UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`SAMSUNG ELECTRONICS AMERICA, INC. AND SAMSUNG
`ELECTRONICS COL., LTD.
`Petitioners
`
`v.
`
`MICROGRAFX, LLC
`Patent Owner
`
`CASE IPR2014-00532
`Patent 5,959,633
`
`DECLARATION OF GARRY KITCHEN IN RESPONSE TO
`THE DECISION OF THE INSTITUTION OF IPR REGARDING PATENT
`5,959,633
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`1
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
`I. INTRODUCTION ...............................................................................................4
`A. Scope of Report ..........................................................................................4
`B. Qualifications ..............................................................................................4
`1. Education .............................................................................................4
`2. Professional Experience ......................................................................5
`3. Publications .......................................................................................10
`C. Compensation ...........................................................................................11
`II. ANALYSIS ......................................................................................................11
`A. The ‘633 Patent .........................................................................................11
`B. The Proposed Construction of the Term “external shape stored
`outside the computer program” ...............................................................12
`C. Walton Fails to Anticipate the Claims of the ‘633 Patent ........................16
`1. Overview of Walton ..........................................................................16
`2. Walton cannot anticipate claims 1-4, 6, 8-11, 13, and 15
`because it does not disclose “an external shape stored outside
`the computer program” ....................................................................17
`3. Walton cannot anticipate claims 1-4, 6, 8-11, 13, and 15
`because it does not disclose a “computer program [further]
`operable to: . . . delegate the production of a graphical image
`of the external shape to the external capabilities” ...........................22
`4. In Summary .......................................................................................28
`D. The challenge claims of the ‘633 patent would not have been
`obvious over Eick in view of Kruglinski ................................................29
`1. Overview of Eick ...............................................................................29
`2. Overview of Kruglinski .....................................................................35
`3. Claims 1-4, 6, 8-11, 13, and 15 would not have been obvious
`over Eick in view of Kruglinski because Eick does not
`disclose external shapes having external capabilities. .....................36
`4. Claims 1-4, 6, 8-11, 13, and 15 would not have been obvious
`over Eick in view of Kruglinski because Eick teaches away
`from external libraries. .....................................................................39
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`E. Patent Owner’s Motion to Amend the Claims of the ‘633 Patent .......... ..43
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`5. In Summary .......................................................................................41
`5.
`In Summary ..................................................................................... ..41
`E. Patent Owner’s Motion to Amend the Claims of the ‘633 Patent ............43
`III. CONCLUSION ...............................................................................................49
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`III. CONCLUSION ............................................................................................. ..49
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`3
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`I, Garry Kitchen, declare as follows:
`
`I.
`
`INTRODUCTION
`
`A.
`
`1.
`
`Scope of Report
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`I, Garry Kitchen, have been retained as a technical expert in the
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`above-captioned case. Specifically, I have been asked to render certain opinions in
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`regards to the PTAB’s decision on the IPR petition regarding U.S. Patent No.
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`5,959,633 (the ‘633 Patent). I understand that the PTAB instituted IPR on Claims
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`1-4, 6, 8-11, 13, and 15 of the ‘633 Patent. My opinions are limited to those
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`challenged Claims.
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`2. My conclusions are summarized in Section III at the end of this
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`declaration.
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`3.
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`In reaching my opinions in this matter, I have reviewed the Petition,
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`the ‘633 Patent, the file history of the ‘633 Patent, the Declaration of Dr. Anselmo
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`Lastra regarding the ‘633 Patent, U.S. Patent No. 5,883,639 (Walton); U.S. Patent
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`No. 5,564,048 (Eick); excerpts of David J. Kruglinski, Inside Visual C++ (2nd ed.,
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`Ver. 1.5, 1994); the PTAB’s Institution Decision, and other materials cited or
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`discussed herein. I also relied upon my education and experience as a person of
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`ordinary skill in the art.
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`B. Qualifications
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`1.
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`Education
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`4
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`4.
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`I am an engineer, video game designer and consultant. I received a
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`Bachelor of Science in Electrical Engineering in 1980 from Fairleigh Dickinson
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`University, where I was awarded membership in the Eta Kappa Nu Honor Society,
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`the Electrical Engineering and Computer Engineering Honor Society of the
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`Institute of Electrical and Electronic Engineers (IEEE). As an Electrical
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`Engineering student, I was twice chosen to receive the Engineering Merit
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`Scholarship from Panasonic / Matsushita Corporation of Japan, one of the largest
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`consumer electronics companies in the world.
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`2.
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`Professional Experience
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`5. My career in the electronic entertainment/video game industry
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`includes over 30 years of experience running game development companies, with
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`significant hands-on technical and creative experience in all game genres,
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`including console, PC retail and download, online, mobile, and dedicated
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`electronic. I have been directly involved in the design of hundreds of
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`commercially-released video game products, across a breadth of hardware
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`platforms, from the earliest Atari machine through the present day Apple iPhone. I
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`have personally developed video game software products that have generated
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`career sales in excess of $350 million.
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`6.
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`In 1979, while still in engineering school, I invented and developed
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`the handheld electronic game Bank Shot for Parker Brothers, named one of the “10
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`
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`Best Games of 1980” by OMNI Magazine, and also recognized as one of the year’s
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`top games by Games Magazine. Bank Shot utilized a customized version of the
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`American Microsystems (AMI) S-2000 4-bit microprocessor, a state-of-the-art (at
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`the time) single chip microcomputer. As lead engineer on the project, I was
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`involved in all aspects of the development, including hardware, software and game
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`play. I was awarded U.S. Patent No. 4,346,892 (“Electronic Pool Game”) for the
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`invention of Bank Shot.
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`7.
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`In 1980, I analyzed the hardware and software of the Atari 2600 game
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`platform, developing one of the first third-party compatible games for the system
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`(Space Jockey).
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`8.
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`In 1982, I designed and programmed the Atari 2600 adaptation of the
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`hit arcade game Donkey Kong, which achieved revenues in excess of $100 million
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`on 4 million units sold, making it one of the top selling video games of 1982.
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`9.
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`From June 1982 to March 1986, I was a Senior Designer for
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`Activision, Inc., during which time I designed and developed the hit title Keystone
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`Kapers, which earned a Video Game of the Year – Certificate of Merit from
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`Electronic Games Magazine in 1983.
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`10. From 1984–1985, I developed Garry Kitchen’s GameMaker, a suite
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`of 5 professional quality design tools connected to an easy-to-use programming
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`language that allowed novice game makers to create commercial quality video
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`games. Computer Entertainer Magazine named me Video Game Designer of the
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`Year in 1985 for my work on Garry Kitchen’s GameMaker.
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`11.
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`In 1986, I co-founded Absolute Entertainment, Inc. and served as
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`Chairman, President & CEO until November 1995. Absolute Entertainment, Inc.
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`was a console game publisher licensed by Nintendo, Sega, Sony, 3DO and Atari
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`and was a video game developer of over one hundred marketed titles from 1986 to
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`1995. Absolute Entertainment was the first North American-based development
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`studio for Nintendo-compatible games.
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`12. From 1986-1987, I served as a consultant for RCA David Sarnoff
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`Research Center in Princeton, New Jersey, on the potential entertainment
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`applications of Digital Video Interactive (DVI), one of the first technologies to
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`store full-motion video on a CDROM. DVI was introduced to great acclaim at the
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`second annual Microsoft CD-ROM Conference in 1987. DVI technology was
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`subsequently acquired and commercialized by Intel Corporation.
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`13.
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`In 1995, I co-founded Skyworks Technologies, Inc., an early,
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`pioneering online content company. At Skyworks, as President & CEO, I lead the
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`creation of one of the first large scale online gaming websites, Candystand.com,
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`for LifeSavers Candy Company, then a division of Nabisco Inc. The Candystand,
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`launched in 1997, is recognized as one of the first and most successful examples of
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`advergaming, the integration of gaming and advertising. Candystand’s innovative
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`approach to online marketing was later the subject of a Harvard Business School
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`case study.
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`14. Under my leadership, Skyworks became the preeminent supplier of
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`promotional games (advergames) to the world’s largest brands, including Kraft
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`Foods, Nabisco, Post Cereal, Pepsi, Coke, BMW, Toyota, Ford Lincoln Mercury,
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`General Motors, Campbell’s, Fox Sports, CBS, Mattel, ESPN, Microsoft Network,
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`Showtime, Yahoo!, MTV, the Weather Channel, Comedy Central, Cartoon
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`Network, Sony Pictures, Discovery Channel, Unilever, P&G and many others. As
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`a leading supplier of online games and promotional websites for major
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`corporations, I became very familiar with the design, development and
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`maintenance of large scale, consumer-targeted websites. As one of the earliest
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`developers of online games and large-scale websites, I have relevant experience in
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`the areas at issue in this inter partes review.
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`15.
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`In 2008, Skyworks entered the smartphone app marketplace with the
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`introduction of Arcade Hoops Basketball, an iPhone app that I personally
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`developed. Arcade Hoops Basketball has been downloaded more than 5,000,000
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`times on the Apple App store. Skyworks became a leading publisher of games on
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`the Apple iPhone platform with over 25 million total downloads.
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`16.
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`I was recently awarded a patent in the field of online games and
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`interactive advertising, U.S. Patent No. 8,407,090, “Dynamic reassignment of
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`advertisement placements to maximize impression count”. The invention relates to
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`a method for dynamically managing in-game advertisements in a manner that
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`maximizes the number of impression counts for individual advertisements that are
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`placed throughout the video game.
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`17. Most recently I served as the Vice President of Game Publishing for
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`Viacom Media Networks, a division of Viacom Inc., a $15 billion media
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`conglomerate whose holdings include BET Networks, MTV, VH1, CMT,
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`Nickelodeon, Spike TV, Comedy Central and Paramount Pictures. While at
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`Viacom, I led development of the Addicting Games mobile app for the Apple
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`iPhone, the first Viacom-published app to reach #1 in the Apple App store. The
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`Addicting Games mobile app was honored with a 2012 Webby Award in the
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`category of Games (Handheld Devices). The Addicting Games mobile app was the
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`sixth iPhone-compatible game developed under my direct supervision that has
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`risen to #1 in the Apple App store, a marketplace with over 800,000 individual
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`titles.
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`18.
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`I have been recognized numerous times for my contributions to video
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`games. For example, in 1992 I received a Lifetime Achievement Award in Video
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`Games from The Doctor Fad Show, a syndicated educational television program.
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`In 2003, I was honored with the Lifetime Achievement Award in Video Games
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`from Classic Gaming Expo. Other awards I have received include New Jersey
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`Entrepreneur of the Year Finalist (Inc. Magazine, Merrill Lynch and Ernst &
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`Young), Bosslevel – The World’s Top 100 Game Developers, Nintendo
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`President’s Award, Software Publishers Association (SPA) Excellence in
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`Software, and Video Game of the Year. In addition, I serve on the Advisory Board
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`of the Video Game History Museum.
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`19.
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`I am recognized as an industry expert in the areas of video games,
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`online gaming and interactive advertising and have spoken and/or appeared at
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`many industry events. For example, I was recently the keynote speaker at
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`Qualcomm’s QTech Forum 2012. Other speaking engagements have included the
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`Consumer Electronics Show, National Cable Show, Game Developers Conference
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`(GDC), Digital Hollywood, iMedia Breakthrough Summit, Gamer Technology
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`Conference, Classic Gaming Expo, Casual Connect, Advertising in Gaming
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`Conference, Portland Retro Gaming Expo, DMExpo, and the VNU Digital
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`Marketing Conference. In addition, I have been interviewed in a number of print
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`and broadcast mediums, including Business Week, CNBC, ABC Eyewitness
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`News, CNN, Good Morning Atlanta, and The Today Show.
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`20. My education, professional experience and case history as an expert
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`witness are described in my Curriculum Vitae, attached as Exhibit A.
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`3.
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`Publications
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`21.
`
`I have performed in a business and technical management role in the
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`publication of hundreds of commercial software products. In addition, I have had
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`direct involvement in the development and publication of over 80 commercial
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`software products, either as designer, co-designer, software author or co-author. A
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`list of these titles is included in my Curriculum Vitae, attached as Exhibit 1.
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`C. Compensation
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`22.
`
`I am being compensated at a rate of $500 per hour for my time spent
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`in connection with this matter. No part of my compensation depends on the
`
`outcome of this inter partes review.
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`II. ANALYSIS
`
`A. The ‘633 Patent
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`23. The Micrografx ‘633 Patent, titled “Method and System for Producing
`
`Graphical Images,” issued from U.S. Patent Application No. 08/726,091, which
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`was filed on October 4, 1996. The ‘633 Patent describes a method and system for
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`producing graphical images comprising a computer program operable to access an
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`external shape stored outside of the computer program. The external shape
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`comprises external capabilities to which the computer program delegates the
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`production of the graphical image defined by the external shape. The invention
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`provides an architecture that allows for the integration of additional shapes without
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`the need to modify the existing graphic program.
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`24. The graphic technology innovations disclosed in the ‘633 Patent were
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`key to the eventual evolution of vector graphics as the preferred rendering
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`technology of the Internet as we know it today.
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`25. The IPR Decision on the ‘633 Patent cites Claim 1 as illustrative:
`
`A computerized system comprising:
`1.
`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 Proposed Construction of the Term “external shape stored
`outside the computer program”
`
`B.
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`
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`26. The term “external shape stored outside the computer program”
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`appears numerous times in the claim language of the ‘633 patent, most notably in
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`the independent Claims 1 and 8. For example, Claim 1 recites “A computerized
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`system comprising… a computer program… operable to: access an external shape
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`stored outside the computer program, the external shape comprising external
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`capabilities; and delegate the production of a graphical image of the external
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`12
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`shape to the external capabilities.” Because both independent Claims 1 and 8
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`include these limitations, dependent Claims 2-4, 6, 10-11, 13, and 15 also include
`
`these limitations by their dependence on independent Claims 1 and 8.
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`27.
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`I am informed that a claim limitation is to be interpreted as one of
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`ordinary skill in the art would understand the limitation in light of the claim
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`language and specification as well as the prosecution history. I further am
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`informed that the PTAB utilizes the broadest reasonable interpretation but that
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`such an interpretation must not be unreasonable in view of the claim language,
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`specification, and file history.
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`28. The PTAB proposes the broadest reasonable interpretation consistent
`
`with the specification of the ‘633 Patent of “an external shape stored outside the
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`computer program” as “computer code stored outside the computer program that
`
`defines a graphical image.” As discussed below. I disagree with this proposed
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`interpretation in view of the claim language and specification of the ‘633 patent.
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`29. A key aspect of the ‘633 patent, not addressed by the currently
`
`proposed construction, is the ability of the external shape to add capabilities to a
`
`computer program without having to modify the existing program. The ‘633 patent
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`stresses this capability numerous times throughout the specification:
`
`“Systems for creating computer graphics are well known.
`Many computer graphics systems provide tools within a
`computer program that allow a user to draw and edit a variety
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`
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`13
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`
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`of shapes. However, conventional systems only enable a user
`to draw and edit a limited number of shapes. If additional
`shapes are desired, the computer program in the system
`must be modified to include the additional tools needed to
`draw and edit the desired shape.” [‘633 patent, 1:11-18,
`emphasis added]
`“The invention provides several technical advantages. New
`shapes may be added easily without rewriting the underlying
`computer program.” [‘633 patent, 1:60-62, emphasis added]
`“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
`patent, 2:6-9 and 3:48-51, emphasis added]
`“For example, shapes not contemplated at the time of creation
`of computer graphics application 122 may be subsequently
`added to computer graphics system 120 without modifying
`computer graphics application 122.” [‘633 patent, 3:35-38,
`emphasis added]
`“Therefore, the invention provides a system for the production
`of graphical images that allows 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
`patent, 8:24-28, emphasis added]
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`30. The claim language of the ‘633 requires the capabilities which allow
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`an external shape to be added to a computer program without modifying the
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`existing program.
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`A computerized system comprising:
`1.
`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. [‘633 patent,
`claim 1]
`
`
`31. The claimed external shape of the ‘633 patent can only be added to a
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`computer program without modifying the existing program because it [the external
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`shape] comprises external capabilities which enable the delegation of the
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`production of the shape’s graphical image. In other words, the external shape is
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`able to stand on its own without relying on capabilities which may or may not be
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`part of the computer program. Without the claimed external capabilities to
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`produce the graphical image, the ‘633 invention would be nothing more than the
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`disclosed art:
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`15
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`“Such a system is limited to editing and creating shapes in
`ways permitted by the tools within the computer program.
`Thus, although shapes may be added after release of the
`computer program, the shapes that may be added are limited
`to shapes that the internal tools in the computer program
`know how to create and edit.” [‘633 patent, 1:29-34,
`emphasis added]
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`32. Therefore, the ability to extend the capabilities of an existing graphics
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`program without modifying the program is one of the primary features of the ‘633
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`Patent which differentiates the claimed invention from the prior art. For this
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`reason, it is my opinion that one skilled in the art would understand the term “an
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`external shape stored outside the computer program” to mean “computer code
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`stored outside the computer program that can be developed and provided for use by
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`the computer program without modifying the computer program.”
`
`C. Walton Fails to Anticipate the Claims of the ‘633 Patent
`1. Overview of Walton
`
`33. Walton discloses an interactive prototyping tool to design, test and
`
`deploy user interfaces. The Visual Software Engineering (“VSE”) system is
`
`targeted toward non-programmers as it allows designers to define input and output
`
`behaviors for animated graphical objects by providing examples of what the user
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`desires the graphical object to do. Inherent in the VSE system is a graphic editor in
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`which the graphical objects are designed, created and modified. The system allows
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`the user to save the graphical objects with the designed behaviors to an object
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`library, another component of the VSE system. When the user interface design is
`
`complete and tested, user-supplied application software is added to the VSE
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`environment and the application program in combination with VSE system,
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`becomes the final product.
`
`34. The graphical objects in Walton are not designed to be external
`
`shapes. Their capabilities are limited to what can be done inside the VSE
`
`environment as the shapes are directly dependent on the built-in capabilities of the
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`VSE graphic editor. Walton does not teach a method to expand those capabilities
`
`through external capabilities brought in as part of an external shape.
`
`2. Walton cannot anticipate claims 1-4, 6, 8-11, 13, and 15
`because it does not disclose “an external shape stored
`outside the computer program”
`
`
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`35.
`
`I am informed that anticipation requires that each limitation of a claim
`
`must be present in a single reference either expressly or inherently. I am further
`
`informed that inherency requires that the limitation must necessarily be present in
`
`the single reference even though it is not expressly disclosed. Mere possibilities
`
`are insufficient to support inherency. Where the reference fails to disclose one or
`
`more limitations of a claim expressly or inherently, that claim is not anticipated by
`
`the reference.
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`17
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`36. As discussed below, Walton does not disclose a computer program
`
`that is operable to access an external shape stored outside the computer program.
`
`37. One of the stated goals of the ‘633 patent is to overcome the
`
`deficiency of present graphic systems which are limited to a certain number of
`
`shapes without having to modify the original program:
`
`“Systems for creating computer graphics are well known.
`Many computer graphics systems provide tools within a
`computer program that allow a user to draw and edit a variety
`of shapes. However, conventional systems only enable a user
`to draw and edit a limited number of shapes. If additional
`shapes are desired, the computer program in the system must
`be modified to include the additional tools needed to draw and
`edit the desired shape. Adding new tools to the computer
`program each time a new shape is desired is a lengthy and
`costly process. Furthermore, once a computer program is
`released, it becomes difficult to update the program with
`additional shapes.
`- - -
`Therefore, a need has arisen for a new method and system that
`overcomes the disadvantages and deficiencies of the prior art.”
`[‘633 patent, 1:11-39]
`
`38. However, contrary to the disclosures of the ‘633 Patent, the graphical
`
`objects of Walton are limited to the current capabilities of the graphics editor 404,
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`18
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`a “primary component[] of VSE system 400”, [Walton 9:54-56], tethering them to
`
`the code of the graphics editor:
`
`
`
`“VSE objects in accordance with the invention thus store
`behavior as well as graphics information. This behavior
`information may represent any possible graphics
`transformation of a graphics object, such as change of color,
`move, rotate, scale, stretch, fill, map, unmap, raise and lower.
`In other words, any transformation that the graphics editor
`can perform can be stored as a behavior state of the
`graphics object.” [Walton, 8:33-42, emphasis added]
`“The interface designer next creates and/or modifies the
`graphical objects in the drawing and behavior editor 110 as
`desired using the available functions of the graphics editor
`of the designer's computer system.” [Id., 8:50-53, emphasis
`added]
`“The drawing features of graphics editor 404 provide the
`basis for creating the graphical representation of an object.
`The overall look and shape of an object is created using these
`features.” [Id., 12:57-60, emphasis added]
`
`39. Walton’s disclosed dependency on the “available functions of the
`
`graphics editor” 404 is no different than art cited in the ‘633 patent
`
`BACKGROUND OF THE INVENTION section:
`
`“One computer graphics system incorporates a limited
`component plug-in capability utilizing tables. When a
`
`
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`19
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`
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`particular shape is desired, the system accesses a table of data
`files. The data files contain information describing a shape.
`The shape is then created and edited with tools within the
`computer program. Such a system is limited to editing and
`creating shapes in ways permitted by the tools within the
`computer program. Thus, although shapes may be added
`after release of the computer program, the shapes that may be
`added are limited to shapes that the internal tools in the
`computer program know how to create and edit.” [‘633
`patent, 1:23-34, emphasis added]
`
`
`
`40. Conversely, the external shapes of the ‘633 patent are truly external,
`
`with the ability of the computer program to delegate the production of the
`
`graphical image to the external capabilities of the shape. In other words, when
`
`loaded, the external shape adds the capabilities necessary to draw itself to the
`
`computer program.
`
`“The method further comprises providing the capabilities
`associated with the shape to the computer program while the
`application is executing and generating a graphical image
`based on the capabilities.” [‘633 patent, 1:46-50]
`
`41. One skilled in the art would not recognize the objects of Walton as
`
`external shapes as they are not capable of producing the graphical image of the
`
`shape without relying on the drawing features of the VSE system [“The drawing
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`20
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`features of graphics editor 404 provide the basis for creating the graphical
`
`representation of an object”, Walton, 12:57-60].
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`42.
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`In fact, Walton fails to disclose any scenario in which the objects are
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`displayed outside of the VSE system and its graphic editor. Walton's purpose is to
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`design a user interface for "products under development." The user interface and
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`the associated input and output behaviors are developed and tested. When they are
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`complete, the "user code", the main body of the software application that will
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`control the product, is integrated into the VSE system. Walton does not disclose
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`adding graphical objects to existing user code in the VSE system without
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`modifying the user code. When the prototype phase is complete, the VSE system
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`(with its graphical objects) switches to “run mode” and becomes part of the
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`product.
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`“Because the VSE system 400 of the invention may be an
`integral part of the final product as well as a tool to create
`the final product, the VSE system 400 will preferably have two
`modes that greatly influence the behavior and appearance of
`the graphics editor 404… In run mode, however, these menus
`and palettes disappear to let the user exercise the created model
`with no indication that the VSE system 400 or the graphics
`editor 404 is present. Thus, in essence, the appearance and
`behavior of the VSE system 400 in run mode is the final
`product.” [Walton, 11:32-43, emphasis added]
`
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`21
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`
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`43. While the objects of Walton may be described as being saved to an
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`external database, they are not external shapes because they never truly leave the
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`environment of the VSE system. The objects are developed in the system, saved to
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`an external drive, and loaded back into the system. They do not bring external
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`capabilities to the system and they are never used outside the VSE system. In fact,
`
`because they rely on the drawing features of the VSE graphics editor 404 [“The
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`drawing features of graphics editor 404 provide the basis for creating the graphical
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`representation of an object”, Walton, 12:57-60], they cannot be used in any other
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`environment or application outside of the VSE system. The end product being
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`developed includes the entire VSE system, with the objects running under the same
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`graphic editor in which they were developed. One skilled in the art would not
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`consider these objects to be the external shapes disclosed and claimed by the ‘633
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`patent.
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`44. Therefore, in my opinion, Walton fails to disclose an external shape
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`stored outside the computer program as claimed by the ‘633 patent.
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`3. Walton cannot anticipate claims 1-4, 6, 8-11, 13, and 15
`because it does not disclose a “computer program [further]
`operable to: . . . delegate the production of a graphical
`image of the external shape to the external capabilities”
`
`
`
`45. Walton’s disclosed graphical objects are not “external shape[s] stored
`
`outside the computer program” as required by the claims of the ‘633 patent
`
`
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`22
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`

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`
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`because they do not contain external capabilities to which the production of a
`
`graphical image can be delegated.
`
`46. Contrary to the disclosures of the ‘633 Patent, the graphical objects of
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`Walton are limited to the current capabilities of the graphic editor. This
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`dependency exists because the graphical objects rely on the graphic editor 404 (a
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`component of the finished product) for screen drawing:
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`“VSE objects in accordance with the invention thus store
`behavior as well as graphics information. This behavior
`information may represent any possible graphics
`transformation of a graphics object, such as change of color,
`move, rotate, scale, stretch, fill, map, unmap, raise and lower.
`In other words, any transformation that the graphics editor
`can perform can be stored as a behavior state of the
`graphics object.” [Walton, 8:33-42, emphasis added]
`“The interface designer next creates and/or modifies the
`graphical objects in the drawing and behavior editor 110 as
`desired using the available functions of the graphics editor
`of the designer's computer system.” [Id., 8:50-53, emphasis
`added]
`“The drawing features of graphics editor 404 provide the
`basis for creating the graphical representation of an object.
`The overall look and shape of an object is created using these
`features.” [Id., 12:57-60, emphasis added]
`
`
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`23
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`
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`47. Furthermore, there was no motivation for Walton to invent external
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`shapes stored outside the computer program that contain external capabilities to
`
`which the production of their graphical image can be delegated because Walton
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`never discloses usage of its graphic objects beyond the VSE system. The graphical
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`objects of Walton are created, designed, modified and deployed in their finished
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`application all within the VSE system 400 because the VSE system 400 in which
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`they are created becomes the final product environment.
`
`“Because the VSE system 400 of the invention may be an
`integral part of the final product as well as a t