Micrografx, LLC v. Google Inc.

• Decision Date: 29 November 2016
• Docket Number: 2015-2090
• Parties: MICROGRAFX, LLC, Appellant v. GOOGLE INC., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD., Appellees
• Court: U.S. Court of Appeals — Federal Circuit

MICROGRAFX, LLC, Appellant v. GOOGLE INC., SAMSUNG ELECTRONICS AMERICA, INC.,SAMSUNG ELECTRONICS CO., LTD., Appellees

2015-2090

United States Court of Appeals for the Federal Circuit

November 29, 2016

NOTE: This disposition is nonprecedential.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-00532.

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, Washington, DC; SUSAN ROEDER, Menlo Park, CA; MICHAEL 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 producing 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 computer 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 computer program without modifying that existing program." Id. col. 2 ll. 6-9. Claim 1 is representative.

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.

'633 patent, col. 8 ll. 53-53.

On March 24, 2014, Google Inc., Samsung Electronics America, Inc., and Samsung Electronics Co., Ltd., (collectively "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 Walton.

Walton teaches a computer Visual Software Engineering ("VSE") system "for designing a prototype of a user interface to a product . . . [with] a custom graphics display." 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 retrieved 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 "behavior function (graphics manipulation) such that when a value change occurs (a behavior event), the [graphical object] can change its graphical representation and update 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 further 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 argued 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, including the textbook The C++ Programming Language, Second 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 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 evidence. 5 U.S.C. § 706(2); In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). On issues of claim construction, we review the Board's subsidiary factual determinations 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 construction 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 computer 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."

The specification identifies "several technical advantages" 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 underlying 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 understanding. 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 reference, the book Developing Visio Solutions ("Visio"). Visio discloses a system using a table of data files stored outside 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 distinguished 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.

Given the claim language, the specification, and the prosecution history, the Board erred in its claim construction. 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...