Xerox Microsoft Case Study

Apple Computer, Inc. v. Microsoft Corp.
CourtUnited States Court of Appeals for the Ninth Circuit
Full case nameApple Computer, Inc. v. Microsoft Corporation and Hewlett-Packard Co.
ArguedJuly 11, 1994
DecidedSeptember 19, 1994
Citation(s)35 F.3d1435; 63 USLW 2259, 1994 Copr. L. Dec. (CCH) ¶ 27,301, 32 U.S.P.Q.2d 1086
Court membership
Judge(s) sittingFerdinand Francis Fernandez, Pamela Ann Rymer, Thomas G. Nelson
Case opinions
MajorityRymer, joined by a unanimous court

Apple Computer, Inc. v. Microsoft Corporation, 35 F.3d 1435 (9th Cir. 1994),[1] was a copyright infringement lawsuit in which Apple Computer, Inc. (now Apple Inc.) sought to prevent Microsoft and Hewlett-Packard from using visual graphical user interface (GUI) elements that were similar to those in Apple's Lisa and Macintoshoperating systems.[2] The court ruled that, "Apple cannot get patent-like protection for the idea of a graphical user interface, or the idea of a desktop metaphor [under copyright law]...".[1] In the midst of the Apple v. Microsoft lawsuit, Xerox also sued Apple alleging that Mac's GUI was heavily based on Xerox's.[3] The district court dismissed Xerox's claims without addressing whether Apple's GUI infringed Xerox's.[4] Apple lost all claims in the Microsoft suit except for the ruling that the trash can icon and folder icons from Hewlett-Packard's NewWave windows application were infringing. The lawsuit was filed in 1988 and lasted four years; the decision was affirmed on appeal in 1994,[1] and Apple's appeal to the U.S. Supreme Court was denied.


Apple had agreed to license certain parts of its GUI to Microsoft for use in Windows 1.0, but when Microsoft made changes in Windows 2.0 adding overlapping windows and other features found in the Macintosh GUI, Apple filed suit. Apple added additional claims to the suit when Microsoft released Windows 3.0.[5][6]

Apple claimed the "look and feel" of the Macintosh operating system, taken as a whole, was protected by copyright, and that each individual element of the interface (such as the existence of windows on the screen, the rectangular appearance of windows, windows could be resized, overlap, and have title bars) was not as important as all these elements taken together. After oral arguments, the court insisted on an analysis of specific GUI elements that Apple claimed were infringements. Apple listed 189 GUI elements; the court decided that 179 of these elements had been licensed to Microsoft in the Windows 1.0 agreement and most of the remaining 10 elements were not copyrightable—either they were unoriginal to Apple, or they were the only possible way of expressing a particular idea.[7]

Midway through the suit, Xerox filed a lawsuit against Apple claiming Apple had infringed copyrights Xerox held on its GUIs. Xerox had invited the Macintosh design team to view their GUI computers at the PARC research lab; these visits had been very influential on the development of the Macintosh GUI. Xerox's lawsuit appeared to be a defensive move to ensure that if Apple v. Microsoft established that "look and feel" was copyrightable, then Xerox would be the primary beneficiary, rather than Apple. The Xerox case was dismissed, for a variety of legal reasons.[8]

Court case[edit]

The district court ruled that it would require a standard of "virtual identity" between Windows and the Macintosh at trial in order for Apple to prove copyright infringement. Apple believed this to be too narrow of a standard and that a more broad "look and feel" was all that should be necessary at trial. As a result, both parties agreed that a jury trial was unnecessary given the rulings, and Apple filed an appeal to the Ninth Circuit Court of Appeals in order to have the district court's characterization overruled.[9]

After the district court ruled in favor of Microsoft, Apple appealed the decision arguing that the district court only considered infringements on the individual elements of Apple's GUI, rather than the interface as a whole. The appeals court almost entirely affirmed the ruling of the district court, establishing that, "almost all the similarities spring either from the license or from basic ideas and their obvious expression... illicit copying could occur only if the works as a whole are virtually identical."[1] However, the circuit court did reverse the district court's decision not to award attorney's fees to Microsoft, clarifying and sending the case back to the district court to resolve the issue.

Citing Brown Bag Software v. Symantec Corp., the circuit court dissected the GUI in order to separate expression from ideas (as expression, but not ideas, are covered by copyright law).[1][10] The court outlined five ideas that it identified as basic to a GUI desktop: windows, icon images of office items, manipulations of icons, menus, and the opening and closing of objects.[1] The court established that Apple could not make copyright claims based on these ideas and could only make claims on the precise expression of them.

The court also pointed out that many of Apple's claims fail on an originality basis. Apple admittedly licensed many of its representations from Xerox, and copyright protection only extends to original expression. Apple returned to its "complete look and feel" argument, stating that while the individual components were not original, the complete GUI was. The court rejected these arguments because the parts were not original.


Much of the court's ruling was based on the original licensing agreement between Apple and Microsoft for Windows 1.0, and this fact made the case more of a contractual matter than of copyright law, to the chagrin of Apple. This also meant that the court avoided a more far-reaching "look and feel copyright" precedent ruling. However, the case did establish that the analytic dissection (rather than the general "look and feel") of a user interface is vital to any copyright decision on such matters.

In 1998, three years after the lawsuit was decided, all lingering infringement questions against Microsoft regarding the Lisa and Macintosh GUI as well as Apple's "QuickTime piracy" lawsuit against Microsoft were settled in direct negotiations. Apple agreed to make Internet Explorer their default browser, to the detriment of Netscape. Microsoft agreed to continue developing Microsoft Office and other software for the Mac over the next five years. Microsoft also purchased $150 million of nonvoting Apple stock. Both parties entered into a patent cross-licensing agreement.[11][12]

See also[edit]


  1. ^ abcdefApple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).
  2. ^"Microsoft vs. Apple: The History of Computing (Infographic)". Archived from the original on 2013-06-12. Retrieved 2013-04-18. 
  3. ^Fisher, Lawrence. Xerox Sues Apple Computer Over Macintosh Copyright, The New York Times, Dec. 15, 1989.
  4. ^Xerox Corp. v. Apple Computer, Inc., 734 F. Supp. 1542 (N.D. Cal. 1990).
  5. ^"Pirates of Silicon Valley - Fun Facts and Information". Retrieved 2014-04-18. 
  6. ^Gerald Urquhart. "Pirates of Silicon Valley". Retrieved 2014-04-18. 
  7. ^"Tech Giant Showdown: Microsoft vs. Apple". Archived from the original on 2013-11-05. Retrieved 2013-04-18. 
  8. ^Pollack, Andrew (1990-03-24). "Most of Xerox's Suit Against Apple Barred". The New York Times. Retrieved 2008-12-01. 
  9. ^Andrews, Paul. Apple-Microsoft Lawsuit Fizzles To A Close -- `Nothing Left' To Fight About, The Seattle Times, June 2, 1993
  10. ^Baker v. SeldenArchived 2009-03-23 at the Wayback Machine., 101 U.S. 99 (1879).
  11. ^Kawamoto, Dawn; Heskett, Ben; Ricciuti, Mike. "MS to invest $150 million in Apple", CNET News, August 6, 1997
  12. ^"Preferred Stock Purchase Agreement", FindLaw, August 5, 1997

External links[edit]

clients & industry contributions

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Due to the confidentiality of most of our client relationships and work, below is a partial, public list of "the company we keep". This list includes enterprise and recent startup clients, as well as past and other spinoffs, spinouts, licensees, and ventures with PARC contributions. 

To see a list of clients and at-a-glance overview of PARC today, please download our fact sheet.


LG Chem Power
battery management systems

PARC and LG Chem Power (LGCPI), a subsidiary of LG Chem, have been selected by the U.S. Department of Energy's Advanced Research Projects Agency-Energy (ARPA-E) to enter award negotiations for developing an optically based smart monitoring system prototype targeting batteries for electric vehicles (EVs). The system will use PARC's compact wavelength-shift detection technology and machine learning/sensor network expertise -- part of PARC's optics and optoelectronics and intelligent automation work -- to enable effective real-time performance management and optimized battery design. Capabilities will range from inferring state and health information to predicting remaining life, and the resulting commercial EV-grade battery module with embedded optical sensors and readout unit will undergo industry-standard validation at LGCPI's facilities. These innovations will significantly improve performance and help reduce costs of next-generation energy storage technologies.




consumer electronics

P&G, the world's largest consumer products company, is a recognized leader in open innovation, developing external partnerships through its Connect+Develop program with the aim of accelerating the rate and efficiency of innovation delivery. When P&G identified compelling growth opportunities in the areas of consumer electronics, it also recognized the need for additional expertise beyond in-house capabilities to help deliver on those opportunities. PARC brought to the table a breadth of expertise and ability to innovate within industry constraints and market economics. Together, P&G and PARC have worked on prototype development, technology evaluation, and product roadmapping.





Bulk AlN substrates supplier HexaTech, Inc., is working with PARC to gain our know-how and expertise in UVLEDs to move upstream towards more valuable devices.




ethnography services beyond marketing insight

Dentsu, Inc. holds the largest share of the Japanese advertising market and is ranked in the top 5 agency companies by Advertising Age. Dentsu Marketing Insight advances corporations. research processes and solutions with marketing research conducted for more than 5,000 projects annually. Going beyond typical market research and findings, PARC's ethnography services for Dentsu and Dentsu Marketing Insight will deliver extensive understanding of human behavior, in-depth insights, and comprehensive outlooks on people's lives/ contexts.




Glo-USA/ glo AB
novel nanowire-based lighting

PARC is helping GLO-USA, Inc. develop device processing strategies for GLO's novel nanowire-based III-V lighting technology. This relationship highlight's PARC's ability to quickly respond to startup-customers (less than 4 weeks from initial contact to signed contract) and to invent, develop, and deliver novel technology focused on customer needs.



mobile telepresence

Leading technology and entertainment company Sony Corporation worked with PARC to strengthen its capabilities in developing products. The company wanted to gain a deeper understanding of customer practices and uncover unmet needs in the area of mobile telepresence. PARC ethnographers identified an emerging multi-connected content-sharing and communication phenomenon, which they dubbed "channel blending", and recommended specific technology opportunities for Sony to take advantage of it.




Thin Film Electronics
printed memory with logic

Thin Film Electronics ASA ("Thinfilm") is working with PARC to develop next-generation printed memory solutions that combine Thinfilm's memory products with PARC's printed thin-film transistor technology. Complementing each other's strengths to move the industry beyond components and towards consumer-facing applications, the two companies recently announced they produced a working prototype of the world's first printed non-volatile memory device addressed with complementary organic circuits (the organic equivalent of CMOS circuitry). This demonstration is a significant milestone toward the mass production of low-cost, low-power ubiquitous devices that are a key component of the "Internet of Things".




materials and display prototyping

BASF creates the chemistry for materials and other component products that enable multiple industry applications. With the goal of expanding beyond its existing business into new areas, the company worked with PARC to integrate transistors for backplanes and displays using BASF's portfolio of organic chemistry-based materials targeted at display manufacturers.




PowerCloud Systems / acquired by Comcast
networking as a service (NaaS)

PARC spin-out PowerCloud Systems is a leading software platform provider for enabling Networking as a Service (NaaS). The technology underpinning its CloudCommand platform was developed at PARC, and is supported by 10 patents in areas ranging from cloud-virtualized network controllers to usable security. PowerCloud Systems' investors include Walden Venture Capital and Javelin Venture Partners, as well as Qualcomm Ventures, which led the most recent financing round.




conversation analysis study

PARC is working with Motorola Solutions on contextual intelligence technologies. PARC also helped Motorola, Inc. with an ethnography-style study to investigate sharing practices among family and friends. 




information in context

A Xerox-funded company incubated at PARC, Meshin found its original roots inside PARC research focused on engineering semantic software applications to increase the productivity of today's information workers. Using natural language processing, context-aware computing, and image recognition technologies, a team of seasoned business professionals -- supported by PARC scientists -- have created a "context-aware information services" platform to harvest a semantic "mesh" of information relationships that contextually connects disparate information across a user's information systems.





Dowa Electronics Materials Co., Ltd. acquired patents and capabilities to manufacture and develop a new category of UV-LED based products.




human interfaces

NEC Corporation and PARC, along with Carnegie Mellon University, collaborated to support easy-to-use human interfaces for NEC design/evaluation processes, tools, and products. In a separate engagement, PARC also worked with NEC Display Solutions, Ltd.




Sun Microsystems / acquired by Oracle
interconnects for high-speed servers

To maintain a competitive advantage in their high-speed, high-end server market, Sun Microsystems, Inc. engaged PARC in co-development and ongoing collaboration around PARC's ClawConnect technology. 




Powerset / acquired by Microsoft
natural language search

Powerset, Inc. and PARC signed an exclusive deal in 2007 to develop and commercialize breakthrough search engine technology in consumer search -- leveraging more than three decades of PARC's research and technology refinement in natural language understanding. Microsoft acquired Powerset in 2008.




future networking technology

Building on their relationship from other joint hardware and software projects over the past 5 years, Samsung & PARC recently entered into a new engagement targeted at advancing the state of the art in future communications and networking technologies. PARC is one of the partners of Samsung Advanced Institute of Technology, focused on helping the company achieve its mission of leading the digital convergence movement.




embedding digital data

Microglyph Technology GmbH, a provider of customized auto-ID solutions headquartered in Germany, licensed basic PARC DataGlyphs® patents to form the foundation of their proprietary Microglyph® code. PARC DataGlyphs® are an unobtrusive method of embedding computer-readable data on a variety of surfaces. Unlike most barcodes, PARC DataGlyphs® are flexible in shape and size making them suitable for curved surfaces.



rich media technology & more

Dai Nippon Printing Co. Ltd. worked with PARC to develop and deploy a context- and activity-aware system that recommends information about local area activities by matching the consumer's location, time of day, personal tastes, and more.




ubiquitous computing

Fujitsu Limited and PARC engaged in a multi-year joint research and co-development agreement for ubiquitous computing, as well as for other technology expertise and services. PARC also helped Fujitsu establish a Social Science Center inside Fujitsu's system development organization, helping them apply and especially adapt ethnography methods for their organizational operations and culture. Fujitsu offers ethnographic fieldwork as a service to its customers, with the goal of making visible its customers' business processes, as well as to train its own technology-oriented engineers in social science methods.




laser printing & more

Over the years, PARC has delivered lasting value to Xerox -- for example, laser printing became a multibillion-dollar business for Xerox. PARC is also the birthplace of Xerox's DocuPrint network printing software, the dual-beam lasers used in many Xerox products, and the scheduling software for the Xerox iGen3 Digital Production Press. Xerox continues to embed relevant PARC technology into its product and espectially its service offerings via its acquired company ACS, now known as Xerox Services.




book scanning technology

Kirtas Technologies, Inc. holds an exclusive license for page-turning technology developed by PARC and the Xerox Wilson Center for Research & Technology. Kirtas, a pioneer in high-quality digitization, is known for its patented automatic book scanners, software, and services which reduce the cost and overhead of mass digitization.



electronic reusable paper (e-paper)

Gyricon Media, Inc. was spun out in 2000 to commercialize PARC's electronic reusable paper, a document display technology that is thin, flexible, and portable like paper -- but that can be connected to a network and be reused thousands of times. Gyricon LLC closed in 2005; Xerox continues to license the e-paper display technology.



ContentGuard / acquired by Microsoft, Time Warner, Thomson/ acquired by Pendrell
digital rights management (DRM)

ContentGuard was spun-out in 2000 to develop and license software for digital rights management (DRM). Its eXtensible rights Markup Language (XrML) DRM software, developed at PARC, authorizes access to content or a network service in a language that multiple systems can read. In 2005, Microsoft, Time Warner and Thomson acquired ContentGuard. In 2011, Pendrell Technologies announced they would work with Time Warner to accelerate ContentGuard -- "a leading inventor, developer and licensor of DRM and related content distribution patents and technologies" -- to provide flexible DRM solutions for the growing digital content distribution market.



GroupFire / Outride / acquired by Google
personalized search technology

GroupFire, Inc. was spun off in 2000 to commercialize ~70 PARC IP claims covering information retrieval, personalization, contextualization, data mining, natural language semantic analysis, and artificial intelligence. GroupFire enabled personalized and simplified Internet searches by managing bookmarks and allowing access to them from any computer connected to the Internet. GroupFire later became Outride, Inc., whose intellectual property and technology was acquired by Google in 2001.



Uppercase / acquired by Microsoft
portable document reader

Uppercase, Inc. was spun out in 1998 to commercialize one of PARC's ubiquitous computing research results: a thin, lightweight, pen-based, page-oriented, network-accessible portable document-reading device (PDR) for mobile professionals. The technology was acquired by Microsoft in 2000.



displays & sensing for digital medical imaging

Based on PARC's foundational research in amorphous silicon (a-Si), dpiX was spun out in 1996. The company became the world's leading source for high-resolution a-Si sensor arrays, and was acquired by Trixell (a Siemens Medical/ Phillips Medical/ Thomson-CSF joint venture), Planar Systems, and Varian Medical in 1999. dpiX a-Si technology provides the foundation for medical, industrial, military, and security X-ray imaging and is used by medical equipment companies worldwide.




Inxight Software / acquired by Business Objects / acquired by SAP
information visualization & knowledge extraction

Inxight Software, Inc. was spun out by PARC in 1996 to provide information visualization and knowledge extraction software. The software commercialized PARC's unique approach to information visualization by using a hyperbolic browser and other "focus+context" visualization techniques to give the user 3D views of text databases. Business Objects acquired Inxight in 2007, and was in turn acquired by SAP in 2008.



Placeware / acquired by Microsoft
web-based meeting & presentation solution

PARC's research on how a sense of place can create more meaningful interaction on the Internet resulted in the spin-out Placeware in 1996. The company provided users with a live, web-based presentation solution for field and customer communication, becoming the largest Internet meeting solutions provider. Placeware was acquired by Microsoft in 2003 to become Microsoft Office LiveMeeting.



customer insight

Henry Sang studied how customers implemented technologies developed at PARC. He founded consulting business Customers & Technologies, Inc. (CTI) in 1994 to develop methodologies for integrating new technologies into document processes.



electronic whiteboard technology & collaborative meeting tools

PARC research on computational support for real-time, multi-media collaboration in face-to-face and remote meetings resulted in the creation of the LiveBoard. This was a blackboard-sized, touch-sensitive screen (capable of displaying ~million-pixel images), which utilized a keyboard and electronic pen for collaborative annotation and drawing. LiveWorks was spun out in 1992 to market LiveBoards.


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