Judgment rendered on February 1, 2005, the original received on the same date, Court
Clerk
2004 (Wa) 16732 Case of Seeking an Injunction against Infringement of a Patent Right
Date of conclusion of oral argument: November 30, 2004
Judgment
Plaintiff: Matsushita Electric Industrial Co., Ltd.
Representative Director: X
Counsel attorney: OHNO Seiji
Patent attorney as an assistant in court: TANAKA Hisako
Defendant: JustSystems Corporation
Representative Director: Y
Counsel 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: AMEMIYA Yasuhito
Main text of the judgment
1. The defendant shall not engage in manufacturing, assigning, etc.
(assigning, leasing, or providing through an electric telecommunicationline), or offering for assignment, etc. the products specified in attached
Product Lists (A) and (B).
2. The defendant shall dispose of the products specified in the preceding
paragraph.
3. The defendant shall bear the court costs.
Facts and reasonsNo. 1 Claims
The same as those stated in the "Main text of the judgment."
No. 2 Background
1. Facts, etc. undisputed by the parties(1) Parties concerned
The plaintiff is a stock company engaged in the manufacturing, sale, etc. of video
and audio equipment, home electrical appliances, information and communicationequipment, etc. as a business.
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The defendant is a stock company incorporated for the purpose of the development,
sales, etc. of computer systems.
(2) Patent right of the plaintiff
The plaintiff has the following patent right (the "Patent Right"; the invention
described in Claim 1 shall be referred to as "Invention 1," the invention described in
Claim 2 shall be referred to as "Invention 2," and the invention described in Claim 3
shall be referred to as "Invention 3": the three inventions shall be collectively referred toas the "Inventions"; the description concerning the Invention shall be referred to as the"Description" (Exhibit Ko No. 13-13; please refer to the attached patent gazette)).
Patent No.: 2803236
Title of the Invention: Equipment and method of information processing
Application filing date: October 31, 1989
Application number: Patent Application No. 1989-283583
Publication date: June 20, 1991
Publication Number: Publication of Unexamined Patent Application No. 1991-144719
Registration date: July 17, 1998
Claim 1An information processing device characterized by having [i] a display means todisplay on the display screen an icon 1, which triggers the execution of the function
which displays the functional description of an icon, and an icon 2, which triggers theexecution of the predetermined information processing function, [ii] a selection means
to select an icon displayed on the display screen of said display means, and [iii] acontrol means to display the functional description of said icon 2 on the display screenof said display means in response to the selection of the icon 2 immediately after theselection of an icon 1 by said selection means.
Claim 2The information processing device described in Claim 1, which is characterized by
the process where, if an icon 2 is not selected by said selection means immediately after
the selection of an icon 1, said control means would execute the predetermined
information processing function of said icon 2.
Claim 3
An information processing method that is designed to control a device equippedwith a data input device and a data display device and that is characterized by theprocess where, on the display screen, which displays an icon 1, which triggers theexecution of the function of displaying a functional description, and an icon 2, which
triggers the execution of the predetermined information processing function, the2

functional description of said icon 2 is displayed in response to the selection of the icon
2 immediately after the selection of the icon 1.
(3) Decomposition into the constituent features
A. Invention 1 may be decomposed into the following constituent features:
1-A. A display means to display on the display screen an icon 1, which triggers theexecution of the function of displaying the functional description of an icon, and an icon
2, which triggers the execution of the predetermined information processing function;
1-B. A selection means to select an icon displayed on the display screen of said display
means;
1-C. A control means to display the functional description of said icon 2 on the display
screen of said display means in response to the selection of the icon 2 immediately after
the selection of an icon 1 by said selection means;
1-D. An information processing device characterized by having 1-A. to 1-C. above
B. Invention 2 may be decomposed into the following constituent features:
2-A. The process where, if an icon 2 is not selected by said selection means
immediately after the selection of an icon 1, said control means would execute thepredetermined information processing function of said icon 2;
2-B.The information processing device described in Claim 1 which is characterized by
2-A. above
C. Invention 3 may be decomposed into the following constituent features:
3-A. An information processing method that is designed to control a device equippedwith a data input device and a data display device;
3-B. On the display screen, which displays an icon 1, which triggers the execution of
the function of displaying a functional description, and an icon 2, which triggers theexecution of the predetermined information processing function;
3-C. The functional description of said icon 2 is displayed in response to the selection of
the icon 2 immediately after the selection of an icon 1;
3-D. An information processing method characterized by 3-A. to 3-C. above(4) Defendant's act
The defendant has been engaged in manufacturing, assigning, etc. (assigning,leasing, or providing through an electric telecommunication line) or offering for
assignment, etc., the products stated in attached Product Lists (A) and (B).
Any user who was assigned or otherwise given the defendant's product has installed itin his/her computer and has been using it. On the computer into which the defendant's
product has been installed, the help function is carried and displayed as described inattached Product Lists (A) and (B).
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2. In this court case, the plaintiff alleged against the defendant that the defendant's act
specified in 1.(4) above constitutes infringement of the Patent Right and sought an
injunction against the manufacturing, assignment, etc. of the defendant's product anddemanded disposal thereof under Article 100 of the Patent Act.
3. Issues(1) whether the "help mode" button and the "print" button displayed on a computer into
which the defendant's product has been installed may be regarded as "icons" mentioned
in the constituent features in question(2) whether the defendant's act constitutes indirect infringement (Article 101, items (ii)and (iv) of the Patent Act)(3) whether it is obvious that there is a reason for invalidation of the patent in question(the "Patent")
No. 3 Allegations of the parties concerned regarding the issues
1. Issue (1) (the fulfillment of the constituent features)[Plaintiff's allegation]
Since the "help mode" button and the "print" button displayed on a computer into
which the defendant's product has been installed may be regarded as "icon," anycomputer to which the defendant's product has been installed satisfies all of theconstituent features of the Inventions.
(1) Meaning of "icons" in the Inventions
The term "icons" in the Inventions means a "pictures or pictographs displayed on adisplay screen as representations of various data and processing functions."
Although the defendant argued that the term "icons" means "'draggable' or 'movable'
pictures or pictographs placed 'on a desktop' as representations of various data andprocessing functions in order to carry out commands." However, the information
contained in a document (Exhibit Ko No. 15) available as of the time of the filing of an
application to obtain the Patent (the "Patent Application") clearly reveals that, at thetime of the filing of the Patent Application, any person ordinarily skilled in the art
recognized any "pictures or pictographs displayed on a display screen as representationsof various data and processing functions" as "icons" regardless of whether those icons
were draggable or movable or not and whether they were placed on a desktop or in awindow. Therefore, such limited interpretation as mentioned above is unacceptable.
(2) Issue of whether the "help mode" button and the "print" button of the defendant's
product may be regarded as "icons"
The icons of "help mode" button and the "print" button of the defendant's productmay be regarded as "icons" of the Inventions because the icons of said buttons are4

"pictures or pictographs displayed on a display screen as representations of various dataand processing functions."
Although the "help mode" button of the defendant's product itself is not movable, if
a user clicks the "help mode" button with a mouse, the arrow-shaped cursor transforms
into an arrow with a "?" mark. This cursor with a "?" mark is movable. If a user clicks
the "print" button with the cursor with a "?" mark, a description of the "print" button
will be displayed. Therefore, while the "help mode" button of the defendant's productitself is not movable, it may be regarded as an "icon" that can be placed over anothericon. In this sense as well, no one doubts that the defendant's product contains what may
be regarded as "icons" of the Inventions.
Furthermore, the "help mode" button and the "print" button of the defendant's
product can be moved up and down as a "group of icons" if dragged with a mouse. Thus,
it is clear that the "help mode" button and the "print" button of the defendant's productmay be regarded as "icons" even if we examine the issue of whether those bottoms may
be regarded as "icons" from the perspective of movability as alleged by the defendant.
(3) Defendant's allegation (3)The defendant alleged that, in order to be recognized as "icons" of the Inventions, itis necessary that icons are used in a modeless environment. However, the plaintiff
merely stated that "in a modeless environment as icons" as a premise for its argument
concerning the issue of whether the Inventions could have been easily conceived of by
any person ordinarily skilled in the art. Therefore, this statement does not limit thescope of the concept of "icons."[Defendant's allegation]
Since the "help mode" button and the "print" button displayed on a computer into
which the defendant's product has been installed may not be regarded as "icons," thecomputer into which the defendant's product has been installed does not satisfy theconstituent features of the Inventions.
(1) Meaning of "icons" of the Inventions"Icons" are "draggable" or "movable" pictures or pictographs placed "on a desktop"
as representations of various data and processing functions that are used to carry out
commands.
In other words, although the Description does not contain any statement that directly
defines "icons," Figure 2 of the Description was prepared on the premise that "icons"
are draggable or movable. Also, around the time of filing the Patent Application,
documents (Exhibits Otsu No. 2 to No. 4) were created on the premise that "icons" aredraggable or movable.
5Furthermore, around the time of the filing of the Patent Application, "icons" mean
pictures or pictographs displayed on a desktop as representations of various data andprocessing functions that are used to carry out commands. Any pictograph that is notdirectly displayed on the desktop (pictograph, etc. in a window) should be regarded as amere "mark" or "button" even if it may be regarded as a "pictograph" and should not be
considered as an "icon" (Exhibit Ko No. 13-44).
(2) Interpretation that the "help mode" button and the "print" button of the defendant's
product may not be regarded as "icons"
As described above, "icons" mean draggable or movable pictures or pictographs
displayed on a desktop as representations of various data and processing functions thatare used to carry out commands. On the other hand, the "help mode" button and the"print" button of the defendant's product are not only undraggable and unmovable but
also placed in a separate window displayed on a desktop. Since it is obvious that said
buttons do not exist on a display screen, i.e., desktop, the "help mode" button and the"print" button displayed on a computer into which the defendant's product has been
installed may not be regarded as "icons."(3) It may be interpreted that the plaintiff requires the "icons" of the Inventions to be
used in a modeless environment.
2. Issue (2) (indirect infringement)[Plaintiff's allegation](1) Since any computer into which the defendant's product has been installed satisfies
the constituent features of the Inventions, the user's act of purchasing the defendant's
product and installing it into his/her computer and using said computer constitutes anact of producing a product embodying Inventions 1 and 2 and using the process
embodying Invention 3 and therefore constitutes an act of direct infringement.
(2) Since the problem to be solved by the Inventions may be solved by installing thedefendant's product into a computer, the defendant's product is essential to solve theproblem to be solved by the Inventions. The defendant's product is different from any of
the standardized or widely-used products marketed in Japan, such as screws, nails,
electric bulbs, transistors, etc., but is a special product made for the purpose of solving
the problem by use of the Inventions. Therefore, the defendant's product may not be
considered to be a product widely distributed in Japan.
(3) Defendant's allegation
The defendant alleged that, in consideration of the facts that the functions of the
defendant's product described in attached Product Lists (A) and (B) are the functions ofMicrosoft Windows and that its help display program, etc. may be used even when6

another application software is being executed, said functions may be considered to be
executed regardless of whether the defendant's product has been installed or not. The
defendant further alleged that the installation of the defendant's product into a computer
has nothing to do with the resolution of the problem to be solved by the Inventions.
However, even if the help display program, etc. are functions of Windows, unlessthe defendant's product is designed to use such Windows functions, the functions
described in attached Product Lists (A) and (B) could not be performed. In other words,
the display screen described in said Product Lists itself would not appear on any
computer into which the defendant's product has not been installed. The functions
described in attached Product Lists (A) and (B) that can be performed on the display
screen would become available on a computer only if the defendant's product isinstalled into the computer.
It should be noted, first of all, that the act of direct infringement disputed in thiscourt case is an act of installing the defendant's product into a computer, in other words,
an act of producing a computer that displays the screen described in said attached
Product Lists (A) and (B) in which the functions described in said lists can be
performed, and is not an act of producing a computer in a general, abstract sense, as
alleged by the defendant, that allows the execution of the function described to be "if auser selects the 'help mode' button and then another button, the description of said
another button would be displayed."
As mentioned above, since a computer into which the defendant's product has been
installed infringes the Patent Right and solves the problem to be solved by theInventions, the infringement alleged by the plaintiff would not occur if the defendant's
product is not installed into a computer. Therefore, the defendant's product may be
regarded as essential for resolution of the problem.
(4) The defendant has been aware, at least since the time of the service of a petition for
an order of provisional disposition (Exhibit Ko No. 13-1) concerning another case filedby the plaintiff on November 7, 2002, that the Inventions are the defendant's patented
inventions and that the defendant's product has been used to work the Inventions.
(5) Therefore, the defendant's act of engaging in manufacturing, assignment, etc., or
offering for assignment, etc. of the defendant's product as a business satisfies therequirement specified in Article 101, items (ii) and (iv) of the Patent Act and constitutes
indirect infringement of the Patent Right.
[Defendant's allegation]
The defendant's product may not be considered to be "essential for the resolution of
the problem by the invention." "A thing that is essential for the resolution of the7

problem by an invention" means some goods without which the "problem to be solved
by an invention" cannot be solved. The problem to be sold by the Inventions is the"inability to receive a functional description service when a user forgets or does notknow a keyword (if the conventional method is adopted)." The function that the plaintiff
alleged as the function of the defendant's product is a function of the operating system
of Microsoft Windows. The help display program, etc. can be used even when anotherapplication software is being executed. Regardless of whether the defendant's producthas been installed or not, the function described as "if a user selects the 'help mode'
button and then another button, the description of said ‘another button’ would be
displayed" can be executed.
Therefore, the installation of the defendant's product has nothing to do with theresolution of the problem, i.e., the "inability to receive a functional description service
when a user forgets or does not know a keyword (if the conventional method isadopted)." It cannot be said that the problem to be solved by an invention cannot be
solved without using the defendant's product. Thus, since the defendant's product may
not be considered to be "essential for the resolution of the problem by an invention," thedefendant's act does not constitute indirect infringement.
3. Issue (3) (Abuse of rights)[Defendant's allegation]
The Inventions could have been easily made by any person ordinarily skilled in theart based on the inventions described in publications, etc. distributed in Japan prior to
the filing of the Patent Application and therefore cannot be patented under Article 29,
paragraph (2) of the Patent Act. Since there is a clear reason for invalidation of the
Patent, any claim made based on the Patent is unacceptable as an abuse of rights.
(1) Invention 1
A. Exhibit Ko No. 13-25
The Patent Gazette No. 1986-281358 (Exhibit Ko No. 13-25; the "cited reference")
publicized on December 11, 1986, which preceded the filing of the Patent Application,
disclosed that "a functional description display method of a word processor equippedwith an input means having character/sign keys, function keys to order some editing
processes such as deletion and insertion, and operation instruction keys, as well as adisplay means to display a document or operational guidance in response to theinformation input by use of said input means. Said method may be characterized by theprocess where the pressing of an operation instruction key and a function key insuccession will display on said display means a description of the editing processing
function selected by said function key."
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The cited reference shows the operation instruction key that corresponds to the "icon1" of Invention 1 and also shows a "function key" that corresponds to an "icon 2."
However, the two are the same in terms of the constituent features except for the feature
where, while a user displays the "icon 1" and an "icon 2" on a display screen and thendisplays a description by selecting with a mouse the "icon 2" immediately after the"icon 1" in Invention 1, a user carries out the same task by pressing keys on an actual
keyboard in the cited reference.
B. Combination of the cited reference, Exhibit Otsu No. 5 and Exhibit Ko No. 13-27"JStar Workstation" (Exhibit Otsu No. 5; "Publication 1" issued on April 25, 1986)
discloses a technology concerning the relationships between an actual keyboard and themarks displayed on the screen. Said technology allows a user to display pictures or
pictographs on a screen as the marks that correspond to the keys on an actual keyboard(such keyboard displayed on a screen shall be referred to as a "virtual keyboard") and toselect a key on a virtual keyboard with a mouse instead of pressing said key. Therefore,
Publication 1 may be considered to have disclosed that the "pressing of a key on an
actual keyboard" may be replaced by the "selection, with a mouse, of a mark that isdisplayed on a screen in the form other than characters, such as a picture or pictograph."
Furthermore, page 128 of "Nikkei Baito" (Exhibit Ko No. 13-27, "Publication 2"
issued in May 1986) discloses that the "operation that can be done by use of an actual
keyboard" may be replaced by the "selection, with a mouse, of a mark that is displayedon a screen in the form of a picture or pictograph."
Thus, by combining the cited reference about keys on a keyboard with Publications
1 and 2, any person ordinarily skilled in the art could have easily conceived of thetechnology that allows a user to display a description by displaying on a screen the"icon 1," which corresponds to the "operation instruction key," and an "icon 2," whichcorresponds to a "function key," and then "pressing the function key or selecting theicon 2 with a mouse" immediately after "pressing the operation instruction key or
selecting an icon 1 with a mouse,"; or, to be more specific, Invention 1, which allows auser to display a description by displaying the "icon 1" and an "icon 2" on the screenand "selecting an icon 2 with a mouse" immediately after "selecting the icon 1 with amouse."
C. Combination of the cited reference, Exhibit Ko No. 13-26 and Publication 2
Pages 33 and 34 of the "Ichitaro Ver. 4 Katsuyohen" (How to Use Ichitaro Ver. 4)(Exhibit Ko No. 13-26, "Publication 3" issued on April 14, 1989) state that the direct
clicking of a mark on a screen constitutes the same operation as the pressing of thecorresponding key.
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Publication 2 states that a user may input selection information either by clicking on
an "icon or button" or pressing a "key."
As of the time of the filing of the Patent Application, Publications 2 and 3 madepublicly known the technology that allows a user to either select a key on a keyboard
instead of selecting a button on a screen or, vice versa, to select a button on a screen
instead of selecting a key on a keyboard. Since an icon and a key are interchangeable,
any person ordinarily skilled in the art could have easily conceived of Invention 1,
which is about icons on a display screen, by combining the cited reference concerning
keys with Publications 2 and 3.
As described above, if a key on a keyboard and a mark displayed on a screen in theform of a picture or pictograph are interchangeable, any person ordinarily skilled in theart could have easily conceived of Invention 1. Furthermore, there is a prior art
document concerning the use of a picture or pictograph as a key on a keyboard (Exhibit
Ko. No. 13-44). If a keyboard consisting of keys carrying characters is presented as a
virtual keyboard of JStar, since the same characters are used in principle (Exhibit Otsu
No. 5), the idea of using the same pictures or pictographs could have been even moreeasily conceived of by any person ordinarily skilled in the art when a keyboard
consisting of keys carrying pictures or pictographs is presented as a virtual keyboard.
(2) Invention 2
In the case of Invention 2, the Description has not disclosed anything about whether
the effect of the selection of an icon 1 could be canceled by the selection of any icon
other than an icon 2. Therefore, Invention 2 may not be considered to have realized"automatic recovery from the mode." Furthermore, the case where an icon 2 is notselected immediately after the selection of an icon 1 may be interpreted as the casewhere the selection of an icon 2 is the first selection or the case where the selection ofan icon 2 occurs immediately after the selection of another icon 2. Since both of thesecases had already been disclosed in the cited reference, these could have been easily
conceived of by any person ordinarily skilled in the art as of the time of the filing of the
Patent Application.
(3) Invention 3
Invention 3 is the invention to make Invention 1, which is an invention of a product,i.e., a data processing device, into an invention of a process, i.e., the data processing
method. As mentioned with regard to Invention 1, Invention 3 could have been easily
conceived of by any person ordinarily skilled in the art based on the prior arts describedin the cited reference, Publication 1, etc.
(4) Plaintiff's allegation (2) (Difference A described below)
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A. What the plaintiff pointed out, as Difference A described below, can be summed up
to be that the function keys on a virtual keyboard are described in such a way that they
are differentiated from "icons."
However, Publication 1 does not refer to the function keys on a virtual keyboard as"icons" probably because it wasn't certain whether said keys were movable or not. If
immovable marks fall within the scope of the definition of "icons," the function keys on
a virtual keyboard may also be regarded as "icons," which makes it clear that function
keys and "icons" are interchangeable.
Therefore, any person ordinarily skilled in the art could have easily conceived ofInvention 1 by combining the technologies described in the cited reference, Publication
1, etc.
B. Meanwhile, since the cited reference discloses the case where the operation
instruction key and a function key are pressed in an opposite order, any person who
exercises an ordinary level of creativity, such as in making changes to the design, could
have easily conceived of the idea of creating an icon 1, which is designed to trigger the
execution of the function of displaying the functional description of an icon, as the icon
to be selected prior to an icon 2.
Moreover, any person ordinarily skilled in the art as of the time of the filing of the
Patent Application could have easily conceived of the idea of creating the icon 1, which
is designed to trigger the execution of the function of displaying the functionaldescription of an icon, as the icon to be selected prior to an icon 2, because such person
must have learned from Exhibit Ko No. 14-1 that, although the modeless conversation
system, under which a user first selects an icon (object) and then selects an icon thattriggers the execution of its function, is more useful in many cases, the mode typeconversation is preferable depending on the function or is inevitable in terms of design.
(5) Plaintiff's allegation (3) (Difference B described below)
The control flow that corresponds to "immediately after" is the same as the key
input control flow described in the cited reference in terms of function and effect.
In other words, the Description does not disclose at all what should follow after theselection of any icon other than an icon 2 immediately after the selection of an icon 1.
Therefore, any claim made based on the assumption that "any icon other than an icon 2
is selected," which is not disclosed in the Description, should be found unacceptable.
According to Exhibit Ko No. 14-1, it is clear that any person ordinarily skilled in theart as of the time of the filing of the Patent Application could have easily conceived ofthe process where the function-first type procedure is also applied to icons.
The plaintiff alleged that, since the effect of pressing the operation instruction key
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described in the cited reference remains until a functional key is pressed, it is different
from Invention 1. However, said control flow is merely one of the embodiments. The
cited reference does not describe any cases where the operation instruction key ispressed by mistake. In contrast, in the case of Invention 1, there are no constituent
features that require "limitations should be imposed." Also, no limitations are imposedon the case where any "icon other than an icon 2 is selected." Therefore, this includes
the technology where a user's act of mistakenly selecting the icon 1 leads to theunwanted display of an operation instruction.
Therefore, it may not be said that it is clear that Invention 1 has created the control
flow that is much more convenient than the one described in the cited reference.
[Plaintiff's allegation]
The Inventions involve inventive steps and it may not be said that it is clear that
there are reasons for invalidation of the Inventions.
(1) There are at least the following differences between Invention 1 and the citedreference.
A. While the cited reference describes the operation instruction key, it does not describe
Constituent Feature 1-A of Invention 1 "an icon 1 designed to trigger the execution of
the function of displaying the functional description of an icon."
B. The control flow described in the cited reference that "if said function key is pressed
immediately after said operation instruction key" is different from the control flow ofInvention 1 described as "in response to the selection of an icon 2 immediately after theselection of an icon 1."(2) Difference A
A. The defendant alleged that any person ordinarily skilled in the art could have easily
conceived of Invention 1 concerning icons on a display screen based on the citedreference concerning keys on a keyboard since Publication 1, etc. discloses that the"operation of a key on an actual keyboard" may be replaced by the "selection, with amouse, of a mark that is displayed on a screen in the form of a picture or pictograph."
However, pressing of a key is not something that can be simply replaced with theselection of an icon in a comprehensive manner. The idea presented in the citedreference that an operation instruction will be displayed regardless of which key: theoperation instruction key or a function key, is pressed first as long as the two keys arepressed in succession was formed only because a keyboard, which has a fixed numberof keys in predetermined places, is at issue. In the case of icons, which are highly
flexible in terms of their number and positions on a screen, it is necessary to examinevarious issues different from those related to the keys on a keyboard.
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Thus, when we discuss the issue of an inventive step of Invention 1, we need to
examine on a case-by-case basis whether any person ordinarily skilled in the art could
have easily conceived of the replacement of a key with an icon.
B. Publication 1 (Exhibit Otsu No. 5) describes a JStar's independently developed"virtual keyboard" where a software keyboard corresponding to an actual keyboard wascreated on a screen. This virtual keyboard was presented in a specialized window
display on a screen separately from other windows. The window for specificallypresenting the virtual keyboard displays a group of keys that are completely identicalwith those positioned in the "key area (Fig. 7.2)" of an actual keyboard in the exactly
same arrangement.
Fig. 9.33 "special virtual keyboard" of Publication 1 cited by the defendant is a typeof the aforementioned virtual keyboard. While the window specifically for a special
virtual keyboard displays a group of keys that are completely identical with thosepositioned in the key area of an actual keyboard in the exactly same arrangement, thekeys displayed on the window have pictures.
Therefore, in the entire Publication 1, any key displayed within a window
specifically for a virtual keyboard is referred to not as a "mark" but as a "key" and iscompletely differentiated from an "icon."
In this way, any person who refers to Publication 1, which discloses icons in such a
way that has nothing to do with keys on an actual keyboard or a virtual keyboard on ascreen, would not conceive of an idea of replacing with an "icon" the operation
instruction key described in the cited reference, which does not involve the concept ofan icon at all. In other words, even if a key carrying a picture that corresponds to therelevant key on an actual keyboard is displayed on a screen, the key would merely beinterpreted as a key on a virtual keyboard and no person would ever come across theidea that the key should be regarded as the "icon 1 designed to trigger the execution of
the function of displaying the functional description of an icon" used in Invention 1.
C. Moreover, Publication 2 (Exhibit Ko No. 13-27) states that "use of a keyboard
instead of a mouse in order to select a buttonon a screen," which merely suggests that, if
an icon is already displayed on a screen, any person who wants to select it may press acertain key on a keyboard instead of clicking it with a mouse. Therefore, any person
who refers to Publication 2 would not conceive of the idea of replacing with "icon" theoperation instruction key described in the cited reference, which does not involve theconcept of an icon displayed on a screen at all.
(3) Difference B
The control flow described in the cited reference that "if said function key is pressed13immediately after said operation instruction key" is a control flow where the pressing of
any key other than a function key (key carrying a character, sign, etc.) immediately after
the pressing of the operation instruction key would not be accepted. Since the effect ofthe pressing of the operation instruction key would continue until the pressing of afunction key, the subsequent pressing of a function key would display the operation
instruction of said function key.
In contrast, the control flow "in response to the selection of an icon 2 immediately
after the selection of an icon 1" in Invention 1 means that, after the icon 1 is selected, if
an icon 2 is selected, the functional description of the icon 2 would be displayed as longas any icon other than the icon 2 has not been selected.
While the defendant alleged that the Description does not disclose the case where
any icon other than an icon 2 is selected, Figure 2 of the Description clearly describes
the case where an icon 2 is not immediately selected after the selection of an icon 1. Inother words, in the case where "Release" is conducted in Step S4, if an "icon 2 designed
to trigger the execution of the predetermined information processing function" does notexist in that position, it would be interpreted that the user has not chosen a subject
matter whose functions will be described in Step S5 "Analysis/activation," which would
result in the user's coming to the "end" of the flowchart shown in Figure 2 for this time.
Subsequently, if the user selects "an icon 2 designed to trigger the execution of thepredetermined information processing function," the flowchart would proceed from"Start" to Step S1, where "the window information is acquired," and then to Step S2,
which examines whether the icon is "descriptive icon" or not. In this control flow, theanswer "No" would be chosen, which would lead to Step S6 "Functional operation,"where the information processing function of the icon 2 would be executed.
In sum, if "an icon 2 is selected immediately after the selection of an icon 1," inother words, in the case where "Release" is conducted in Step S4, if "there exists an
icon 2 designed to trigger the execution of the predetermined information processing
function," the functional description of said icon 2 would be displayed. On the other
hand, in the case where any icon other than an icon 2 is selected, in other words, in thecase where "Release" is conducted in Step S4, but there is no "icon 2 designed to trigger
the execution of the predetermined information processing function," no functionaldescription would be displayed. It is clearly stated that, if an icon 2 is subsequently
selected, in other words, if "an icon 2 is not immediately selected after the selection ofan icon 1," the information processing function of the icon 2 would be executed.
No. 4 Court decision
1. Issue (1) (Fulfillment of the constituent features)14

(1) Meaning of "icons" in the Description
A. While the Description (Exhibit Ko No. 13-13) does not define "icons," the claims
contain the statements "an icon 1 designed to trigger the execution of the function of
displaying the functional description," "an icon 2 designed to trigger the execution of
the predetermined information processing function," and "an icon displayed on thedisplay screen of the display means."
B. The detailed explanation of the invention presented in the Description (Exhibit Ko
No. 13-13) contains the same information as contained in the aforementioned claims
and the following statements regarding "icons."(A) "First, in Step S1, Window Information Memory Part 5 is used as a reference inorder to ascertain what objects are placed in what positions on the display screen of
Display Device 1. In sum, the display position data of icons displayed on Display
Device 1 that are designed to give various processing commands is obtained." (Section
4, lines 9 to 14)(B) "Next, in Step S2, it is determined whether the icon designed to request a functionaldescription has been selected or not. In this step, based on the position of the mouse
cursor at the time when a button on Pointing Device 2 was pressed, the type of the icon
displayed in that position is identified. If the selected icon is an icon designed to request
a functional description, the next step would be Step S3, where the icon designed torequest a functional description is moved in tandem with the movement of Pointing
Device 2. In Step S4, if a button of Pointing Device 2 is released, the process would
proceed to Step S5, where, based on the data about the position of the icon that requests
a functional description as of the time when the button was released and also on the dataobtained from Window Information Memory Part 5, the type of function whosefunctional description is requested is identified, and then, the functional description
application is activated to present the relevant functional description. In Step S2, if it isdetermined that an icon is not a functional description icon, the process would proceed
to Step S6, where the functional operation represented by the selected icon is executed.
Upon completion of said function, the control of the process of the flowchart presented
in Figure 2 is completed (lines 14 to 30 of Section 4).
(C) "The structure described the above functions as follows. First, a window opens asshown in Figure 3. At this point in time, screen information, information about theposition, size, etc. of the window is recorded. Within that window, multiple
rectangular-shaped home menus are displayed. At this time, the functional description
application is displayed in the form of an icon marked by a circle. Pointing Device 2 is
moved in such a way that an arrow-shaped mouse cursor is placed over the functional
15

description icon marked by a circle. Then, said icon is dragged by pressing a mousebutton until said icon is placed over the object whose functional description needs to be
displayed. Then, the mouse button is released. For example, said icon may be moved
onto an icon representing a communication function." (lines 31 to 41 of Section 4)(D) "Figure 5 shows an example of a functional description displayed upon release of amouse button when the functional description icon marked by a circle is moved onto thescroll bar positioned on a window frame. Figure 6 shows an example where said icon is
moved onto the menu message shown in another window." (line 50 of Section 4 to line
5 of Section 5)(E) "Figure 2 shows the flowchart of the control procedure applicable to theembodiments. Figures 3 and 4 show the embodiments. Figures 5 and 6 show otherdisplay examples of the embodiments." (lines 9 to 11 of Section 6)
C. As found in A. above, the Description does not define "icons," which are, according
to the information presented in A. above, designed to be displayed on the display screen
and to trigger the execution of the information processing function, etc., and, according
to the information presented in B.(A) above, designed to give various processing
commands.
Meanwhile, as described in B.(D) above, although some examples are shown as tohow a functional description is displayed when the functional description icon is moved
onto the scroll bar positioned on a window frame or onto the menu message displayedin another window. However, since "menu message" is not something that "gives
various processing commands," it may not be regarded as an "icon." Therefore, it cannot
be considered as an embodiment of the Inventions. In the Description, as described inB.(E) above, Figures 3 and 4 are shown as the "embodiments." However, Figure 6,
which shows the situation where the functional description icon has been moved onto amenu message, is titled as "another display example" and is thus distinguished from theembodiments. Therefore, the situation described in Figure 5 as "another display
example," where the functional description icon has been moved onto the scroll bar,
may not be regarded as an embodiment of the Inventions. Accordingly, a scroll bar may
not be considered to be an "icon."D. The defendant alleged that Figure 2 of the Description states that "icons" are required
to be draggable or movable.
Figure 2 of the Description shows a flowchart of the control procedure of theembodiments. After the acquisition of window information, if the description icon is"yes," the procedures would be described in the order of drag, release, andanalysis/activation. The explanation of the details thereof is given as found in B.(B)16above. While the embodiments describe a method where an icon 1 is dragged andreleased onto an icon 2, any part of the Description other than the section on theembodiments does not mention anything about the draggability and movability of"icons." Furthermore, the claims of the Inventions merely contain a statement that an
icon is "selected." In other words, the method of selection is not limited to dragging or
moving icons. The claims do not contain any statement that imposes a limitation on said
method. Thus, it may not be interpreted that Figure 2 of the Description requires "icons"
to be movable.
E. The defendant alleged that "icons" are required to be able to be placed on a desktop.
However, since Figure 3 of the Description requires "icons" to be displayed within awindow called "window title," it may not be said that "icons" of the Inventions are
required to be able to be placed on a desktop.
F. As described above, according to the Description, "icons" may not be considered tohave been defined in any other way as found in C. above. Therefore, the limitations
alleged by the defendant may not be considered to have been imposed.
(2) Meaning of "icons" as of the time of the filing of the application
A. Next, we are going to examine the defendant's allegation in consideration of themeaning of "icons" as of the time of the filing of the Patent Application. Documents
available as of the time of the filing of the Patent Application (October 31, 1989)
describe as follows.
(A) "Gendai yougo no kisochishiki 1989" (Basic knowledge of current terminology)(Exhibit Ko No. 13-56), which was published on January 1, 1989, describes an icon as"a method where a visually-recognizable picture displayed on a display screen isdesigned to trigger the execution of the process that corresponds to said picture. For
example, a user who wants to know the time can select a clock-shaped picture with amouse."(B) "Gekkan ASCII (Issue of January 1989) (Monthly ASCII) (Exhibit Ko No. 15),
which was published on January 1, 1989, has the following description.
a. It is stated that "This group of icons represent accessible devices and applications. If auser drags this part with a mouse and moves it up and down, he/she can completely hide
those icons under the upper or lower side of the window except for the NeXT logo markdisplayed at the top."b. It is stated that "As is the case with Mac, any file to be deleted will be dragged with amouse onto the black hole."c. It is stated that "[Directory Browser] menu displays, (omitted) in the form of ahierarchical structure, a list of the files stored in the selected window. A part of the17

information is displayed in the following two windows displayed in the form of icons."
In this connection, Figure 3 shows a common initial screen where many sets of filenames and the corresponding pictures symbolizing them are arranged and shown in awindow as "a group of icons in a window selected by the [Directory Browser] menu."
d. It is stated that "In the case of voice mail, a click of an icon for the [voice] command
would cause the audio data to be played." In this connection, Figure 4 shows the initial
screen of Electronic Mail where the mail window contains a set of the characters"voice" and a picture of lips as well as several sets of other characters and pictures
representing them, while the window to send mails also contains several sets of similar
combinations.
(C) The "Denshi jouhou tsuushin handobukku" (Electronic information communication
handbook) (Exhibit Ko No. 13-57), which was published on March 30, 1988, states that
"On a display, the multi-window function displays multiple screens at the same time inorder to allow mutual data exchange so that the user can carry out work by visuallychecking the work flow. Meanwhile, various data and processing functions are
represented by 'pictures' (called icons), which may be pointed and selected with a mousein order to carry out processes."(D) "Zukai konpyuuta hyakka jiten" (illustrated computer encyclopedia) (Exhibit Ko No.
13-58), which was published on November 20, 1986, states that "icons are pictographs
representing functions and files in a visually understandable manner. Some icons are
determined by a system from the beginning, while others can be freely determined byeach user. However, the use of unstandardized pictographs could make things evenmore complicated. The standardization of icons only started from 1986. As famous
examples of icons, the icons adopted by Xerox workstation "STAR" are described
below." As examples of icons, twelve icons are described. All of them are pictures
representing the corresponding functions.
(E) The "JStar waaku suteishon" (JStar work station) (Exhibits Ko No. 13-44, No. 14-1,
Exhibits Otsu No. 2 and No. 5), which was published on April 25, 1986, states asfollows.
a. Regarding the icons adopted by Xerox workstation "STAR" as described in (D) above,it is stated that "The method in which papers, folders, drawers, mailboxes, etc. used in
an ordinary office environment are simulated on a screen. The idea of a desktop withsuch pictographs has been adopted as a basic model. These pictographs designed basedon the forms of actual papers, folders, etc. in an easily recognizable manner are called
icons. Figure 3.3 shows major icons adopted by JStar. Each pictograph is designed insuch a way that users can understand what each pictograph represents at first glance."18

While examples of eight types of icons are shown, all of them are represented by
pictures. The description contains the term "icon (pictograph)" (Exhibits Ko No. 13-44
and No. 14-1).
b. This publication contains the following statements: "Such icons are displayed on ascreen and their positions on the screen can be changed freely in accordance with theuser's preference. This means that the desktop exactly simulates the papers and devices
on an office desk. This is a desktop approach that has become indispensable for theconcept of the work station." "The idea that the items on an actual office desk can be
simulated on a screen by displaying icons makes the screen look familiar to users. The
purpose of this idea is to improve maneuverability and operability." "There are roughly
two types of icons. The first type includes data icons containing substantive content,such as document icons and record file icons. The second type includes icons designed
to trigger the execution of certain functions," "In comparison with conventional devices
whose user interface is dependent basically on the display of information consisting
solely of characters and the pressing of step keys and number keys, the system that uses
icons and a mouse has greatly reduced the psychological burdens on users and improved
the user interface." (Exhibit Ko No. 13-44)
c. Figure 6.5 shows some examples of desktop displays where icons are placed on adesktop. Figure 6.6 shows some examples of icon designs where five examples areshown for each of the nine functions. Each icon consists of a picture whose design
represents its function. (Exhibit Ko No. 13-44)
d. It is stated that "No icon representing an ordinary function cannot be moved or copied
onto any other icon. For example, even if a user attempts to copy a printer icon onto theout-box, such attempt would be rejected." (Exhibit Ko No. 14-1)
e. It is stated that "Icons are displayed in different manners depending on theirrespective states and purposes of use. For example, desktop icons are displayed in large
sizes, while they are displayed in small sizes in container windows." (Exhibit Ko No.
14-1)
f. Figure 6.8 shows a picture of a rectangular shape with its upper right corner folded.
Regarding this picture, it is stated that "This is a miniature version of a document icon.
When an order for moving or copying a document icon is issued, the document icon
takes this shape, requesting the user to take necessary actions such as indicating where
the icon should be moved or copied to. Similar miniature icons exist for a folder icon,
drawer icon, and printer icon." (Exhibit Ko No. 13-44)
g. It is stated that "In the case of graphic processing, lines and rectangles, just like icons
and characters, can be selected, moved, copied, modified, or otherwise handled."
19

(Exhibits Otsu No. 2 and No.5)
B. As found in A. above, according to documents available as of the time of the filing of
the Patent Application, it was widely interpreted that icons mean "pictures or
pictographs displayed on a display screen as representations of various data orprocessing functions."
The defendant alleged that, as of the time of the filing of the Patent Application,"icons" were required to be "draggable" and "movable" and placeable "on a desktop."
This point will be examined below.
C. Movability(A) "Gekkan ASCII (Issue of January 1989) (Monthly ASCII) (Exhibit Ko No. 15), a
document available as of the time of the filing of the Patent Application, describes that agroup of icons can be dragged with a mouse ((2)A.(B)a. above). On the other hand, thesame document describes that there are icons representing commands in the mailwindow and icons in a window for sending mails ((2)A.(B)d. above). There are nostatement to the effect that said icons are draggable or movable. Since such icons areclicked in order to trigger the execution of a function within a window, this may beinterpreted to have nothing to do with draggability and movability.
Therefore, it may not be said that all of the icons described in the aforementioned
document are draggable or movable.
(B) "JStar Workstation" (Exhibit Ko No. 13-44, Exhibits Otsu No. 2 and No. 5), a
document available as of the time of the filing of the Patent Application, states, on thepremise that icons are movable, that "These icons are displayed on a screen. Their
positions may be changed freely in accordance with each user's preference." ((2)A.(E)b.
above) and that "Icons can be moved or copied." ((2)A.(E)f. above). Furthermore, it isstated that, in the case of graphic processing, graphic objects, just like icons andcharacters, can be moved or otherwise handled ((2)A.(E)g. above).
However, after the statement that "Such icons are displayed on a screen and theirpositions can be changed freely in accordance with each user's preference," it is statedthat "This is a desktop approach that has become indispensable for the concept of theworkstation." This shows that the aforementioned statements are not about the general
theory of icons, but about the positioning of icons within the framework of the desktop
approach. Moreover, the statement that "Icons can be moved or copied" is found in
Figure 6.8 "Types of cursor shapes and the situation where they are used" in connection
with the explanation of how easily-understandable, user-friendly interface can berealized by changing the shape of a cursor depending on the situation and giving a usera visual cue, i.e., a graphic pattern, in order to tell what action should be taken next. If
20the user gives an order such as moving or copying a document icon, the cursor wouldchange its shape into a miniature version of the document icon in order to prompt theuser to take action such as indicating a position where the document icon should be
moved or copied to. Therefore, the statement that "Icons can be moved or copied"should not be interpreted as meaning that icons in general can be moved. Furthermore,
the statement that, in the case of graphic processing, graphic objects, just like icons andcharacters, can be moved or otherwise handled is made in the context that the userinterface for graphic processing has been improved. In this statement, icons andcharacters are mentioned as examples. It may not be interpreted that this statementmeans that all icons should be movable, just as this may not be interpreted that all
characters should be movable.
On the other hand, the same document contains a statement made on the premisethat the movement, etc. of some icons is limited ((2)A.(E)d. above).
Thus, the aforementioned document does not provide sufficient grounds for provingthat all icons are required to be draggable or movable.
(C) Meanwhile, as is found in (2)A. above, since the document available as of the timeof the filing of Patent Application does not contain any clear statement that "icons" arerequired to be movable, it may not be found that, as of the time of the filing of the
Patent Application, it was interpreted that "icons" are required to be draggable or
movable.
(D) Based on the information provided by Exhibit Otsu No. 3, the defendant argued that
icons are required to be movable.
"Sentan Sofutouea yougo jiten" (Latest software terminology) (Exhibit Otsu No. 3) was
published on May 25, 1991 after the filing of the Patent Application. The
aforementioned document merely defines icons as "small pictures displayed on adisplay screen in order to indicate computer resources" and does not mention anything
about movability. Also, the aforementioned document states that "The user can select,activate, move, copy, delete, or otherwise handle an icon with a mouse" followed by thestatement that "This is called direct manipulation in contrast to character-basedcommand." This shows that the first statement was made in the context that icons can bedirectly manipulated with a mouse and that "move" is merely a type of suchmanipulation. It is also stated that "Any user who wants to copy a file is usually only
requested to drag said file icon to the directory in which the user wants to make a copy.
Any user who wants to delete a file can drag the file onto the icon of trash can. If there
is an icon of printer on a screen, any user who wants to print out a file can drag the fileonto said icon." Said document introduces a method of dragging an icon to a user who
21

wants to copy, delete, or print out a file. However, said document should be interpreted
to be stating only that some icons are movable and should not be interpreted to bestating that all icons should be draggable or movable.
(E) Based on the information provided by Exhibit Otsu No. 4, the defendant argued that
icons are required to be movable.
"Jouho sisutemu handobukku" (Information system handbook) (Exhibit Otsu No. 4)
was published on December 5, 1989. The aforementioned document merely defines
icons as "Indication of the resources and menu options, etc. available for users in theform of pictographs. One of the means devised to improve the interface between acomputer and a user (User interface)" and does not say anything about the issue ofmovability. Furthermore, while the aforementioned document states that "Any user who
wants to print out a document is only required to move the document icon onto theprinter icon," this statement describes the difference in the consequence between thecase where the user moved the same document icon onto the drawer icon and the casewhere the user moved the same document icon onto the trash can icon. Such difference
was pointed out as a mere example where users would find it convenient if the same
operation results in a difference consequence depending on which object an icon is
dragged to. Therefore, said statement cannot be interpreted to mean that all icons are
required to be draggable or movable.
(F) Also, "Iwanami jouhou kagaku jiten" (Iwanami information science dictionary)(Exhibit Ko No. 13-19), which was published on May 25, 1990 after the filing of the
Patent Application, defined an "icon" as a "picture representing a subject matter ofprocessing or the processing itself that is displayed on a screen as an interface between acomputer and a human beings." This definition does not say anything about movability.
The aforementioned document also states that "Under the window system withadvanced functions, a user can complete a task by just handling icons with a mouse. For
example, if a user selects a document icon and moves (drags) it onto the printer icon or
trash can icon, the user can print out or delete the document." However, this does notnecessarily mean that all icons are required to be draggable or movable.
No other documents publicized after the filing of the Patent Application state that"icons" are required to be movable.
(G) As described about, regarding the meaning of "icons," it cannot be said that, before
and after the filing of the Patent Application, "icons" have been interpreted to berequired to be "draggable" or "movable."
D. Placeability on a desktop
Based on Exhibit Ko No. 13-44, the defendant alleged that, as of the time of the22filing of the Patent Application, "icons" were required to be placeable "on a desktop."
The Description does not specify this point as mentioned in (1)E. above. As found in(2)A.(E)e. above, "JStar workstation," which is a document that was available as of thetime of the filing of the Patent Application (Exhibit Ko No. 13-44), was prepared basedon the premise that "icons" can exist not only on a desktop but also in a window andthat, in some cases, "icons" exist not on a desktop but in a container window. There isno evidence to prove that these "icons" were placeable on a desktop. Furthermore, as
found in (2)A.(B)c. above, the same applies to "Gekkan ASCII (Issue of January 1989)(Monthly ASCII) (Exhibit Ko No. 15), which is a document that was available as of thetime of the filing of the Patent Application.
As found in (2)A. above, none of the documents available as of the time of the filingof the Patent Application state that "icons" are required to be placeable on a desktop.
Even if all of the facts found in (2)A. above are taken into consideration, it may not berecognized that, as of the time of the filing of the Patent Application, "icons" wererequired to be placeable on a desktop.
On these grounds, it may not be said that, before and after the filing of the Patent
Application, it has been interpreted that "icons" are required to be placeable on adesktop.
E. Based on all of the evidence submitted in this case, it may not be found that "icons"
used in the Inventions are required to be used in a modeless environment.
(3) Summary
According to (1) and (2) above, the "icons" used in the Inventions are designed to"represent various data and processing functions in the form of pictures and pictographs
and to carry out commands." Since this is a sufficient requirement for icons, it should befound that neither the Description nor the understanding of the persons ordinarily
skilled in the art as of the time of the filing of the Patent Application provides a basis forimposing any additional requirements such as the draggability and movability of icons
or the placeability of icons on a desktop.
(4) Issue of whether the "help mode" button and the "print" button of the defendant's
product may be regarded as "icons"
As shown in attached Product Lists (A) and (B), the "help mode" button and the"print" button of the defendant's product are displayed on a display screen as therepresentations of various data or processing functions in the form of pictures or
pictographs. Therefore, the "help mode" button and the "print" button of the defendant's
product may be regarded as "icons" of the Inventions.
2. Fulfillment of the constituent features by a computer into which the defendant's
23

product has been installed(1) Invention 1
As described above, the "help mode" button and the "print" button of the defendant's
product may be regarded as "icons" of the Inventions. Since the "help mode" button isdesigned to display the functional description of the "print" button, which may be
regarded as an "icon," the "help mode" button may be regarded as the "icon 1 designed
to trigger the execution of the function of displaying the functional description of an
icon." On the other hand, the "print" button is designed to carry out the predeterminedfunction, when clicked. Therefore, the "print" button may be regarded as an "icon 2
designed to trigger the execution of the predetermined information processing function."
These icons will be displayed on the screen of a computer into which the defendant's
product has been installed.
It is possible to select the "help mode" button or the "print" button of the defendant's
product by a click of a mouse. This corresponds to the "selection means to select an icon
displayed on the display screen of said display means."
Furthermore, the act of clicking the "help mode" button of the defendant's productwith a mouse and then clicking the "print" button may be regarded as the "selection ofan icon 2 immediately after the selection of an icon 1." The display of the description of
the print "button" on the screen of a computer into which the defendant's product has
been installed may be regarded as the "control means to display the functionaldescription of said icon 2 on the display screen of said display means."
It is therefore obvious that any computer into which the defendant's product has
been installed may be regarded as an "information processing device."
For this reason, any computer into which the defendant's product has been installedsatisfies all of the constituent features 1-A to 1-D of Invention 1.
(2) Invention 2
The case where a user clicks the "help mode" button of the defendant's product witha mouse, conducts another operation, and then clicks the "print" button may be regarded
as the case where "an icon 2 is selected not immediately after the selection of an icon
1." In this case, the description of the "print" button would not be displayed. Instead, thepredetermined function would be activated. This corresponds to the case where "saidcontrol means" "executes the predetermined information processing function of said
icon 2." It is clear that any computer into which the defendant's product has been
installed may be regarded as an "information processing device."
Therefore, any computer into which the defendant's product has been installed may
be considered to satisfy the constituent features 2-A and 2-B of Invention 2.
24

(3) Invention 3
Any computer into which the defendant's product has been installed is a "device
equipped with" a "data input device" such as a keyboard, mouse, etc. and a "data display
device," namely, a monitor. Those devices can be controlled through the operation of thecomputer into which the defendant's product has been installed.
The "help mode" button, which displays the functional description of the "print"
button, may be regarded as "an icon 1 designed to execute the function of displaying afunctional description," while the "print button" may be regarded as "an icon 2 designed
to execute the predetermined information processing function" because the "print
button" has the function of activating its predetermined function, when clicked. Thesebuttons are displayed on a computer into which the defendant's product has been
installed.
Moreover, it is possible to click with a mouse the "help mode" button and the "print"
button of the defendant's product in succession. This procedure corresponds to "theselection of an icon 2 immediately after the selection of an icon 1." The display of thedescription of the "print" button on a computer into which the defendant's product has
been installed in response to the aforementioned successive selection of two buttons
may be regarded as "the functional description of said icon 2 will be displayed on adisplay screen."Thus, it is clear that the use of a computer into which the defendant's product has
been installed may be regarded as an "information processing method."
Therefore, the use of a computer into which the defendant's product has been
installed fulfills the constituent features 3-A to 3-D of Invention 3.
(4) As described above, any computer into which the defendant's product has been
installed and the use thereof fall within the technical scope of the Inventions.
3. Issue (2) (Indirect infringement)(1) Article 101 of the Patent Act specifies so-called indirect infringement. Item (ii) of
said Article states that, where a patent has been granted for an invention of a product,
acts of producing, assigning, etc., importing or offering for assignment, etc. any product(excluding those widely distributed within Japan) that is to be used for the producing of[said product and is indispensable for the resolution of the problem by said invention asa business, knowing that said invention is a patented invention and said product is used
for the working of the invention, shall be deemed to constitute infringement of a patentright, etc. Item (iv) of said Article specifies that the same shall apply to the case where apatent is granted for an invention of a process.
(2) As held in 2. above, a computer into which the defendant's product has been
25

installed and the use thereof fulfill the constituent features of the Inventions. The
defendant's product is used for producing a "computer into which the defendant's
product has been installed" and is essential for the resolution of the problem to besolved by the Inventions, i.e., "inability to receive a functional description service whena user forgets or does not know a keyword (if the conventional method is adopted)."Meanwhile, it is obvious that the defendant's product has not been "widely distributed inJapan."(3) The defendant alleged that, since the operating system called Microsoft Windows
has the same function as that of the Inventions, the defendant's product is not "essential
for the resolution of the problem by the invention." While the purpose of this allegation
is not necessarily clear, even if the help display program, etc. of Windows performs, as
alleged by the defendant, the function of "displaying the description of another button if
said ‘another button’ is selected immediately after the selection of the 'help mode'
button," the functions described in attached Product Lists (A) and (B) cannot be
executed without using a computer into which the defendant's product has been installed.
Therefore, it must be said that the defendant's product may be considered to beindispensable for the resolution of the problem to be solved by the Inventions and thatthe act of installing the defendant's product constitutes an act of producing goods
infringing the Patent Right.
(4) At least since the time of the service of a written petition for an order for provisional
disposition filed by the plaintiff on November 7, 2002, the defendant may be found tohave been aware of the fact that the Inventions are patented inventions and that thedefendant's product is used for the working of the Inventions (Exhibit Ko No. 13-1, theentire import of oral argument).
(5) On these grounds, the defendant's acts described in 2-1.(4) above may be considered
to constitute the indirect infringement specified in Article 101, items (ii) and (iv) of the
Patent Act.
4. Issue (3) (Abuse of rights)(1) Technology in the public domain
Based on the evidence, it may be recognized that the following technologies were in
the public domain as of the time of the filing of the Patent Application.
A. The cited reference publicized on December 11, 1986 (Publicized patent gazette of
Publication of Unexamined Patent Application No. 1986-281358, Exhibit Ko No.
13-25) contains the following statements.
(A) Title of the invention
Method of displaying functional descriptions of a word processor
26

(B) Scope of claims"A functional description display method of a word processor equipped with an
input means having character/sign keys, function keys designed to order some editing
processes such as deletion and insertion, and operation instruction keys as well as adisplay means to display a document or operational guidance in response to theinformation input by use of said input means. Said method may be characterized by theprocess where the pressing of said operation instruction key and said function key insuccession will display on said display means the description of the editing processing
function identified by said function key."(C) Effect of the Invention"Any user who presses the operation instruction ken and a function key of his/her
choice in succession could easily check the function of said function key."
B. Publication 1 ("JStar Workstation"; Exhibit Otsu No. 5) published on April 25, 1986
contains the following statements.
(A) "JStar uses (omitted) an independently developed 'virtual keyboard.' This 'virtual
keyboard' creates on a screen a software keyboard that corresponds to an actual
keyboard. A user operates this keyboard by switching between interpretations and amultiple number of bitmaps made available as data."(B) "The selection of a key on a virtual keyboard displayed on a screen with a mouse is
the same as typing said key."(C) "A user can open a document and click with a mouse the position into which analignment box needs to be inserted. Since a special virtual keyboard has a function key
to insert an alignment box (corresponding to the key "A" of Figure 9.33), the user caninsert an alignment box by pressing said key and inserting the corresponding anchor
mark into the text."
C. Publication 2 published in May 1986 ("Nikkei Baito"; Exhibit Ko No. 13-27) statesthat "It is permitted to use a keyboard instead of a mouse to select a button on a screen.
This figure shows that 'Yes' may be selected by 'Y,' 'Enter,' or 'Return' key (omitted)."D. Publication 3 published on April 14, 1989 ("Ichitaro Ver. 4 Advanced Manual";
Exhibit Ko No. 13-26) states that "The user can directly left-click the 'ESC' mark on ascreen instead of pressing the 'ESC' key to produce the same effect."(2) Inventive step of Invention 1
A. As found in (1)A. above, the cited reference discloses an invention wherein, if a userof a word processor having a function key and the operation instruction key presses theoperation instruction key and a function key in succession, the description of thefunction identified by said function key is displayed (the "cited invention").
27

Therefore, a comparison between Invention 1 and the cited invention shows thedifference between the two. More specifically, Invention 1 is an invention related to
icons that are displayed on a display screen and "designed to trigger the execution of thefunction of displaying the functional description of an icon," whereas the cited invention
is an invention related to keys on a keyboard having the operation instruction key, butdoes not have icons like those mentioned above.
Invention 1 has adopted a completely different concept of "icons," which does nothave to correspond to the keys on an actual keyboard in order to have icons play the rolethat has been played by the keys on the keyboard, whereas the cited invention is related
to the keys on an actual keyboard. Regarding the cited invention that is specifically
about keys on an actual keyboard and does not even hint of the existence of icons on adisplay screen, there have been no publications that indicate the possibility of replacing
keyboard keys with icons, which are qualitatively different from keyboard keys.
Therefore, it may not be said that any person ordinarily skilled in the art could have
easily conceived of Invention 1 related to icons based on the cited invention related to
keyboard keys.
B. The defendant alleged that, since Publications 1 and 2 have disclosed that "theoperation of keys on an actual keyboard" may be replaced by "the selection of marks,
with a mouse, displayed on a screen in the form of pictures or pictographs other thancharacters," any person ordinarily skilled in the art could have easily conceived ofInvention 1 related to icons displayed on a display screen by combining the citedreference concerning keyboard keys with Publications 1 and 2.
As found in (1) B. above, Publication 1 has disclosed an invention that allows theuser to click, with a mouse, keys on a virtual keyboard displayed on a screen that
corresponds to an actual keyboard, instead of typing actual keys, to produce the same
effects and to display a special virtual keyboard on a screen and to select and execute afunction represented by a keyboard key by clicking, with a mouse, a mark represented
in the form of a picture on a virtual keyboard.
However, Publication 1 merely describes a "virtual keyboard" that displays on ascreen a software keyboard that corresponds to an actual keyboard. The keys displayed
in a window specifically for this virtual keyboard are referred to as "keys" and describedas something completely different from "icons." Thus, it may not be said that
Publication 1 suggests that keyboard keys may be replaced by icons.
Moreover, as found in (1)C. above, Publication 2 merely states that the selection ofthe "Yes" button on a screen may be replaced by the selection of the "Y," "Enter," or"Return" key and does not state anything about "icons."28

Meanwhile, as of the time of the filing of the Patent Application, there existed
documents that assign pictures to the keys on an actual keyboard or a virtual keyboard(Exhibits Otsu No. 5 to No. 9). If these keys are displayed on a screen, they could look
similar to icons. However, even if keys carry marks represented by pictures, the keys onan actual keyboard as well as the keys on a virtual keyboard displayed on a screen
merely correspond to those of an actual keyboard on a one-to-one basis. Those keys do
not go beyond the scope of keys. On the other hand, as a found in 1.(3) above, icons aredesigned to "carry out commands by representing various data and processing functionsin the form of pictures or pictographs on a display screen." "Icons" do not need tocorrespond to the keys on an actual keyboard. It is possible for icons to freely assume
various functions without being subject to the limitations imposed on an actual
keyboard in terms of the number and positions of keys. This indicates that there exists a
qualitative difference between keys and icons.
On these grounds, it may not be said that any person ordinarily skilled in the art asof the time of the filing of the Patent Application could have easily conceived ofInvention 1 by combining the cited invention and the technologies described in
Publications 1 and 2.
C. Moreover, the defendant also alleged that Publications 2 and 3 have revealed that
icons and keys are interchangeable and that any person ordinarily skilled in the art could
have easily conceived of Invention 1, which is related to icons displayed on a display
screen, by combining the cited invention related to keys and Publications 2 and 3.
However, as a found in (1)C. above, the technology described in Publication 2
merely allows selection by a key instead of the "Yes" button on a screen. Therefore,
Publication 2 is not about "icons." Moreover, as found in (1)D. above, the technology
described in Publication 3 merely allows replacement of the function of the "ESC" keywith the "ESC" mark displayed on a screen. Thus, Publication 3 is also not about"icons,". Therefore, Publications 2 and 3 may not be considered to have revealed that
icons and keys are interchangeable.
On these grounds, it may not be said that any person ordinarily skilled in the art asof the time of the filing of the Patent Application could have easily conceived ofInvention 1 by combining the cited invention and the technologies described in
Publications 2 and 3.
D. As found in 1.(2)A. above, it may be recognized that the concept of "icons" waspublicly known as of the time of the filing of the Patent Application. However, as heldin A. and B. above, since keyboard keys are qualitatively different from icons, even if
the concept of "icons" itself was publicly known, it may not be recognized that any
29person ordinarily skilled in the art as of the time of the filing of the Patent Application
could have easily conceived of Invention 1 by combining the cited invention related to
keyboard keys with the concept of "icons."(3) Inventive step of Invention 2
Invention 2 was made based on Invention 1. Therefore, as long as any person
ordinarily skilled in the art as of the time of the filing of the Patent Application may not
be considered to have easily conceived of Invention 1, any person ordinarily skilled in
the art as of the time of the filing of the Patent Application may not be considered tohave easily conceived of Invention 2.
(4) Inventive step of Invention 3
Invention 3 represents Invention 1 in the form of an invention of a process.
Therefore, as long as any person ordinarily skilled in the art as of the time of the filingof the Patent Application may not be considered to have easily conceived of Invention 1,
any person ordinarily skilled in the art as of the time of the filing of the Patent
Application may not be considered to have easily conceived Invention 3.
(5) In view of these facts, without examining any other factors, it may not be said that
there are clear reasons for invalidation of the Patent.
5. Conclusion
On these grounds, the court found the plaintiff's claims to be well-grounded andacceptable and rendered a judgment in the form of the main text. This court has decided
not to make a declaration of provisional execution because it is not appropriate.

Tokyo District Court, 47th Civil Division
Presiding Judge: TAKABE Makiko
Judge: SETO Sayaka
Judge: KUMASHIRO Masato30