In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a motion to amend claims. The court determined that any errors in claim construction were harmless, and that substantial evidence supported the PTAB’s findings of anticipation.
In Micrografx I, the challenged patent related to a system of generating graphical images for use in computer programs. The PTAB determined that all challenged claims were anticipated by Walton, a patent directed to a computer Visual Software Engineering (VSE) system. The court determined that the PTAB erred in construing the claim term “an external shape stored outside the computer program,” as “computer code stored outside the computer program that defines a graphical image.” In view of the patent specification and prosecution history, the proper construction should also have indicated that the computer code “can be developed and provided for use by the computer program without modifying the computer program.” However, the court determined that this was harmless error, because Walton disclosed the claimed subject matter under the proper construction, including the requirement, “without modifying the computer program.”
The court also determined that the PTAB did not err in denying the Patent Owner’s motion to amend claims, because the Patent Owner failed to satisfy its burden to show that the proposed amended claims were patentable. The court noted that its decision would not be affected by the outcome of In re Aqua Products (discussed here), which is being heard en banc by the court to address the burden of proof concerning claim amendments, because the “overwhelming evidence in the record” supporting the PTAB’s finding of unpatentability of the amended claims.
In Micrografx II, the challenged patents related to methods for creating interactive graphics for delivery over the Internet. The PTAB determined that all challenged claims were anticipated by Pesce, a manual that describes the use of Virtual Reality Modeling Language (VRML). On appeal, the Patent Owner argued that the PTAB made several errors, including relying in its decision on originally-issued claim language for one of the patents, rather than claim language that the USPTO corrected in a certificate of correction before the IPR petitions had been filed. The court determined that the PTAB did refer to incorrect claim language in its decision, but that this error was harmless because the record as a whole indicated that the PTAB actually addressed the correct claim language, and that substantial evidence supports the PTAB’s determination that the challenged claims were anticipated.
These cases illustrate the difficulty in obtaining a reversal of PTAB final written decisions: even though Micrografx identified errors in the decisions, the court nonetheless affirmed based on its determination that all errors were “harmless.”