Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Spring/Summer 2005, Volume 12, Issue 1

“Ichitaro” Case Provokes Public Debate over Software Patents in Japan
- Matsushita Electric Industrial Co., Ltd. v. Justsystem Corp -

by Matsuo Nonaka†

I.          Introduction

Matsushita Electric Industrial Co., Ltd. (Matsushita), better known for its “Panasonic” brand in the United States, brought suit in the Tokyo District Court, alleging that Justsystem Corp. (Justsystem), one of the largest software vendors in Japan, infringed its patent on a technique to display online help.  On February 1, 2005, the court held that Matsushita’s patent was infringed and granted an injunction to stop Justsystem from producing and selling its popular software products, “Ichitaro” word-processing software and “Hanako” graphics software.[1]  It did not, however, declare the provisional execution of the ruling.  The decision was timely appealed by Justsystem, who therefore can continue to sell the products at least until the appeal court decision is rendered. Nevertheless, the case has attracted wide attention and provoked some sharp criticism about patent protection for computer software as well as strong antipathy toward Matsushita.[2]

One of the main reasons of this may be the popularity of the Ichitaro brand in Japan.  Ichitaro was first introduced in 1985 and was the dominant word-processing software in Japan for many years.  Justsystem claims that it has shipped some 18 million copies of Ichitaro since the first version was released.  Although Microsoft Word is gaining much more popularity, Ichitaro is still one of the most popular word-processing brands software in Japan.  Therefore, it may not be surprising that the decision limiting such a popular consumer product would make a significant impact on the public.

The relatively simple, easy-to-understand technology involved in this case may also be a reason for provoking the nationwide debate.  The technology involves a user interface that triggers and displays help text for a selected icon on the computer screen, which is widely used in the current computer systems.  Since the user interface seems so common and simple, at least from the current technical standpoint, some people questioned the patentability of the invention and the legitimacy of extending patent protection to such “common” technologies.

This case is interesting also because it appears to be the first software patent case where the court applied the new “indirect infringement” provisions that were introduced in 2002. [3]  The provisions were used to establish the liability of the software vendor, Justsystem, since Matsushita’s patented claims were directed only to an apparatus (computer system) and a method, and not to a computer program itself nor to a medium containing a computer program, which Justsystem was selling.[4]

II.        The patented invention

Matsushita filed a patent application in October 1989.  The patent was granted and registered as Japanese Patent Number 2803236 (the ‘236 patent) in July 1998.[5]  The invention concerns a user interface that displays help text on the screen explaining the function of icons of a computer system, without requiring the user to keywords in a help window.  Designating a help icon first and subsequently designating another icon, e.g. a printer icon, the help text will display the explanation of the second icon’s function.  Although the specification of the ‘236 patent discloses only one embodiment in which the help icon must be dragged onto another icon to designate those two icons sequentially, the patented claims are written broad enough to cover other embodiments, such as when users click the help icon first and then click another icon to designate those icons in turn.

 The patented claims of the ‘236 patent are as follows:[6]

[Claim 1] An information processor comprising:
a display means for displaying the first icon to perform the function for displaying functional description of an icon, and the second icon to perform predetermined information processing function, on the display screen;
a designation means for designating the icons displayed on the display screen of said display means; and
a control means for displaying the 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.

[Claim 2] The information processor of claim 1, wherein said control means performs the predetermined information processing function of the second icon, if the designation of the second icon by said designation means is not immediately after the designation of the first icon.

[Claim 3] An information processing method for controlling apparatus comprising an input device for inputting data and the display device for displaying data, comprising the steps of:
displaying the first icon to perform the function for displaying functional description of an icon, and the second icon to perform predetermined information processing function, on the display screen; and
displaying the functional description of the second icon on the display screen in response to the designation of the second icon subsequent to the designation of the first icon.

III.       Procedural History

In November 2002, Matsushita, who found its license negotiation with Justsystem unsuccessful, filed suits against Justsystem and Sotec Co., Ltd. (Sotec), a fast-growing new PC manufacturer in Japan, seeking provisional disposition orders to enjoin sales of Sotec PCs pre-installed with Justsystem’s “Just Home 2” software suite.  Just Home 2 is a software package which includes “Ichitaro home”, an abridged version of Ichitaro, and other application programs for home users.  Matsushita contended that the Sotec PCs pre-installed with Just Home 2 infringed the ‘236 patent.  However, in June 2003, Matsushita withdrew all the cases when Sotec stopped selling PCs pre-installed with Just Home 2.

In August 2003, two months after Matsushita’s withdrawal of the cases, Justsystem brought suit against Matsushita, seeking a declaratory judgment to confirm the non-existence of Matsushita’s right to demand an injunction against PCs installed with Just Home 2. In response, Matsushita brought a counter action.  On August 31, 2004, the Tokyo District Court decided the case for Justsystem, holding that making and selling PCs installed with Just Home 2 did not infringe the ‘236 patent (Just Home 2 case).[7]

Then, in the same month, Matsushita brought the case at issue against Justsystem.  In this case, the alleged infringing products are Ichitaro and Hanako, instead of Just Home 2.  The Tokyo District Court, presided by the same judge as the Just Home 2 case, decided for Matsushita this time and granted an injunction (Ichitaro case).[8] Thus, the same judge held that Just Home 2 did not infringe the ‘236 patent, but Ichitaro and Hanako did.

IV.       Definition of “icon”

The main issue which yielded these totally opposite outcomes of similar cases between the same parties was the construction of the term “icon” in the patented claims.

While using Just Home 2, a user can view the functional explanation of certain buttons by clicking the “help button” first and then clicking a button with a function to be explained.  The “help button” was simply labeled with a question mark having no graphical design on it.  Therefore, in Just Home 2, Justsystem argued that, inter alia, an “icon” in the ‘236 patent should be construed as a “graphic symbol” on the computer screen, while Matsushita argued that the term “icon” should include a “character symbol” as well as a graphic symbol.  There was no definition of an “icon” in the specification of the ‘236 patent.  Also, there was insufficient information in the specification to determine whether an “icon” of the ‘236 patent includes a “character symbol” as well as a graphic symbol.   Therefore, the court moved onto the examination of extrinsic evidence such as technical dictionaries and books, and concluded that the term “icon” was generally understood, at the time of filing of the ‘236 patent, as “a graphic picture or a graphic symbol displayed on the computer screen to represent a data or a data processing function.”  Then, the court decided that the “help button” used in Just Home 2 was not an “icon” in the sense of the ‘236 patent, since it only had a “character symbol” on it, and thus Justsystem won the case.

On the other hand, in Ichitaro, the alleged infringing versions of Ichitaro and Hanako were equipped with a “help mode button” which was labeled with a combination of a question mark and a picture of a mouse.  When a user clicks the “help mode button” first and then subsequently clicks another button, the functional explanation of the second button is displayed on the screen.  There was no trouble, in this case, to call the combination of the question mark and the picture of a mouse as “a graphic picture or a graphic symbol”.  So, Justsystem contended that an “icon” of the ‘236 patent must be the one placed on the desktop and must be movable or draggable.[9]  Indeed, in the only embodiment disclosed in the specification of the ‘236 patent, the help icon must be dragged onto another icon to display the functional explanation of the second icon, while there is no such limitation in the claim language.  The court declined to read such limitations into the definition of an “icon,” for it found no evidence that would require to do so after studying the specification of the ‘236 patent and the extrinsic evidence such as technical dictionaries and books.  Therefore, the court concluded that the “help mode button” of Ichitaro and Hanako satisfied the definition of an “icon” of the ‘236 patent and found infringement of the ‘236 patent.

Some people criticized these two decisions because it does not make sense to reach totally different conclusions only because a question mark is written on the “help button” in one case and a picture of a mouse is added to the button in the other case.  Although it may be technically correct, there seems to be another difference between the two cases.

In Just Home 2, the help text displaying function at issue was not unique to Just Home 2.  The function is closed within the standard dialogs, such as help and print dialog provided by Microsoft Windows operating systems.  Even though the dialog boxes are invoked by Just Home 2 programs, the help text displaying function is limited to the buttons in such standard dialog boxes and the help text contains no information specific to Just Home 2.

In contrast, Ichitaro and Hanako in Ichitaro have the “help mode button” in their main application windows.  The help mode function offered by the “help mode button” is applicable to almost all the icons on the main application windows.  The help texts to be displayed by the function are provided by Justsystem to specifically explain the functions of Ichitaro and Hanako.

Therefore, there is qualitative difference between these cases on who is actually or affirmatively providing the accused function.  Having this difference in mind, the court may have tried to distinguish these cases in a guise of the difference between the symbols on the buttons in order to draw reasonable conclusions.

V.        Validity of the ‘236 patent

Another important issue in Ichitaro was the validity of the ‘236 patent.  Since the help mode function covered by the ‘236 patent is so commonly used, some people may simply believe that it lacks novelty or an inventive step.  However, considering the fact that the patent was filed more than 15 years ago, it may not be so easy to find good prior art to invalidate the ‘236 patent.  Indeed, two oppositions filed against the ‘236 patent were unsuccessful.[10]  Also, in Ichitaro, the Tokyo District Court upheld the validity of the ‘236 patent over the prior art references presented by the defendant.[11]  Nevertheless, some people are still arguing that the  ‘236 patent is invalid, since there is yet other prior art sufficient to invalidate the patent. 

The skepticism regarding the validity of the ‘236 patent also provoked sharp criticism against computer software patents themselves, especially against patents on user interface technology like in this case.  As we are seeing in the fierce debate in Europe with respect to the proposed EU Software Patent Directive, it is very difficult to discern the appropriate level of patent protection for computer software.  Although it is beyond the scope of this brief article to discuss this issue, it can be said that the Ichitaro case raised a big question for software patents, which have been deemed as a matter of course recently in Japan.

VI.       Indirect infringement of software patents

In Ichitaro, the Tokyo District Court applied the new indirect infringement provisions which were introduced in 2002, and held that Justsystem was liable for patent infringement. This appears to be the first software patent case that the new indirect provisions have been applied.[12]

As we have seen above, the claims of the ‘236 patent are directed only to apparatuses (information processors) and a process (information processing method).  Under the current practice and laws in Japan, either a computer program itself (“program” claim) or a medium storing a computer program (“medium” claim) can be claimed as an invention of a product.[13]  However, neither “program” claims nor “medium” claims were allowed when the ‘236 patent was filed.

Because of this restriction, the only provisions Matsushita could rely on were indirect infringement provisions.  Justsystem itself was not making or selling any infringing apparatuses, nor was it using any infringing processes.  On the other hand, when a user installs the Ichitaro or Hanako program onto his computer, the act of installation may constitute the direct infringement of the ‘236 patent as an unauthorized making of a patented apparatus.  Likewise, when the user has Ichitaro or Hanako installed on his computer, the act may constitute an unauthorized usage of a patented process.  Therefore, Justsystem, who provided the Ichitaro and Hanako programs necessary for the direct infringement by the user, would be liable for indirect infringement of the ‘236 patent.

However, if Matsushita had to rely on the old indirect infringement provisions, which require the product provided by the indirect infringer to be used “exclusively” for the purpose of infringement, it would have been difficult to establish the liability of Justsystem, since a program, by its nature, has multiple functions.  However, the new indirect infringement provisions do not require “exclusivity.”  Under the new provisions, a person who provides a product essential to the patented invention, knowing the product will be used for the exploitation of the invention, is liable as an indirect infringer.[14]  The intention of the indirect infringer could be easily proved by sending a cease and desist letter, at least as to the intention after the receipt of the letter.  Thanks to these new provisions, Matsushita could establish Justsystem’s patent infringement.

This case shows that the new indirect infringement provisions are quite helpful to enforce the old computer software patents, but at the same time, it implies the risk of an increased number of software patent lawsuits in the future.

VII.     Conclusion

Despite all the controversy, the actual influence of the Ichitaro decision may not be so significant.  First, since the patented invention must be used commercially to construe the patent infringement under the Japanese Patent Law, the decision would not affect the usage of Ichitaro and Hanako by the ordinary consumers.  Secondly, since the court did not declare the provisional execution, Justsystem can continue to sell the products at least until the appeal court decision is rendered.  Thirdly, the patented invention is not a core function of Ichitaro nor Hanako. So, it seems to be easy to design around the ‘236 patent.

Nevertheless, the impact of the case was strong enough to provoke renewed debates over the patent protection for computer software both in the patent community and in the software industry.  It seems to be a good opportunity for Japanese software companies to rethink their patent strategies, which have not been paid much attention until quite recently.



Endnotes

† Mr. Nonaka (M.Eng., LL.M.) is a visiting scholar at the University of Washington School of Law. The views expressed in this article are the personal views of the author.

[1] Judgment of the Tokyo District Court, February 1, 2005.

[2] Some consumers are even boycotting Matsushita’s products; see http://miuras.net/en/matsushita.html.

[3] Tokkyohō ‘Japanese Patent Law’, Law No. 121 of 1959 ‘hereinafter, JPL’, Article 101, para 2 and 4. 

[4] The term “sell” encompasses “licensing” as well in this article.

[5] After the issuance of the patent, two oppositions were filed, but the JPO Board of Appeals sustained the patent.

[6] These English translations of the claims are for convenience only and will have no legal meaning or effect. Full machine translation of the ‘236 patent can be obtained from the Industrial Property Digital Library of the JPO at: http://www.ipdl.ncipi.go.jp/homepg_e.ipdl.

[7] Judgment of the Tokyo District Court, August 31, 2004.

[8] Supra, note 1.

[9] Justsystem made similar arguments also in Just Home 2. The court, however, did not discuss the issue, for it was unnecessary in the case.

[10] Decision of the JPO Board of Appeals, H11-71103 (August 2, 1999). See supra, note 5.

[11] In the past, invalidity issues could not be raised in patent infringement lawsuits in Japan.  However, the Kilby Supreme Court decision in 2002 made it possible, using the theory that if the patent has an obvious reason for invalidity, seeking relief based on the patent is an abuse of right and is not permissible. The practice now has been codified in the Japanese Patent Law and came into effect on April 1, 2005.

[12] Although the decision is not final yet, the part of the district court decision regarding the application of indirect infringement will probably be upheld by the appeal court, if the other part of the decision is upheld.

[13] JPO, Examination Guidelines for Patent and Utility Model (December 28, 2000), Part VII, Chapter 1, 1.1.1(2); JPL, Article 2, para 3 as amended in 2002.

[14] JPL, Article 101, para 2 and 4.

Last updated 4/27/2012