2005 (Ne) 10040, Appeal Case of Seeking an Injunction against Patent Infringement (Court ofprior instance: Tokyo District Court; 2004 (Wa) 16732) (Date of conclusion of oral argument:
July 15, 2005)
Judgment
Appellant: JustSystems CorporationCounsel attorney: FUKUSHIMA Eiichi
Same as above: SUGA Hiroshi
Same as above: NAGATA Sanae
Same as above: OMUKAI Naoko
Patent attorney as an assistant in court: KIMURA Mitsuru
Same as above: ISHII YuichiroSame as above: AMAMIYA Yasuhito
Appellee: Matsushita Electric Industrial Co., Ltd.
Counsel attorney: OHNO Seiji
Same as above: ICHIHASHI TomomineCounsel patent attorney: TANAKA Hisako
Main Text
The judgment in prior instance shall be revoked.
All of the claims of the appellee shall be dismissed.
The appellee shall bear the court costs for the first instance and the second
instance.
Facts and reasonsNo. 1 Judicial decision sought by the parties
1. Appellant
The same as the main text of this judgment.
2. Appellee(1) This appeal shall be dismissed.
(2) The appellant shall bear the cost of appeal.
No. 2 Outline of the case
1. Summary of the case(1) This case may be summarized as follows. The appellant has been engaged in
manufacturing, assigning, etc., or offering for assignment, etc., the products (Productnames: "Ichitaro" and "Hanako"; hereinafter collectively referred to as the "appellant's
product") listed on attached Product List A and attached Product List B (the same as the1

Product Lists attached to the judgment in prior instance). The appellee argues that said actof the appellant should be regarded to fall under Article 101, items (ii) and (iv) of the Patent
Act and constitute infringement of the appellee's patent right. Based on Article 100 of the
Patent Act, the appellee sought an injunction against said act of the appellant and demanded
the disposal of the appellant's product.
(2) Said patent right of the appellee (hereinafter referred to as the "Patent Right") is Patent
No. 2803236 (Patent application date: October 31, 1989, Registration date: July 17, 1998,
hereinafter referred to as the "Patent"). As described in the description related to the Patent
Right (hereinafter referred to as the "Description"; Please refer to the attached patent gazette(hereinafter referred to as the "Gazette")), the invention is entitled "Information processing
device and information processing method."
The invention in question was made to solve the following problem: "For a bettermachine interface, in order to give a functional description […] about the Window System,(which has been adopted by many) […] information processing devices equipped with apointing device such as a mouse, it was common to create a function description key andgive a description about all of the functions of the device when the function description key
is pressed or to let the user enter a keyword after activating a function description
application. […] By this (conventional) method, however, the user cannot receive thefunction description service if he/she cannot remember or come up with a keyword" (on line
2 to line 13 of Section 3 of the Gazette). This is an invention of an information processing
device and information processing method that has a configuration consisting of the means
to solve this problem and that is designed to provide functional description. The claims are
as follows.
[Claim 1] An information processing device characterized by having (i) a display means todisplay on the display screen the first icon, which triggers the execution of the function of
displaying a functional description of an icon, and the second icon, which triggers theexecution of the predetermined information processing function, (ii) a designation means todesignate an icon displayed on the display screen of said display means, and (iii) a control
means to display a functional description of the second icon on the display screen of said
display means in response to the designation of the second icon subsequent to thedesignation of the first icon by said designation means.
[Claim 2] The information processing device described in Claim 1, which is characterized
by the process where if the second icon is not designated by said designation means
immediately after the designation of the first icon, said control means executes thepredetermined information processing function of said second icon.
[Claim 3] An information processing method that is designed to control a device equipped2with a data input device and data display device and that is characterized by the method
where the first icon is displayed on the display screen, which then triggers the execution of
the function of displaying a functional description, and the second icon, which triggers theexecution of the predetermined information processing function, triggers, in response to thedesignation of the second icon subsequent to the designation of the first icon, the display of
a functional description of said second icon on the display screen.
(The invention described in [Claim 1] is hereinafter referred to as "Invention 1," theinvention described in [Claim 2] as "Invention 2," and the invention described in [Claim 3]
as "Invention 3"; these inventions are hereinafter collectively referred to as the "Invention")(3) The appellant's product consists of a software program for document preparation(Japanese word processor software, "Ichitaro") and a software program for graphic creation(comprehensive graphic software, "Hanako") as specified in attached Product Lists A and B.
The users who purchased the appellant's product, which was produced and sold by theappellant, can use the product by installing it onto a computer.
In the "Product Name" section of attached Product Lists A and B, the products are
simply specified as "Ichitaro" and "Hanako." In light of the entire import of the oral
argument, it is interpreted that the appellee intends to have this lawsuit cover all of the
products that have the product names containing the word "Ichitaro" or "Hanako":
regardless of the version, that have the function specified in the "Function" section of said
lists.
(4) The judgment in prior instance states that the computer onto which an appellant's
product has been installed and the use thereof fulfill all of the constituent features of theInvention and therefore fall within the technical scope thereof, and that, while said act of theappellant constitutes infringement, i.e., indirect infringement under Article 101, items (ii)and (iv) of the Patent Act (hereinafter referred to as "indirect infringement"), it is notreasonable to conclude that the lack of inventive step in the Invention clearly provides
grounds for invalidation. In conclusion, the court of prior instance determined that, since theappellee's claims based on the Patent Right may not be regarded as an abuse of right, all of
the appellee's claims are acceptable. Dissatisfied, the appellant filed this appeal.
(5) In this court, the appellant has disputed the fulfillment of the constituent features and theestablishment of indirect infringement, and also presented, based on the newly submitted
publications, additional grounds for invalidation of the Patent due to the lack of novelty or
inventive step of the Invention, and, by pointing out the grounds for invalidation due to thelack of inventive step as it had alleged in the prior instance, claimed that restrictions shouldbe imposed on the exercise of the right based on Article 104-3, paragraph (1) of the Patent
Act (the appellant has withdrawn the claim for an abuse of right that it had presented in the3

prior instance). In response, the appellee has claimed that the appellant's additional
allegations and evidence newly submitted to this court with regard to the fulfillment of theconstituent features and the grounds for invalidation of the Patent should be dismissed forbeing made outside the appropriate time.
2. Undisputed facts, etc.
Since this section is the same as the content of 1 of "No. 2 Outline of the case" in the "Facts
and Reasons" section of the judgment in prior instance, we cite it for this section. We
hereinafter use the abbreviations used in the judgment in prior instance.
3. Issues(1) Whether the computer onto which the appellant's product has been installed and the use
thereof fulfills the constituent features (Issue 1);(2) Whether indirect infringement specified in Article 101, items (ii) and (iv) of the Patent
Act has been established (Issue 2);(3) Whether the Patent Right shall not be exercised because the Patent may be found invalid
by a patent invalidation trial (Issue 3);(4) Whether the additional allegations and evidence submitted by the appellant to this court
should be dismissed for being made outside the appropriate time (Issue 4).
4. Allegations of the parties concerning the issues
As described in 5 and 6 below, additional allegations were submitted to this court. Other
than those, this section is the same as the content of "No. 3 Allegations of the parties
concerning the issues" in the "Facts and Reasons" section of the judgment in prior instance.
Therefore, we cite it for this section (after replacing "(abuse of right)" on line 12 of page 10of the judgment in prior instance with "(restrictions on the exercise of the Patent Right),"
replacing "Since it is obvious that there are grounds for invalidation, any claims based on
the Patent constitutes an abuse of right and are therefore unacceptable." on line 16 to line 17
of said page with "Since there are grounds for invalidation, the Patent should be invalidated
by patent invalidation trial. Therefore, the Patent Right shall not be exercised against theappellant," and the "it is not certain that there are grounds for invalidation of the Patent" online 6 to line 7 of page 15 of said judgment will be replaced with "there are no grounds forinvalidation of the Patent.")
5. Additional allegations submitted by the appellant to this court(1) Issue 1 (Fulfillment of the constituent features)
In the case of the Invention, the phrase "the designation of the second icon subsequent to
the designation of the first icon" solely means an act of designating the function description
icon by pressing it with a pointing device and dragging and releasing the icon onto the icon
whose function needs to be described (hereinafter referred to as "press, drag and release").

4

Said phrase does not include an act of designating the function description icon by pressing
it with a pointing device, displaying some indication in response to the designation, such as"?" mark beside the cursor, or designating the icon whose function needs to be described bypressing it with the pointing device (hereinafter referred to as "click, balloon popup, andclick").
On September 17, 2003, the appellee requested a trial for correction of the Description
because the appellee was hoping to narrow the scope of the claims and explain unclear
statements (Exhibit Otsu No. 10). Specifically, said request was made in order to correct theclaims related to Invention 1 and Invention 3 in such a way that the "control means" clearly
includes both "press, drag and release" and "click, balloon popup, and click." In response,
the Japan Patent Office (JPO) issued a notice of reasons for refusal of correction by statingthat the description and drawing attached to the application only specifies the "press, dragand release" method concerning the "control means" (Exhibit Otsu No. 11). This incident
clearly shows that the phrase "the designation subsequent to […]" included in said claim
solely means "press, drag and release" and does not include "click, balloon popup, andclick."In the case of the computer onto which the appellant's product has been installed, theactions and displays related to the help function use the method of "click, balloon popup,
click." Therefore, the help function of the computer onto which the appellant's product has
been installed does not fulfill the constituent features of the Invention, namely, "thedesignation subsequent to […]" specified in 1-C, 2-B, and 3-C.
(2) Issue 2 (Establishment of indirect infringement)
In the case of the computer onto which the appellant's product has been installed, thehelp function is made available by the API function contained in the appellant's product,
which executes Winhlp32.exe contained in the operating system (OS). The API function has
been widely publicized by Microsoft and through various publications, and is used bycomputer programmers around the world in order to make various application software
programs. The API function may be regarded as being nothing but a general-purpose
product, like a screw, widely used by computer programmers engaged in softwaredevelopment.
Thus, Winhlp32.exe, which is not contained in the appellant's product, directly provides
the technical means unique to the Invention. Since the API function, which is contained in
the appellant's product, is merely a general-purpose product, the appellant's product is notessential for solving the problems to be solved by the Invention.
(3) Issue 3 (Restrictions on the exercise of the Patent Right)
Regarding the Patent, there are grounds for invalidation due to the lack of novelty or5inventive step in the Invention as follows, and the Patent should be invalidated by a patent
invalidation trial. Accordingly, the appellee shall not be allowed to exercise the Patent Rightagainst the appellant based on Article 104-3, paragraph (1) of the Patent Act.
A. The Invention is the same as the one presented in Fred Stauder, "Hyper Tools forHyper Programmers" (MacTutor, the issue of July 1988) (Exhibit Otsu No. 12-1;
Exhibit Ko No. 19 is a complete translation of Exhibit Otsu No. 12-1; hereinafterreferred to as "Otsu Document No. 12") (hereinafter, said invention shall be referred to as"Invention Otsu No. 12").
"Hyper tool" is a tool useful to develop "Stack (book shelf)." Execution of Hyper Tool
1 would display a stack containing 16 tools on the left side of the screen. Each tool isdisplayed with a picture on the upper side and letters on the lower side. The upper right
portion of the screen displays a pictographic, traffic sign-like help icon that has a shape ofwhite-hemmed black diamond with the mark "?" inside (Figure 1). The same indication
would also be displayed if Hyper Tool 2 is executed (Figure 9). The user can activate thetool on the left side of the screen simply by clicking the icon (for instance, "Link a choicelist" icon).
On the other hand, hyper tools have a built-in help function. By using this function,
the user can quickly obtain information on various tools. The user can obtain information
concerning a certain tool (for instance, "Link a choice list" icon) on the screen by clicking
the help icon and, then, clicking the icon that corresponds to the relevant tool.
As far as hyper tools are concerned, the help icon corresponds to the "first icon,"while the "Link a choice list" icon, etc., corresponds to the "second icon." Thus, theInvention is exactly the same as Invention Otsu No. 12 and therefore lacks novelty.
B. The Invention is the same as the invention presented in Denny Schlesinger, "HelpDocumentation System Review" (MacTutor, the issue of November 1987) (Exhibit Otsu
No. 13-1; Exhibit Ko No. 20 is a complete translation of Exhibit Otsu No. 13-1;
hereinafter referred to as "Otsu Document No. 13") (hereinafter, said invention shall bereferred to as "Invention Otsu No. 13").
Otsu Document No. 13 describes, in detail, the technologies related to various help
services, in particular, context sensitive help service (it is also called "help in context" or"context help").
Otsu Document No. 13 states that, if the user chooses the "help in context" menu itemfrom the help menu and changes the pointer into the "?" pointer, and, then, for example,
chooses an icon or the cut menu item, then the user can display the help information
concerning said icon or said cut menu item.
Both the "help in context" menu item and the cut menu item may be regarded as6

"icons."
The "help in context" menu item corresponds to the "first icon," while any icon
displayed on the desktop or any menu item such as the cut menu item corresponds to the"second icon." Therefore, the Invention is exactly the same as Invention Otsu No. 13 and,
therefore, lacks novelty.
C. The Invention is the same as the invention presented in the National Instrument,"LabVIEW, Science Software for Macintosh" (Exhibit Otsu No. 14-1 (published in 1986);
Exhibit Otsu No. 19 (published in July 1988) is almost the same as Exhibit Otsu No. 14-1
in terms of content; hereinafter referred to as "Otsu Document No. 14") (hereinafter, said
invention shall be referred to as "Invention Otsu No. 14"), the invention presented in thearticle by Michael Vose and Gregg Williams, "LabVIEW: Laboratory Virtual Instrument
Engineering Workbench" (BYTE Magazine, the issue of September 1986) (Exhibit Otsu
No. 15-1; Exhibit Otsu No. 20 is almost the same as Exhibit Otsu No. 15-1 in terms ofcontent; hereinafter referred to as "Otsu Document No. 15") (hereinafter, said invention
shall be referred to as "Invention Otsu No. 15"), and the invention related to "LabVIEW
version 1.2" itself (hereinafter referred to as the "LabVIEW Invention") explained in thereport dated March 29, 2005 (Exhibit Otsu No. 16, hereinafter referred to as "Report Otsu
No. 16") prepared by a staff member of the appellant who operated "LabVIEW version
1.2," which was launched prior to the filing of the patent application (the one distributed
in 1988 at the latest).
In sum, LabVIEW is a laboratory virtual instrument engineering workbench software
product that operates on a Macintosh computer. The configuration of LabVIEW became
publicly known in 1986 at the latest.
According to said publications, if the user of LabVIEW wants to obtain help
information on a certain object, the user can display the help dialog box of LabVIEW by
clicking the loupe icon in the tool palette and then clicking the object by using the loupe
cursor. It is clear that the term "object" that can be clicked by the loupe cursor collectively
refers to various indications displayed on the screen, including menu items, icons, buttons,
and controls. Since "LabVIEW version 1.2" allows the user to read and print out digital
information contained therein whenever the user wants, LabVIEW version 1.2 may be
regarded as a publication specified in Article 29, paragraph (1), item (iii) of the PatentAct.
In this way, in the case of Invention Otsu No. 14, Invention Otsu No. 15, andLabVIEW Invention, the loupe icon corresponds to the "first icon," while the go button
icon or any other object displayed on the screen corresponds to the "second icon." Thus,
the Invention is exactly the same as the invention of the loupe-shaped help tool of7

LabVIEW and therefore lacks novelty.
D. The Invention could have been easily made by any person skilled in the art based on
the invention presented in the Japanese Patent Publication No. SHO 61-281358 (Exhibit
Ko No. 13-25), which was cited in the documents submitted to the prior instance(hereinafter referred to as the "cited invention"), Invention Otsu No. 13, and the invention
presented in Fred Stauder, HyperCard's User Friendly Programming (MacTutor, the issueof October 1987) (Exhibit Otsu No. 17-1, hereinafter referred to as "Otsu Document No.
17") (hereinafter, said invention shall be referred to as "Invention Otsu No. 17") .
According to Otsu Document No. 13, there are three methods to activate the help desk
accessory: (i) activating it through the Apple menu, (ii) using the "Command - ?" if thecontext help has been implemented, and (iii) pressing the help button in the alert box if
the extended alert has been implemented.
According to Otsu Document No. 17, since "button" may be displayed on the screenin the form of an "icon," the help button in said alert box may also be regarded as an"icon."
In sum, these publications disclose that the keyboard key operation (press thecommand key and "?" simultaneously) is interchangeable with an icon (the help button in
the alert box) as a means to activate the help desk accessory.
Therefore, since any person skilled in the art could have easily conceived of theInvention by combining the cited invention with Invention Otsu No. 13 and Invention
Otsu No. 17, it is reasonable to conclude that the Invention lacks inventive step.
E. The Invention could have been easily made by any person skilled in the art based on
the invention presented in Vicky Spilman and Eugene J Wong, "The HP NewWave
Environment Help Facility" (published in August 1989) (Exhibit Otsu No. 18-1;
Exhibit Ko No. 21 is a complete translation of Exhibit Otsu No. 18-1; hereinafterreferred to as "Otsu Document No. 18) (hereinafter, said invention shall be referred to as"Invention Otsu No. 18") and the well-known art.
In sum, the HP NewWave environment is a computer application provided by
Hewlett-Packard. The help function thereof is ingenious. Otsu Document No. 18 contains
a description of the implementation of the function. According to Otsu Document No. 18,(i) The selection of the "Screen/Menu Help" item from the help pull-down menu would
cause a shift to the "?" mode, (ii) The selection of an icon in the "?" mode would display
the help information on the icon, and (iii) The selection of an icon in any mode other thanthe "?" mode would trigger the execution of the function of the icon.
A comparison with the Invention shows that the Screen/Menu Help item on the help
pull-down menu corresponds to the "first icon," while any icon corresponds to the8"second icon."
Otsu Document No. 18 lists the pull-down menu items and icons as operable items
without differentiating [the pull-down menu items from icons/them]. Said items and icons
are the same in that they execute various functions upon a click with a mouse button orwith a cursor although they are displayed on the screen in a different manner, i.e., one isdisplayed as menu items, while the other as icons.
According to Otsu Document No. 13 and Otsu Document No. 17, it is clear that menu
items are interchangeable with icons.
Furthermore, Otsu Document No. 12, Otsu Document No. 14, and Otsu Document No.
15 disclose that the designation of the icon or item whose function needs to be describedhas to occur subsequent to the designation of the help icon.
In view of these facts, the "Screen/Menu Help items on the help pull-down menu" isinterchangeable with the "first icon." Therefore, the Invention could have been easily
made by any person skilled in the art based on Invention Otsu No. 18 and the well-known
art disclosed in said publications.
F. The Invention could have been easily made by any person skilled in the art based on
Invention Otsu No. 12, Invention Otsu No. 15, Invention Otsu No. 17, Invention Otsu No.
18, and the LabVIEW Invention.
(4) Issue 4 (Allegations or evidence advanced outside the appropriate time)
While the appellant newly submitted to this court additional allegations and evidencewith regard to the fulfillment of the constituent features described in (1) above and thegrounds for invalidation of the Patent described in (3) above, the appellee argues that said
allegations and evidence should be dismissed for being advanced outside the appropriate
time. In the prior instance of this case, although it took only about two months to complete
the proceedings, from the day of the first oral argument (September 17, 2004) to theconclusion (November 30, 2004), the appellant submitted, together with the written reason
for appeal, the allegations and evidence concerning the fulfillment of the constituent
features and the grounds for invalidation of the Patent that were added in this court. The
additional allegation concerning the fulfillment of the constituent features is merely asupplementation of the argument concerning the possibility of "dragging" or "moving" an"icon" that has been presented by the appellant previously. Moreover, the additional
allegation concerning the grounds for invalidation of the Patent is an allegation made basedon a document published in a foreign language at the time when the patent application was
filed about 16 years ago. It took time to obtain such a document despite the appellant's
sincere effort. In view of these circumstances, the submission of said additional allegations
and evidence may not be regarded as being made outside the appropriate time.

9

Since said additional allegations may be proved by written evidence, it would not take along time for examination. Therefore, the submission of such allegations and evidence may
not be regarded as delaying the completion of the lawsuit.
Thus, said allegations and evidence submitted by the appellant should not be dismissed
for being made outside the appropriate time.
6. Additional allegations submitted by the appellee to this court(1) Issue 1 (Fulfillment of the constituent features)
The notice of reasons for refusal of correction issued by the JPO merely states that theclaims after correction would not satisfy the specified requirements concerning theprohibition of the addition of a new item that must be satisfied before any correction ismade. This does not have any effect on the interpretation of the constituent features of theinvention described in the claims prior to correction.
(2) Issue 2 (Establishment of indirect infringement)
The appellant's additional allegation concerning indirect infringement is disputable.
(3) Issue 3 (Restrictions on the exercise of the Patent Right)
A. The Invention is not the same as Invention Otsu No. 12.
In other words, Otsu Document No. 12 does not state that the purpose of the second
icon displayed on the "display screen" together with the first icon is to "trigger the
execution of the predetermined information processing function" (Constituent features
1-A and 3-B). The purpose of the "Link a Choice List" tool shown in Figure 1 and Figure
9 of Otsu Document No. 12 is not to "execute the predetermined information processing
function" due to the fact that, only after the installation of said tool in the stack that thestack developer is working on causes its icon to be displayed on the screen, said tool may
perform its function upon a click on the icon, and that the execution of the function ofsaid tool would be impossible until the completion of such installation.
Also, Otsu Document No. 12 does not state that the designation of the second icon
would display a "functional description of the second icon" on said "display screen"(Constituent features 1-C and 3-C). Even if Invention Otsu No. 12 allows acquisition of
the help information on the "Link a Choice List" tool, which, the appellant claims,
corresponds to the second icon, it is not clear whether the acquired information is a"functional description of the second icon." Furthermore, Otsu Document No. 12 contains
no statement whatsoever that the information is displayed on the "display screen" where
said second icon is displayed and designated.
Moreover, Otsu Document No. 12 does not state that a "functional description of thesecond icon" would be displayed in response to the "designation of the second icon'subsequent to' the designation of the first icon" (Constituent features 1-C and 3-C). In

10

sum, the Invention would not display the functional description of the second icon in
response to the designation of the second icon after the designation of any indication that
may not be regarded as the second icon because it would not constitute the "subsequent"designation of the second icon. On the other hand, Otsu Document No. 12 simply states"Click the help icon and click any of the tool icons presented" and does not contain any
statement about said control flow.
B. The Invention is not the same as Invention Otsu No. 13.
Otsu Document No. 13 does not state that the "first icon that triggers the execution of
the function of displaying a functional description of an icon" would be displayed on the"display screen" together with the second icon (Constituent features 1-A and 3-B). The"Help in Context" command on the pull-down menu shown in Figure 1 would display theedit screen of the "help in context message" and allow the preparation and editing of amessage. Since said command would not display a description of the "cut" command on
said menu, said command would not cause the "execution of the function of displaying afunctional description of an icon." Furthermore, the "Propeller-shaped sign, ?" indicatedon said "Help in Context" command is merely a "sign" and not a "picture or pictograph."
Therefore, said command may not be regarded as an "icon."
Otsu Document No. 13 does not state that a "functional description of the second
icon" would be displayed on said "display screen" in response to the designation of thesecond icon (Constituent features 1-C and 3-C). "Context sensitive help" would merely
bring the "help desk accessory" to the application program and give it the "parametershowing which message should be displayed." No disclosure has been made with regard
to what message the "help desk accessory," which is given said "parameter," would
display in what manner.
Otsu Document No. 13 does not state that a "functional description of the second
icon" is displayed in response to the "designation of the second icon 'subsequent to' thedesignation of the first icon" (Constituent features 1-C and 3-C). Otsu Document No. 13
merely states that "Context sensitive help is implemented in two stages" and does notrefer to the "first icon" as mentioned above.
C. The appellant's allegation that the Invention lacks novelty based on Invention Otsu No.
14, Invention Otsu No. 15, and the LabVIEW Invention is unreasonable(A) Otsu Document No. 14, Otsu Document No. 15, and "LabVIEW version 1.2"
themselves may not be regarded as "publications distributed prior to the filing of thepatent application" specified in Article 29, paragraph (1), item (iii) of the Patent Act.
Since Otsu Document No. 14 is marked by an English word "Confidential," a part ofwhich is unreadable, Otsu Document No. 14 is not a reproduced document for the purpose11

of publication and therefore not a "publication" specified in Article 29, paragraph (1),item (iii) of the Patent Act.
In the case of Otsu Document No. 15, the uppermost part of the first page carries thestatement "Reprinted with permission from the September 1986 issue of BYTE
magazine." However, it is not certain in which publication Otsu Document No. 15 waspublished and when the publication was distributed. It is also uncertain whether thecontent of Otsu Document No. 15 was published without any change in the BYTE
magazine issued in September 1986. Therefore, Otsu Document No. 15 may not be
regarded as a "publication distributed prior to the filing of the patent application"
specified in Article 29, paragraph (1), item (iii) of the Patent Act.
Moreover, the LabVIEW Invention, i.e., "LabVIEW version 1.2" described in Report
Otsu No. 16 is a program that needs to be installed onto a Macintosh computer in order tobe operated. It is not a document that conveys information to human readers and therefore
may not be regarded as a publication. Since there is no evidence to prove that LabVIEW
version 1.2 was distributed prior to the filing of the patent application, it may not be
regarded as a "publication distributed prior to the filing of the patent application"
specified in Article 29, paragraph (1), item (iii) of the Patent Act.
(B) The Invention is not the same as Invention Otsu No. 14 and Invention Otsu No. 15.
Otsu Document No.14 does not state that the first icon, which "triggers the display of
a functional description of an icon," would be displayed on the "display screen" together
with the second icon (Constituent features 1-A and 3-B). This is because it is uncertain
whether an "object" may be regarded as an "icon […] that triggers the execution of thepredetermined information processing function," which makes it uncertain whether the"loupe icon" "triggers the display of a functional description of an icon." Otsu Document
No. 14 merely states that "the Help Dialog Box appears" and does not specify when andhow it would appear. This means that Otsu Document No. 14 does not contain a statementon the display of a "functional description of the second icon" on said "display screen" in
response to the designation of the second icon (Constituent features 1-C and 3-C).
Moreover, based on Otsu Document No. 14, it may be interpreted that, after a shift to the"loupe icon" mode, the display of information on various objects would continue.
Therefore, it is reasonable to conclude that Otsu Document No. 14 does not state that a"display of a functional description of the second icon" would be triggered by the"designation of the second icon 'subsequent to' the designation of the first icon"(Constituent features 1-C and 3-C).
Regarding the "loupe-shaped help tool" described in Otsu Document No. 15, even if
said tool is designed to "display tutorial information" in general, it is not certain whether

12the tool is designed to "display a functional description of an icon." Also, Otsu Document
No. 15 does not clearly state whether the "feature […] clicked by using it" corresponds tothe "icon […] that triggers the execution of the predetermined information processing
function." Therefore, it is reasonable to conclude that Otsu Document No. 15 does notstate that the first icon, which "triggers the display of a functional description of an icon,"and the second icon, which "triggers the execution of the predetermined information
processing function," would be displayed on the "display screen" (Constituent features
1-A and 3-B). Furthermore, Otsu Document No.15 does not clearly state whether a"functional description of the icon" would be displayed directly on the same "display
screen," if a user who wants to obtain information on the function of a certain icon
designates the relevant icon on the "display screen," on which the help icon is displayed.
Therefore, it is reasonable to conclude that Otsu Document No. 15 does not state that a"functional description of the second icon" would be displayed on said "display screen" in
response to the designation of the second icon (Constituent features 1-C and 3-C).
Furthermore, according to Otsu Document No. 15, it may be interpreted that, after a shift
to the "loupe-shaped help tool" mode, the display of tutorial information on various
features of LabVIEW would continue. Therefore, it is reasonable to conclude that Otsu
Document No. 15 does not state that the "display of a functional description of the second
icon" would be triggered by the "designation of the second icon 'subsequent to' thedesignation of the first icon" (Constituent features 1-C and 3-C).
D. The Invention could not have been easily made by any person skilled in the art basedon the cited invention, Invention Otsu No. 13, and Invention Otsu No. 17.
According to Otsu Document No. 13, the keyboard operation of "Command-?"triggers the execution of the "Context sensitive help." On the other hand, an act ofclicking on the "help" button triggers the execution of "extended alert." Since theseactions trigger a completely different function from the viewpoint of users, they are notinterchangeable. In view of the fact that, according to Otsu Document No. 13, the"cancel" button and the "OK" button displayed in the alert box (Figure 27 of Exhibit Ko
No. 18) are mere "characters" with no design quality and are not "pictures or
pictographs." Therefore, it is reasonable to interpret that the "help" bottom displayed inaddition to these buttons is similar to them. Thus, the appellant's allegation based on Otsu
Document No. 13 is unreasonable.
E. The Invention could not have been easily made by any person skilled in the art basedon Invention Otsu No. 18 and well-known art.
(A) Otsu Document No. 18 refers to the "Screen/Menu Help" item on the help pull-down
menu, but does not refer to the "first icon that triggers the execution of the function of13

displaying a functional description of an icon" of the Invention (Constituent features 1-A
and 3-B) (hereinafter referred to as "Difference A"). In other words, Otsu Document No.
18 states that the "Screen/Menu Help" item is included in the help pull-down menu inorder for the user to shift into the "?" mode, which displays information (help topics) on
the item selected in the application window. However, since an item on the pull-downmenu may not be regarded as an "icon," it is reasonable to conclude that Otsu Document
No. 18 does not refer to the "first icon that triggers the execution of the function of
displaying a functional description of an icon" of the Invention.
The configuration of the Invention related to Difference A could not be easily
conceived of by any person skilled in the art as described below.
The help system described in Otsu Document No. 13 is designed to be used forMacintosh of Apple Inc., while the help system described in Otsu Document No. 18 isdesigned to be used for Microsoft Windows. Since the time before the filing of the patentapplication, these two products had been well known as competing products dividing thecomputer industry into two groups.
Both Otsu Document No. 13 and Otsu Document No. 18 present the following
technical idea. When using the user interface of the help system of the application
program that has been installed onto the computer, any user who wants to use the help
function directly from an application screen has to use the "pull-down menu," which
requires clicking at least two times because the to-be-clicked menu item is not displayed
directly on the screen. On the other hand, any user who wants to activate the help function
by using a dialog box displayed on the screen when the application shifts into a certain
mode has to use a "button," which is a to-be-clicked button directly displayed on thescreen.
From the viewpoint of any person skilled in the art around the time of filing of thepatent application, it was commonly believed that it was a de facto standard in therelevant technical field to emulate the technical approach presented in Otsu Document No.
13 and Otsu Document No. 18, which adopts a similar user interface as described above.
Since said two Documents were considered to belong to each of the two major groups
respectively that were competing with each other at that time, it must have been extremely
difficult, from the viewpoint of any person skilled in the art, to arrive at the idea embodied
in the Invention, namely, the adoption of a configuration that uses the "first icon," which
is a to-be-clicked icon directly displayed on the screen, which was contrary to theconventional approach mentioned above.
Otsu Document No. 18 states that either a "menu item" or an "icon" (corresponding to
the "second icon" of the Invention) may be selected after a click on the "Screen/Menu

14

Help" item. Even though the interchangeability between the "second icon" and the "menu
item" is indicated, this should not be interpreted as an indication of interchangeability
between the "first icon" and the "menu item" since the "first icon" of the Invention iscompletely different from the "second icon" in nature.
"Menu item" and "icon" are the same in terms of their role in triggering the executionof various functions upon clicking by a mouse button or by a cursor. However, these twoare completely different from the viewpoint of user operability. While a "menu item"
requires the user to click two times or more in difference places in order to selectsomething that is not directly displayed on the screen, an "icon" allows the user to clickon something that is displayed directly on the screen.
Otsu Document No. 13 and Otsu Document No. 17 merely indicate that the samefunction could be assigned to a "menu item" and a "keyboard key" and that a "button"
may be turned into an "icon" by drawing a "picture or pictograph." Neither of these two
documents indicates the interchangeability between "menu item" and "icon."(B) According to Otsu Document No. 18, the "Screen/Menu Help" item is displayed only
when the user opens the help pull-down menu and is not displayed when the user clicks
on an icon. Therefore, it is reasonable to conclude that Otsu Document No. 18 does notstate that "the first icon and […] the second icon" are displayed on the "display screen"where an icon may be designated, as is the case of the Invention (Constituent feature 1-A
and 3-B) (hereinafter referred to as "Difference B").
In other words, the Invention provides the user interface that displays "the first icon
and […] the second icon" on the "display screen" where an icon may be designated andallows the user who wants to know the function of a certain icon to directly designate theicon on the "display screen" where the help icon is displayed and have a functionaldescription of the icon displayed.
On the other hand, according to Otsu Document No. 18, the "Screen/Menu Help" item
would be displayed only when the user opens the help pull-down menu. The"Screen/Menu Help" item disappears from the screen once the user selects the"Screen/Menu Help" item from the pull-down menu. In sum, when the user intends toclick on an icon displayed on the display screen, since the icon is not an item on thepull-down menu, the pull-down menu is always closed. At this time, the "Screen/Menu
Help" item is not displayed on the screen.
In this respect, Difference B shows that user interface would be significantly different
depending on whether the user, who wants to use the help function to trigger the
execution of the "function of displaying a functional description of an icon," uses thepull-down menu as stated in Otsu Document No. 18 or uses the "first icon" of the15

Invention. As described in detail in connection with Difference A above, since it is noteasy to conceive of the "first icon" of the Invention based on the Otsu Document No. 18,
which adopts the "pull-down menu" approach, it is not easy to conceive of theconfiguration of the Invention related to Difference B based on Otsu Document No. 18.
(C) According to Otsu Document No. 18, in order to exit the "?" mode without displaying
the help window, the user must select the "Cancel Help" item from the help pull-downmenu. Therefore, it is reasonable to conclude that Otsu Document No. 18 does not refer tothe control flow (Constituent feature 1-C and 3-C) to display a functional description "in
response to the designation of the second icon 'subsequent to' the designation of the first
icon," which is adopted by the Invention (Hereinafter referred to as "Difference C").
As is the case with the Invention, if the help function, which triggers the execution ofthe "function of displaying a functional description of an icon" and which needs to be
designated prior to the designation of the icon whose function needs to be described, isimplemented as the "first icon," which is a to-be-clicked icon displayed directly on thescreen, but not as a pull-down menu item, it could increase the risk of erroneous
designation of the first icon by the user.
In the case of the Invention, even if the second icon is designated subsequently to thedesignation of any indication that may not be regarded as the second icon, a functionaldescription of the second icon would not be displayed because the designation does notconstitute the "subsequent" designation of the second icon. Consequently, erroneous
designation as mentioned above would not trigger the unwanted display of a functionaldescription. This would save the user taking a special action such as pressing the ESC
button as a result of such erroneous designation.
On the other hand, according to Otsu Document No. 18, which adopts the "pull-downmenu" approach, it is impossible to exit the "?" mode without displaying the help window
unless the user conducts a special operation, namely, opening the pull-down menu once
again and selecting the "Cancel Help" item.
Such configuration of the Invention related to Difference C could not be easily
conceived of based on Otsu Document No. 18.
F. It is disputable that the Invention could have been easily made by any person skilled in
the art based on Invention Otsu No. 12, Invention Otsu No. 15, Invention Otsu No. 17,
Invention Otsu No. 18, and the LabVIEW Invention.
(4) Issue 4 (Allegations or evidence advanced outside the appropriate time)
While the appellant newly submitted to this court additional allegations and evidencewith regard to the fulfillment of the constituent features and the grounds for invalidation of
the Patent, said allegations and evidence should be dismissed for being advanced outside the16appropriate time.
On February 7, 2001, the appellee sent a written warning to the appellant based on the
Patent Right and tried to solve the problem through negotiations. Having been rejected, theappellee filed a request on November 7, 2002 for provisional disposition (hereinafterreferred to as "previous provisional disposition"), seeking an injunction against
infringement in connection with another software program (Product name: Justhome 2
Kakeibo Pack; hereinafter referred to as "previous product") that the appellant was engaged
in producing, assigning, etc., or offering for assignment, etc. Subsequently, while thisrequest was withdrawn, the appellant filed a lawsuit in August 2003, seeking a declarationof the nonexistence of the right to seek an injunction based on the Patent Right. In October
2003, the appellee filed a counterclaim, seeking an injunction against patent infringement.
Consequently, a dispute arose between the appellant and the appellee (Tokyo District Court,
2003 (Wa) 18830 and 24798; hereinafter referred to as the "previous lawsuit"). On August
31, 2004, the court handed down a judgment against the appellee on the grounds that the
Patent Right was not infringed. This judgment was finalized. Shortly prior to the renderingof said judgment, on August 15, 2004, the appellee filed this lawsuit by changing the
product in dispute to the appellant's product. On November 30, 2004, the oral argument wascompleted. On February 1, 2005, the court handed down a judgment in prior instance infavor of the appellee.
The above-described historical background of this lawsuit reveals that the judgment inprior instance was handed down about four years after the issuance of a written warning
based on the Patent Right and that, to the extent that the proceedings related to the Patent
Right at the Tokyo District Court are concerned, it was more than two years after the filingof a request for previous provisional disposition that the oral argument for the prior instancewas completed. During the pending period, the appellant was given sufficient opportunities
for interpretation of claims and research on publicly-known documents, etc.
Furthermore, in the previous lawsuit, the court took into consideration not only theprevious product but also the appellant's product and issued a conciliation recommendation
to the effect that the appellant shall pay a certain amount.
This means that, in the prior instance, although the appellant realized that the evidence
submitted to the prior instance was insufficient as a means of defense and was given an
opportunity to make an argument based on newly submitted publicly-known documents,
etc., the appellant gave up the opportunity and let the case close. It must be said that such
submission made outside the appropriate time frame is attributable to the intention or, atleast, the gross negligence on the part of the appellant. Moreover, it is obvious that theadditional allegations and evidence newly submitted to this court by the appellant would

17

cause a delay in closing this case. Therefore, said allegations and evidence submitted by theappellant should be dismissed for being made outside the appropriate time.
No. 3 Judgment of this court
1. Issue 1 (Fulfillment of the constituent features)
At the time of filing the patent application, "icon" was generally understood as a "pictureor pictograph displayed on the display screen in order to represent various data and various
processing functions." It is enough if the "icon" related to the Invention is a picture or
pictograph displayed on the display screen in order to represent various data and various
processing functions and to process commands, and there are no grounds to impose stricter
requirements that an "icon" must be able to be dragged or moved or be placed on the desktop.
As far as the appellant's product is concerned, the "help mode" button and any button that may
be selected at the discretion of a user who wants to trigger the execution of an information
processing function (hereinafter referred to as "information processing button") may be
regarded as said "icon" that falls within the scope of patent claims of the Invention. Thus, thiscourt also judges that the computer onto which the appellant's product has been installed andthe use thereof fulfill the constituent features of Invention 1, Invention 2, and Invention 3,
respectively, and fall within the technical scope thereof. The reasons are the same as thosestated in items 1 and 2 of "No. 4 Judgment of this court" in the "Facts and Reasons" section of
the judgment in prior instance, except for the following additions and corrections. Therefore,
we cite them for this section.
(1) Significance of the "second icon" in the Invention
The configuration of the Invention consists of "displaying the second icon on the display
screen in order to trigger the execution of the predetermined information processing
function" and "displaying a functional description of said second icon on the display screen"([Claim 1] to [Claim 3]). In this respect, in the "Detailed explanation of the invention"section of the Description, it is stated, with regard to the " problems to be solved by theInvention," that, "by this (conventional) method, the user cannot receive the function
description service if he/she cannot remember or come up with a keyword (line 10 to line 13
of Section 3 of the Gazette). It is also stated, with regard to the "means to solve theproblems," that "in order to solve this problem, the Invention has adopted a configuration
characterized by having (i) a display means to display on the display screen the first icon,
which triggers the execution of the function of displaying a functional description of an icon,
and the second icon, which triggers the execution of the predetermined information
processing function, (ii) a designation means to designate an icon displayed on the display
screen of said display means, and (iii) a control means to display a functional description of
the second icon on the display screen of said display means in response to the designation of18

the second icon subsequent to the designation of the first icon by said designation means."(line 14 to line 23 of said section). It is also stated, with regard to "action," that "by meansof this configuration, if the user wants to obtain a functional description of the second icon,
which represents the predetermined information processing function, the user can obtain afunctional description of the second icon by directly designating the second icon
subsequently to the designation of the first icon (line 24 to line 28 of said section). It is also
stated, as an explanation of Figure 1 (the figure of the function block of the information
processing device used in Embodiment 1 of the Invention; page 3 of the Gazette), that "4 isa screen information memory unit that records the location and size of each window on thescreen. 5 is a window information memory unit, which records the information displayed ineach window such as what information is displayed in which part of each window. 6 is ananalyzing unit that analyzes by which parameter the function description application has
been designated. Based on the location of the mouse cursor, the analyzing unit determines
what is designated as a subject matter that needs to be described with reference to Window
Information Memory Unit 5." (line 47 of Section 3 to line 5 of Section 4 of the Gazette). It
is stated, as an explanation of Figure 2 (the flowchart of the control procedure in said
embodiment; page 4 of the Gazette), that "Releasing of a button on Pointing Device 2 inStep S4 would cause a shift to Step S5. Based on the data of the location of the icon, at thetime of the release of the button, that triggers a functional description and the data obtained
from Window Information Memory Unit 5, the type of function that needs to be described is
identified. Then, the function description application would be activated to provide afunctional description." (line 21 to line 27 of Section 4 of the Gazette). Furthermore, it isstated, as an explanation of Figure 3 (a figure showing multiple home menus and theicon-shaped function description application presented on a drawing; page 4 of the Gazette),that "a window is opened as shown in Figure 3. At this time, as screen information,
information on the location, size, etc., of the window is recorded. In the window, multiple
rectangular-shaped home menus are displayed. At this time, the function description
application would be displayed in the form of an icon as indicated by a circle. By moving
Pointing Device 2, the user places the mouse cursor indicated by an arrow on the function
description icon indicated by a circle. Then, the user presses a mouse button to drag said
icon onto the object that needs to be described, and releases the mouse button. For example,
it may be moved onto the telecommunications icon. Based on the information on the screen,
the window, the position of the mouse cursor as of the commencement of the action ofdragging, and the distance of dragging, the analyzing unit determines which object on thescreen was selected. Based on this information, the analyzing unit can activate the function
description application and give the parameter." (line 31 to line 47 of Section 4 of the19Gazette). It is stated, as an explanation of Figure 4 (a figure showing the text of a
description of the telecommunications function on the screen; page 5 of the Gazette), that"as shown in Figure 4, the text of a description of the telecommunications function, forexample, is displayed in the window." (line 47 to line 49 of said section). In light of thesestatements of the Description as described above, it is reasonable to interpret that, in thecase of the Invention, an action of "displaying on the display screen the second icon, which
triggers the execution of the predetermined information processing function" and"displaying on the display screen a functional description of said second icon" may be
regarded as conducting the actions of displaying on the display screen multiple icons thattrigger the execution of information processing functions and displaying a functionaldescription of the icon that has been arbitrarily selected from among those multiple icons.
(2) Buttons on the display screen of the appellant's productRegarding the items mentioned in (1) above, the following findings can be made withregard to the appellant's product. In the toolbox placed in the upper part of the document
editing screen shown in attached Product List A (Product name: Ichitaro) and the toolbox
placed in the upper part of the graphic editing screen shown in attached Product List B(Product name: Hanako), multiple buttons are displayed to trigger the execution of
information processing functions. Each of the said Product Lists shows the case where theselection of "print" button from said multiple buttons triggers the display of a functionaldescription on the screen. Based on the entire import of the oral argument, a functionaldescription would be displayed on the screen not only when the "print" button is selected
but also when an information processing button is selected.
(3) Correction of the judgment in prior instance
The term "'print' button" on the fifth line from the bottom of page 30 of the judgment inprior instance shall be replaced with "information processing button." The phrase on thethird line from the bottom of page 30 to line 2 of page 31 of said judgment shall be replacedwith "the user who has received an assignment etc.("??), of the appellant's product uses theappellant's product by installing it onto a computer. In the toolbox of the appellant's
product's editing screen displayed on the screen of the activated computer, the "help mode"
button, which bears a "?" mark combined with a "mouse" mark, as well as multiple
information processing buttons that trigger the execution of information processing
functions are displayed. If the user clicks the mouse on the "help mode" button andsubsequently clicks the mouse on an information processing button arbitrarily selected fromsaid multiple information processing buttons, the user can obtain a display of the text of a
description of the information processing function to be triggered by said information
processing button. If the "print" button, which is one of the information processing buttons,20

is selected as an example, the help function-related actions and displays on the computer
onto which the appellant's product has been installed are the same as those stated in attached
Product Lists A and B. These buttons represent various data and various processing
functions in the form of pictures or pictographs displayed on the display screen in order toprocess commands. Therefore, the "help mode" button and information processing buttonsof the appellant's product may be regarded as "icons" that fall within the scope of the claimsof the Invention." The phrase "fulfillment of the constituent features of the computer onto
which appellant's product has been installed" on line 3 of page 31 of said judgment shall be
replaced with "fulfillment of the constituent features of the computer onto which appellant's
product has been installed and the use thereof." The term "'print' button" in (1) to (3) fromline 4 of page 31 to line 3 of page 33 of said judgment shall all be replaced with
"information processing button."(4) Judgment on the appellant's additional allegation submitted to this court
The appellant argues that, according to the notice of reasons for refusal of correction
issued by the JPO in response to the appellee's request for trial for correction of the
Description of the Invention, it is clear that the "designation of the second icon subsequent
to the designation of the first icon" solely means an "act of designating the function
description icon by pressing it with a pointing device and dragging and releasing of the icon
onto the icon whose function needs to be described. (press, drag, and release) and does notmean an "act of designating the function description icon by pressing it with a pointing
device, displaying some indication in response to the designation, such as "?" mark besidethe cursor, and designating the icon whose function needs to be described by pressing itwith the pointing device (click, balloon popup, and click"). The appellant claims that, in thecase of a computer onto which the appellant's product has been installed, the help function,
which adopts the latter method, does not fulfill said constituent features.
In response to this, the appellee alleges that the above-mentioned appellant's allegations
should be dismissed for being made outside the appropriate time. As held in 4 below, theappellee's allegation is unreasonable. It should be noted, first of all, that said appellee'srequest for trial for correction and the content of the notice of reasons for refusal ofcorrection issued by the JPO do not affect the interpretation of the constituent features of theInvention in this lawsuit (on December 18, 2003, the appellee withdrew said request for trial
for correction [Exhibit Ko No. 17]). Furthermore, none of the statements contained in the"Scope of Claims" of the Invention as well as in the "Means to solve the problems,""Action," "Effect of the invention," etc., in the section "Detailed explanation of theinvention" of the Description (Exhibit Ko No. 13-13) provides grounds for interpretingthat the constituent feature of the Invention, i.e., "the designation of the second icon

21

subsequent to the designation of the first icon" as mentioned above, solely means theappellant's-claimed "press, drag, and release."
The section "Embodiments" in said "Detailed explanation of the invention" contains thestatement that "By moving Pointing Device 2, the user places the mouse cursor indicated byan arrow on the function description icon indicated by a circle. Then, the user presses amouse button to drag said icon onto the object that needs to be described, and releases themouse button" (line 37 to line 41 of Section 4). This shows that while an embodiment ispresented for the appellant's-claimed "press, drag, and release" method, no embodiment ispresented for the "click, balloon popup, and click" method. However, the presentation ofsaid embodiment should be interpreted as mere presentation of one of the embodiments of
the Invention. Therefore, it is reasonable to conclude that the fact that only the "press, drag,and release" method as mentioned by the appellant is presented as an embodiment does notnecessarily mean that the Invention is limited to such method.
On these grounds, said appellant's allegation is unacceptable.
2. Issue 2 (Establishment of indirect infringement)(1) Introduction
The Invention is not an invention related to a "machine-readable recording medium inwhich a program is recorded" or a "program itself" but is an invention related to an"information processing device" or "information processing method" (an application for theInvention was filed on October 31, 1989, which was not only prior to the revision of the
Patent Act [enforced on September 1, 2002] by Act No. 24 of 2002, which explicitly specifies
that a program not recorded in a recording medium may in itself be protected under the Patent
Act but also prior to the commencement of the JPO' practice of recognizing the patentabilityof "machine-readable recording medium in which a programs is recorded" under the"Examination Practice Guidelines for Specific Technical Fields" publicized in February 1997
and the patentability of a "program itself" under the "Revised Examination Guidelines forPatents and Utility Models" publicized in December 2000.). On the other hand, the appellant's
product is, as described in attached Product Lists A and B, a document preparation software(Japanese word processor software "Ichitaro") and graphic creation software (comprehensivegraphics software "Hanako"). Therefore, the appellant's act of producing, assigning, etc., or
offering for assignment, etc., the appellant's product does not constitute direct infringement of
the Patent Right to the Invention, which is an invention of "information processing device" or"information processing method." Thus, the question in this case would be whether such an
act constitutes indirect infringement.
Article 101 of Patent Act, which was revised by Act No. 24 of 2002 (enforced on January
1, 2003), is a provision concerning indirect infringement. Said revision newly established item

22

(ii) of said Article to the effect that "where a patent has been granted for an invention of a
product, an act of producing, assigning, etc., importing or offering for assignment, etc. any
product (excluding those widely distributed within Japan) to be used for the producing of thesaid product and indispensable for the resolution of the problem by the said invention as abusiness, knowing that the said invention is a patented invention and the said product is used
for the working of the invention" constitutes infringement of a patent right, etc. Similarly,
item (iv) of said Article was also newly established to the same effect concerning the casewhere a patent has been granted on an invention of a process.
The appellee argues that a user's act of purchasing the appellant's product and installing it
onto a computer constitutes an act of producing a product related to Invention 1 or Invention 2,that a user's act of using the computer onto which appellant's product has been installed
constitutes an act of using the method related to Invention 3, and, therefore, that theappellant's act of engaging in the business of manufacturing, assigning, etc., or offering for
assignment, etc. the appellant's product constitutes indirect infringement of Inventions 1 and 2
under Article 101, item (ii) of the Patent Act and indirect infringement of Invention 3 underitem (iv) of said Article. This court will examine this argument of the appellee below.
(2) Establishment of indirect infringement of Invention 1 and Invention 2 under Article 101,
item (ii) of the Patent Act
A. As described in 1 above, a "computer onto which the appellant's product has been
installed" fulfills the constituent features of Inventions 1 and 2. The appellant's product isused for the production of said computer. In sum, the completion of the production of a"computer onto which the appellant's product has been installed," which fulfills theconstituent features of Inventions 1 and 2, requires the installation of the appellant's
product, which causes the installation of the entire program including the help function
onto the computer. Therefore, the installation of the appellant's product may be regarded
as the production of said computer.
According to the statement presented in the "Detailed explanation of the invention"section of the Description, Inventions 1 and 2 solved the problem, i.e., "by this(conventional) method, the user cannot receive the function description service if he/shecannot remember or come up with a keyword" (line 10 to line 13 of Section 3 of theGazette), by adopting "a configuration characterized by having a display means to display
on the display screen the first icon, which triggers the execution of the function of
displaying a functional description of an icon, and the second icon, which triggers theexecution of the predetermined information processing function, a designation means todesignate an icon displayed on the display screen of said display means, and a control
means to display a functional description of the second icon on the display screen of said23

display means in response to the designation of the second icon subsequent to thedesignation of the first icon by said designation means." (line 14 to line 23 of said section).
In the case of a "computer onto which the appellant’s product has been installed," said
configuration may not be created without the installation of the appellant's product.
Therefore, it is reasonable to conclude that the appellant's product is indispensable forInventions 1 and 2 to solve the problems.
It is reasonable to interpret that the phrase "those widely distributed within Japan"
contained in Article 101, item (ii) of the Patent Act refers to such typical products asscrews, nails, electric bulbs, transistors, etc., which are widely distributed in Japan, inother words, which are not special order products but are standard products or
widely-used products that are versatile and generally available in the market. In this case,if the appellant's product including the help function is installed, it would result in thecompletion of the production of a "computer onto which the appellant's product has been
installed" that fulfills the constituent features of Inventions 1 and 2 without fail. Since apart of the appellant's product is used solely for the purpose of producing a product thathas the configuration of Inventions 1 and 2, the appellant's product should not be regarded
as "those widely distributed within Japan" as stated in said item.
The appellant's product is mainly used by individual users solely for the purpose of
their personal or home use. However, the use of the appellant's product cannot be limited
to such usage. It is obvious to this court that the appellant's product is also used bycompanies, etc., installing it onto computers in the course of trade. Therefore, it isunreasonable to deny the possibility that the appellant's act of producing, assigning, etc.,
or offering for assignment, etc. the appellant's product constitutes indirect infringement
specified in Article 101, item (ii) of the Patent Act, not only from the perspective of theso-called independent theory, which supports the possibility of the establishment of
indirect infringement regardless of whether direct infringement has been committed, butalso from the perspective of the so-called dependent theory, which considers that theestablishment of indirect infringement depends on the establishment of direct
infringement.
B. Regarding the points mentioned above, the appellant argues that the help display
program, etc., that the appellee has found problematic is a function of the operating
system called Microsoft Windows, and that said function may be used when anotherapplication software is running. The appellant further alleges that, regardless of whether
the appellant's product has been installed or not, it is possible to use the function that
"allows the users to designate the ‘help mode’ button and subsequently designate anotherbutton in order to display a description of said another button." On these grounds, the24appellant alleges that the appellant's product is not indispensable for the Invention to solve
the problems.
According to the evidence (Exhibit Otsu No. 16), the function stated in attached
Product Lists A and B take advantage of the function of the execution files such as"Winhlp32.exe" that are provided by the operating system called Microsoft Windows.
However, although this court finds that said function is available on a computer onto
which the appellant's product has been installed, there is no sufficient evidence, in thiscase, to prove that said function is available on a computer onto which the appellant's
product has not been installed. Therefore, it is reasonable to conclude that the function
stated in said Product Lists becomes available only on a computer onto which theappellant's product has been installed. In other words, said function becomes available
only when the program of the appellant's product is used in combination with an
execution file such as "Winhlp32.exe". Therefore, the appellant's product should be foundto be indispensable for Inventions 1 and 2 to solve the problems. On these grounds, said
appellant's allegation is unacceptable.
C. Furthermore, the appellant claims that the help function available on the computer onto
which the appellant's product has been installed cannot be provided without the executionof "Winhlp32.exe in the operating system (OS) by the API function contained in theappellant's product. Since the API function has been widely available and is merely ageneral-purpose tool for software development, the appellant's product is notindispensable for the Invention to solve the problems.
However, as found in item B above, the function stated in attached Product Lists A
and B becomes available only on the computer onto which the appellant's product has
been installed and thus it is obvious that the appellant's product is indispensable forInventions 1 and 2 to solve the problems.
It is clear to this court that the API function generally means a function that allows anapplication software program to activate a function of the operating system (OS)(Application Program Interface). Even if the API function contained in the appellant's
product has been widely available for software development as pointed out by theappellant, this does not necessarily mean that the appellant's product itself may be
regarded as a product "widely distributed within Japan," which is excluded from theproducts protected against indirect infringement under Article 101, item (ii) of the PatentAct. On these grounds, the abovementioned appellant’s allegation is not acceptable either.
D. Next, this court will discuss the subjective criteria for indirect infringement specified
in Article 101, item (ii) of the Patent Act.
The appellee alleges that, since the time when the appellee delivered a written request

25

for the previous provisional disposition with regard to the previous product that was filed
on November 7, 2002, at the latest, the appellant has been aware of the fact that theInvention is a patented invention of the appellee and that the appellant's product would be
used for the working of the Invention. Since it is clear from the allegation itself that the
subject matter of the previous provisional disposition is not the appellant's product, wemust say that the allegation itself is unreasonable. However, in relation to a request for an
injunction, the subjective criteria for the abovementioned indirect infringement shouldhave been met at the end of the oral argument conducted in the course of the fact-finding
proceedings for the lawsuit to seek an injunction. In light of the entire import of the oral
argument, said claim of the appellee may be interpreted as covering such object. In thiscase, it is reasonable to conclude that, on August 13, 2004, at the latest, which is clearlyrecorded as the day of delivery of the complaint, the appellant became aware of the facts
that Inventions 1 and 2 were patented inventions of the appellee and that the appellant's
product would be used for the working of said invention.
E. On these grounds, the appellant's act of manufacturing, assigning, etc., or offering for
assignment, etc., in the course of trade, the appellant's product constitutes indirect
infringement of the Inventions 1 and 2 under Article 101, item (ii) of the Patent Act.
(3) The establishment of indirect infringement on Invention 3 under Article 101, item (iv)of the Patent Act
As mentioned in 1 above, in the case of a "computer onto which the appellant's producthas been installed," if the user activates "Ichitaro" or "Hanako" and creates the state
described in the "Function" section in attached Product Lists A and B, the constituent
features of Invention 3, which is an invention of a process, would be fulfilled. Thus, a"computer onto which the appellant's product has been installed" should be regarded,
although the computer may be used for a purpose other than the purpose of using said
process, a "product that is used for the use of said process […] and is indispensable for theinvention to solve the problems" as mentioned in said item. Thus, it is reasonable toconclude that an act of producing, assigning, etc., or offering for assignment, etc., suchcomputer constitutes indirect infringement under said item. However, said item merely
states that an act of producing or assigning, etc., any product that could work a patented
invention of a process by using said product itself shall be deemed to be an act of patent
infringement and does not state that an act of producing or assigning, etc., any product thatis used for the production of such product shall be deemed to be an act of patent
infringement. In this case, the appellant’s act is not an act of producing, assigning, etc., or
offering for assignment, etc., said computer but is merely an act of manufacturing, assigning,etc., or offering for assignment, etc., the appellant's product that is used for production of26

said computer. On these grounds, it is unreasonable to conclude that the abovementioned
appellant’s act constitutes indirect infringement under said item.
As mentioned in (1) above, the JPO has already adopted the practice of recognizing thepatentability of "machine-readable recording medium in which a programs is recorded"under the "Examination Practice Guidelines for Specific Technical Fields" publicized in
February 1997 and the patentability of "program itself" under the "Revised Examination
Guidelines for Patents and Utility Models" publicized in December 2000. Moreover, thePatent Act, which was revised by Act No. 24 of 2002, explicitly specifies that a program notrecorded in a recording medium may in itself be protected under the Patent Act (refer toArticle 2, paragraph (3), item (i) and paragraph (4) of said Act; enforced on September 1,
2002). In light of these facts, the aforementioned interpretation of Article 101, item (iv) of
said Act does not mean that the Patent Act does not protect an invention of a program, etc.
Thus, the appellee’s allegation mentioned above is not necessarily acceptable.
3. Issue 3 (Restrictions on the exercise of the Patent Right)(1) Introduction
In the prior instance, the appellant alleged that the appellee's act constitutes an abuse ofright, on the grounds that the Invention could be easily conceived of based on the citedinvention described in a cited reference (Exhibit Ko No. 13-25), which is a publication
distributed in Japan prior to the filing of the patent application, and thus the lack ofinventive step in the Invention provides grounds for invalidation of the Patent. This
allegation was not accepted by the court of prior instance. In this instance, the appellant
withdrew said allegation of abuse of right and replaced said allegation with the allegation of
restrictions on the exercise of the patent right under Article 104-3, paragraph (1) of the
Patent Act, which was newly established by Act No. 120 of 2004 enforced after therendition of the judgment in prior instance.
In this court, the appellant has claimed as follows: (a) As the grounds for invalidation of theInvention due to the lack of novelty of the Invention based on the invention described in a
publication distributed in a foreign country prior to the filing of the patent application, theappellant has added the allegation that the Invention is the same as (i) Invention Otsu No. 12,(ii) Invention Otsu No. 13, (iii) Invention Otsu No. 14, Invention Otsu No. 15, and the
LabVIEW Invention; and (b) As the grounds for invalidation of the Invention due to thelack of inventive step in the Invention, the appellant presented the inventions as stated in thefollowing items (ii) through (iv) in addition to the invention stated in item (i), to allege that
the Invention could be easily conceived of based on the inventions described in the
publications distributed in foreign countries prior to the filing of the patent application: (i)the cited invention, as alleged in the prior instance (ii) the cited invention, Invention Otsu

27

No. 13, and Invention Otsu No. 17, (iii) Invention Otsu No. 18 and the well-known art, and(iv) Invention Otsu No. 12, Invention Otsu No. 15, Invention Otsu No. 17, Invention Otsu
No. 18, and the LabVIEW Invention. While the appellant submitted the additional
allegations and evidence to this court to prove, based on new publications, the existence ofthe grounds for invalidation such as the points (i) to (iii) of (a) above and the points (ii) to(iv) of (b) above, this court will determine in the following section 4 whether suchallegations and evidence should be dismissed for being made outside the appropriate timeframe (Disputed Point 4). First of all, this court will examine the claim for restrictions on
the exercise of the Patent Right based on the existence of the grounds for invalidation
described in point (iii) of (b) above.
As mentioned in 2(3) above, in the case of Invention 3, since the appellant's act does notconstitute indirect infringement, it is reasonable to conclude, without examining the claim
concerning the restrictions on the exercise of the patent right, that the appellee's claim isgroundless. While it might be unnecessary, this court will present its judgment concerning
Invention 3 as follows.
(2) Statements contained in Otsu Document No. 18
Otsu Document No. 18 (Vicky Spilman and Eugene J. Wong, "The HP NewWave
Environment Help Facility" (published in August 1989)) is a publication written in English
and distributed in a foreign country prior to the filing of the patent application (October 31,1989). Otsu Document No. 18 contains the following statements (a translation is cited from
Exhibit Ko No. 21. Underlines were added by this court for the sake of convenience.).
A. The item entitled "Common Facility" includes a statement that "The use of a sharedprogram to provide help also guarantees that the help user interface is identical for all
NewWave components. All displays look alike and all user interface features work
identically across NewWave applications. A user can ask for help in the same way,
regardless of whether the request is for a reminder of the purpose of an icon or for
information on how to perform a specific operation on some data." (from the fourth linefrom the bottom of page 1 to line 2 of page 2)
B. The item entitled "Intuitive User Interface" includes a statement that "In most cases, auser can look at the screen and figure out how to use the help facility without requiringconsiderable training or searching through the manuals. Thus one can get help
immediately when it is most needed, when a small hint or short explanation will allow thetask to be completed without a long delay or distraction. Help can be started from a menu,
from a function key or from a pushbutton. Index items can be chosen by mouse scrolling,
keyboard scrolling, or typing. The help user interface allows all common modes ofoperation so that its use will seem intuitive to as many users as possible." (from the 14th

28

line from the bottom of page 2 to the sixth line from the bottom of said page of thetranslation)
C. The item entitled "Starting Help" includes a statement that "To start help, the user canselect one of two menu items from the help pull-down menu. The help pull-down menu
for NewWave objects contains two items: Help Index and Screen/Menu Help. The menu
items activate the help index and screen/menu help mode. respectively. The user can makethe selection by using the mouse or by using accelerators (keyboard interface). The
accelerator for gaining access to the help index is 11. The user can also start help byselecting the help pushbutton from a dialog box. When the help pushbutton is selected, thehelp text window containing information pertinent to the dialog box is displayed." (fromline 6 of page 3 to line 17 of said page of the translation)
D. The item entitled "Screen/Menu Help" includes a statement that "As mentioned above,
one of the major objectives for help is to provide context sensitivity. Context sensitivity isbest illustrated by the screen/menu help mode, which is also called ? mode. The user
selects screen/menu help from the help pull-down menu and the cursor changes to aquestion mark shape, indicating that the user is in a special help mode. The user can movethe question mark cursor around on the screen and click the button on the mouse when the
cursor is on an area of interest. The verbal equivalent of this action is to ask the question"What is this?" while pointing at the referenced area. Screen/menu help allows the user to
get help on anything in the application window, which might include pull-down menus,
icons, and fields. When ? mode is activated, the Screen/Menu Help item in the help
pull-down menu changes to Cancel Help, which allows the user to exit the mode without
having to select a help topic. When the user activates screen/menu help and selects an
item, the help window displays information about that item instead of executing that
selection. After the help window is displayed, the mouse cursor and the help pull-downmenu are restored to the previous state. ? mode is active for one selection at a time."(from 16th line from the bottom of page 3 to line 4 of page 4 of the translation)
E. The item entitled "Internal Functionality" includes a statement that "When the user
selects ? mode, the help facility sends a message to the application, telling the application
to set the mode flag to intercept on. The mode flag is a variable that is part of the
NewWave architecture and is maintained by the application. Setting the mode flag causes
all messages to be sent through the help message filter until the help facility tells theapplication to set intercept off (another message is sent). When intercept ? mode is
invoked, the help facility maintains the ? cursor and interprets the help selection of theuser. Once a selection is made with ? mode, intercept mode is turned off and a help
message is generated to display the help topic." (from 11th line from the bottom of page 929

to the second line from the bottom of page 11 of the translation)(3) Configuration of Invention Otsu No. 18
Since Invention Otsu No. 18 is the help facility for the HP NewWave environment, it isrelated to "information processing device" and "information processing method" and has thefollowing configuration.
A. "Screen/Menu Help" item
According to items D and E of (2) above, the Screen/Menu Help allows the user to gethelp on an item such as an icon in an application window and displays a help message.
Therefore, Invention Otsu No. 18 has the "Screen/Menu Help" item, which displays a help
message on an item such as an icon.
B. “Icon”
According to item D of (2) above, it is specified that an application window contains
an icon. As found by the judgment in prior instance cited in 1 above (the 12th line fromthe bottom of page 25 to the tenth line from the bottom of said page of the judgment inprior instance), "Icon" is a picture or pictograph displayed on the display screen in orderto represent various data and various processing functions. In other words, "Icon" isdesigned to trigger the execution of the predetermined information processing function.
Therefore, Invention Otsu No. 18 is equipped with an "icon" to trigger the execution of
the predetermined information processing function.
C. "Screen," "display means," "display devise," "mouse," and "keyboard"
According to item D of (2) above, the user can move the question mark cursor all overthe screen and obtain help information by clicking a mouse button when the cursor is on
an area of interest. The subject matters about which the user can obtain help information
include icons and the pull-down menu (according to item C of (2) above, the pull-downmenu contains the “Screen/Menu Help” item). Therefore, Invention Otsu No. 18 isequipped with a "screen," which displays the “Screen/Menu Help” item and icons, and a"mouse," which designates an icon displayed on the screen. Since both “Screen/Menu
Help” item and icons are displayed on the screen, it is obvious that Invention Otsu No. 18
is equipped with a "display means," which displays the “Screen/Menu Help” item andicons on the screen.
According to item D of (2) above since each item is displayed on the screen, it isobvious that Invention Otsu No. 18 is equipped with a "display devise," which displays
data.
Furthermore, according to item B of (2) above, Invention Otsu No. 18 is equippedwith a "mouse" and a "keyboard," which are used to input data.
D. "Control means"30(A) According to items C and D of (2) above, the user can select the Screen/Menu Helpmode by using a mouse and get help by clicking a mouse button. According to item D of(2) above, when the user activates the Screen/Menu Help and selects an item such as an
icon, the help window does not execute the selection, but displays information on said
item. According to item A of (2) above, if the user wants to receive a reminder of the
purpose of an icon, the user can get help. Therefore, Invention Otsu No. 18 is equippedwith a control means that displays, in the help window on the screen, i.e., a display means,
help information on an icon by selecting the icon subsequently to the selection of the“Screen/Menu Help” item by using a mouse.
(B) Furthermore, according to item D of (2) above, if the user selects the Screen/Menu
Help, the cursor changes to a question mark shape. The "?" mode is active for one
selection at a time. After the help window is displayed, the mouse cursor is restored to theprevious state. According to item E (2) above, when the user selects “?” mode, the mode
flag is set to intercept on. Once a selection is made by a mouse in the "?" mode, the"intercept" mode is turned off. Otsu Document No. 18 discloses the function that the user
can exit the "?" mode by selecting something by the mouse in the "?" mode. According toitem D of (2) above, if an item such as an icon is selected in the "?" mode, the help
window does not execute the selection but displays information on the item. Therefore,
Invention Otsu No. 18 displays help information on an icon only if the icon is selected bya mouse immediately after the selection of the “Screen/Menu Help” item. In other words,
Invention Otsu No. 18 is equipped with a control means to execute the predetermined
information processing function of an icon unless the icon is selected by a mouse
immediately after the selection of the “Screen/Menu Help” item.
(4) Comparison between Invention Otsu No. 18 and the Invention
A. Comparison with Invention 1
Since the “Screen/Menu Help” item of Invention Otsu No. 18 is designed to display ahelp message on an item such as an icon (item A of (3) above), the "first icon" of
Invention 1 is the same as the “Screen/Menu Help” item of Invention Otsu No. 18 in thesense that they are the "means to display a functional description" that executes thefunction of displaying a functional description of an icon. The "icon," "screen," "display
means," and "mouse" of Invention Otsu No. 18 correspond to the "second icon," "display
screen," "display means" and "designation means" of Invention 1, respectively (items B
and C of (3) above). The "control means" of Invention Otsu No. 18 corresponds to the"control means" of Invention 1, while "icon" is used as the "functional description display
means" (item D, a. of (3) above).
On these grounds, Invention 1 is the same as Invention Otsu No. 18 in the sense that31both inventions may be regarded as "information processing device characterized byhaving a functional description display means to execute the function of displaying afunctional description of an icon, a display means to display on the display screen thesecond icon, which triggers the execution of the predetermined information processing
function, a designation means to designate an icon displayed on the display screen of said
display means, and a control means to display a functional description of said second iconon the display screen of said display means in response to the designation of the second
icon subsequent to the designation of the functional description display means by said
designation means." As alleged by the appellee as Difference A in section II, 6, item E, thetwo inventions are different in the following points.
[Difference] The "functional description display means," which executes the function of
displaying a functional description of an icon, corresponds to "icon" in the case of
Invention 1, but corresponds to the "Screen/Menu Help" item in the case of Invention
Otsu No. 18.
B. Comparison with Invention 2
Invention 2 is an invention cited from [Claim 1]. In the case of Invention 2, thecontrol means described in [Claim 1] can also "execute the predetermined information
processing function of the second icon unless said second icon is designated by said
designation means immediately after the designation of the first icon.” Thus, it isreasonable to conclude that the "control means" of Invention Otsu No. 18 corresponds tothe “control means” of Invention 2, while “icon” is used as the "functional description
display means" (item D,(B) of (3) above).
Therefore, Invention 2 is the same as Invention Otsu No. 18 not only in the manner inwhich Invention 1 is the same as Invention Otsu No. 18, but also in the sense that theinvention is designed to have the control means "execute the predetermined information
processing function of the second icon unless the second icon is designated by said
designation means immediately after the designation of the functional description display
means." However, the two inventions are different in the "Difference" described in item A
above.
C. Comparison with Invention 3
The "mouse," "keyboard," "display devise," "icon," and "screen" of Invention Otsu No.
18 correspond to the "input device," "display device," "second icon," and "display screen"of Invention 3 respectively (items B and C of (3) above). Since the "Screen/Menu Help"
item of Invention Otsu No. 18 is designed to display a help message on an item such as an
icon (item A of (3) above), the "first icon" of Invention 3 is the same as the "Screen/Menu
Help" item of Invention Otsu No. 18 in the sense that both may be regarded as the32

"functional description display means," which executes the function of displaying afunctional description of an icon. In the case of Invention Otsu No. 18, when an icon is
selected subsequently to the selection of the "Screen/Menu Help" item, help informationon the icon is displayed in the help window on the screen (item D of (3) above).
Therefore, Invention 3 is the same as Invention Otsu No. 18 concerning the following
two points: both inventions may be regarded as an "information processing method that
controls a device equipped with a data input device and a data displayed device, which ischaracterized by displaying on the display screen the functional description display means,
which executes the function of displaying a functional description, and the second icon,
which triggers the execution of the predetermined information processing function, andalso displaying on the display screen a functional description of said second icon when
the second icon is designated subsequently to the designation of the functional description
display means.” The two inventions are different from each other in the [Differences]
described in item A above.
(5) Judgment on differences
As found by the judgment in prior instance, which is cited in section 1 above, withregard to Issue 1 (Fulfillment of the constituent features), at the time of filing the patentapplication, "icon" was well-known art as a means to execute the predetermined information
processing function. According to the evidence (Otsu Documents No. 13 and No. 18), a
similar means, "menu item," was also a well-known art. On these grounds, it should beconcluded that a person skilled in the art can appropriately choose either “icon” or “menuitem,” when necessary, as a means to trigger the execution of the predetermined information
processing function since such a decision is a matter of technical design.
In fact, regarding the means to execute the function of displaying a functionaldescription of an icon, Otsu Document No. 12 ("Hyper Tools for Hyper Programmers")
distributed in July 1988 prior to the filing of the patent application contains the statement:"abuilt-in help function that lets you quickly get information on the different tools. To get help
on any tool on this screen, click on the help icon. Then click on any of the icons for thetools shown." (from the seventh line from the bottom of page 14 to the fourth line from thebottom of said page of the translation [Exhibit Ko No. 19]). Thus, it is reasonable toconclude that "icon" to get help that triggers the execution of the function of displaying afunctional description was already a publicly-known means at the time of filing of thepatent application.
If this is the case, as far as Invention Otsu No. 18 is concerned, it should be consideredthat any person skilled in the art could easily conceive of the idea of adopting "icon," inplace of the "Screen/Menu Help" item, as a "functional description display means," which

33executes the function of displaying a functional description of an icon.
The action and effect brought about by the configuration of the Invention did not go
beyond the level that was naturally expected to be achieved by the idea of adopting thewell-known "icon" as a "functional description display means," which executes the functionof displaying a functional description of an icon. Therefore, said action and effect may not
be regarded as special.
(6) The appellee’s allegations
A. The appellee argues that, regarding the use of the help function directly from anapplication screen (without shifting into a specific mode), it was a standard approach in
the relevant technical field, at the time of filing the patent application, to adopt theconfiguration that uses the "pull-down menu," which requires at least 2 clicks, and does
not use a "button," which is a to-be-clicked button directly displayed on the screen, and,
therefore, it was extremely difficult to create the Invention's configuration, which uses the"first icon," or any configuration other than the aforementioned standard configuration.
However, even if it was a standard approach in the relevant technical field, at the timeof filing the patent applications, to adopt a configuration that uses the "pull-down menu"
to execute the help function when it is used directly from an application screen, there wasno special impediment to the use of any other approach. In fact, as mentioned in the (5)above, Otsu Document No. 12 describes a configuration that uses "icon" to execute thehelp function when it is used directly from an application screen. Therefore, it iscompletely unreasonable to conclude that it was extremely difficult to create aconfiguration that uses "icon" and does not use "pull-down menu," as is the case with theInvention. Thus, the appellee’s allegation as mentioned above is unacceptable.
B. The appellee argues that "menu item" is completely different from "icon" from theperspective of user operation because "menu item" allows the users to select an item thatis not directly displayed on the screen by clicking a mouse button in two or more separate
places, but "icon" allows the user to click a mouse button on an icon that is directly
displayed on the screen.
It is true that "menu item" is different from "icon" from the perspective of user
operation. However, as mentioned in (5) above, both "menu item" and "icon" arewell-known art to trigger the execution of the predetermined information processing
function. Each person skilled in the art should be able to choose either "icon" or "menuitem," when necessary, since it is a matter of technical design. Therefore, even if "menu
item" is different from "icon" from the perspective of user operation, it would not affectsaid judgment that it could have been easily created by any person skilled in the art.
C. The appellee argues that, according to Otsu Document No. 18, since the "Screen/Menu

34

Help" item is displayed only when the user opens the help pull-down menu and is not
displayed when the user clicks on an icon, Otsu Document No. 18 does not state that, as is
the case with the Invention, "the first icon and […] the second icon" are displayed on the"display screen," where an icon may be designated (Difference B).
However, the claims for the Invention merely contains the following statements: (i) "[…] a display means to display on the display screen the first icon, […] and the second
icon, a designation means to designate an icon displayed on the display screen of said
display means, and a control means to display a functional description of the second iconon the display screen of said display means in response to the designation of the second
icon subsequent to the designation of the first icon by said designation means." ([Claim1]; [Invention 1]); or (ii) " […] displays on the display screen the first icon, […] and […]the second icon, […] and triggers, in response to the designation of the second icon
subsequent to the designation of the first icon, the display of a functional description ofsaid second icon on the display screen.” ([Claim 3]; [Invention 3]). These claims do not
specify that the first icon is displayed on the display screen when the second icon isdesignated. Thus, since the appellee’s allegation as mentioned above does not have any
basis in the statements included in the patent claims, it must be said that the appellee's
allegation is unreasonable.
D. The appellee alleges that, since the Invention has a configuration that does not display
a functional description of the second icon when the second icon is designatedsubsequently to the designation of any indication that may not be regarded as the second
icon (Constituent features 1-C and 3-C), it is possible to prevent unwanted display of afunctional description due to the erroneous designation of the first icon and to save theuser from taking a special action such as pressing the ESC button as a result of such
erroneous designation. The appellee further alleges that, in contrast the Invention as
described above, the Invention Otsu No. 18 does not allow the user to exit the "?" mode
without displaying the help window unless the user conducts a special operation, namely,
opens the pull-down menu once again and selects the "Cancel Help" item, which is thedifference between the two inventions (Difference C).
However, said constituent features pointed out by the appellee consist merely of a"control means that displays a functional description of the second icon on the display
screen of said display means in response to the designation of the second icon subsequent
to the designation of the first icon by said designation means" (1-C) or "to display afunctional description of the second icon on the display screen in response to thedesignation of the second icon subsequent to the designation of the first icon" (3-C). Since
these statements do not specify anything about the case where any indication that may not35

be regarded as the second icon is designated subsequently to the designation of the first
icon, it is reasonable to conclude that the apellee’s allegation mentioned above does nothave any basis in the statements included in the patent claims.
Furthermore, the claims of Invention 2 contains a statement that "an information
processing device described in Claim 1 characterized by having said control means that
executes the predetermined information processing function of the said second icon when
the second icon is not designated by said designation means immediately after thedesignation of the first icon." This means that it is specified that if the designation of thesecond icon does not immediately follow the designation of the first icon, the execution of
the predetermined information processing function of the second icon would be triggered.
However, nothing more is specified. In other words, said statement does not refer to suchconfiguration that is claimed by the appellee, i.e., the configuration that does not display afunctional description even if no special operation, such as pressing the ESC button, isconducted in response to the designation of any indication that may not be regarded as thesecond icon subsequent to the designation of the first icon. Therefore, even inconsideration of Invention 2, said claim of the appellee does not have any basis in thestatements included in the patent claims.
Moreover, as mentioned in item D of (2) above, Otsu Document No. 18 contains astatement that "When ? mode is activated, the ‘Screen/Menu Help’ item in the help
pull-down menu changes to Cancel Help, which allows the user to exit the mode without
having to select a help topic." Therefore, it is reasonable to conclude that Otsu Document
No. 18 states that, if the user opens the pull-down menu and selects Cancel Help, the user
can exit “?” mode without displaying the help window. However, Otsu Document No. 18
does not contain any other statement, such as the one alleged by the appellee, i.e., thestatement that the user cannot exit “?” mode without displaying the help window unlessthe user selects the Cancel Help item. Thus, the appellee’s allegation as mentioned above
has lost its premise.
On these grounds, the appellee’s allegation as mentioned above is not acceptable.
(7) Conclusion
In view of these facts mentioned above, the Invention, i.e., Inventions 1 to 3, could havebeen easily made by any person skilled in the art based on Invention Otsu No. 18 andwell-known art. Therefore, it is reasonable to conclude that the Patent on Invention was
granted in violation of Article 29, paragraph (2) of the Patent Act and that such a patentshould be invalidated by a patent invalidation trial. Thus, the appellee, i.e., the patentee,
should not be allowed to exercise the Patent Right against the appellant under Article 104-3,
paragraph (1) of said Act.

36

4. Issue 4 (Allegations or evidence advanced outside the appropriate time)(1) The appellee alleges that, while the appellant newly submitted additional allegations andevidence to this instance with regard to the fulfillment of the constituent features and thegrounds for invalidation of the Patent, such allegations and evidence should be dismissed
for being advanced outside the appropriate time. Relevant records have revealed thefollowing facts about the historical background of this lawsuit.
On August 5, 2004, the appellee filed this action. In the prior instance, the first oral
argument was held on September 17, 2004, followed by the second oral argument on
October 26, 2004, and the third on November 30, 2004. The oral argument procedure wascompleted on the date of the third oral argument. On February 1, 2005, the court rendered a
judgment in prior instance in favor of the appellee. Dissatisfied with this judgment, theappellant filed this appeal. In the first oral argument held on April 25, 2005, the appellant
made a statement on a petition for appeal and a brief on appeal and newly submitted
additional allegation with regard to the fulfillment of the constituent features and thegrounds for invalidation of the Patent as well as publications etc., as evidence. In thesubsequent second oral argument on June 3, 2005 and the third oral argument on July 15,
2005, the appellant slightly supplemented said allegations and evidence. The oral argument
procedure was completed on the date of the third oral argument.
(2) Based on the abovementioned facts, in the prior instance, there was only about twomonths from the date of the first oral argument to the date of the third oral argument, on
which the oral argument procedure was completed. Moreover, there was only less than fourmonths between the date of filing of the action and the date of the third oral argument. Thisshows that the proceedings of the prior instance were carried out very efficiently within ashort period of time. While the appellant newly submitted to this court additional allegations
and evidence with regard to the fulfillment of the constituent features and the grounds forinvalidation of the Patent, except for subsequent slight supplementation, they contain thesame allegations and evidence as those advanced on the date of the first oral argument of
this instance, which is the day on which a statement was made on a brief on appeal. Thismeans that such additional allegations and evidence can be regarded as those advanced in
the initial stage of the proceedings of this court.
An examination of the content of said additional allegations and evidence reveals that,as far as the fulfillment of the constituent features is concerned, the appellant merely
supplemented, from a slightly different angle, its allegations already submitted in the priorinstance with regard to the fulfillment of the constituent features (the significance of "icon").
Further, while the allegation concerning the grounds for invalidation of the Patent was madebased on newly added documents, in view of the fact that those documents were written in37

English and distributed in foreign countries prior to the filing of the patent application,
which took place almost 15 years prior to the filing of this action, it was inevitable that the
search for such publicly-known documents took time.
Based on comprehensive consideration of these facts, while the appellant newly
submitted to this court the allegations and evidence with regard to the fulfillment of theconstituent features and the grounds for invalidation of the Patent, it is unreasonable toconsider said additional allegations and evidence as being made outside the appropriatetime.
(3) On the other hand, the appellee alleges that the submission of said additional allegations
and evidence should be regarded as being made outside the appropriate time because it was
obvious that the appellant was given sufficient opportunities for interpretation of claims andresearch on publicly-known documents, etc., from the following facts: (i) that about four
years had passed since the issuance of a warning based on the Patent Right until the date thejudgment in prior instance in connection with the appellant's act of producing, assigning,etc., or offering for assignment, etc., the previous product and the appellant's product; (ii)that at least two years had passed since the filing of a request for the previous provisional
disposition until the completion of the oral argument procedure of the prior instance; and(iii) that, in the previous lawsuit prior to this lawsuit, the court took into consideration not
only the previous product but also the appellant's product and issued a conciliation
recommendation to the effect that the appellant shall pay a certain amount.
However, a judgment as to whether the court should dismiss the allegations andevidence for being made outside the appropriate time under Article 157 of the Code of Civil
Procedure depends on whether the court finds that there are objective circumstances thatprovide grounds for expecting earlier submission than the actual timing of submission inlight of the actual state of progress in the proceedings. Any of the circumstances as allegedby the appellant has nothing to do with the actual state of progress in the proceedings
related to the claim of the appellee.
Furthermore, regarding the appellant's act of producing assigning, etc., or offering for
assignment, etc., the previous product, the appellee filed a request for the previous
provisional disposition to seek an injunction against the appellant’s act as mentioned above
based on the Patent Right on November 7, 2002 and December 10, 2002 respectively(Exhibit Ko No. 13-1, 28). Said request was withdrawn by the appellee on June 18, 2003
(Exhibit Ko No. 13-38, 39). In the previous lawsuit as to whether said act of the appellant
infringed the Patent Right of the appellee (The principal action was filed by the appellant on
August 15, 2003 to seek a declaration of the nonexistence of the right to demand an
injunction against patent infringement [Exhibit Ko No. 1]. Subsequently, a counterclaim

38was filed by the appellee on October 29, 2003 to seek an injunction against patent
infringement [Exhibit Ko No. 3].), one of the issues was the existence or nonexistence ofthe grounds for invalidation of the Patent due to lack of inventive step in the Invention
based on the cited references (Exhibit Ko No. 13-25 concerning the principal action andExhibit Ko No. 25 concerning the previous action). The judgment in the first instance(Exhibit Otsu No. 1) rendered on August 31, 2004, subsequently to the filing of this action
by the appellee, states that the "?" button and "display" button, etc., are merely "signs" or"characters" with no design quality and may not be regarded as pictures or pictographs, and,
therefore, they may not be regarded as "icon," which is a constituent feature of the Invention.
Further, it was stated that, since the computer onto which the previous product has been
installed and the use thereof do not fall under the technical scope of the Invention, theappellant's act does not constitute infringement of the Patent Right. This judgment was
finalized without the court's judgment on the abovementioned grounds for invalidation. In
consideration of such historical background, the appellee’s allegation as mentioned above is
unacceptable because the additional allegations and evidence newly submitted by theappellant to this court may not be regarded as being made outside the appropriate time inlight of the circumstances alleged by the appellee in this lawsuit.
(4) Based on the abovementioned facts, while the appellant newly submitted to this court
the allegations and evidence with regard to the grounds for invalidation of the Patent, it isunreasonable to conclude that said allegations and evidence was submitted for the purposeof unjustly delaying the proceedings, and thus such allegations and evidence may not bedismissed ex officio under Article 104-3, paragraph (2) of the Patent Act (according torelevant records, it is clear that, in this lawsuit, there were no such special circumstanceswhere time limits were imposed on the period within which allegations and evidence mustbe submitted with regard to the grounds for invalidation of the Patent under Article 147-3,
paragraph (3) or Article 156-2 of the Code of Civil Procedure, which are provisions related
to well-organized proceedings).
5. Conclusion
On these grounds, since all of the claims of the appellee are groundless, the judgment inprior instance that accepted them shall be revoked, and, thus, all of the appellee's claims shallbe dismissed, and the judgment shall be rendered in the form of the main text.
Intellectual Property High Court, Special Division
Presiding judge: SHINOHARA Katsumi
Judge: TSUKAHARA Tomokatsu
Judge: SATO Hisao

39

Judge: NAKANO Tetsuhiro
Judge: OKINAKA Yasuhito( Attachments are not available )40