Case number

2005 (Ne) 10040

Party

Appellant-Defendant: Justsystem Corporation
Appellee-Plaintiff: Matsushita Electric Industrial Co., Ltd.

Decided on

September 30, 2005Division

Grand PanelHoldings:
1 Under the facts found in this case, manufacture and sale of a word
processing software constitutes indirect infringement of Article 101,
Subparagraph 2 of the Patent Law, but does not constitute indirect infringementof Article 101, Subparagraph 4.
2 The invention entitled "information processing device and information
processing method" does not meet the requirement of inventive step (Article 29,Paragraph 2) and therefore the patent for the invention is to be invalidated.
References:
Patent Law (Article 29, Paragraph 2; Article 101, Subparagraphs 2 and 4;
Article 104-3, Paragraph 1)
Summary:
Matsushita Electric Industrial Co., Ltd. (hereinafter "Matsushita") is a holder ofpatent right entitled “information processing device and information processingmethod" (hereinafter "the Patent"). The Patent has three claims: Claims 1 and 2
relate to “product invention” (hereinafter "Invention 1" "Invention 2") and Claim 3
relates to “method invention” (hereinafter "Invention 3").
Justsystem Corporation (hereinafter "Justsystem") is engaged in manufacturing,
selling and offering to sell Japanese word processing software “Ichitaro” andgraphics software “Hanako” (hereinafter “Justsystem’s products” collectively).
Purchasers of those products use the softwares by installing them on their own
personal computers.
Matsushita brought this infringement lawsuit to the Tokyo District Court alleging
that Justsystem's conduct constituted indirect infringement provided in Article

101, Subparagraphs 2 and 4 of the Patent Law (hereinafter "the Law").
Matsushita sought injunctive relief and destruction of Justsystem’s products inaccordance with Article 100 of the Law.
The Tokyo District Court held that a personal computer on which Justsystem’sproducts were installed was, as a product itself or by use thereof, came under
the scope of claims of the Patent and thus constituted indirect infringement
pursuant to Article 101, Subparagraphs 2 and 4 of the Law. The District Court
then rejected the defense of Justsystem that the Patent was obviously invalid
due to lack of inventive step and Matsushita abused its patent right. Thus, theDistrict Court allowed injunctive relief for Matsushita and ordered Justsystem todestroy Justsystem’s products. Justsystem appealed to the Intellectual Property
High Court (hereinafter "the Court").
The issues before the Court are as follows: (1) whether a personal computer onwhich Justsystem’s products are installed, as a product itself or by use thereof,
falls within the scope of the Patent's claims; (2) whether Justsystem indirectly
infringed Matsushita's Patent pursuant to Article 101, Subparagraphs 2 and 4 of
the Law; (3) whether the Patent is to be invalidated and thus Matsushita 's
exercise of the Patent right should not be allowed; and (4) whether additional
allegation and evidence submitted by Justsystem before the Court should bedismissed as unduly late offensive/defensive action.
The Court reversed the District Court's decision and dismissed all of
Matsushita’s claims, holding as follows:
As for the first issue (i.e. scope of claims), the Court affirmed and cited theDistrict Court's findings that the term “icon” in the claims simply meant “a pictureor pictograph displaying various data and processing functions on the display
screen, by which commands are processed.” The Court further found that “todisplay on the display screen the second icon so as to perform thepredetermined information processing functions” and “to display on the display
screen functional description of the second icon” in the claims meant to display
on the display screen two or more icons so as to perform information
processing functions and to display functional description of an icon selectedamong the said two or more icons.” The Court concluded on the first issue that

a computer on which Justsystem’s products were installed, as a product and by
use thereof, met the constituent features of the invention and thus fell within thescope of the Patent's claims.
As for the second issue (i.e. indirect infringement), the Court found Justsystem
liable for indirect infringement provided in Article 101, Subparagraph 2 of theLaw regarding Invention 1 and 2. The Court held that (a) Justsystem’s products
were used to manufacture “a personal computer on which Justsystem’sproducts are installed,” which met every constituent feature of Invention 1 and 2,(b) the products were indispensable for Invention 1 and 2 to solve the problems
set forth in the specifications, (c) the Justsystem’s products together with thehelp functions therefor could not be installed on a personal computer withoutcompleting a product that met every constituent feature of Inventions 1 and 2,(d) Justsystem’s products contained those portions that were exclusively used
for producing a product that met every constituent feature of Inventions 1 and 2,
thus Justsystem’s products should not be deemed as “articles which are widelyand generally distributed in Japan” as provided in Article 101, Subparagraph 2.
The Court further found that Justsystem had been aware by the time of theservice of complaint at the latest that Matsushita was the patent holder ofInventions 1 and 2, and that Justsystem’s products used these inventions.
Consequently, the Court decided that Justsystem indirectly infringed the Patent
regarding Inventions 1 and 2 pursuant to Article 101, Subparagraph 2 of thePatent Law.
The Court rejected, however, the existence of indirect infringement regarding
Invention 3 in accordance with Article 101, Subparagraph 4. Although the Court
admitted that “a computer on which Justsystem’s products are installed” was"for use of the method of the invention…and indispensable for the invention tosolve the problems” as provided in the said subparagraph, thus manufactureand sale of the personal computer could be found as indirect infringement, theCourt found Justsystem not liable for indirect infringement under Article 101,
Subparagraph 4 because Justsystem was manufacturing and selling only
Justsystem’s products used for manufacturing the personal computers, rather
than manufacturing or selling the said computers themselves.
As for the third issue (i.e. invalidation), by comparing the inventions of this casewith an invention described in a publication written in English that had been
distributed abroad prior to the filing date of the Patent application (thepublication submitted as evidence after appeal), the Court held as follows: (a)the only difference between these inventions is that the “functional description
display means”, which functions to display the functional description of an icon
is an “icon” in the inventions of this case whereas it is a “screen/menu help”
item in the cited invention; (b) in light of the technical matters well known at thetime of the filing of the Patent application, a person skilled in the art could have
easily arrived, from the cited invention, at the idea of using an “icon” instead of a“screen/menu help” item as the “functional description display means”; and (c)therefore, a person skilled in the art could have easily arrived at the inventionsof this case. For these reasons, the Court concluded that Matsushita's patent
was to be invalidated through the invalidation procedures before the Japan
Patent Office, and thus Matsushita should not be allowed to exercise its patentright pursuant to Article 104-3, Paragraph 1 of the Patent Law.
As for the fourth issue (unduly late offence/defense), the Court rejected
Matsushita's argument that the additional allegation and evidence submitted
before the appeal court should be dismissed on the grounds of unduly latedefense. The reasoning of the Court is as follows: (a) proceeding of the first
instance was carried out expeditiously in a very short period, (b) Justsystem
submitted the additional allegation and evidence at the earlier stage of theappellate proceedings, (c) the additional allegation and evidence are only forsupplement prior allegation from a slightly different perspective; and (d) the newallegation and evidence is based on the publication written in English, which
had been distributed abroad long before this suit was filed (it is unavoidable totake considerable time to search and find such reference).