Trials@uspto.gov
`571-272-7822
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`Paper 40
`Filed: July 21, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00532
`Patent 5,959,633
`____________
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
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`571-272-7822
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`Paper 40
`Filed: July 21, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MICROGRAFX, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00532
`Patent 5,959,633
`____________
`
`
`Before SALLY C. MEDLEY, RICHARD E. RICE, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
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`IPR2014-00532
`Patent 5,959,633
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`I.
`
`INTRODUCTION
`
`Google Inc., Samsung Electronics America, Inc., and Samsung
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`Electronics Co., Ltd. (collectively, “Petitioner”) filed a Petition (Paper 5,
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`“Pet.”) for inter partes review of claims 1–4, 6, 8–11, 13, and 15 (the
`
`“challenged claims”) of U.S. Patent No. 5,959,633 (Ex. 1001, “the ’633
`
`Patent”). Petitioner also filed a Declaration of Dr. Anselmo Lastra (Ex.
`
`1003).
`
`On August 12, 2014, we instituted an inter partes review of all of the
`
`challenged claims under 35 U.S.C. § 102, as anticipated by Walton,1 and
`
`under 35 U.S.C. § 103, as obvious over Eick2 and Kruglinski3. Paper 11
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`(“Inst. Dec.”), 19.
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`After institution of trial, Micrografx, LLC (“Patent Owner”), deposed
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`Petitioner’s declarant, Dr. Lastra, and filed a Patent Owner Response (Paper
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`22, “PO Resp.”), a transcript of Dr. Lastra’s deposition (Ex. 2004), and a
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`Declaration of Garry Kitchen (Ex. 2005). Patent Owner also filed a Motion
`
`to Amend (Paper 21, “Mot.”).
`
`Petitioner deposed Patent Owner’s declarant, Mr. Kitchen, and filed a
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`Reply to the Patent Owner Response (Paper 37, “Pet. Reply”), a transcript of
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`Mr. Kitchen’s deposition (Ex. 1012), and a Second Declaration of Dr. Lastra
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`(Ex. 1011). Petitioner also filed an Opposition to the Motion to Amend
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`
`
`1 U.S. Patent No. 5,883,639, issued Mar. 16, 1999 (Ex. 1004).
`2 U.S. Patent No. 5,564,048, issued Oct. 8, 1996 (Ex. 1005).
`3 David J. Kruglinski, INSIDE VISUAL C++ (Dean Holmes et al. eds., 2d ed.,
`Version 1.5, Microsoft Press 1994) (Ex. 1006).
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`(Paper 26, “Opp. Mot.”), to which Patent Owner then filed a Reply (Paper
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`32, “Reply Mot.”).
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`Patent Owner deposed Dr. Lastra a second time and filed a transcript
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`of the second deposition (Ex. 2008). Patent Owner also filed a Motion for
`
`Observations regarding Cross-Examination of Dr. Lastra (Paper 35), to
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`which Petitioner then filed a Response (Paper 37).
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`An oral hearing was held on May 18, 2015. The transcript of the oral
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`hearing has been entered into the record. Paper 39 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons explained below, Petitioner has shown, by a
`
`preponderance of the evidence, that the challenged claims are unpatentable.
`
`Patent Owner, however, has not met its burden with respect to its Motion to
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`Amend and, therefore, the motion is denied.
`
`A. Related Lawsuits
`
`
`
`The parties represent that Micrografx, LLC v. Google, Inc., No. 3:13-
`
`cv-03595-N (N.D. Tex.), and Micrografx, LLC v. Samsung Telecommun-
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`ications America, LLC, No. 3:13-cv-03599-N (N.D. Tex.), involve the ’633
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`Patent. Pet. 2; Amended Mandatory Notices of the Patent Owner pursuant
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`to 37 C.F.R. § 42.8, 2 (Paper 9).
`
`B. The ’633 Patent (Ex. 1001)
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`
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`The ’633 Patent, titled “Method and System for Producing Graphical
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`Images,” issued on September 28, 1999, from U.S. Patent Application No.
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` 3
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`Patent 5,959,633
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`08/726,091, which was filed on October 4, 1996. Ex. 1001, at [54], [45],
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`[21], [22].
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`The ’633 Patent Specification describes a system for producing
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`graphical images. Ex. 1001, 1:51–54. Included in the system is a computer
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`program “operable to access an external shape stored outside the computer
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`program.” Id. at 1:54–56. As described, “[t]he external shape has external
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`capabilities.” Id. at 1:56. “Capabilities are action methods, symbol
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`methods, or any other functions that allow the generation of information
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`required to produce a graphical image.” Id. at 3:29–31.
`
`In an embodiment, external shape library 124 contains information
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`used by computer graphics application 122 to produce graphical images on
`
`output device 116. Ex. 1001, 3:3–6, Fig. 1. The Specification states that
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`“[t]he ability to place the capabilities of a shape outside computer graphics
`
`application 122” facilitates use of shapes not contemplated at the time of
`
`creation of the computer graphics application. Id. at 3:32–51. The shape
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`library comprises shape collection modules 212 and 214. Id. at 3:52–54. In
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`one embodiment, the shape collection modules “comprise a dynamic link
`
`library (DLL) that allows executable routines to be stored separately as files
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`with DLL extensions and to be loaded only when needed by the program
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`that calls them.” Id. at 3:54–57.
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`Figure 3A of the ’633 Patent is reproduced below.
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` 4
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`Figure 3A is a schematic of computer application 122 and its
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`
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`interaction with external shape library 124 in block diagram form. Ex. 1001,
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`4:54–56. As depicted in Figure 3A, computer graphics application 122
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`comprises internal shapes 310 and 320 and external shape template 330. Id.
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`at 4:57–59. “Internal shapes 310 and 320 each comprise information used
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`by computer graphics application 122 to produce a different graphical image
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`on output device 116 . . . for example, a circle or a rectangle.” Id. at 4:59–
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`63. In contrast, “[e]xternal shape template 330 comprises pointers to shapes
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`contained within [external] shape library 124, which are used by computer
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`graphics application 122 to produce graphical images that are not supported
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`by internal shapes 310 or 320.” Id. at 4:63–67. External shape library 124
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`comprises a plurality of shape collection modules, each of which contains a
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`plurality of external shapes. Id. at 5:31–35.
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`C. Illustrative Claim
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`Claims 1 and 8 are independent. Claims 2–4 and 6 depend directly or
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`indirectly from claim 1, and claims 9–11, 13, and 15 depend directly or
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`indirectly from claim 8. Claim 1, which is reproduced below, is illustrative:
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`A computerized system comprising:
`1.
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`a storage medium;
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`a processor coupled to the storage medium;
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`a computer program stored in the storage
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`medium, the computer program operable to run on
`the processor,
`the computer program further
`operable to:
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`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.
`
`D. The Instituted Grounds
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`We instituted an inter partes review on the following grounds (Inst.
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` 6
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`
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`Dec. 19):
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` Reference(s)
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`Walton
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`Eick and Kruglinski
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` Basis
`
`§ 102
`
`§ 103
`
`Claims Challenged
`
`1–4, 6, 8–11, 13, and
`15
`1–4, 6, 8–11, 13, and
`15
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we give claim terms in an unexpired patent
`
`their broadest reasonable interpretation in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
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`Speed Technologies, LLC, No. 2014-1301, 2015 WL 4097949, at *7–*8
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`(Fed. Cir. July 8, 2015) (“We conclude that Congress implicitly approved
`
`the broadest reasonable interpretation standard in enacting the AIA” and
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`“the standard was properly adopted by PTO regulation.”). Under the
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`broadest reasonable interpretation standard, and absent any special
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`definitions, claim terms are given their ordinary and customary meaning, as
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`would be understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007). Further, “the specification and prosecution history only compel
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`departure from the plain meaning in two instances: lexicography and
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`disavowal.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304,
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`1309 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Ent. Am. LLC, 669
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`F.3d 1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and
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`disavowal are exacting, and require clear intent to define or narrow a term.
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`Thorner, 669 F.3d at 1365–66. Any special definition for a claim term must
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`be set forth with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`1. “An external shape stored outside the computer
`program, the external shape comprising
`external capabilities”
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`Claims 1 and 8 each recite “an external shape stored outside the
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`computer program, the external shape comprising external capabilities”
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`(emphasis added). In the Institution Decision, we determined that the
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`broadest reasonable interpretation consistent with the Specification of “an
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`external shape stored outside the computer program” is computer code
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`stored outside the computer program that defines a graphical image. Inst.
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`Dec. 9. We also determined, based on an express definition set forth in the
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`’633 Patent Specification, that “external capabilities” means computer code
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`stored outside a computer program, comprising action methods, symbol
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`methods, or any other functions, that allow the generation of information
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`required to produce a graphical image. Id.; see Ex. 1001, 3:29–31
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`(“Capabilities are action methods, symbol methods, or any other functions
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`that allow the generation of information required to produce a graphical
`
`image.”).
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`Neither party proposes any change to our interpretation of “external
`
`capabilities,” but Patent Owner argues that our initial interpretation of “an
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`external shape stored outside the computer program” is “overly broad” and
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`“improperly divorced from the context of the specification of the ’633
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` 8
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`patent.” PO Resp. 10.4 Patent Owner proposes to add the words “that can
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`be developed and provided for use by the computer program without
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`modifying the computer program”5 to our interpretation of “an external
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`shape stored outside the computer program.” Id.; Tr. 30–31. Patent Owner
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`relies on passages from the ’633 Patent Specification, such as the following,
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`to support its proposed claim construction:
`
`The invention also provides an architecture that allows for the
`integration of additional shapes with an existing computer
`program without modifying that existing program.
`
` .
`
` . .
`
`
`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.
`
`PO Resp. 11 (quoting Ex. 1001, 2:6–9, 3:48–51); see id. (citing Ex. 1001,
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`8:24–28). Patent Owner argues that these passages “explain[] that the
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`
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`4 Patent Owner argues, generally, that “claim construction in this proceeding
`should be governed by the standard set forth in Phillips v. AWH Corp., 415
`F.3d 1303 (Fed. Cir. 2005) (en banc).” Prelim. Resp. 7. But see In re
`Cuozzo Speed Technologies, 2015 WL 4097949, at *7–*8.
`5 The proposed claim construction in the Patent Owner Response not only
`added “that can be developed and provided for use by the computer program
`without modifying the computer program,” but also omitted “that defines a
`graphical image.” PO Resp. 10. We accept Patent Owner’s explanation,
`however, that the omitted words were left out by mistake. Ex. 1012, 15:15–
`16:16; Tr. 31.
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` 9
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`capability of providing additional shapes to the computer program without
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`modifying the computer program is a characteristic of the invention.” Id.
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`(emphasis added).
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`We are not persuaded by Patent Owner that the advantage of
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`integrating additional shapes with an existing computer program without
`
`modifying that existing program, as described in the Specification, is
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`uniquely attributable to use of external shapes stored outside the computer
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`program. See Pet. Reply 2. The passages from the Specification cited by
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`Patent Owner attribute the touted advantage to “an architecture” or “a
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`system,” rather than to external shapes stored outside the computer program.
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`See PO Resp. 11 (quoting Ex. 1001, 2:6–9, 3:48–51, 8:24–28). The
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`Specification also appears to attribute the touted advantage to “[t]he ability
`
`to place the capabilities of a shape outside [the computer program].” Ex.
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`1001, 3:33–35 (emphasis added). As used in the Specification and recited in
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`the claims, “capabilities” and “shape” are distinct terms. See, e.g., id. at
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`1:45–46 (“The shape library defines a shape having associated
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`capabilities.”), 3:18–51 (describing a computer program “operable to access
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`generic capabilities associated with an external shape and delegate the
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`production of a graphical image of the external shape to the capabilities
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`associated with the shape”). The Specification additionally appears to
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`attribute the touted advantage to use of “shape collection modules” that are
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`separate from the computer program. Id. at 4:5–10. Accordingly, we do not
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`agree that the Specification requires adding “that can be developed and
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`provided for use by the computer program without modifying the computer
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`10
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`program” to our initial interpretation of “an external shape stored outside the
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`computer program.” See PO Resp. 10; Tr. 30–31.
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`In the Institution Decision, we observed that the Specification uses the
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`term “shape” in different ways. Inst. Dec. 8. In a narrow sense, the
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`Specification describes “external shape 350” as comprising plurality of
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`external actions 352, 353, external symbol 354, and external resources 356.
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`Ex. 1001, 5:37–39; 6:1–7:38, Fig. 3A. As described, the external actions
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`and the external symbol are executable to produce a graphical image. See id.
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`at 6:1–12, 7:12–17, 8:14–23. In a broader sense, the Specification uses the
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`term “shape” to mean, simply, a graphical image defined by computer code.
`
`See, e.g., id. at 1:6–34. A third example is the reference in the Specification
`
`to “external shape 330” (id. at 4:59), which is elsewhere referred to as
`
`“external shape template 330” (see, e.g., id. at 5:43–56). “[E]xternal shape
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`template 330 does not comprise a predetermined set of actions and a
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`symbol,” but rather “comprises pointers to shapes contained within shape
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`library 124.” Id. at 5:43–44, 4:63–64. With the exception of external shape
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`template 330, which is stored inside the computer program (see, e.g., id. at
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`Fig. 3A), the Specification uses the term “external” to refer to computer
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`code stored outside the computer program (see, e.g., id. at 5:1–42, Fig. 3A)
`
`(distinguishing “external shapes,” which are stored outside a computer
`
`program, from “internal shapes,” which are stored inside a computer
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`program). We determine that our initial claim interpretation—that “an
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`external shape stored outside the computer program” means a graphical
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`image stored outside the computer program that is defined by computer
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`11
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`code—is the broadest reasonable interpretation consistent with the
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`Specification.
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`We, therefore, maintain our initial claim interpretation, set forth in the
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`Institution Decision, that “an external shape stored outside the computer
`
`program” is computer code stored outside the computer program that defines
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`a graphical image.
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`2. “Delegate”
`
`Claims 1 and 8 each recite “the computer program further operable to
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`. . . delegate the production of a graphical image of the external shape to the
`
`external capabilities.” In the Institution Decision, we determined that the
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`broadest reasonable interpretation consistent with the specification of
`
`“delegate” is to commit or entrust to another. Inst. Dec. 10. Neither party
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`proposes any change to that interpretation. Based on the record adduced
`
`during trial, we see no reason to modify or further address the above
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`construction.
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`3. “External action” and “external symbol”
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`Claims 2–4 and 9–11 require “an external shape stored outside the
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`computer program, the external shape comprising an external action and an
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`external symbol.” In the Institution Decision, we determined that the
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`broadest reasonable interpretation consistent with the Specification of
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`“external action” is executable computer code stored outside the computer
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`program, and that the broadest reasonable interpretation consistent with the
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`Specification of “external symbol” is computer code stored outside the
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`computer program that is associated with a graphical image. Inst. Dec. 10–
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`11. Neither party proposes any change to that interpretation. Based on the
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`record adduced during trial, we see no reason to modify or further address
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`the above constructions.
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`B. Asserted Anticipation by Walton
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`Petitioner challenges claims 1–4, 6, 8–11, 13, and 15 of the ’633
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`Patent as anticipated by Walton. Pet. 11–14, 20–39. To anticipate a patent
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`claim under 35 U.S.C. § 102, “a single prior art reference must expressly or
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`inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group,
`
`Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The evidentiary standard in this
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`case is a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`
`§ 42.1(d). For the reasons given below, after consideration of the Petition,
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`the arguments in the Patent Owner Response, and the evidence of record, we
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`conclude that Petitioner has shown, by a preponderance of the evidence, that
`
`each of claims 1–4, 6, 8–11, 13, and 15 of the ’633 Patent is unpatentable as
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`anticipated by Walton.
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`1. Overview of Walton
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`
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`Walton discloses an object-oriented system for creating user
`
`interfaces, termed the “Visual Software Engineering (VSE)” system, that
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`defines both input to and output from graphical objects. Ex. 1004, Abstract,
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`3:55–60. As disclosed, a “VSE object” preferably “consists of two major
`
`parts, the graphic element and the behavior element.” Id. at 13:15–17.
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`Walton further discloses: “As is typical of objects in object-oriented
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`systems, a graphical object in accordance with the invention must be able to
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`draw itself if asked to do so and to indicate that it has been selected.” Id. at
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`13:19–22. Walton also discloses that objects can be stored in an object-
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`oriented database system and accessed via a client server for use in a
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`computer program. Id. at 8:54–65.
`
`2. Petitioner’s Contentions with Respect to Claims 1 and 8
`
`Petitioner provides argument and a claim chart, supported by the
`
`testimony of Dr. Lastra, identifying where every limitation of claims 1 and 8
`
`may be found in Walton. Pet. 11–14, 20–27, 37–38; Ex. 1003 ¶¶ 26–49, 78–
`
`81. For instance, with respect to the limitation “the computer program
`
`further operable to[] access an external shape stored outside the computer
`
`program, the external shape comprising external capabilities,” Petitioner
`
`asserts that “Walton describes accessing external shapes in the form of
`
`graphical objects, each object including an external shape (‘graphic
`
`element’) and external capabilities (‘behavior element’).” Pet. 22 (citing Ex.
`
`1004, 13:13–17; Ex. 1003 ¶¶ 36–45). Petitioner cites Walton’s disclosure
`
`that “user software may be used to access the graphical object, and . . . the
`
`graphical object may be manipulated on the display screen directly from the
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`user application code.” Id. at 23 (quoting Ex. 1004, 8:16–21).
`
`As to the “stored outside the computer program” requirement,
`
`Petitioner relies on Walton’s disclosure that:
`
`“[t]he resulting objects are then stored as objects in an object-
`oriented database system and connected to other objects or user
`code 120 in accordance with techniques commonly used in
`object-oriented systems. The information so stored is accessed
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`by the user code 120 by . . . communicating to a client server
`via an interprocess communications mechanism of a type
`known to those skilled in the art.”
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`Pet. 24 (quoting Ex. 1004, 8:54–62).
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`Walton’s graphical objects, according to Petitioner, “have external
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`capabilities in the form of ‘behavior states’ that are stored external to user
`
`source code.” Pet. 25 (citing Ex. 1004, 9:35–42). Dr. Lastra testifies that
`
`“the behavior elements of Walton correspond to the recited ‘external
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`capabilities’ because . . . the behavior elements define behavior functions
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`(graphic output) for creating and manipulating graphics on a display in
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`response to behavior events (user input).” Ex. 1003 ¶ 37 (citing Ex. 1004,
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`13:19–41, 11:8–9, 11:23–30).
`
`Further, with respect to the limitation “the computer program further
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`operable to . . . delegate the production of a graphical image of the external
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`shape to the external capabilities,” Petitioner asserts that “Walton further
`
`discloses that the production of the graphical object is delegated to the
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`external capabilities of an object in that ‘the graphical object is responsible
`
`for controlling itself.’” Pet. 27 (quoting Ex. 1004, 11:8–9). Petitioner
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`additionally relies on Walton’s disclosure that “a graphical object in
`
`accordance with the invention must be able to draw itself if asked to do so.”
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`Id. (quoting Ex. 1004, 13:19–21).
`
`In support, Dr. Lastra testifies:
`
`Walton further describes that the production of the
`graphical object is delegated to the external capabilities of an
`external graphical object. For example, Walton indicates that
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`“a graphical object in accordance with the invention must be
`able to draw itself if asked to do so’” (emphasis added) ([Ex.
`1004,] 13:19–21.)
` Walton discloses
`that
`this drawing
`functionality is performed by the behavior functions of a
`graphical object.” (Id. at 13:26–40). For example, Walton
`discloses
`that each “graphical object
`is responsible for
`controlling itself” and that one or more “behavior function[s]
`(graphics manipulation [functions])” stored as part of a
`graphical object are responsible for “chang[ing] its graphical
`representation . . . on the display” in response to “a value
`change” or “behavior event.” (Id. at 11:8–9, 13:26–30).
`
`Ex. 1003 ¶ 47.
`
`3. Patent Owner’s Contentions with respect to Claims 1 and 8
`
`
`
`In opposition, Patent Owner contends that Walton does not anticipate
`
`claims 1 and 8 “at least because it does not disclose external shapes with
`
`external capabilities or a computer program that delegates the production of
`
`a graphical image of the external shape to the external capabilities.” PO
`
`Resp. 13. Patent Owner argues that Petitioner mistakenly relies on the “user
`
`code” in Walton’s system as the “computer program” required by the claims,
`
`because “the user code interfaces with the VSE system and does not directly
`
`access any graphical objects in the VSE system.” Id. at 20. To support this
`
`argument, Patent Owner quotes Walton:
`
`The behavior router 412 is the part of the VSE system
`400 that routes behavior events to the objects within the VSE
`system 400. As noted above, a behavior event is the setting of a
`given behavior state to a state value. User code, VSE objects,
`and the behavior editor 408 send out behavior events to the
`behavior router 412. The behavior router 412 then sends the
`
`
`
`16
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`IPR2014-00532
`Patent 5,959,633
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`events to any objects or other VSE components registered for
`that particular behavior state name.
`
`
`Id. at 20–21 (citing Ex. 1004, 13:51–58). Thus, Patent Owner contends,
`
`“[t]he user code simply interfaces with the VSE system as a client and not
`
`with the VSE objects themselves” (id. at 21 (citing Ex. 2005 ¶ 55)), and “the
`
`VSE system as a whole produces graphical images, not the graphical objects
`
`themselves” (id. at 22).
`
`Patent Owner additionally asserts that the graphical objects of Walton
`
`do not satisfy Patent Owner’s proposed construction of “external shape
`
`stored outside the computer program.” PO Resp. 23. As discussed above
`
`(see supra Section II.A.1), Patent Owner’s proposed construction requires
`
`computer code “that can be developed and provided for use by the computer
`
`program without modifying the computer program.” Based on its proposed
`
`construction, Patent Owner argues that “Walton simply does not disclose
`
`that a user of the VSE system can create a new VSE object and make use of
`
`that VSE object in the user’s user code without modifying the user code.”
`
`Id. (citations omitted).
`
`
`
`Patent Owner also contends that Walton does not disclose a computer
`
`program operable to delegate the production of a graphical image of the
`
`external shape to the external capabilities. See PO Resp. 24–34; Ex. 2005
`
`¶¶ 45–56. Patent Owner argues that the production of a graphical image in
`
`the VSE system does not involve just the graphical objects themselves, but
`
`rather always involves other components of the VSE system, such as the
`
`graphics editor, and, thus, “[t]he graphical objects themselves cannot be
`
`
`
`17
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`IPR2014-00532
`Patent 5,959,633
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`entrusted to produce a graphical image.” PO Resp. 28 (citing Ex. 2005
`
`¶ 51). Patent Owner also argues that “[t]he user code cannot delegate any
`
`task to the graphical objects because the graphics editor and other
`
`components control the graphical objects.” Id. at 30. Patent Owner argues
`
`on that basis that Walton’s graphical objects lack the “external capabilities”
`
`required by the claims:
`
`Walton’s VSE system controls the production of graphical
`images of objects within the VSE system. The VSE system
`also controls the graphical objects within the system. Thus,
`there are no external capabilities in the graphical objects of
`Walton to which the production of a graphical image of the
`external shape could be delegated. The graphical objects of
`Walton simply do not work outside the VSE system and thus do
`not meet the claim limitations.
`Petitioners rely on “behavior elements” disclosed in
`Walton as providing the external capabilities required by the
`claims. But Petitioners’ reliance is misplaced.
`
`Id. at 31.
`
`
`
`Relying on Mr. Kitchen’s testimony, Patent Owner further argues that
`
`Petitioner has misapprehended the statement in Walton that “a graphical
`
`object . . . must be able to draw itself if asked to do so and to indicate that it
`
`has been selected.” PO Resp. 31–32 (quoting Ex. 1004, 13:19–25; citing
`
`Ex. 2005 ¶¶ 50–51). As Patent Owner understands that disclosure, Walton
`
`“is not saying that a VSE object must be able to draw itself outside the
`
`context of the VSE system,” but rather “that from a user’s perspective, a
`
`‘graphical object’ must be able to draw itself—i.e., when requested via user
`
`interaction, such as by selection of a symbol, the system must be able to
`
`
`
`18
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`IPR2014-00532
`Patent 5,959,633
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`draw the selected graphical object.” Id. at 32. Mr. Kitchen similarly
`
`testifies:
`
`when read in context . . . , one skilled in the art would
`understand that this statement is describing the interactive
`capabilities of an on-screen object, rather than the specifics of
`how it is being rendered on screen. The paragraph is describing
`the fact that an object should graphically react in some way
`when selected, and this “may be done using little boxes that
`appear on the object.” In other words, “a graphical object . . .
`must be able to [trigger the system] to draw itself if asked to do
`so.”
`
`Ex. 2005 ¶ 50 (insert shown in brackets supplied by Mr. Kitchen).
`
`
`
`Similarly, Patent Owner argues that Petitioner has misapprehended
`
`Walton’s disclosure that “[o]nce created, the graphical object is responsible
`
`for controlling itself, and the graphics editor 404 simply makes requests of
`
`the graphical object.” PO Resp. 32 (citing Ex. 1004, 11:8–9). As Patent
`
`Owner understands that disclosure, “Walton is not saying that a graphical
`
`object can draw itself or even actually control itself from the perspective of
`
`separate code, such as user code.” Id. at 32–33. Rather, according to Patent
`
`Owner, “that sentence itself makes clear that it is the graphics editor that
`
`controls the production of a graphical image by making requests of the
`
`graphical object.” Id. at 33.
`
`Patent Owner concludes:
`
`Petitioners’ anticipation argument . . . rest[s] on the
`assertion that the VSE objects are simply involved in the
`production of a graphical image. But mere involvement is
`insufficient to satisfy the requirement that the computer
`
`
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`19
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`IPR2014-00532
`Patent 5,959,633
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`program commit or entrust the production of a graphical image
`of the VSE objects to the VSE objects.
`
`
`PO Resp. 34 (emphasis added).
`
`4. Analysis—Claims 1 and 8 as Anticipated by Walton
`
`a. “[T]he computer program further operable
` to[] access an external shape stored outside
`the computer program, the external shape
`comprising external capabilities”
`
`We are persuaded by Petitioner that Walton discloses “the computer
`
`program further operable to[] access an external shape stored outside the
`
`computer program, the external shape comprising external capabilities,”
`
`recited in each of claims 1 and 8. See, e.g., Pet. 22; Ex. 1004, 8:16–21,
`
`13:13–17; Ex. 1003 ¶¶ 36–45. Patent Owner’s argument that the user code
`
`(“computer program”) disclosed in Walton does not “directly” access any
`
`graphical objects in the VSE system (PO Resp. 20, emphasis added) is
`
`inconsistent with both the claim language, which does not recite “directly,”
`
`and Walton’s express disclosure that “user software may be used to access
`
`the graphical object, and . . . the graphical object may be manipulated on the
`
`display screen directly from the user application code.” Ex. 1004, 8:16–21;
`
`see Pet. 23. We are persuaded, moreover, that Walton’s graphical objects
`
`are stored outside the user code (“computer program”), as the claims require.
`
`See Pet. 24 (quoting Ex. 1004, 8:54–62). Patent Owner’s argument that
`
`Walton does not disclose adding graphical objects to the VSE system
`
`without modifying user code is not commensurate with our interpretation of
`
`
`
`20
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`
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`IPR2014-00532
`Patent 5,959,633
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`the claim term “an external shape stored outside the computer program.”
`
`See PO Resp. 15, 23; supra section II.A.1.
`
`With respect to application of the “external capabilities” requirement
`
`to Walton, we credit the testimony of Dr. Lastra as consistent with our
`
`interpretation of that requirement6 and Walton’s disclosure. For instance,
`
`we credit Dr. Lastra’s testimony that: “the behavior elements of Walton
`
`correspond to the recited ‘external capabilities’ because . . . the behavior
`
`elements define behavior functions (graphic output) for creating and
`
`manipulating graphics on a display in response to behavior events (user
`
`input).” Ex. 1003 ¶ 37 (citing Ex. 1004, 13:19–41, 11:8–9, 11:23–30). We
`
`are not persuaded by Patent Owner’s response that, in Walton’s VSE system,
`
`the graphical objects themselves do not control the production of graphical
`
`images. See PO Resp. 24–34; Ex. 2005 ¶¶ 45–56. Rather, we credit Dr.
`
`Lastra’s rebuttal testimony that Walton’s graphical objects control how the
`
`graphical images actually are drawn:
`
`Contrary to Patent Owner’s assertion that “the graphical objects
`of Walton may only be drawn by the VSE system as a whole,”
`once created, the graphical objects are accessed by user code to
`allow the graphical image information generated by the
`graphical objects to be “utilized in the user’s program” for
`producing graphical images. [Ex. 1004, 8:54–65.]
`
`
`
`6 As discussed above, “external capabilities” means computer code stored
`outside a computer program, comprising action methods, symbol
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