INTER PARTES REVIEW – FINAL HEARING
`
`GOOGLE INC. ET AL. V. MICROGRAFX, LLC
`CASE IPR2014-00532 (U.S. PATENT NO. 6,959,633)
`
`Before the Honorable Sally C. Medley, Richard E. Rice,
`and Barbara A. Parvis, Administrative Patent Judges
`
`Counsel for Patent Owner Micrografx, LLC:
`Heim, Payne & Chorush LLP
`Douglas R. Wilson
`Nathan J. Davis
`
`
`
`GOOGLE INC. ET AL. V. MICROGRAFX, LLC
`CASE IPR2014-00532 (U.S. PATENT NO. 6,959,633)
`
`Before the Honorable Sally C. Medley, Richard E. Rice,
`and Barbara A. Parvis, Administrative Patent Judges
`
`Counsel for Patent Owner Micrografx, LLC:
`Heim, Payne & Chorush LLP
`Douglas R. Wilson
`Nathan J. Davis
`
`
`
`2
`
`Patent Owner Micrografx, LLC
`• Micrografx, Inc. was an operating graphics software
`company
`• Corel Corp., another operating graphics software
`company, acquired Micrografx, Inc.
`• An investor group led by Vector Capital acquired Corel
`Corp.
`• The same investor group owns:
`• Corel Corp.
`• Micrografx, LLC
`• Assignment histories simply show:
`• Assignment by inventors to Micrografx, Inc.
`• Assignments to effect Corel’s acquisition of Micrografx, Inc.
`• Restructuring of Corel, including creation of Micrografx, LLC
`
`
`
`Instituted Grounds
`
`3
`
`Claims
`Patent
`’633 Patent 1-4, 6, 8-11, 13, 15
`
`Statutory Basis Reference
`§ 102
`Walton
`
`’633 Patent 1-4, 6, 8-11, 13, 15
`
`§ 103
`
`Eick + Kruglinski
`
`
`
`Burden of Proof for Invalidity
`
`4
`
`The petitioners bear the burden of
`proving a proposition of unpatentability
`by a preponderance of the evidence.
`
`• 35 U.S.C. § 316(e)
`
`
`
`5
`
`Legal Requirements for Anticipation
`• “There must be no difference between the claimed
`invention and the reference disclosure, as viewed by a
`person of ordinary skill in the field of the invention.”
`• Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565,
`1576 (Fed. Cir. 1991) (emphasis added)
`
`• The prior art reference “must not only disclose all
`elements of the claim within the four corners of the
`document, but must also disclose those elements
`‘arranged as in the claim.’”
`• Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir.
`2008) (internal citation omitted) (emphasis added)
`
`
`
`6
`
`Legal Requirements for Obviousness
`• Petitioners must show that “the differences between the
`subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have
`been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said
`subject matter pertains.”
`• 35 U.S.C. § 103 (emphasis added)
`
`• The PTAB must make “a searching comparison of the
`claimed invention—including all its limitations—with the
`teachings of the prior art.’”
`• In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
`
`
`
`Independent Claims
`
`7
`
`Claim 8
`A computer program encoded on a
`computer-readable medium, the computer
`program operable to:
`
`access an external shape stored outside
`the computer program, the external shape
`comprising external capabilities; and
`
`delegate the production of a graphical
`image of the external shape to the
`external capabilities.
`
`Claim 1
`A computerized system comprising:
`
`a storage medium;
`
`a processor coupled to the storage
`medium;
`
`a computer program stored in the storage
`medium, the computer program operable to
`run on the processor, the computer
`program further operable to:
`
`access an external shape stored
`outside the computer program, the
`external shape comprising external
`capabilities; and
`delegate the production of a
`graphical image of the external
`shape to the external capabilities.
`
`
`
`The ’633 Patent Invention
`
`8
`
`
`
`9
`
`Construction of “External Shape”
`• Board’s Construction:
`“computer code stored outside the computer program
`that defines a graphical image” (Paper 11 at 9)
`
`• Patent Owner’s Proposed Construction:
`“computer code stored outside the computer program
`that can be developed and provided for use by the
`computer program without modifying the computer
`program” (Paper 22 at 10 (emphasis and alteration
`added))
`
`
`
`10
`
`Construction of “External Shape”
`
`Patent Owner Response:
`“The claim language describes an external shape as being stored outside
`the computer program and possessing external capabilities that are
`capable of producing a graphical image of the external shape. Thus, the
`claim language itself expressly requires an external shape that possesses
`its own graphical production capabilities.” (Paper 22 at 10-11)
`
`“VzDrawer is ‘a VzFunctionality that gives a choice of simple generic
`drawing commands.’ It is not a ‘shape.’ Even under the Board’s
`construction, it is not computer code that defines a graphical image. It
`merely provides drawing capability in response to commands. Because it
`merely provides drawing capability, the code as it exists in the library
`does not define any graphical image.” (Paper 22 at 44-45 (citations
`omitted))
`
`
`
`11
`
`Construction of “External Shape”
`• “The invention also provides an architecture that allows
`for the integration of additional shapes with an existing
`computer program without modifying that existing
`program.” (’633 Pat. at 2:6-9, 3:48-51)
`
`• “Therefore, the invention provides a system for the
`production of graphical images that allows the shapes to
`be stored outside the computer program using the
`shapes. New shapes may be added to the system
`without incurring the disadvantages associated with
`revising the computer program.” (’633 Pat. at 8:24-28)
`
`
`
`12
`
`Construction of “External Shape”
`“The invention provides several technical advantages. [1] New shapes may be
`added easily without rewriting the underlying computer program. [2]
`Additionally, shapes may be developed by third parties, addressing particular
`markets. [3] Furthermore, because shapes may be developed external to the
`computer program, they may be developed outside the application project
`schedule. [4] Moreover, because shapes may be added easily, upgrades to the
`computer graphics package may be provided more frequently at lower cost. [5]
`In addition, the invention provides for the modular production of additional
`shapes. Shapes may be grouped in different modules based on similarity of
`appearance or other characteristics, such as intended use. For example,
`shapes commonly used in a particular technical field may be grouped in one
`module. [6] The invention also provides an architecture that allows for the
`integration of additional shapes with an existing computer program without
`modifying that existing program.” (’633 Pat. at 1:60-2:9)
`
`
`
`Construction of “External Shape”
`“Broadest Reasonable Interpretation” Is Inappropriate
`
`13
`
`• The Federal Circuit “has approved the use of ‘broadest reasonable
`interpretation’ as an expedient in examination and reexamination,
`but our approval was based on the unfettered opportunity to
`amend in those proceedings. That opportunity is not present
`in Inter Partes Review; amendment of claims requires permission,
`and since the inception of Inter Partes Review, motions to amend
`have been granted in only two cases, although many have been
`requested.”
`
`In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1287 (Fed. Cir.
`2015) (Newman, J., dissenting).
`
`
`
`14
`
`Construction of “External Shape”
`Even under BRI, Patent Owner’s Construction Is Correct
`
`• In re NTP, Inc., 654 F.3d 1279, 1288-91 (Fed. Cir. 2011) (reversing
`the construction of “electronic mail message” based in part on the
`specification and expert testimony)
`
`• In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)
`(reversing the construction of “material for finishing the top surface
`of the floor” based in part on language in the specification referring
`to the “present invention”)
`
`
`
`Walton Does Not Anticipate
`
`15
`
`
`
`Walton Does Not Anticipate
`
`16
`
`
`
`Walton Does Not Anticipate
`
`17
`
`Ex. 2008 at 94 (Lastra Testimony) (emphases added)
`
`
`
`Walton Does Not Anticipate
`
`18
`
`Ex. 2008 at 95 (Lastra Testimony) (emphases added)
`
`
`
`Walton Does Not Anticipate
`
`19
`
`Ex. 2008 at 96-97 (Lastra Testimony) (emphases added)
`
`
`
`Walton Does Not Anticipate
`
`20
`
`Claim 8
`A computer program encoded on a
`computer-readable medium, the computer
`program operable to:
`
`access an external shape stored outside
`the computer program, the external shape
`comprising external capabilities; and
`
`delegate the production of a graphical
`image of the external shape to the
`external capabilities.
`
`Claim 1
`A computerized system comprising:
`
`a storage medium;
`
`a processor coupled to the storage
`medium;
`
`a computer program stored in the storage
`medium, the computer program operable to
`run on the processor, the computer
`program further operable to:
`
`access an external shape stored
`outside the computer program, the
`external shape comprising external
`capabilities; and
`delegate the production of a
`graphical image of the external
`shape to the external capabilities.
`
`
`
`Walton Does Not Anticipate
`Claims require:
`
`21
`
`Computer program operable [to commit or
`entrust] the production of a graphical image of
`the external shape to the external capabilities.
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`22
`
`+
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`23
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`24
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`25
`
`Petition argument:
`
`Paper 5 at 42 (Petition) (emphases added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`26
`
`Petition argument:
`
`Paper 5 at 42-43 (Petition) (emphases added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`27
`
`Petition argument:
`
`Paper 5 at 46 (Petition) (emphasis added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`28
`
`Petition argument:
`
`Paper 5 at 40 (Petition) (emphases added)
`
`
`
`29
`
`Claims Are Nonobvious over Eick + Kruglinski
`Patent Owner Response:
`• “First, the class library specifications inherited by FloatDraw contain
`nothing more than virtual functions for any of the work the resulting
`object is supposed to carry out. . . . Any drawing capability is specified
`in the ordinary function defined at 625 in Figure 6B in the more
`detailed class specification that occurs in code that uses the class
`library, not in the class library itself.” (Paper 22 at 41 (emphases
`added))
`
`• “Eick’s class libraries do not contain code for drawing the objects
`that would be instantiated from such classes. That code is intended to
`be supplied in an implementation that would not be part of Eick’s class
`libraries. In other words, if a computer program were to be written to
`use Eick’s class libraries, that computer program itself would have to
`contain all of the drawing functionality.” (Paper 22 at 42 (emphases
`added))
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Reply:
`
`30
`
`Paper 25 at 11 (emphases added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`31
`
`Ex. 2008 at 8 (emphasis added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`32
`
`Ex. 2008 at 66
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`33
`
`Ex. 2008 at 64-65
`(emphases added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`34
`
`Ex. 2008 at 55-56
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`35
`
`Ex. 2008 at 58 (emphasis added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ Expert:
`
`36
`
`Ex. 2008 at 52 (emphasis added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`
`37
`
`Claim 8
`A computer program encoded on a
`computer-readable medium, the computer
`program operable to:
`
`access an external shape stored outside
`the computer program, the external
`shape comprising external capabilities;
`and
`
`delegate the production of a graphical
`image of the external shape to the external
`capabilities.
`
`Claim 1
`A computerized system comprising:
`
`a storage medium;
`
`a processor coupled to the storage
`medium;
`
`a computer program stored in the storage
`medium, the computer program operable to
`run on the processor, the computer
`program further operable to:
`access an external shape stored
`outside the computer program, the
`external shape comprising external
`capabilities; and
`
`delegate the production of a graphical
`image of the external shape to the
`external capabilities.
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ new obviousness argument is without merit.
`
`38
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ new obviousness argument is without merit.
`
`39
`
`Ex. 1005 at 2:36-56 (Eick) (emphases added)
`
`
`
`Claims Are Nonobvious over Eick + Kruglinski
`Petitioners’ new obviousness argument is without merit.
`
`40
`
`Paper 25 at 14 (Petitioners’ Reply) (emphasis added)
`
`
`
`41
`
`Substitute Claim 30 for Claim 8
`A computer program encoded on a
`computer-readable medium, the computer
`program operable to:
`
`access an external shape stored outside
`the computer program, the external shape
`comprising external capabilities; and
`
`delegate the production of a graphical
`image of the external shape to the external
`capabilities using an external shape
`template.
`
`Motion to Amend
`
`Substitute Claim 29 for Claim 1
`A computerized system comprising:
`a storage medium;
`a processor coupled to the storage
`medium;
`a computer program stored in the storage
`medium, the computer program operable to
`run on the processor, the computer
`program further operable to:
`access an external shape stored
`outside the computer program, the
`external shape comprising external
`capabilities; and
`delegate the production of a graphical
`image of the external shape to the
`external capabilities using an
`external shape template.
`
`
`
`42
`
`Motion to Amend
`37 CFR § 42.121:
`(a) Motion to amend. A patent owner may file one motion to amend a patent, but only
`after conferring with the Board.
`. . .
`(2) Scope. A motion to amend may be denied where:
`(i) The amendment does not respond to a ground of unpatentability involved in
`the trial; or
`(ii) The amendment seeks to enlarge the scope of the claims of the patent or
`introduce new subject matter.
`
`. . .
`(b) Content. A motion to amend claims must include a claim listing, show the changes
`clearly, and set forth:
`(1) The support in the original disclosure of the patent for each claim that is added
`or amended; and
`(2) The support in an earlier-filed disclosure for each claim for which benefit of the
`filing date of the earlier filed disclosure is sought.
`
`
`
`43
`
`Construction of “external shape template”
`• Patent Owner’s Proposed Construction:
`“generic interface for accessing capabilities of an
`external shape” (Paper 21 at 4)
`
`• Petitioners’ Proposed Construction:
`“one or more pointers to an external shape” (Paper 26
`at 5)
`
`
`
`Construction of “external shape template”
`
`44
`
`’633 Pat. at 6:19-39 (emphasis added)
`
`
`
`Motion to Amend
`Walton does not disclose an “external shape template.”
`
`45
`
`Ex. 1004 at 15:59-67 (Walton) (emphasis added)
`
`
`
`Motion to Amend
`Walton does not disclose an “external shape template.”
`
`46
`
`Ex. 2008 at 75 (Lastra Transcript) (emphases added)
`
`
`
`47
`
`Motion to Amend
`Eick + Kruglinski does not disclose an “external shape
`template.”
`
`
`
`48
`
`Motion to Amend
`37 CFR § 42.121:
`(a) Motion to amend. A patent owner may file one motion to amend a patent, but only
`after conferring with the Board.
`. . .
`(2) Scope. A motion to amend may be denied where:
`(i) The amendment does not respond to a ground of unpatentability involved in
`the trial; or
`(ii) The amendment seeks to enlarge the scope of the claims of the patent or
`introduce new subject matter.
`
`. . .
`(b) Content. A motion to amend claims must include a claim listing, show the changes
`clearly, and set forth:
`(1) The support in the original disclosure of the patent for each claim that is added
`or amended; and
`(2) The support in an earlier-filed disclosure for each claim for which benefit of the
`filing date of the earlier filed disclosure is sought.
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