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NOTE: This disposition is nonprecedential.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