Google Inc.v.Micrografx, LLC

Patent Trial and Appeal Board

Jul 21, 2015

08726091 (P.T.A.B. Jul. 21, 2015)

Trials@uspto.gov Paper 40
571-272-7822 Filed: July 21, 2015

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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I. INTRODUCTION
Google Inc., Samsung Electronics America, Inc., and Samsung
Electronics Co., Ltd. (collectively, “Petitioner”) filed a Petition (Paper 5,
“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 Eick
2
and Kruglinski
3
. Paper 11
(“Inst. Dec.”), 19.
After institution of trial, Micrografx, LLC (“Patent Owner”), deposed
Petitioner’s declarant, Dr. Lastra, and filed a Patent Owner Response (Paper
22, “PO Resp.”), a transcript of Dr. Lastra’s deposition (Ex. 2004), and a
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
Reply to the Patent Owner Response (Paper 37, “Pet. Reply”), a transcript of
Mr. Kitchen’s deposition (Ex. 1012), and a Second Declaration of Dr. Lastra
(Ex. 1011). Petitioner also filed an Opposition to the Motion to Amend

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
32, “Reply Mot.”).
Patent Owner deposed Dr. Lastra a second time and filed a transcript
of the second deposition (Ex. 2008). Patent Owner also filed a Motion for
Observations regarding Cross-Examination of Dr. Lastra (Paper 35), to
which Petitioner then filed a Response (Paper 37).
An oral hearing was held on May 18, 2015. The transcript of the oral
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
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-
ications America, LLC, No. 3:13-cv-03599-N (N.D. Tex.), involve the ’633
Patent. Pet. 2; Amended Mandatory Notices of the Patent Owner pursuant
to 37 C.F.R. § 42.8, 2 (Paper 9).
B. The ’633 Patent (Ex. 1001)
The ’633 Patent, titled “Method and System for Producing Graphical
Images,” issued on September 28, 1999, from U.S. Patent Application No.
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08/726,091, which was filed on October 4, 1996. Ex. 1001, at [54], [45],
[21], [22].
The ’633 Patent Specification describes a system for producing
graphical images. Ex. 1001, 1:51–54. Included in the system is a computer
program “operable to access an external shape stored outside the computer
program.” Id. at 1:54–56. As described, “[t]he external shape has external
capabilities.” Id. at 1:56. “Capabilities are action methods, symbol
methods, or any other functions that allow the generation of information
required to produce a graphical image.” Id. at 3:29–31.
In an embodiment, external shape library 124 contains information
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
“[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
library comprises shape collection modules 212 and 214. Id. at 3:52–54. In
one embodiment, the shape collection modules “comprise a dynamic link
library (DLL) that allows executable routines to be stored separately as files
with DLL extensions and to be loaded only when needed by the program
that calls them.” Id. at 3:54–57.
Figure 3A of the ’633 Patent is reproduced below.
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Figure 3A is a schematic of computer application 122 and its
interaction with external shape library 124 in block diagram form. Ex. 1001,
4:54–56. As depicted in Figure 3A, computer graphics application 122
comprises internal shapes 310 and 320 and external shape template 330. Id.
at 4:57–59. “Internal shapes 310 and 320 each comprise information used
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–
63. In contrast, “[e]xternal shape template 330 comprises pointers to shapes
contained within [external] shape library 124, which are used by computer
graphics application 122 to produce graphical images that are not supported
by internal shapes 310 or 320.” Id. at 4:63–67. External shape library 124
comprises a plurality of shape collection modules, each of which contains a
plurality of external shapes. Id. at 5:31–35.
C. Illustrative Claim
Claims 1 and 8 are independent. Claims 2–4 and 6 depend directly or
indirectly from claim 1, and claims 9–11, 13, and 15 depend directly or
indirectly from claim 8. Claim 1, which is reproduced below, is illustrative:
1. A computerized system comprising:
a storage medium;
a processor coupled to the storage medium;
a computer program stored in the storage
medium, the computer program operable to run on
the processor, the computer program further
operable to:
access an external shape stored outside the
computer program, the external shape comprising
external capabilities; and
delegate the production of a graphical image
of the external shape to the external capabilities.
D. The Instituted Grounds
We instituted an inter partes review on the following grounds (Inst.
Dec. 19):

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Reference(s) Basis Claims Challenged
Walton § 102
1–4, 6, 8–11, 13, and
15
Eick and Kruglinski § 103
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
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Technologies, LLC, No. 2014-1301, 2015 WL 4097949, at *7–*8
(Fed. Cir. July 8, 2015) (“We conclude that Congress implicitly approved
the broadest reasonable interpretation standard in enacting the AIA” and
“the standard was properly adopted by PTO regulation.”). Under the
broadest reasonable interpretation standard, and absent any special
definitions, claim terms are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Further, “the specification and prosecution history only compel
departure from the plain meaning in two instances: lexicography and
disavowal.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Ent. Am. LLC, 669
F.3d 1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and
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
be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
1. “An external shape stored outside the computer
program, the external shape comprising
external capabilities”
Claims 1 and 8 each recite “an external shape stored outside the
computer program, the external shape comprising external capabilities”
(emphasis added). In the Institution Decision, we determined that the
broadest reasonable interpretation consistent with the Specification of “an
external shape stored outside the computer program” is computer code
stored outside the computer program that defines a graphical image. Inst.
Dec. 9. We also determined, based on an express definition set forth in the
’633 Patent Specification, that “external capabilities” means computer code
stored outside a computer program, comprising action methods, symbol
methods, or any other functions, that allow the generation of information
required to produce a graphical image. Id.; see Ex. 1001, 3:29–31
(“Capabilities are action methods, symbol methods, or any other functions
that allow the generation of information required to produce a graphical
image.”).
Neither party proposes any change to our interpretation of “external
capabilities,” but Patent Owner argues that our initial interpretation of “an
external shape stored outside the computer program” is “overly broad” and
“improperly divorced from the context of the specification of the ’633
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patent.” PO Resp. 10.
4
Patent Owner proposes to add the words “that can
be developed and provided for use by the computer program without
modifying the computer program”
5
to our interpretation of “an external
shape stored outside the computer program.” Id.; Tr. 30–31. Patent Owner
relies on passages from the ’633 Patent Specification, such as the following,
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,
8:24–28). Patent Owner argues that these passages “explain[] that the

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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capability of providing additional shapes to the computer program without
modifying the computer program is a characteristic of the invention.” Id.
(emphasis added).
We are not persuaded by Patent Owner that the advantage of
integrating additional shapes with an existing computer program without
modifying that existing program, as described in the Specification, is
uniquely attributable to use of external shapes stored outside the computer
program. See Pet. Reply 2. The passages from the Specification cited by
Patent Owner attribute the touted advantage to “an architecture” or “a
system,” rather than to external shapes stored outside the computer program.
See PO Resp. 11 (quoting Ex. 1001, 2:6–9, 3:48–51, 8:24–28). The
Specification also appears to attribute the touted advantage to “[t]he ability
to place the capabilities of a shape outside [the computer program].” Ex.
1001, 3:33–35 (emphasis added). As used in the Specification and recited in
the claims, “capabilities” and “shape” are distinct terms. See, e.g., id. at
1:45–46 (“The shape library defines a shape having associated
capabilities.”), 3:18–51 (describing a computer program “operable to access
generic capabilities associated with an external shape and delegate the
production of a graphical image of the external shape to the capabilities
associated with the shape”). The Specification additionally appears to
attribute the touted advantage to use of “shape collection modules” that are
separate from the computer program. Id. at 4:5–10. Accordingly, we do not
agree that the Specification requires adding “that can be developed and
provided for use by the computer program without modifying the computer
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program” to our initial interpretation of “an external shape stored outside the
computer program.” See PO Resp. 10; Tr. 30–31.
In the Institution Decision, we observed that the Specification uses the
term “shape” in different ways. Inst. Dec. 8. In a narrow sense, the
Specification describes “external shape 350” as comprising plurality of
external actions 352, 353, external symbol 354, and external resources 356.
Ex. 1001, 5:37–39; 6:1–7:38, Fig. 3A. As described, the external actions
and the external symbol are executable to produce a graphical image. See id.
at 6:1–12, 7:12–17, 8:14–23. In a broader sense, the Specification uses the
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
template 330 does not comprise a predetermined set of actions and a
symbol,” but rather “comprises pointers to shapes contained within shape
library 124.” Id. at 5:43–44, 4:63–64. With the exception of external shape
template 330, which is stored inside the computer program (see, e.g., id. at
Fig. 3A), the Specification uses the term “external” to refer to computer
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
program). We determine that our initial claim interpretation—that “an
external shape stored outside the computer program” means a graphical
image stored outside the computer program that is defined by computer
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code—is the broadest reasonable interpretation consistent with the
Specification.
We, therefore, maintain our initial claim interpretation, set forth in the
Institution Decision, that “an external shape stored outside the computer
program” is computer code stored outside the computer program that defines
a graphical image.
2. “Delegate”
Claims 1 and 8 each recite “the computer program further operable to
. . . delegate the production of a graphical image of the external shape to the
external capabilities.” In the Institution Decision, we determined that the
broadest reasonable interpretation consistent with the specification of
“delegate” is to commit or entrust to another. Inst. Dec. 10. Neither party
proposes any change to that interpretation. Based on the record adduced
during trial, we see no reason to modify or further address the above
construction.
3. “External action” and “external symbol”
Claims 2–4 and 9–11 require “an external shape stored outside the
computer program, the external shape comprising an external action and an
external symbol.” In the Institution Decision, we determined that the
broadest reasonable interpretation consistent with the Specification of
“external action” is executable computer code stored outside the computer
program, and that the broadest reasonable interpretation consistent with the
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–
11. Neither party proposes any change to that interpretation. Based on the
record adduced during trial, we see no reason to modify or further address
the above constructions.
B. Asserted Anticipation by Walton
Petitioner challenges claims 1–4, 6, 8–11, 13, and 15 of the ’633
Patent as anticipated by Walton. Pet. 11–14, 20–39. To anticipate a patent
claim under 35 U.S.C. § 102, “a single prior art reference must expressly or
inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group,
Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The evidentiary standard in this
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,
the arguments in the Patent Owner Response, and the evidence of record, we
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
anticipated by Walton.
1. Overview of Walton
Walton discloses an object-oriented system for creating user
interfaces, termed the “Visual Software Engineering (VSE)” system, that
defines both input to and output from graphical objects. Ex. 1004, Abstract,
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.
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
draw itself if asked to do so and to indicate that it has been selected.” Id. at
13:19–22. Walton also discloses that objects can be stored in an object-
oriented database system and accessed via a client server for use in a
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
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.”

Pet. 24 (quoting Ex. 1004, 8:54–62).
Walton’s graphical objects, according to Petitioner, “have external
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
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).
Further, with respect to the limitation “the computer program further
operable to . . . delegate the production of a graphical image of the external
shape to the external capabilities,” Petitioner asserts that “Walton further
discloses that the production of the graphical object is delegated to the
external capabilities of an object in that ‘the graphical object is responsible
for controlling itself.’” Pet. 27 (quoting Ex. 1004, 11:8–9). Petitioner
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.”
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
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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
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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
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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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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
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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 requirement
6
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 methods,
or any other functions, that allow the generation of information required to
produce a graphical image. See supra section II.A.1.
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Even though Walton describes the graphics editor and
view objects of the VSE system as being involved in displaying
graphic images in certain contexts, it is the graphical objects
that store the particular behavior functions which define
specific graphical images and how they are to be drawn. See
[Ex. 1004, 8:16–21, 9:4–8, 17:50–58, 18:15–17.] When a
graphical object is called by the user source code using the
behavior state name of the graphical object, the graphical
objects control how the graphical images are actually drawn.
Id.
Ex. 1011 ¶¶ 25, 26. Dr. Lastra’s rebuttal testimony is consistent with
Walton’s disclosure. See, e.g., Ex. 1004, 8:17–21 (“[T]he user software may
be used to access the graphical object, and by providing the behavior
function name and the desired behavior state, the graphical object may be
manipulated on the display screen directly from user application code.”)
b. “[T]he computer program further operable to . . .
delegate the production of a graphical image of
the external shape to the external capabilities
We are persuaded by Petitioner that Walton also discloses “the
computer program further operable to . . . delegate the production of a
graphical image of the external shape to the external capabilities,” required
by each of claims 1 and 8. See Pet. 27; Ex. 1003 ¶ 47; Ex. 1004, 11:8–9,
13:19–21, 26–40. We credit Dr. Lastra’s testimony on this point, including
his analysis of Walton’s disclosure that “a graphical object in accordance
with the invention must be able to draw itself if asked to do so.” See Ex.
1003 ¶ 47; Ex. 1004, 13:19–21. We are not persuaded by Patent Owner’s
contention (see PO Resp. 32), or Mr. Kitchen’s testimony (see Ex. 2005
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¶¶ 49–51), that Walton’s graphical objects really do not draw themselves.
Rather, we credit Dr. Lastra’s opinion that “a person of ordinary skill in the
art at the time would have recognized the opposite to be true.” Ex. 1011
¶ 31. In support of that opinion, Dr. Lastra persuasively testifies as follows:
In particular, Mr. Kitchen contends that Walton’s disclosure
that a graphical object “must be able to draw itself” is really
referring to objects “graphically react[ing] in some way when
selected.” Ex. 2005 at ¶¶ 49–50. However, the cited portion of
Walton clearly discloses two separate functions of an object
drawing itself and an object indicating that it has been selected
in that a “graphical object in accordance with the invention
must be able to draw itself if asked to do so and to indicate it
has been selected.” [Ex. 1004, 13:19–22 (emphasis added).]
Id. We also credit, as consistent with Walton’s disclosure, Dr. Lastra’s
testimony, set forth below, that Walton contains other passages that disclose
delegating the production of a graphical image of the external shape to the
external capabilities:
Walton reveals numerous different descriptions of Walton’s
shapes having the ability to draw themselves. See [Ex. 1004,
13:26–30] (“when a value change occurs (a behavior event), the
VSE object can change its graphical representation and update
itself on the display” i.e., redraw itself) (emphasis added); 8:33–
37 (“behavior information [of a graphical object] may represent
any possible graphics transformation of a graphics object.”);
23:50–51 (“[t]he universe 420 then tells the gray box to draw
itself.”) (emphasis added); 12:43–45 (“refreshes the screen so
that all objects . . . are told to redraw themselves.”) (emphasis
added); 25:67–26:2 (“The user then creates the desired
application code and runs the application which calls upon
particular objects.”) (emphasis added); 9:34–42.
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Id.
For the reasons given, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 1 and 8 of the ’633 Patent are
unpatentable as anticipated by Walton.
5. Analysis—Claims 2–4, 6, 9–11, 13,
and 15 as Anticipated by Walton
Patent Owner argues the patentability of dependent claims 2–4, 6, 9–
11, 13, and 15 based only on their dependency from independent claims 1
and 8. See PO Resp. 22, 25, 34. Accordingly, below, we discuss only the
contentions and evidence of Petitioner in regard to the dependent claims.
Claims 2 and 9 each recite that “the computer program is further
operable to: access an external shape stored outside the computer program,
the external shape comprising an external action and an external symbol; and
delegate the production of [the] graphical image of the external shape to the
external action and the external symbol.” Under our claim interpretation,
discussed above, “an external action” is executable computer code stored
outside the computer program, and “an external symbol” is computer code
stored outside the computer program that is associated with a graphical
image. See supra section II.A.3. In connection with claims 2 and 9,
Petitioner contends that Walton discloses accessing external shapes in the
form of graphical objects, each external shape comprising an external
symbol (graphic element) and an external action (behavior element). Pet.
27–30 (citing Ex. 1003 ¶¶ 55–61). Petitioner further contends that “Walton
discloses delegating the production of [the] graphical image of the external
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shape to the external action and the external symbol.” Id. at 30–32 (citing
Ex. 1003 ¶¶ 62–66).
For the reasons discussed above in connection with claims 1 and 8,
and based on Petitioner’s additional argument and evidence relating
specifically to claims 2 and 9, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 2 and 9 are unpatentable as
anticipated by Walton.
Claims 3 and 10 depend from claims 2 and 9, respectively. Claims 3
and 10 each recite that “the computer program is further operable to:
[1] receive user input in a manner defined by the external action; and
[2] manipulate the graphical image in response to the user input in a manner
defined by the external symbol.” Petitioner has identified where each
feature of claims 3 and 10 may be found in Walton. See Pet. 32–35; Ex.
1003 ¶¶ 67–72.
For the reasons discussed above in connection with claims 1, 2, 8, and
9, and based on Petitioner’s additional argument and evidence relating
specifically to claims 3 and 10, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 3 and 10 are unpatentable as
anticipated by Walton.
Claims 4 and 11 depend from claims 2 and 9, respectively. Claims 4
and 11 each recite that “the external action comprises a plurality of external
methods and external data.” Petitioner has identified where each feature of
claims 4 and 11 may be found in Walton. See Pet. 35–36; see, e.g., Ex. 1003
¶ 74 (quoting Ex. 1004, 9:40–42) (“Walton discloses that the external action
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methods and data are accessed by user code from a stored location and that
they define multiple functions and data in that ‘the user may access the
stored behavior function and values for both input and output.’”).
For the reasons discussed above in connection with claims 1, 2, 8, and
9, and based on Petitioner’s additional argument and evidence relating
specifically to claims 4 and 11, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 4 and 11 are unpatentable as
anticipated by Walton.
Claims 6 and 13 depend from claims 2 and 9, respectively. Claims 6
and 13 each recite that “the external symbol comprises a plurality of external
methods and external data.” Petitioner has identified where each feature of
claims 6 and 13 may be found in Walton. See Pet. 36–37. Further, with
respect to claim 6, Dr. Lastra testifies:
[A] POSITA would have recognized that the Walton patent
discloses that the external symbol comprises a plurality of
external methods and external data. For example, Walton
discloses that graphical objects are saved as multiple files, each
file including information for rendering the object, including
graphical files (external data) and design files (external
methods).

Ex. 1003 ¶ 75 (citing Ex. 1004, 11:23–30).
For the reasons discussed above in connection with claims 1, 2, 8, and
9, and based on Petitioner’s additional argument and evidence relating
specifically to claims 6 and 13, we conclude that Petitioner has shown, by a
preponderance of the evidence, that claims 6 and 13 are unpatentable as
anticipated by Walton.
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Claim 15 depends from claim 8 and recites that “the external
capabilities comprise a plurality of external methods and external data.”
Similar to claims 4 and 11, Petitioner has identified where each feature of
claim 15 may be found in Walton. See Pet. 35–39; Ex. 1003 ¶¶ 83–86.
For the reasons discussed above in connection with claim 8, and based
on Petitioner’s additional argument and evidence relating specifically to
claim 15, we conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 15 is unpatentable as anticipated by Walton.
6. Conclusion
For the reasons given above, we 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 anticipated by Walton.
C. Remaining Ground of Unpatentability
Based on the finding of anticipation by Walton of claims 1–4, 6, 8–11,
13, and 15, it is not necessary to reach the ground of obviousness of those
claims over Eick and Kruglinski.
D. Motion to Amend
1. Introduction
Patent Owner’s Motion to Amend seeks to substitute new claims 29
and 30 for original claims 1 and 8, respectively. Mot. 1. For the reasons
discussed below, Patent Owner’s Motion to Amend is denied.
Patent Owner’s proposed new claims are set forth below, with
underlining to show language added to the original claims:
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29. A computerized system comprising:
a storage medium;
a processor coupled to the storage medium;
a computer program stored in the storage medium, the
computer program
operable to run on the processor, the computer program
further operable to:
access an external shape stored outside the computer
program, the external shape comprising external capabilities;
and
delegate the production of a graphical image of the
external shape to the external capabilities using an external
shape template.

30. A computer program encoded on a computer-
readable medium, the computer program operable to:
access an external shape stored outside the computer
program, the external shape comprising external capabilities,
and
delegate the production of a graphical image of the
external shape to the external capabilities using an external
shape template.

Mot. 1–2. Patent Owner asserts that the newly-added feature “using an
external shape template” finds support in the description of external shape
template 330 set forth in the original specification. Id. at 3 (citing Ex. 1002,
30:4–9; Ex. 2005 ¶ 91).
2. Claim Construction
Patent Owner contends that an “external shape template” is a “generic
interface for accessing capabilities of an external shape.” Mot. 4. Patent
Owner argues that “the word template when used in the context in which it
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29
is used in the claim means a preset format, pattern, or model”; and further
argues that “[w]hen used in the context of accessing external capabilities,
one of ordinary skill in the art would interpret the external shape template
disclosed in the ’633 patent to be a type of a generic interface.” Id. at 5
(citing Ex. 1002, 28:25–29:2; Ex. 2005 ¶¶ 92–94; Ex. 2006
7
; Ex. 2007
8
.
Patent Owner additionally argues that the description of external shape
template 330 in the original specification, as comprising pointers to shapes
in shape library 124, would mean to one of ordinary skill in the art that
external shape template 330 is an interface that is generic in the sense that it
is not specific to a particular shape or shape type. Id. at 5–6 (citing Ex.
1002, 28:25–29:2).
In opposition to Patent Owner’s construction, Petitioner argues that
Patent Owner “offers two definitions of the word ‘template’ published long
after the filing date of the ’633 patent, and then later ignores these two
definitions altogether.” Opp. Mot. 4 (citing Mot. 5). Petitioner asserts that
“the ’633 patent uses the term ‘external shape template’ in a manner that is
consistent with its traditional plain meaning—‘one or more pointers to an
external shape,’ especially when construed under the broadest reasonable
interpretation [standard].” Id. at 5 (citing Ex. 1011 ¶ 44).

7
IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
1161 (7th ed. 2000).
8
IBM Terminology, http://www-01.ibm.com/software/globalization/
terminology/t.html (last accessed Nov. 21, 2014).
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Patent Owner counters that the Specification supports its proposed
claim construction. Reply Mot. 1–2. Patent Owner asserts that external
action template 332 and external symbol template 334, of external shape
template 330, “reference external action methods and external symbol
methods, which are ‘generic action methods’ and ‘generic symbol methods,’
respectively.” Id. at 1 (citing Ex. 1001, 5:55–61, 6:1–6, 6:19–39, 7:11–14,
7:17–37). Patent Owner further asserts that, as described in the
Specification, the generic action methods and generic symbol methods “are
not specific to any one shape” (id. at 1 (citing Ex. 1001, 6:28–29, 7:22–23)),
but rather each is “a queryable interface” (id. at 1-2 (citing Ex. 1001, 6:66–
7:10, 7:38–46)).
We determine that the broadest reasonable interpretation consistent
with the Specification of an “external shape template” is a template (i.e., a
preset format, pattern, or model) by which a computer program can access
an external shape stored outside the computer program, to utilize the
capabilities of the external shape. See Ex. 1001, 5:42–54. We do not adopt
Patent Owner’s proposed construction at least because it does not capture
sufficiently the meaning of “template.” We do not adopt Petitioner’s
proposed construction for essentially the same reason.
3. Patentability over the Prior Art
In bringing a motion to amend, as the moving party, the patent owner
“has the burden of proof to establish that it is entitled to the requested
relief.” See 37 C.F.R. § 42.20(c). As explained in Idle Free Sys., Inc. v.
Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013)
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(Paper 26, “Idle Free”) (informative), § 42.20(c) “places the burden on the
patent owner to show a patentable distinction of each proposed substitute
claim over the prior art.” In that regard, there are several important
requirements for a patent owner’s motion to amend claims:
A patent owner should identify specifically the feature or
features added to each substitute claim, as compared to the
challenged claim it replaces, and come forward with technical
facts and reasoning about those feature(s), including
construction of new claim terms, sufficient to persuade the
Board that the proposed substitute claim is patentable over the
prior art of record, and over prior art not of record but known
to the patent owner. The burden is not on the petitioner to show
unpatentability, but on the patent owner to show patentable
distinction over the prior art of record and also prior art known
to the patent owner. Some representation should be made about
the specific technical disclosure of the closest prior art known
to the patent owner, and not just a conclusory remark that no
prior art known to the patent owner renders obvious the
proposed substitute claims.

Id. (emphasis added). While not required to prove that the claims are
patentable over every item of prior art known to a person of ordinary skill,
the patent owner is required to explain why the claims are patentable over
the prior art of record. Id.; see Microsoft Corp. v. Proxyconn, Inc., Nos.
2014-1542, 2014-1543, 2015 WL 3747257, at *13 (Fed. Cir. June 16, 2015)
(affirming the Board’s denial of a motion to amend claims where the patent
owner failed to establish the patentability of the substitute claims over the
prior art of record).
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The petitioner then has the opportunity, in its opposition, to argue any
deficiency in the patent owner’s motion and “come forward with specific
evidence and reasoning, including citation and submission of any applicable
prior art and reliance on declaration testimony of technical experts, to rebut
the patent owner’s position on patentability.” Idle Free, slip op. at 8.
We note the following with respect to Patent Owner’s Motion to
Amend in this case.
On November 13, 2014, we conducted a telephone conference with
counsel for the parties with regard to Patent Owner’s then-contemplated
motion to amend claims. On November 14, 2014, we filed an Order (Paper
20) summarizing the conference and providing guidance with respect to
Patent Owner’s contemplated motion.
Patent Owner filed its Motion to Amend (Paper 21) on November 21,
2014. Petitioner filed its Opposition to Patent Owner’s Motion to Amend
(Paper 26) on February 13, 2015. On the same date, Petitioner filed Exhibits
numbered 1011–21, including Dr. Lastra’s Second Declaration (Ex. 1011)
and The C++ Programming Language, Second Edition (1991) by Bjarne
Stroustrup (“the Stroustrup manual,” Ex. 1014).
On March 27, 2015, Patent Owner cross-examined Dr. Lastra on his
Second Declaration. On April 1, 2015, Patent Owner filed its Reply in
Support of Motion to Amend (Paper 32) and a copy of the transcript of Dr.
Lastra’s March 27, 2015 deposition (Ex. 2008). On April 3, 2015, Patent
Owner filed a Motion for Observations Regarding Cross-Examination of Dr.
Lastra (Paper 35).
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In its Motion to Amend, Patent Owner argues that proposed new
claims 29 and 30 are patentable over the prior art on which we instituted
inter partes review. Mot. 6. Patent Owner argues, for example, that
“neither [Walton] nor [Eick] discloses the use of an external shape template
in accessing what Petitioners assert are external shapes in those references.”
Id. at 7 (citing Ex. 2005 ¶ 97). Patent Owner also asserts: “As far as Patent
Owner is aware, Walton and Eick apparently represent the closest art.” Id.
at 9 (citing Ex. 2005 ¶ 96). Patent Owner additionally asserts that its
“expert, Mr. Kitchen, opines that the claims as a whole are novel and
nonobvious over the state of the art at the time of filing the application that
issued as the ’633 patent in October 1996 to the best of his knowledge.” Id.
at 9–10 (citing Ex. 2005 ¶¶ 96–99). Patent Owner contends, furthermore,
that “[t]he governing statute [35 U.S.C. § 316(d)] and rule for amendment
[37 C.F.R. § 42.121] do not place the burden of showing patentability (i.e.,
proving that the claims are not invalid) on Patent Owner.” Id. at 10.
In opposition, Petitioner argues, inter alia, that Patent Owner’s
Motion to Amend fails to include any discussion of the ordinary skill in the
art with respect to use of templates, even though Patent Owner’s declarant,
Mr. Kitchen, “was well aware of the use of templates in the mid-1990’s.”
Opp. Mot. 3–4 (citing Ex. 1012, 71:25–72:23). Petitioner asserts, moreover,
that “use of templates for accessing code objects/classes was well known not
just in the field of object-oriented programming, but specifically in the field
of computer graphics programming long before the priority date of the ‘633
patent.” Id. at 9 (citing Ex. 1011 ¶ 48).
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As additional evidence that use of templates was known in the prior
art, Petitioner directs us to the Stroustrup manual, which is a prior art
programming manual authored by Bjarne Stroustrup, the creator of the C++
programming language. Opp. Mot. 10 (citing Ex. 1011 ¶ 48). Petitioner
asserts that the Stroustrup manual includes an entire chapter devoted to use
of templates in C++. Id. (citing Ex. 1014, 255–92). With supporting
testimony from Dr. Lastra, Petitioner argues that a person of ordinary skill
would have been motivated, by the advantages of templates as taught in the
Stroustrup manual, to apply the teachings of the Stroustrup manual regarding
templates to Walton’s VSE system, discussed above. Id. at 10–11 (citing
Ex. 1011 ¶ 48). For example, Petitioner argues that “a POSITA would have
been prompted to apply Stroustrup’s teachings regarding templates to the
VSE system taught by Walton to provide ‘a powerful model for composition
of code from separate parts’ and to ‘allow generic functions . . . to be
defined once for a family of types’ as suggested by Stroustrup.” Id. at 11
(citing Ex. 1014, 276, 255; Ex. 1011 ¶ 48). Petitioner further argues that
Patent Owner’s “newly added language in claims 29–30 recites nothing
more than a traditional C++ feature described in standard textbooks.” Id.
(citing Ex. 1011 ¶ 48).
Petitioner additionally argues that “even a cursory search of the patent
database . . . would have revealed numerous references indicating that the
technique of using a ‘template’ of ‘pointers’ to call code objects/classes was
well known in the field of object-oriented programming.” Opp. Mot. 12. As
examples, Petitioner directs us to the following: U.S. Patent No. 5,999,987
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to O’Farrell et al., issued December 7, 1999 (Ex. 1015); U.S. Patent No.
5,923,877 to Berner et al., issued July 13, 1999 (Ex. 1016); PCT Publication
WO/1996/008765 A1 to Foody et al., published March 21, 1996 (Ex. 1017);
and U.S. Patent No. 4,622,633 to Ceccon et al., issued November 11, 1986
(Ex. 1018). Id. at 12–13.
In reply, Patent Owner argues that “Petitioners’ resort to other
references that simply teach software templates completely divorced from
the context of the claimed invention cannot cure the deficiency in the cited
art.” Reply Mot. 1. Patent Owner also argues:
Petitioners cite a series of references as disclosing the use
of “templates in computer graphics programming.” . . . But
Petitioners cannot show that the amended claims as a whole
would have been obvious in combination with Walton or Eick,
which are the only references that Petitioners assert disclose
external shapes.
Walton’s objects are managed by Walton’s system as has
been well-established in Patent Owner’s filings. . . . Walton
does not disclose or suggest providing any kind of direct access
to its objects to outside user code. . . . Such direct access would
fundamentally change the design of Walton’s system because it
would circumvent the VSE routing systems. The only thing
that suggests such a design is impermissible hindsight.

Id. at 4–5 (internal citations omitted).
We determine that Patent Owner has not met its burden to show
patentable distinction over the prior art of record in this case. The prior art
of record includes the references adduced by Petitioner in opposition to the
Motion to Amend, such as the Stroustrup manual, as well as the prior art on
which we instituted inter partes review. See Idle Free, slip op. at 8.
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Patent Owner has failed to come forward with sufficient technical
facts and reasoning about the newly-added feature to persuade us that the
proposed substitute claims are patentable over the prior art of record, of
which Walton and the Stroustrup manual are representative. See Idle Free,
slip op. at 7. Patent Owner argues that Walton does not disclose or suggest
providing any kind of direct access between its objects and outside user
code. Reply Mot. 5. Implicit in Patent Owner’s argument is that “using an
external shape template” in Walton’s system would result in such direct
access. The argument that Walton does not suggest using any kind of direct
access between Walton’s objects and outside user code is undercut,
however, by 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. Patent Owner further argues that “[s]uch direct access would
fundamentally change the design of Walton’s system because it would
circumvent the VSE routing systems” (Reply Mot. 5), but Patent Owner has
not provided technical facts and reasoning to persuade us that using an
external shape template in Walton’s system would have been beyond the
skill in the art, or yielded unpredictable results. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). As such,
Patent Owner’s argument is unpersuasive.
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Patent Owner has not come forward with evidence to rebut Dr.
Lastra’s testimony with regard to prior art use of templates. See Ex.
1011¶ 48. Dr. Lastra testifies that “the use of templates was well known in
the field of object-oriented programming long before the filing of the ‘633
patent.” Id. Dr. Lastra further testifies: “In fact, the C++ programming
manual written by Bjarne Stroustrup (the widely famous creator of C++)
covers in detail how to use such templates in C++ programs.” Id. (citing Ex.
1014, 255–92).
Further, Patent Owner has not proffered evidence to rebut Dr. Lastra’s
testimony that a person of ordinary skill in the art would have applied the
teachings of the Stroustrup manual regarding templates to Walton’s VSE
system. Dr. Lastra testifies that “[t]he Stroustrup reference enumerates
several advantages to using templates including that templates provide ‘a
powerful model for composition of code from separate parts’ and ‘allow
generic functions . . . to be defined once for a family of types.’” Id. (citing
Ex. 1014, 276, 255). Dr. Lastra further testifies:
Based upon my review of Walton and Stroustrup, I believe that
a person of ordinary skill in the art would have sought out
Stroustrup’s programming manual and readily applied its
teachings to the system of Walton to achieve the above recited
benefits, and also because it is a fundamental textbook on C++
programming written by the creator of the language. A person
of ordinary skill would have been able to readily apply the
teachings of Stroustrup to the system of Walton to achieve
predictable and beneficial results.
Id.
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Patent Owner’s Motion for Observations Regarding Cross-
Examination (Paper 35) does not direct us to any cross-examination of Dr.
Lastra challenging the above testimony. Further, we have located no such
cross-examination in our review of the March 27, 2015 deposition transcript
(Ex. 2008). Accordingly, Dr. Lastra’s testimony, as set forth above, is
unchallenged in this proceeding.
Patent Owner argues that only hindsight suggests using an external
shape template in Walton’s system. Reply Mot. 5. Missing from Patent
Owner’s argument, however, is any analysis of the Stroustrup manual.
Patent Owner has not rebutted Petitioner’s evidence that the Stroustrup
manual teaches advantages arising from use of templates in C++
programming that would have been applicable to Walton’s system, and that,
by following the teachings of the manual, a person of ordinary skill in the art
predictably would have modified Walton’s system to achieve the known
advantages. Opp. Mot. 10–11 (citing Ex. 1011 ¶ 48). Patent Owner also has
not provided technical facts or reasoning about the newly-added feature to
rebut Petitioner’s argument that it is “nothing more than a traditional C++
feature described in standard textbooks.” Id. at 11 (citing Ex. 1011 ¶ 48).
In view of the above, Patent Owner’s Motion to Amend is denied. Pate4ntfffffffff
III. CONCLUSION
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
anticipated by Walton.
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Patent Owner has not met its burden of proof in its Motion to Amend.
IV. ORDER
In view of the foregoing, it is hereby:
ORDERED that claims 1–4, 6, 8–11, 13, and 15 of U.S. Patent No.
5,959,633 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied; and
FURTHER ORDERED that this is a final written decision and that
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

John Phillips
phillips@fr.com

Michael Hawkins
Hawkins@fr.com

For PATENT OWNER

Douglas Wilson
dwilson@hpcllp.com

Michael Heim
mheim@hpcllp.com

Nathan Davis
ndavis@hpcllp.com