Apple Computer v. Articulate Systems

• Decision Date: 07 December 2000
• Citation: 57 USPQ2d 1057,234 F.3d 14
• Parties: (Fed. Cir. 2000) APPLE COMPUTER, INC., Plaintiff-Appellant, v. ARTICULATE SYSTEMS, INC., Defendant-Cross Appellant, v. DRAGON SYSTEMS, INC., Defendant-Appellee. 99-1165,-1198 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 14

234 F.3d 14 (Fed. Cir. 2000)

APPLE COMPUTER, INC., Plaintiff-Appellant, v. ARTICULATE SYSTEMS, INC., Defendant-Cross Appellant, v. DRAGON SYSTEMS, INC., Defendant-Appellee.

99-1165,-1198

United States Court of Appeals for the Federal Circuit

DECIDED: December 7, 2000

Appealed from: United States District Court for the Northern District of California Judge James Ware

[Copyrighted Material Omitted]

Charlene M. Morrow, Fenwick & West LLP, of Palo Alto, California, argued for plaintiff-appellant. With him on the brief were David L. Hayes, David C. McIntyre, Marta Beckwith, and Trinnie Arriola-Kern.

Howard G. Pollack, Fish & Richardson, P.C., of Menlo Park, California, argued for defendant-cross appellant and defendant-appellee. With him on the brief were John M. Skenyon, Fish & Richardson, of Boston, Massachusetts; Shelia N. Weinberger, andTimothy A. Porter, Fish & Richardson, of Menlo Park, California.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and CLEVENGER,Circuit Judge.

ARCHER, Senior Circuit Judge.

DECISION

Apple Computer, Inc. ("Apple") appeals the summary judgment of the United States District Court for the Northern District of California, invalidating U.S. Patent No. 5,469,540 ("the '540 patent"), issued November 21, 1995 and assigned to Apple.¹ Articulate Systems, Inc. ("Articulate") cross-appeals the district court's denial of its motion for attorneys' fees. We affirm-in-part, reverse-in-part, vacate-in-part, and remand the case for further proceedings consistent with this opinion.

BACKGROUND

The technology behind this appeal concerns the generation of multiple active windows in a graphical user interface. Apple owns several patents that cover this type of technology, including the '540 patent. The '540 patent, generally speaking, claims a method of displaying data on a computer screen in multiple windows that are simultaneously active. In this claimed system, the user may manipulate or operate on two or more displayed windows without having to toggle between active windows, and without changing the display order of the windows - a primary window "floats" over one or more secondary windows. Articulate developed a computer dictation software system known as PowerSecretary. When PowerSecretary is running on a computer, a "Voicebar" floats on top of other windows to allow the user to access certain features of the software.

Apple originally brought suit against Articulate Systems alleging that Articulate's PowerSecretary product infringed four of Apple's patents, including the '540 patent. There are two versions of the PowerSecretary product - one for Microsoft Windows operating systems and one for MacIntosh operating systems. Apple alleged that both versions of the software infringed its patents. When Dragon Systems acquired PowerSecretary for Windows, Apple added Dragon Systems as a defendant.

Through a series of summary judgment motions by Articulate, this lawsuit was eventually narrowed to allegations of infringement of a single patent, the '540 patent, by a single product, the Windows version of PowerSecretary. First, the MacIntosh version of PowerSecretary was dropped from the suit because the court found that Apple had licensed Articulate to make, use, sell, copy, and otherwise distribute the MacIntosh version of PowerSecretary. Then the court found, based on Apple's admissions, that the Windows version of PowerSecretary did not infringe two of the four asserted patents. Finally, the court found that the Windows version of PowerSecretary did not infringe another of Apple's patents because Articulate could only be accused of inducement or contributory infringement and Apple could not provide proof of the requisite direct infringement.

With respect to the '540 patent, the only remaining patent in the lawsuit, Apple alleged infringement of claims 1, 2, 15-18, and 23-26. Claims 1 and 23 are independent claims and claims 2 and 15-18 and claims 24-26 are dependent claims depending from claims 1 and 23, respectively. Claim 1 claims a method of displaying simultaneously active windows and reads as follows:

1. In a computer display system having a central processing unit (CPU) coupled to a display such that data is displayed on said display in a plurality of windows, a method for displaying said windows and operating upon said windows and said data in said windows by a user, comprising the steps of:

generating and displaying each of said plurality of windows at a different window layer according to a window order, wherein a window at a higher window layer covers a window at a lower window layer to the extent that any of said windows overlap, wherein said step of generating and displaying each of said plurality of windows comprises the steps of generating and displaying a first window at a first window layer, wherein said first window layer is a highest window layer; generating and displaying a second window at a second window layer, wherein said first window has a portion that does not overlap with said second window; both of said windows being simultaneously active; and said user operating on both said first window and said second window without altering the window order of said plurality of windows.

Claim 23 is substantially similar to claim 1, claiming a computer display system capable of displaying simultaneously active windows. Claims 2 and 15 are dependent on claims 1 and 2, respectively, and further specify that the first window comprises a "help access window." Claim 16 is dependent on claim 1 and further specifies that "said CPU generates said first windows in response to execution of a first application and generates said second window in response to execution of a second application." The remaining asserted claims, 17, 18, and 24-26, are dependent on claims 1 and 23 and differ only slightly from these independent claims.

Having eliminated 3 of the 4 patents from the lawsuit, Articulate moved for summary judgment of invalidity of the '540 patent. Specifically, Articulate asserted that claims 1, 2, 15, 17, 18, and 23-26 of the '540 patent were anticipated by prior art Adobe Photoshop software. Articulate further alleged that claim 16, the only other claim asserted by Apple, was also invalid as obvious over Adobe Photoshop in conjunction with a certain MacTutor publication.

Adobe Photoshop is a graphics software package that allows a user to create drawings on a drawing window on a computer screen. Adobe Photoshop also has a tool palette that is displayed next to the drawing window, or may be positioned to overlap the drawing window. The palette is a menu of drawing commands or tools that can be selected by clicking on the icon in the palette for that function. A user may successively manipulate or click on the drawing window and the palette without changing the displayed ordering of these items. The palette will continue to float on top of the drawing window.

Articulate argued that the drawing window and tool palette "window" of Adobe Photoshop were simultaneously active windows as claimed in the '540 patent. According to Articulate, these features of Adobe Photoshop anticipated claims 1, 2, 15, 17, 18, and 23-26 of the '540 patent and rendered them invalid.

The MacTutor article (Don Melton and Mike Ritter, C Workshop, Tear-off Menus and Floating Palettes, MacTutor, April 1988, at 26) describes "tear-off" menus² and floating palettes in graphical display systems. Articulate argued that the MacTutor article further disclosed that simultaneously active windows could be generated by separate applications. According to Articulate, this publication, together with Adobe Photoshop, rendered claim 16 of the '540 patent invalid for obviousness.

To assist in deciding Articulate's summary judgment motion, the court held a claim interpretation hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Following that hearing, the court issued its first order, construing the following claim terms at issue:

window - a framing device on the computer screen that displays information and may set the displayed information apart from other information on the screen;

operate on a window - opening, closing, moving or resizing a window without manipulating the data contained within such window;

operate on data in a window - manipulating the data contained within a window without necessarily opening, closing, moving or resizing the window; help access window - a window that contains one or more controls for accessing information which has been loaded on the central processing unit ("CPU").

The court subsequently issued a second order, granting Articulate's motion for summary judgment, finding that claims 1, 2, 15-18 and 23-26 of the '540 patent are invalid.

In making its findings of invalidity in its second order, the court further construed additional claim terms as follows:

simultaneously active windows - two or more defined and separated areas on the computer screen which are open at the same time and may be operated on by the user;

active - simultaneously available for operation.

In finding the '540 patent invalid, the district court compared the claims with the prior art. The district court referenced the declaration of Articulate's expert and concluded, without any further elaboration, that the computer program known as Adobe Photoshop "disclosed each and every limitation contained in independent claims 1 and 23." It also found that "[e]ach of the remaining claims of the '540 patent depend[s] on claims 1 and 23, so they are also anticipated by Adobe Photoshop."

The court further noted that claims 2 and 15, also dependent on claims 1 and 2, respectively, differ from the remaining claims by defining the first window as a "help access window." Apple defined this term during prosecution as "a window that contains one or more user interface controls for accessing information related to...