Micrografx, LLC v. Google Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

MICROGRAFX, LLC,

Appellant

v.

GOOGLE INC., SAMSUNG ELECTRONICS

AMERICA, INC., SAMSUNG ELECTRONICS CO.,

LTD.,

Appellees

_____________________

2015-2090

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2014-

00532.

______________________

Decided: November 29, 2016

______________________

DOUGLAS R. WILSON, Heim, Payne & Chorush, LLP,

Houston, TX, argued for appellant. Also represented by

ROBERT ALLAN BULLWINKEL, MICHAEL F. HEIM.

DAVID S. ALMELING, O’Melveny & Myers LLP, San

Francisco, CA, argued for appellees. Also represented by

MARK LIANG, DARIN W. SNYDER; MISHIMA ALAM, Washing-

ton, DC; SUSAN ROEDER, Menlo Park, CA; MICHAEL

2 MICROGRAFX, LLC v. GOOGLE INC.

TIMOTHY HAWKINS, Fish & Richardson P.C., Minneapolis,

MN.

______________________

Before NEWMAN, DYK, and TARANTO, Circuit Judges.

DYK, Circuit Judge.

Micrografx, LLC (“Micrografx”) appeals a decision by

the Patent Trial and Appeal Board (“Board”). The Board

held that claims 1–4, 6, 8–11, 13, and 15 of U.S. Patent

No. 5,959,633 (“’633 patent”) were anticipated by U.S.

Patent No. 5,883,639 (“Walton”). Micrografx also appeals

the Board’s denial of Micrografx’s motion for leave to

amend. Because we find that any error in the Board’s

claim construction is harmless, and substantial evidence

supports the Board’s findings of anticipation, we affirm.

BACKGROUND

Micrografx owns the ’633 patent, which is directed

towards a method and system of generating graphical

images for use in a computer program. ’633 patent, col. 1

ll. 5–8, 41–59. The patent teaches “a method for produc-

ing graphical images [that] includes executing a computer

program and providing a shape library external to the

computer program . . . [where t]he shape library defines a

shape having associated capabilities.” Id. col. 1 ll. 43–46.

Because of this external shape library that defines shapes

with associated capabilities, the invention purports to

overcome a limitation in the prior art that once a comput-

er program was released, the only shapes that could be

added were those “that the internal tools in the computer

program [already] kn[ew] how to create and edit.” Id. col.

1 ll. 32–34. Thus, “[t]he invention . . . allows for the

integration of additional shapes with an existing comput-

er program without modifying that existing program.” Id.

col. 2 ll. 6–9. Claim 1 is representative.

A computerized system comprising:

MICROGRAFX, LLC v. GOOGLE INC. 3

a storage medium;

a processor coupled to the storage medi-

um;

a computer program stored in the storage

medium, the computer program operable

to run on the processor, the computer pro-

gram further operable to:

access an external shape stored

outside the computer program, the

external shape comprising exter-

nal capabilities; and

delegate the production of a graph-

ical image of the external shape to

the external capabilities.

’633 patent, col. 8 ll. 53–53.

On March 24, 2014, Google Inc., Samsung Electronics

America, Inc., and Samsung Electronics Co., Ltd., (collec-

tively “Google”), filed a petition for inter partes review of

the ’633 patent. In its petition, Google asserted that

claims 1–4, 6, 8–11, 13, and 15 were anticipated by Wal-

ton.

Walton teaches a computer Visual Software Engineer-

ing (“VSE”) system “for designing a prototype of a user

interface to a product . . . [with] a custom graphics dis-

play.” Walton, col. 7 ll. 62–65. It further provides a

“method of creating and animating graphical objects by

directly manipulating the graphical objects on a display

screen.” Id. col. 5 ll. 23–25. As such, “[a]ll graphical

objects that are created in accordance with [Walton] can

be stored in a library and reused. They can also be re-

trieved from the library, changed or customized . . . and

then stored in the library as a new component.” Id. col. 4

ll. 25–29. Walton also allows the user to define a “behav-

ior function (graphics manipulation) such that when a

4 MICROGRAFX, LLC v. GOOGLE INC.

value change occurs (a behavior event), the [graphical

object] can change its graphical representation and up-

date itself on the display.” Id. col. 13 ll. 26–30. Walton’s

graphical objects thus “store [both] behavior as well as

graphics information.” Id. col. 8 ll. 33–34.

On July 21, 2015, in its final written decision the

Board construed the claim limitation “an external shape

stored outside the computer program” as “computer code

stored outside the computer program that defines a

graphical image.” J.A. 12. The Board also construed

“delegate” in the limitation “the computer program fur-

ther operable to . . . delegate the production of a graphical

image of the external shape to the external capabilities”

as “to commit or entrust to another.” J.A. 12. Based on

this construction and expert testimony in the record, the

Board found by a preponderance of the evidence that

Walton anticipates the relevant claims of the ’633 patent.

On November 21, 2014, Micrografx filed a motion for

leave to amend proposing to add new claims 29 and 30,

which would append “using an external shape template”

to the “delegation” limitations of claims 1 and 8 in the

’633 patent. The Board construed this new limitation to

mean “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.” J.A. 30. Google ar-

gued that even with this addition the claims would have

been obvious over the combination of Walton and other

prior art references directed to software templates, includ-

ing the textbook The C++ Programming Language, Sec-

ond Edition, by Bjarne Stroustrup (“Stroustrup”), who

created C++. In denying leave to amend, the Board found

that Micrografx had failed to show that the proposed

amended claims were patentable over the prior art of

record, including, for instance, the combination of the

Walton and Stroustrup references.

MICROGRAFX, LLC v. GOOGLE INC. 5

Micrografx appeals. We have jurisdiction pursuant to

28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal conclusions de novo and

review the Board’s factual findings for substantial evi-

dence. 5 U.S.C. § 706(2); In re Montgomery, 677 F.3d

1375, 1379 (Fed. Cir. 2012). On issues of claim construc-

tion, we review the Board’s subsidiary factual determina-

tions concerning extrinsic evidence for substantial

evidence and ultimate claim construction de novo. In re

Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir.

2015); see also Teva Pharm. U.S.A., Inc. v. Sandoz, Inc.,

135 S. Ct. 831, 841–42 (2015). Since the intrinsic record

in this case resolves the claim construction question, our

review is de novo. See Microsoft Corp. v. Proxyconn, Inc.,

789 F.3d 1292, 1297 (Fed. Cir. 2015). In construing claim

terms, the Board adopts the “broadest reasonable con-

struction in light of the specification in which” the terms

appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC

v. Lee, 136 S. Ct. 2131. 2144–45 (2016). Anticipation is a

question of fact reviewed for substantial evidence. In re

Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).

I

First, Micrografx challenges the Board’s construction

of the limitation “an external shape stored outside the

computer program,” found in each of the claims. The

Board construed this limitation to mean “computer code

stored outside the computer program that defines a

graphical image.” J.A. 12. Micrografx asserts that the

proper construction is “computer code stored outside the

computer program that defines a graphical image and

that can be developed and provided for use by the com-

puter program without modifying the computer program.”

Micrografx Br. 22. The question here is whether the

claims require that the image be developed and provided

“without modifying the computer program.”

6 MICROGRAFX, LLC v. GOOGLE INC.

The specification identifies “several technical ad-

vantages” of the “invention.” ’633 patent, col. 1 ll. 60; see

Phillips v. AWH Corp., 415 F.3d 1303, 1315–17 (Fed. Cir.

2005) (noting importance of the specification for claim

construction). Most importantly, it states that “[n]ew

shapes may be added easily without rewriting the under-

lying computer program” and that “[t]he invention also

provides an architecture that allows for the integration of

additional shapes with an existing computer program

without modifying the existing program.” ’633 patent, col.

1 ll. 60–62, col. 2 ll. 7–9. In other words, the specification

describes the invention as allowing the integration of

these “new” or “additional” shapes—external shapes—

without modification of the underlying computer program.

See Phillips, 415 F.3d at 1315–17.

The prosecution history also supports this under-

standing. See SAS Inst., Inc. v. ComplementSoft, LLC,

825 F.3d 1341, 1349 (Fed. Cir. 2016); Phillips, 415 F.3d at

1317. During initial examination, the patent examiner

rejected the claims as obvious in light of a prior art refer-

ence, the book Developing Visio Solutions (“Visio”). Visio

discloses a system using a table of data files stored out-

side the computer program and containing information

describing different shapes that can be accessed when a

particular shape is desired. The examiner concluded that

Visio “suggests the external shape outside the computer

program as claimed.” J.A. 268. The patentee responded

that Visio “is limited to editing and creating shapes in

ways permitted by the tools within the computer program.

Thus, although shapes may be added [to the table of data

files] after the release of the computer program . . ., the

shapes that may be added are limited to shapes that the

internal tools in the computer program know[] how to

create and edit.” J.A. 283. Thus, Micrografx distin-

guished the ’633 invention over the prior art because in

the prior art it was necessary to modify the computer

program to add newly developed shapes.

MICROGRAFX, LLC v. GOOGLE INC. 7

Given the claim language, the specification, and the

prosecution history, the Board erred in its claim construc-

tion. The proper claim construction of “an external shape

stored outside the computer program” is “computer code

stored outside the computer program that defines a

graphical image and that can be developed and provided

for use by the computer program without modifying the

computer program.”

Google argues that the Board’s claim construction

amounted to harmless error. We agree. The harmless

error rule applies to appeals from the Board. See, e.g., In

re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). To be

sure, the Board’s finding of anticipation was predicated on

its construction of the “external shape stored outside the

computer program” limitation, and the Board did not

address anticipation using the correct construction. But

Walton unquestionably discloses this limitation and

therefore anticipates.

The only issue here is whether the graphical objects of

Walton “can be developed and provided for use by the

computer program without modifying the computer

program.” The dispute centers on the last part of this

limitation—“without modifying the computer program.”

From Walton’s specification, it is clear that new graphical

objects can be added without modifying the user code—

Walton’s “computer program.” In Walton, when new

graphical objects are created, they “are stored as objects

in an object-oriented database system and connected to

other objects or user code,” i.e., “provided for use,” “in

accordance with techniques commonly used in object-

oriented systems.” Walton, col. 8 ll. 54–63. Walton

further discloses that a graphical object “consists of two

major parts, [a] graphic element and the behavior ele-

ment,” and neither is defined by the computer program—

instead, the appearance and behavior of a graphical object

are defined in a “graphics editor,” and the behaviors are

8 MICROGRAFX, LLC v. GOOGLE INC.

“register[ed]” with a “behavior router.” See id. col. 10 ll.

36–47, col. 13 ll. 15–17, col. 13 ll.63–65.

Thus, a graphical object may be “developed and pro-

vided for use” without ever modifying Walton’s computer

program. Testimony from Google’s expert confirms this

point; according to the expert, “[a] person of ordinary skill

in the art would have recognized that [Walton’s] VSE

system certainly provided the ability to swap in newly

created graphical objects in place of pre-existing graphical

objects for use with existing user source code.” J.A. 1109

(emphasis added). When Google relied on that testimony

to argue harmlessness in this court, Micrografx had no

response. Walton discloses the “external shape stored

outside the computer program” limitation.

II

Second, Micrografx challenges the Board’s finding

that Walton discloses the limitation a “computer program

further operable to . . . delegate the production of a graph-

ical image of the external shape to the external capabili-

ties” in the challenged claims of the ’633 patent. The

Board construed “delegate” to mean “to commit or entrust

to another” and this construction is not challenged on

appeal. J.A. 12. Micrografx argues that the Board’s

finding is not supported by substantial evidence because

the Board did not properly apply this construction when it

failed to sufficiently address whether the user code of

Walton, the analog to the ’633 patent’s computer program,

actually does the delegating.

We find that substantial evidence supports the

Board’s finding. In its decision, the Board pointed to

passages from Walton’s specification and expert testimo-

ny evidencing that Walton “delegat[es] the production of a

graphical image of the external shape to the external

capabilities.” J.A. 23. For example, “Walton . . . discloses

that these external graphical objects can be ‘accessed by

the user code 120’ by connecting to a client server via an

MICROGRAFX, LLC v. GOOGLE INC. 9

interprocess communications mechanism of a type known

to those skilled in the art.’” J.A. 342. Walton’s specifica-

tion further provides that “when a value change occurs (a

behavior event), the VSE object can change its graphical

representation and update itself on the display.” Walton,

col. 13 ll. 27–30. It is also “the application [user code]

which calls upon particular objects.” Id. col 26 ll. 1–2. As

the expert testimony cited by the Board notes, “the sys-

tem of Walton delegates the production of a graphical

image to the behavior elements (external capabilities) of a

graphical object (external shape) to allow ‘a graphical

object [to] . . . be able to draw itself if asked to do so.’”

J.A. 341; see J.A. 22. Thus, it is clear from the Board’s

analysis and the evidence in the record that, contrary to

Micrografx’s assertion, the user code of Walton delegates

to the behavior elements of a graphical object and thereby

discloses the “delegation” limitation. The Board’s conclu-

sion that Walton discloses a “computer program further

operable to . . . delegate the production of a graphical

image of the external shape to the external capabilities” is

supported by substantial evidence.

III

Third, Micrografx argues that the Board erred in

denying leave to amend. We disagree.

Micrografx sought to amend claims 1 and 8 by adding

“using an external shape template” to the end of the

limitation, “delegate the production of a graphical image

of the external shape to the external capabilities.” The

Board construed “external shape template” to mean “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 capa-

bilities of the external shape.” J.A. 30. In other words,

the invention’s computer program is able to delegate the

production of an external shape by using a template or

preset format. This template provides the format for how

10 MICROGRAFX, LLC v. GOOGLE INC.

the computer program accesses the capabilities of the

external shape for the purpose of drawing the graphical

image.

Under this construction, the Board found that the

proposed claims would have been obvious over the prior

art of record, including, for instance, the combination of

Walton and Stroustrup. Stroustrup is a textbook on the

C++ programming language and includes an entire chap-

ter on the use of templates. These C++ templates “allow

generic functions . . . to be defined once for a family of

types” and enable the composition of “code from semi-

independent parts.” J.A. 1248. The Board found that a

person of ordinary skill in the art would have applied

Stroustrup’s teaching of C++ templates to Walton to

achieve the described advantages.

Micrografx challenges the Board’s construction of its

proposed additional claim limitation, “using an external

shape template,” arguing that it ignores the generic

nature of an external shape template as described in the

specification. Micrografx contends that the proper con-

struction is a “generic interface for accessing capabilities

of an external shape.” That construction is not supported

by the claim language or the specification. The claim

language does not state that the template is generic. The

’633 specification describes the external shape template

as “compris[ing] pointers to shapes contained within

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,” ’633 patent, col.

4 ll. 63–67, and as “compris[ing] an external action tem-

plate 332 and an external symbol template 334,” id. col. 4

ll. 49–50. In other words, the external shape template

provides the mechanism by which the computer program,

and the graphics application in particular, accesses exter-

nal shapes from the shape library. But nowhere does the

specification describe the external shape template as a

“generic interface.” Moreover, while Micrografx did argue

MICROGRAFX, LLC v. GOOGLE INC. 11

for its “generic interface” construction before the Board, it

also stated more generally that “the word template when

used in the context in which it is used in the claim means

a preset format, pattern, or model,” language that the

Board adopted. Google Inc. v. Micrografx, LLC, IPR2014-

00532, Paper 21 at 5 (P.T.A.B. Nov. 24, 2014). The Board

did not err in its construction of “external shape tem-

plate.”

Micrografx also argues that there was no motivation

to combine the Walton and Stroustrup references. Specif-

ically, Micrografx asserts that “one of skill in the art

would have no motivation to combine teachings from a

general purpose programming language focused on sys-

tems programming with a visual software engineering

system focused on graphics programming.” Micrografx

Br. 47–48. We disagree. Walton’s system can be imple-

mented in a computer programming language such as

C++. Walton also contemplates linking “the behavior

states of the graphical objects . . . to [the] user source

code.” Walton, col. 9 ll. 36–38. Stroustrup teaches the

use of C++ templates, such as defining a template func-

tion for a family of types and composing code from inde-

pendent parts. A person of ordinary skill in the art could

implement this teaching from Stroustrup to link the

behavior states and the user source code in Walton. The

combination of this teaching and Walton would allow the

user source code to access these behavior states of the

graphical objects.

Google’s expert testified that “a person of ordinary

skill in the art would have sought out Stroustrup’s pro-

gramming manual and readily applied its teachings to the

system of Walton to achieve the[se] . . . benefits.” J.A.

1130. The undisputed evidence in the record shows that a

skilled artisan would have recognized that the combina-

tion of Walton and the teachings regarding C++ templates

in Stroustroup would yield the claimed invention and

would have combined the two. This amply supports the

12 MICROGRAFX, LLC v. GOOGLE INC.

Board’s finding that “a person of ordinary skill in the art

would have applied the teachings of the Stroustrup man-

ual regarding templates to Walton’s VSE system.” J.A.

37.

We note the pendency of en banc review by this court

in In re Aqua Products, Inc. on whether “the PTO [may]

require the patent owner to bear the burden of persua-

sion, or the burden of production, regarding patentability

of the amended claims” in a motion to amend. 833 F.3d

1335, 1336 (Fed. Cir. 2016) (Mem.). However, the deci-

sion would have no impact on the outcome in this case.

To the extent Micrografx challenges the Board’s claim

construction of its proposed claims, we resolve the ques-

tion on the intrinsic record and our review is de novo. See

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297

(Fed. Cir. 2015). To the extent Micrografx challenges the

evidence supporting the Board’s finding of unpatentability

of its proposed claims, the overwhelming evidence in the

record supports the Board’s finding, even if Google carried

the burden of production and the burden of persuasion to

show unpatentability. The Board did not abuse its discre-

tion by denying Micrografx motion to amend.

CONCLUSION

We reverse the Board’s claim construction of the “ex-

ternal shape” limitation, affirm the Board’s finding of

anticipation by Walton of claims 1–4, 6, 8–11, 13, and 15

of the ’633 patent, and affirm the Board’s denial of Micro-

grafx’s motion for leave to amend.

AFFIRMED