
`construction in the Institution Decision) was that “[b]oth of these I think are correct” before I
`
`proceeded to explain that the two constructions are essentially the same (certainly for
`
`purposes of comparing the prior art references in this proceeding to the claims), but merely
`
`have different wording. Ex. 2004 at 11:11-12:19. Based upon my analysis of the ‘633 patent
`
`and its prosecution history and my review of the Board’s construction in the Institution
`
`Decision for the claim phrase “an external shape stored outside the computer program,” I
`
`believe that a person of ordinary skill in the art would find the Board’s construction to be
`
`both reasonable and entirely consistent with ‘633 patent specification (especially under the
`
`broadest reasonable interpretation standard and in view of the supporting citations to
`
`particular portions of the ‘633 patent specification on page 8 of the Institution Decision).
`
`The characterization of my deposition testimony on page 12 of the Patent Owner’s
`
`Response is misplaced and ignores the more fundamental similarities between my originally
`
`proposed construction and the Board’s construction in the Institution Decision.
`
`12.
`
`For the foregoing reasons, the definition of “external shapes stored outside
`
`the computer system” adopted by the Board in the Institution Decision is reasonable and
`
`properly based on the broadest reasonable interpretation standard, and the multiple
`
`different constructions of this claim phrase offered by Patent Owner and Mr. Kitchen (refer
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`Page 11 of 44
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`
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`to ¶¶ 8-9 above) offer increasing degrees of overly narrow and inappropriate imports from
`
`the specification—contrary to the broadest reasonable interpretation of these seven words
`
`(“external shapes stored outside the computer system”).
`
`13. Responsive to pages 30-33 of the Patent Owner’s Response, I note that
`
`Patent Owner does not offer an explicit interpretation of the term “delegate” but does argue
`
`that production of graphical images is not “delegated” to the graphical objects of Walton
`
`because “[t]he graphical objects of Walton simply do not work outside the VSE system.” See
`
`also Ex. 2005 at 47. In other words, Patent Owner’s arguments related to the claim term
`
`“delegate” (at pages 30-33) are based upon an implicitly narrower understanding of this
`
`term—not merely that “delegate” means to commit or entrust to another (refer to Institution
`
`Decision at pp. 9-10 and my first Declaration at ¶ 23), but that “delegate” should instead be
`
`more narrowly interpreted as to commit or entrust to another’s independent actions. Mr.
`
`Kitchen also relies upon this same overly narrow understanding of the term delegates (refer
`
`to Ex. 2005 at ¶¶ 47, 51-52). This implication that the term “delegate” means to commit or
`
`entrust to another’s independent actions was properly rejected by the Board as being overly
`
`narrow, and (for reasons described below) I believe that a person of ordinary skill in the art
`
`would find the Board’s construction of “delegate” to be both reasonable and entirely
`
`consistent with ‘633 patent specification. See Institution Decision at 9-10.
`
`14.
`
`Based on my analysis of the ‘633 patent, my knowledge and experience in
`
`this field, and the broadest reasonable interpretation standard that is applied in this
`
`Page 12 of 44
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`
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`proceeding, I believe that a person of ordinary skill in the art at the time would have
`
`understood that there is no requirement in the claims or specification that “delegation”
`
`requires the external shape to be able to draw a graphical image completely unassisted and
`
`using only its own independent actions (contrary to Patent Owner’s arguments at pages 30-
`
`33 of the Patent Owner’s Response). In explicit contrast to this assertion by Patent Owner,
`
`the ‘633 patent imparts a much broader meaning to the term “delegation,” indicating that
`
`delegation of the production of a graphical image can comprise not only the computer code
`
`of the external shape alone, but further “generating data [by an external shape] that may be
`
`used by the computer graphics application 122 to place a graphical image on an
`
`output device.” GOOGLE1001 at 3:20-24 (emphasis added). A person of ordinary skill in the
`
`art at the time would have understood that the primary embodiment of the ‘633 patent
`
`employs numerous other components of the system 110 for producing the graphical image,
`
`including the computer graphics application 122, the shared library 130, and a “callback
`
`function.” Id. at 3:20-24; 4:27-38; 6:48-53. During his deposition, Mr. Kitchen agreed with
`
`this assessment by indicating that numerous components aside from the “external shape”
`
`are required for the system of the ‘633 patent to produce a graphical image, including the
`
`computer graphics application 122, the shared library 130 (allegedly equivalent to a
`
`common graphics library such as OpenGL), drivers or “software to display graphics on a
`
`screen,” and “low level graphic routines . . . that create the data.” GOOGLE1012 at 38:17-
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`39:2; 41:12-22; 43:21-44:14. For these reasons and the reasons original expressed in my
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`Page 13 of 44
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`first declaration at ¶ 23, I agree with the Board’s reasonable construction that the term
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`“delegate” means “to commit or entrust to another,” not to commit or entrust to another’s
`
`independent actions. I furthermore agree with Mr. Kitchen’s assessment (cited above) that,
`
`in the primary embodiment for the ‘633 patent, the external shapes of the ‘633 patent
`
`generate information that is used by other components of the computer graphics system
`
`110 to place a graphical image on an output device. GOOGLE1001 at 3:20-24; 4:27-38;
`
`6:48-53.
`
`
`
`WALTON DISCLOSES “AN EXTERNAL SHAPE STORED OUTSIDE THE COMPUTER
`PROGRAM"
`15. On page 22 of the Patent Owner’s Response, Patent Owner argues that
`
`Walton does not disclose external shapes because “Walton discloses VSE objects that are
`
`created within the VSE system, and Walton does not disclose that such objects are ever
`
`used in any other system.” Patent Owner’s argument here is based on Mr. Kitchen’s
`
`testimony regarding Walton. See Ex. 2005 at ¶¶ 43, 46-47. Yet Mr. Kitchen explained during
`
`his deposition that this assessment of Walton is based on an incorrect assumption that the
`
`“user code” of Walton is part of the VSE system. GOOGLE1012 at 50:11-51:2. During his
`
`deposition, Mr. Kitchen stated that “[t]he user code is compiled into the final product which
`
`includes all of the code of the VSE system.” Id. He then went on to confirm that the
`
`conclusions he reached in his declaration were based on this assumption regarding Walton.
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`Id. at 50:11-51:2. Contrary to Mr. Kitchen’s assumption, Walton expressly states that the
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`Page 14 of 44
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`“client server 414 establishes the connection between a user program and the VSE system
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`400 and passes information between the two as required.” GOOGLE1004 at 21:9-17
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`(emphasis added); see also 8:58-62. Also, FIG. 4(a) of Walton confirms that the VSE
`
`system 400 includes the client server 414, but it does not illustrate that the system 400
`
`extends to a user program that can connect to the client server 414. Id. at FIG. 4(a). A
`
`person of ordinary skill in the art at the time would have understood that this disclosure (col.
`
`21:9-17) of information being passed between the “user program and the VSE system 400”
`
`through an interface at the client server 414 indicates that the user program is separate
`
`from and external to the VSE system 400 (so that it can “connect” to the VSE system 400).
`
`Being as Mr. Kitchen’s opinion that Walton does not teach an “external shape stored outside
`
`the computer program” is based on an improper assumption about the teachings of Walton,
`
`his conclusions on this matter are off base.
`
`16.
`
`Even if Mr. Kitchen’s assumption (that Walton’s user code is somehow
`
`compiled into the final product and thus part of the VSE system) was true, the arguments by
`
`Patent Owner (at p. 22 of the Patent Owner Response) are unfounded because none of
`
`these alleged requirements (Walton’s shapes must be external to the “entire VSE system”)
`
`are actually found in the claims of the ‘633 patent or in any express claim interpretation
`
`offered by Patent Owner or Mr. Kitchen. First, there is no requirement in the claims that
`
`external shapes must be created external to “an entire system” having components such as
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`Page 15 of 44
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`the computer program and others, but instead the claimed external shape is merely external
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`to the computer program:
`
`
`
`Compare GOOGLE1001 at cl. 1, with Patent Owner’s Response at pp. 22-24 and 25-27.
`
`17.
`
`Accordingly, Patent Owner’s complaints that Walton’s “graphical objects”
`
`cannot satisfy the “external shape” limitation (at pages 22-24) are all based upon an
`
`improper claim interpretation (beyond the additional error of importing the “without modifying
`
`the computer program” language from the specification as described in ¶¶ 4-12 above).
`
`Based on my analysis of the ‘633 patent and Walton and based on my knowledge and
`
`experience in this field, I believe that a person of ordinary skill in the art at the time would
`
`have understood that Walton’s shapes are stored outside the user source code 360 (even if
`
`both components somehow fall within the same overall VSE system) just as the ‘633
`
`patent’s external shapes are stored outside other programs (such as the computer graphics
`
`application 122 or other application running on the output device 116) even though such
`
`components fall within the same overall “system 110.” See GOOGLE1001 at FIG. 1; 2:58-
`
`3:1. In other words, according to the claims of the ‘633 patent and the primary embodiment
`
`of the ‘633 patent, it is not relevant whether the “external shape” and “the computer
`
`Page 16 of 44
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`program” are part of the same overall system, but instead the claims merely recite that the
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`external shapes (such as Walton’s graphical objects) are stored outside the computer
`
`program (such as Walton’s user code 360). For example, the ‘633 patent specification
`
`describes both the “computer graphics application 122” and “external shape library 124” as
`
`being included in the overall “system 110.” See GOOGLE1001 at 2:58-3:1. In fact, Mr.
`
`Kitchen stated during his deposition (and I agree) that the computer graphics application
`
`and the external shape library are both included within the system 110. GOOGLE1012 at
`
`48:1-10. Even if Walton’s user code 360 was somehow considered to be part of the VSE
`
`system, such a scenario would be similar to the primary embodiment in FIG. 1 of the ‘633
`
`patent, which shows that the computer program and the library of external shapes are
`
`included in a single overall “system 110” (i.e., the external shape library 124 and computer
`
`graphics application 122 included within the overall system 110 of the ‘633 patent):
`
`
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`FIG. 1 of ‘633 Patent
`
`FIG. 3 of Walton
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`Page 17 of 44
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`Here, a person of ordinary skill in the art at the time would have understood that each of the
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`computer programs (“computer graphics application 122” and the “user source code 360”)
`
`are operable to access an external shape stored outside the computer program (stored in
`
`the “shaped library 124” or the “library of graphical objects 320,” respectively), and the
`
`question of whether the “VSE objects [] are created within the VSE system” (or whether the
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`objects of the ‘633 patent’s “shape library 124” are created within the system 110) is not
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`relevant to the claim language. See Patent Owner’s Response at p. 22.
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`18.
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`Second, the claims do not require that “external shapes” must be compatible
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`with multiple systems. See Patent Owner’s Response at p. 22 (arguing that the shapes
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`must be “used in any other system” in order to provide the claim element). In fact, all of the
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`examples described in the ‘633 patent (including all descriptions of the “external shape
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`library 124”) only describe the overall “system 110” as shown in FIG. 1. See GOOGLE1001
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`at 2:66-3:7; 4:63-67; GOOGLE1012 at 48:1-10. Based on my analysis of the ‘633 patent
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`and Walton and based on my knowledge and experience in this field, I believe that a person
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`of ordinary skill in the art at the time would have recognized that the production of Walton’s
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`shapes (using the capabilities of the shapes and rendering with other components of the
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`overall system) is highly similar to the production of the external shapes described in the
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`‘633 patent (using the capabilities of the shapes and rendering with other components of the
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`overall system 110). See, supra, ¶ 14. Much as Walton describes the example VSE
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`system, the disclosure of the ‘633 patent revolves around the overall “system 110” and does
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`Page 18 of 44
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`
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`not describe any specific example of how any other system (rather than the system 110)
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`would access and use the external shapes in external shape library 124. See Id.
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`19. On page 24 of the Patent Owner’s Response, Patent Owner argues that the
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`graphical objects of Walton are not external shapes because the behaviors (stored as
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`design files) of Walton’s graphical objects “must be built within the VSE system.” However,
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`as explained in ¶¶ 16-17 above, there is no requirement in the claims or specification of the
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`‘633 patent that external shapes must be created outside of the overall “system” (e.g.,
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`system 110) rather than being merely stored outside of the computer program (e.g.,
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`computer graphics application 122). Furthermore, Walton describes the graphics editor 310
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`as part of an example preferred embodiment for creating graphical objects and, as I stated
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`during my earlier testimony, a person of ordinary skill in the art would realize that the VSE
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`system of Walton is necessarily compatible with graphics objects created by other graphic
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`editors or even graphic objects (which are merely computer code and data) generated by an
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`ordinary programmer. See Ex. 2004 at 60:6-20. This is supported by the portion of Walton
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`that discloses “[t]he graphical file also can be used to receive graphical objects from other
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`graphical editors outside of the VSE system 400.” GOOGLE1004 at 14:19-21.
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`20. On pages 23-24 of the Patent Owner’s Response, Patent Owner argues
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`Walton fails to anticipate the claims because the user code 360 of Walton must be modified
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`in order to make use of a new VSE object. See also Ex. 2005 at ¶¶ 42, 53-54. First, as
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`explained in ¶¶ 4-12 above, a person of ordinary skill in the art at the time would have
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`Page 19 of 44
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`recognized there is no requirement in the claims of the ‘633 patent that external shapes
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`must be able to interact with the claimed computer program “without modification of the
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`computer program”—certainly not under the broadest reasonable interpretation standard.
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`Second, there is also no requirement in the claims that the external shapes must be “new”
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`external shapes created after the computer program, as confirmed by Mr. Kitchen during his
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`deposition. GOOGLE1012 at 70:12-25. Patent Owner’s arguments here focus on one
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`alleged “advantage” from the specification (e.g., col. 1:60-62) rather than the actual
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`language recited in claims 1 and 8—which do not (and cannot) import such limitations from
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`the specification according to the broadest reasonable interpretation standard.
`
`21.
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`Third, even if this improperly narrow interpretation of the term “external
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`shape” is applied (importing “without modification of the computer program” from the
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`specification), a person of ordinary skill in the art would have recognized that the VSE
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`system certainly provided the ability to swap in newly created graphical objects in place of
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`pre-existing graphical objects for use with existing user source code without modification of
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`the user source code, for example, by simply using the same behavior state names in the
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`newly created graphical objects. See e.g., Ex. 2004 at 56:6-57:6. Contrary to Patent
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`Owner’s assertions on pages 14, 23, and 30 of the Patent Owner’s Response, I have never
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`conceded that Walton “does not disclose that a user of the VSE system can create a new
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`VSE object and make use of that VSE object in the user’s user code without modifying the
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`user code.” In fact, I stated the opposite during my deposition. Id. During the line of
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`Page 20 of 44
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`
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`questioning represented on pages 56 to 57 of the deposition transcript (Ex. 2004), I stated
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`“that’s not correct” before explaining that the user code of Walton delegates the production
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`of graphical images to the graphical objects by calling on the behavior function names of a
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`given graphical object. Id. This allows a new graphic object to be created and utilized by the
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`existing user code by including the same behavior function names of another already
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`existing graphic object. Id. This would allow, for example, a graphical image of a dial
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`indicating a particular value to be swapped out for a bar graph that is used to represent that
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`value. Id. A person of ordinary skill in the art at the time would have recognized that this
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`swapping of the graphical object representing the bar graph for the graphical object
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`representing the dial would be accomplished without need to “modify” the user code.
`
`22.
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`Fourth, nowhere does Walton describe modifying the user source code 360 to
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`interact with newly cr
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