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
`
`PATENT OWNER’S RESPONSE UNDER 37 CFR § 42.120 TO
`PETITION FOR INTER PARTES REVIEW OF UNITED
`STATES PATENT NO. 5,959,633
`
`
`
`i
`
`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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`
`
`
`
`
`
`
`
`
`
`
` 
`
`

`
`EXHIBIT LIST
`
`Petitioners’ Exhibits
`Exhibit
`Description
`Number
`Google-1001 5,959,633 Patent McFarland, et al
`Google-1002 5,959,633 File History
`
`Google-1003 Lastra Declaration
`
`Google-1004 5,883,639 Patent (Walton, et al)
`
`Google-1005 5,564,048 Patent (Eick, et al)
`Inside Visual C 2nd Ed Version 1.5
`(Kruglinski)
`Google-1007 American Heritage Dictionary
`Google-1008 Preliminary Disclosure of Asserted Claims &
`Infringement Contentions
`Google-1009 Almeling Declaration In Support of Google's
`Motion for Pro Hac Vice Admission
`Second Declaration of David S. Almeling in
`Support of Petitioners’ Motion for Pro Hac
`Vice Admission
`
`Google-1006
`
`Google-1010
`
`
`Patent Owner’s Exhibits
`Description
`Exhibit Number
`Micrografx-2001 Lastra Declaration (NOT FILED)
`IPR2014-00532 Decision to Institute IPR
`Micrografx-2002
`8-12-14 (NOT FILED)
`Micrografx-2003 Annotated Figure 3 from Lastra
`Declaration
`Micrografx-2004 Transcript of the 11/6/2014 Deposition of
`Dr. Anselmo Lastra
`Micrografx-2005 Declaration of Garry Kitchen
`IEEE Authoritative Dictionary 7th Edition
`Micrografx-2006
`Micrografx-2007
`IBM Terminology Online Dictionary
`
`
`ii 
`
`Date submitted
`to PRPS
`03/24/14
`03/24/14 
`
`03/24/14 
`
`03/24/14 
`
`03/24/14 
`
`03/24/14 
`
`03/24/14 
`
`03/24/14
`
`09/19/14
`
`09/30/14
`
`Date submitted
`to PRPS
`
`
`
`
`11/21/14
`
`11/21/14
`
`11/21/14
`11/21/14
`11/21/14
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. AUTHORIZATION FOR PAYMENT OF FEES ............................................... 1
`III. SUMMARY OF THE ARGUMENT ............................................................... 1
`IV. BACKGROUND .............................................................................................. 3
`A. History of Micrografx ....................................................................................... 3
`B. The ’633 Patent Invention ................................................................................. 3
`V. ARGUMENT ....................................................................................................... 6
`A. Legal Standards ................................................................................................. 6
`B. Claim Construction of “external shape stored outside
`the computer program” ..................................................................................... 9
`C. The Petition Fails to Show Anticipation Under § 102 by Walton .................. 13
`1. Overview of Walton .................................................................................... 13
`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.” ........... 22
`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.” ...................................................................................................... 24
`D. The Petition Fails to Show Obviousness Under § 103 by Eick in view of
`Inside Visual C++ ........................................................................................... 34
`1. Overview of Eick ......................................................................................... 35
`2. Overview of Kruglinski ............................................................................... 42
`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. .......................................................................................... 44
`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. ........... 47
`VI. Conclusion ...................................................................................................... 56
`
`iii 
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Abbott Labs. v. Cordis Corp.
` 710 F.3d 1318 (Fed. Cir. 2013) ............................................................................. 8
`Idle Free Sys., Inc. v. Bergstrom, Inc.
` IPR2012-00027 (Paper 26 June 11, 2013) ............................................................. 9
`In re NTP, Inc.
` 654 F.3d 1279 (Fed. Cir. 2011) ........................................................................... 13
`In re Ochiai
` 71 F.3d 1565 (Fed. Cir. 1995) ............................................................................... 7
`In re Skvorecz
` 580 F.3d 1262 (Fed. Cir. 2009) ........................................................................... 10
`In re Suitco Surface, Inc.
` 603 F.3d 1255 (Fed. Cir. 2010) ........................................................................... 13
`In re Yamamoto
` 740 F.2d 1569 (Fed. Cir. 1984) ........................................................................... 10
`Int’l Flavors & Fragrances Inc. v. United States
` IPR 2013-00124 (Paper 12 May 20, 2014) .......................................................... 11
`Net MoneyIN, Inc. v. VeriSign, Inc.
` 545 F.3d 1359 (Fed. Cir. 2008) ............................................................................. 6
`Nichia Corp. v. Emcore Corp.
` IPR2012-00005 (Paper 68 Feb. 11, 2014) ............................................................. 9
`Phillips v. AWH Corp.
` 415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 8, 12
`Sanofi-Synthelabo v. Apotex, Inc.
` 470 F.3d 1368 (Fed. Cir. 2006) ............................................................................. 6
`Scripps Clinic & Research Found. v. Genentech, Inc.
` 927 F.2d 1565 (Fed. Cir. 1991) ............................................................................. 6
`
` 
`
`iv
`
`

`
`ZTE Corp. v. ContentGuard Holdings Inc.
` IPR 2013-00136 (Paper 33 Nov. 7, 2013) ............................................................. 9
`Statutes
`
`35 U.S.C. § 102 ......................................................................................................... 14
`35 U.S.C. § 103 ................................................................................................... 7, 36
`35 U.S.C. § 251 ........................................................................................................ 10
`35 U.S.C. §§ 311-319 ................................................................................................ 8
`Regulations
`
`37 C.F.R. § 42.100 ..................................................................................................... 7
`77 Fed. Reg. 48,764 (Aug. 14, 2012) ........................................................................ 8
`
`v 
`
`

`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Micrografx, LLC
`
`(hereafter “Patent Owner”) hereby
`
`respectfully submits this Response to the Petition seeking inter partes review in this
`
`matter. This filing is timely under the Parties’ Stipulation at Paper 14, as it is being
`
`filed by November 21, 2014.
`
`Petitioner has not shown by a preponderance of the evidence that any claim of
`
`U.S. Patent No. 5,959,633 (“the ’633 Patent”) is invalid based on the grounds for
`
`which trial was instituted.
`
`II. AUTHORIZATION FOR PAYMENT OF FEES
`The Board is authorized to charge any fees incurred by the Patent Owner in
`
`this Case IPR2014-00532 to Deposit Account No. 504592.
`
`III. SUMMARY OF THE ARGUMENT
`The challenged claims recite a computerized system comprising a computer
`
`program that is “operable to: access an external shape . . . , the external shape
`
`comprising external capabilities; and delegate the production of a graphical image of
`
`the external shape to the external capabilities.” With respect to Ground 1 based on
`
`asserted anticipation by Walton, Petitioners failed to show that Walton discloses
`
`external shapes with external capabilities and a computer program that delegates the
`
`production of a graphical image of the external shape to the external capabilities.
`
`Petitioners cannot show that a computer program can delegate the production of a
`1
`
`
`
`

`
`graphical image of an object within Walton’s Visual Software Engineering system to
`
`external capabilities within that object. Walton’s VSE system as a whole is needed to
`
`draw graphical images within the system, and Walton does not disclose that a user
`
`program can delegate any task to an object within the system.
`
`With respect to Ground 2 based on asserted obviousness over Eick in view of
`
`Kruglinski, Petitioners cannot show that the combination discloses external shapes.
`
`Eick discloses a C++ library that can be used to create classes with specific
`
`functionalities. Eick does not disclose that any of such classes or corresponding
`
`objects are external shapes because Eick does not disclose that the libraries are
`
`external to any computer program. Petitioners concede that Eick does not disclose
`
`that such classes are external to a computer program and rely on Kruglinski for the
`
`disclosure of external libraries. But one of ordinary skill in the art would not have
`
`been motivated to combine Eick with Kruglinski because Eick advocates providing
`
`specialized class definitions in a computer program application as opposed to the
`
`generic predefined DLLs taught by Kruglinski that Eick specifically criticizes. Even
`
`if one were motivated to combine Eick with Kruglinski, the resulting combination
`
`would only make Eick’s class libraries external and would not provide any drawing
`
`capability in the external class libraries because Eick teaches providing actual
`
`drawing capability in a computer program application not in class libraries.
`
`
`
`2
`
`

`
`Because Petitioners cannot carry their burden to show that the claims are
`
`unpatentable on either of the instituted grounds, Micrografx respectfully requests that
`
`the Board find that Petitioners have failed to meet their burden to show that the
`
`challenged claims are unpatentable on both grounds.
`
`IV. BACKGROUND
`A. History of Micrografx
`Micrografx was an early innovator in the field of computer graphics software.
`
`In the mid-1990s, it developed several software packages that offered new
`
`capabilities for graphics publishing. These products included Windows Draw, a
`
`family-oriented software package that enabled home users to create materials like
`
`invitations, flowcharts, and stationery, and QuickSilver and Designer, which
`
`provided web users and web developers with new interactive graphics capabilities.
`
`The ’633 patent at issue in this case relates to the interactive graphics capabilities
`
`invented by Micrografx and implemented by its Windows Draw product.
`
`The ’633 Patent Invention
`
`B.
`The ’633 patent, which was filed on October 4, 1996, describes a novel way of
`
`producing interactive shapes in a computer graphics program by providing external
`
`shapes that can be accessed by the program and in which the program can delegate
`
`the production of the shapes to themselves. Prior to the ’633 patent, it was difficult to
`
`add new shapes to a computer graphics program after it was released by the software
`
`developer. GOOGLE1001 at 1:14-22. One method for adding shapes was to provide
`3
`
`
`
`

`
`a table of data files, the data files containing information describing a shape. Id. at
`
`1:23-27. In such a system, however, the shape is created and edited with tools within
`
`the computer graphics program, which limits the capability to create and edit such
`
`new shapes to those already within the computer program. Id. at 1:27-34. If the
`
`software developer wished to provide new shapes to its users, it had to revise the
`
`computer program. Id. at 8:24-34.
`
`Micrografx invented a new way to add shapes to a computer graphics program
`
`without requiring modification of the computer program itself. Id. at 1:41-2:9.
`
`Micrografx’s new shapes are provided externally to the computer program and with
`
`external capabilities that allow the production of a graphical image based on those
`
`capabilities. Id. at 1:41-59. Because the capabilities are provided with the new
`
`external shapes, the editing and drawing of the new external shapes are not limited to
`
`capabilities pre-existing in the computer program. The architecture of the system is
`
`reflected in Figure 3A from the ’633 patent:
`
`
`
`4
`
`

`
`
`
`Figure 3A shows how the computer graphics application (computer program) 122
`
`contains its own internal actions and internal symbols and provides an external shape
`
`template with external action template and external symbol template to access an
`
`external shape library 124 with external capabilities.
`
`Additionally, new shapes may be added to the computer program without
`
`rewriting the code for the program. GOOGLE1001 at 1:60-62, 8:26-28. Also,
`
`providing shapes as external libraries means that third parties can create shapes for a
`
`computer program that are directed to specific markets. Id. at 1:62-63. Providing
`
`shapes as external libraries allows for more frequent and less expensive updates for
`
`
`
`5
`
`

`
`computer graphics packages. Id. at 1:66-2:1. Additionally, “the invention allows for
`
`the addition of shapes with capabilities not contemplated at the time the computer
`
`program was written.” Id. at 8:32-34.
`
`V. ARGUMENT
`A. Legal Standards
`A patent claim is anticipated if, and only if, all limitations can be found
`
`either expressly or inherently within a single prior art reference. Sanofi-Synthelabo
`
`v. Apotex, Inc., 470 F.3d 1368, 1375 (Fed. Cir. 2006). The prior art reference “must
`
`not only disclose all elements of the claim within the four corners of the document,
`
`but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN,
`
`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008) (internal citation
`
`omitted). “There must be no difference between the claimed invention and the
`
`reference disclosure, as viewed by a person of ordinary skill in the field of the
`
`invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565,
`
`1576 (Fed. Cir. 1991).
`
`To prove obviousness under 35 U.S.C. § 103, one must prove that “the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” When assessing a proposed obviousness rejection, the
`
`
`
`6
`
`

`
`Patent Office must make “a searching comparison of the claimed invention—
`
`including all its limitations—with the teachings of the prior art.” In re Ochiai, 71
`
`F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added).
`
`Patent Owner acknowledges 37 C.F.R. § 42.100(b), which states: “A claim
`
`in an unexpired patent shall be given its broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” Patent Owner objects to the
`
`use of the “broadest reasonable interpretation” standard for claim construction
`
`during this post-grant proceeding where there is parallel district court litigation in
`
`which the same terms will be subject to construction under a different standard.
`
`Patent Owner respectfully submits 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).
`
`The statute providing for Inter Partes Review does not provide a standard for
`
`claim construction in such proceedings. 35 U.S.C. §§ 311-319. The PTO justified
`
`its rule-making by asserting: “Since patent owners have the opportunity to amend
`
`their claims during IPR, PGR, and CBM trials, unlike in district court proceedings,
`
`they are able to resolve ambiguities and overbreadth through this interpretive
`
`approach . . . .” 77 Fed. Reg. 48,764 (Aug. 14, 2012). But the Federal Circuit
`
`itself has observed that IPR is different than examination: “The purpose of [the
`
`America Invents Act] was to ‘convert[] inter partes reexamination from an
`
`
`
`7
`
`

`
`examinational to an adjudicative proceeding,’ . . . .” Abbott Labs. v. Cordis Corp.,
`
`710 F.3d 1318, 1326 (Fed. Cir. 2013) (citing H.R. Rep. No. 112-98, pt. 1, at 46-47
`
`(2011)). The Board itself has also rejected the idea that patent owners have any
`
`broad opportunity to amend their claims during IPR: “An inter partes review is
`
`more adjudicatory than examinational, in nature. If a patent owner desires a
`
`complete remodeling of its claim structure according to a different strategy, it may
`
`do so in another type of proceeding before the Office.” Idle Free Sys., Inc. v.
`
`Bergstrom, Inc., IPR2012-00027, slip op. at 6 (Paper 26 June 11, 2013) (citation
`
`omitted); see also ZTE Corp. v. ContentGuard Holdings Inc., IPR 2013-00136, at
`
`3-4 (Paper 33 Nov. 7, 2013) (observing that amending an independent claim and
`
`preserving the dependent claims with that amendment was likely not feasible in
`
`view of the 15-page limit for motions to amend); Nichia Corp. v. Emcore Corp.,
`
`IPR2012-00005, at 55 (Paper 68 Feb. 11, 2014) (“An inter partes review is neither
`
`a patent examination proceeding nor a patent reexamination proceeding. The
`
`proposed substitute claims, in a motion to amend, are not entered automatically
`
`and then subjected to examination.”).
`
`The Board cannot justify using broadest reasonable construction as it does in
`
`other examination contexts based on the ability to amend and then so severely
`
`restrict the ability to amend that such an ability is merely illusory. “The [protocol
`
`of giving claims their broadest reasonable interpretation] is solely an examination
`
`
`
`8
`
`

`
`expedient, not a rule of claim construction.” In re Skvorecz, 580 F.3d 1262, 1267
`
`(Fed. Cir. 2009). Outside of examination where claims may be freely amended,
`
`broadest reasonable interpretation is improper. See In re Yamamoto, 740 F.2d
`
`1569, 1571-72 (Fed. Cir. 1984) (“The same policies warranting the PTO’s
`
`approach to claim interpretation when an original application is involved have been
`
`held applicable to reissue proceedings because the reissue provision, 35 U.S.C.
`
`§ 251, permits amendment of the claims to avoid prior art.”). As far as Patent
`
`Owner is aware, there is only a single Board decision permitting amendment in
`
`IPR, and in that case, the amendment was uncontested. Int’l Flavors &
`
`Fragrances Inc. v. United States, IPR 2013-00124, at 2, 19 (Paper 12 May 20,
`
`2014). Although Patent Owner contests the Board’s policy on claim amendments
`
`separately in its motion to amend, where the Board does not freely permit
`
`amendment of claims, the Board should be applying the same claim construction
`
`standard as is employed in district court litigation, which is more akin to the
`
`“adjudicatory” proceeding of IPR.
`
`B. Claim Construction of “external shape stored outside the
`computer program”
`
`Petitioners have proposed constructions for several claim limitations. The
`
`Board subsequently adopted constructions for those limitations. For purposes of
`
`this Preliminary Response, Patent Owner contends that regardless of the
`
`construction adopted for the previously-construed limitations, Petitioner cannot
`
`
`
`9
`
`

`
`show that any claim is anticipated or would have been obvious. Nevertheless,
`
`Patent Owner identifies one area where the Board’s construction departs from even
`
`the broadest reasonable construction and certainly from any narrower standard.
`
`In its Institution Decision, the Board construed “external shape stored
`
`outside the computer program” to mean “computer code stored outside the
`
`computer program that defines a graphical image.” Paper 11 at 9. Patent Owner
`
`contends that the Board’s construction is overly broad and is improperly divorced
`
`from the context of the specification of the ’633 patent. A more appropriate
`
`construction for “external shape stored outside the computer program” is
`
`“computer code stored outside the computer program that can be developed and
`
`provided for use by the computer program without modifying the computer
`
`program.”
`
`Claim construction analysis begins with the words of the claims. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Independent claims 1
`
`and 8 both recite that a computer program must be operable to “access an external
`
`shape stored outside the computer program, the external shape comprising external
`
`capabilities” and that the computer program must be operable to “delegate the
`
`production of a graphical image of the external shape to the external capabilities.”
`
`GOOGLE1001 at 8:48-53, 9:30-35. The claim language describes an external
`
`shape as being stored outside the computer program and possessing external
`
`
`
`10
`
`

`
`capabilities that are capable of producing a graphical image of the external shape.
`
`Thus, the claim language itself expressly requires an external shape that possesses
`
`its own graphical production capabilities.
`
`That requirement is an important aspect of the claimed invention disclosed
`
`in the ’633 patent. “The invention also provides an architecture that allows for the
`
`integration of additional shapes with an existing computer program without
`
`modifying that existing program.” GOOGLE1001 at 2:6-9 (emphases added); see
`
`also id. at 3:48-51 (“The invention also provides an architecture that allows for the
`
`integration of additional shapes with an existing computer program without
`
`modifying that existing program.” (emphases added)); id. at 8:24-28 (“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.” (emphasis added)). The
`
`specification explains that the capability of providing additional shapes to the
`
`computer program without modifying the computer program is a characteristic of
`
`the invention and that such a characteristic is part of the concept of making the
`
`shapes “external” to the computer program and requiring the shapes to include
`
`“external capabilities.” Kitchen Dec. (Exhibit 2005) at ¶¶ 26-32. The Board’s
`
`construction “cannot be divorced from the specification and the record evidence.”
`
`
`
`11
`
`

`
`In re NTP, Inc., 654 F.3d 1279, 1288-91 (Fed. Cir. 2011) (reversing the
`
`construction of “electronic mail message” based in part on the specification and
`
`expert testimony); In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)
`
`(reversing the construction of “material for finishing the top surface of the floor”
`
`based in part on language in the specification referring to the “present invention”).
`
`The Board’s construction ignores the “external capabilities” that must be a part of
`
`the “external shape” and the descriptions of the invention described in the
`
`specification. Kitchen Dec. (Exhibit 2005) at ¶ 29. Patent Owner’s additional
`
`requirement that the external shape “can be developed and provided for use by the
`
`computer program without modifying the computer program” captures both the
`
`express claim language and the descriptions of the invention in the specification.
`
`Petitioners do not address this aspect of the construction of “external shape.”
`
`Petitioners’ expert, despite opining that a construction much narrower than the
`
`Board’s construction was the “broadest reasonable construction” for the “external
`
`shape” limitation, was unable to offer an opinion as to whether his construction or
`
`the Board’s proposed construction was more correct at his deposition. Lastra Tr.
`
`(Exhibit 2004) at 9:21-12:5.
`
`
`
`12
`
`

`
`C. The Petition Fails to Show Anticipation Under § 102 by Walton
`Ground 1 of the Board’s Institution Decision is based on Petitioners’ assertion
`
`that claims 1-4, 6, 8-11, 13, and 15 (“challenged claims”) are anticipated under 35
`
`U.S.C. § 102(b) by U.S. Patent 5,883,639 (hereinafter, “Walton”). Paper 11 at 19.
`
`Walton does not anticipate any of the challenged claims 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. Each of the challenged claims requires that a computer program
`
`be operable to “access an external shape stored outside the computer program, the
`
`external shape comprising external capabilities” and to “delegate the production of a
`
`graphical image of the external shape to the external capabilities,” but Walton does
`
`not disclose external shapes with external capabilities that can produce a graphical
`
`image of the external shape. For this and the additional reasons stated below, Patent
`
`Owner respectfully requests that the Board find that Petitioners have not met their
`
`burden of showing that the challenged claims are unpatentable over Walton.
`
`1.
`
`Overview of Walton
`a) Walton discloses a self-contained VSE system.
`
`Walton discloses a Visual Software Engineering (“VSE”) system as follows:
`
`The present invention relates to a system for designing a
`prototype of a user interface to a product without actually having to
`build a hardware user interface. In particular, a custom graphics display
`
`
`
`13
`
`

`
`is developed in accordance with the invention so that operation of the
`prototype product may be viewed before the product is actually built.
`
`GOOGLE1004 at 7:62-67. Walton is not concerned with external shapes and does
`
`not disclose anything corresponding to external shapes. Kitchen Dec. (Exhibit 2005)
`
`at ¶¶ 33-34.
`
`As Petitioners’ expert, Dr. Lastra, conceded at his deposition:
`
`Q. Walton does not disclose the use of VSE objects in anything other
`than the VSE system, correct?
`A. I believe that’s true. The whole patent is about the VSE system.
`
`Lastra Tr. (Exhibit 2004) at 49:24-50:4; see also Kitchen Dec. (Exhibit 2005) at ¶ 34
`
`(“The graphical objects in Walton are not designed to be external shapes.”). Dr.
`
`Lastra further conceded that Walton does not disclose adding graphical objects to the
`
`VSE system without modifying user code:
`
`Q. Walton 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, correct?
`A. That’s not correct. He doesn’t say that directly, but if you look at the
`way the system works, for example, on column 8, lines 18 and 19,
`what the user code does is provide the behavior function name and
`the desired behavior state. [Dr. Lastra provides an example of
`creating a new graphical object that uses an existing behavior
`function.]
`
`Q. Walton doesn’t disclose the example that you just described, correct?
`
`
`
`14
`
`

`
`A. That’s correct.
`
`Lastra Tr. (Exhibit 2004) at 56:2-57:16 (emphasis added). Dr. Lastra also agreed that
`
`Walton does not disclose the creation of VSE objects other than with the graphics
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`editor:
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`Q. So I want to go back to my question, and my question is Walton
`doesn’t disclose the creation of any VSE objects other than with the
`graphics editor, correct?
`A. I think I answered your question, right? He says that graphics
`objects within the VSE system are created with the graphics editor.
`I was saying that also a person of ordinary skill in the art would
`know that you could just write the code.
`Q. But the last part of your answer is not what Walton discloses,
`correct?
`A. It’s not what Walton discloses, that’s right.
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`Lastra Tr. (Exhibit 2004) at 60:12-23 (emphasis added); see also Kitchen Dec.
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`(Exhibit 2005) at ¶¶ 34, 38-39, 46-54 (“[The graphical objects’] capabilities are
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`limited to what can be done inside the VSE environment as the shapes are directly
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`dependent on the built-in capabilities of the VSE graphic editor.”). Thus, Walton
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`does not disclose graphical objects that can be used with other than the VSE system,
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`VSE objects that can be used with the VSE system created by anything other than the
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`graphics editor, or adding graphical objects to the VSE system without modifying
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`user code. Kitchen Dec. (Exhibit 2005) at ¶¶ 34, 46-48 (“Walton does not teach a
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`
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`15
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`

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`method to expand those capabilities through external capabilities brought in as part of
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`an external shape.”).
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`Instead, Walton explains how objects are created in the VSE system using the
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`capabilities of the VSE system, not provided externally:
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`The invention of Fig. 3 is particularly characterized by an
`animator 340 which allows the user to define by example what input
`and output behavior states a graphical object should have. As will be
`described in more detail below, this is accomplished by storing the
`corresponding input and output behavior and display states with the
`graphics object and then selectively recalling this information for
`display on display 330 as an indication of what output change will result
`for a particular change in the input to the interface. . . . In addition, the
`behavior states of the graphical objects created by the graphics editor
`310 may also be linked to user source code 360 such that the source
`code 360 can manipulate the states of the graphical objects.
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`GOOGLE1004 at 9:22-40. Walton further describes the order of development of the
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`components of a VSE system as follows:
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`Thus, in accordance with the VSE system 400 of the invention,
`the following steps may be taken in system development: the graphics
`for creating an interface to an object are created and then input and
`output behavior are added (as by clicks on mouse buttons). The object is
`then tested and saved. The user then creates the desired application
`code and runs the application which calls upon particular objects.
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`16
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`Id. at 25:62-26:2 (emphasis added); see also Kitchen Dec. (Exhibit 2005) at ¶ 42.
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`Walton expressly discloses creation of the object first using the VSE system,
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`followed by creation of the user code to interface with those VSE objects through the
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`VSE system.
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`b) Walton discloses that the VSE system as a whole
`produces graphical images.
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`Walton explains that it is the graphics editor of the VSE system that always
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`manages the drawing of graphical objects in the VSE system:
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`The graphics editor 404 creates the graphics for an object, but
`generally that is all. Once created, the graphical object is responsible for
`controlling itself, and the graphics editor 404 simply makes requests of
`the graphical object. During operation, the graphics editor 404 queries
`the universe 420 to determine what object it is dealing with (i.e., what
`graphical object is selected), and then asks the object itself what
`requests are legal. . . .
`The graphics editor 404 in a preferred embodiment of the
`invention manages two types of files, a graphical file and a design file.
`The graphical file is created to store the graphical representations of
`objects for displaying or printing the appearance of those objects, while
`the design file contains the information the graphical file does along
`with descriptions of object relationships and object behavior functions.
`In other words, the graphical file stores pictures of objects, while the
`design file stores the appearance and behavior of objects.
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`17
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`GOOGLE1004 at 11:7-30 (emphasis added); see also Kitchen Dec. (Exhibit 2005) at
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`¶¶ 33-44. Walton makes clear that even in the end product, the graphics editor of the
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`VSE system controls the drawing of graphical images:
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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. Edit mode is a
`mode in which the graphics editor 404 app