The semiconductor industry is a strategic, foundational, and leading industry that supports the economic and social development of our country and ensures national security. It is also an important component of Wuxi’s landmark industries.
In recent years, the Wuxi Intermediate Court has adhered to the guidance of Xi Jinping’s Thought on Socialism with Chinese Characteristics for a New Era, deeply studied and implemented Xi Jinping’s Thought on the Rule of Law, and earnestly implemented the decisions and deployments of the Party Central Committee, the provincial party committee, and the municipal party committee. It has successively issued the “Opinions on Strengthening Judicial Services and Safeguarding the Development of the Semiconductor Industry” and “Ten Judicial Measures to Serve the Development of New Quality Productive Forces,” continuously improving the judicial protection mechanism for intellectual property in the semiconductor industry, effectively enhancing the initiative, relevance, and effectiveness of judicial services for the development of the semiconductor industry, and contributing judicial wisdom and strength to accelerate the creation of a first-class domestic and internationally influential “chip” landmark.
At the same time, the Wuxi Intermediate Court actively implements the core strategy of innovation-driven development and the leading strategy of a strong industrial city, continuously deepening the strictest judicial protection of intellectual property rights, and fairly and efficiently adjudicating intellectual property cases in the semiconductor industry, involving patents, trade secrets, copyrights, integrated circuit layout designs, and other fields. Four typical cases have been selected for publication.
Table of Contents
1. Cautiously Sending Infringement Warnings to Establish Clear Boundaries of Rights
2. Utilizing Technical Investigation Advantages to Accurately Identify Equivalent Features
3. Timely Issuing Injunctions to Quickly Prevent Damage
4. Strategically Planning from Multiple Angles to Achieve Comprehensive Protection of Intellectual Property
01
Cautiously Sending Infringement Warnings to Establish Clear Boundaries of Rights
Basic Case Facts
The plaintiff, Xinxin Electronics Co., Ltd., collaborated with the defendants, Kexin Technology Co., Ltd. and Kexin Semiconductor Co., Ltd., on chip research and development since 2015, and the cooperation was terminated in 2019.
In December 2023, the two defendants sent an infringement warning letter to the plaintiff, claiming that during the cooperation period with the plaintiff and its affiliated companies, the plaintiff unilaterally applied for a patent on the project research results and obtained authorization, and actually manufactured and sold corresponding products, thereby infringing on the defendants’ trade secrets.
After receiving the letter, the plaintiff believed it did not infringe on the trade secrets claimed by the defendants, and thus sent a notice to the defendants, requesting them to clarify the secret points and file a lawsuit. The defendants did not file a lawsuit within a reasonable time nor withdraw the warning, leading the plaintiff to believe that the defendants’ actions placed its production and operation in an uncertain state, and thus filed this lawsuit, requesting confirmation that it did not infringe on the trade secrets claimed by the defendants.
The defendants claimed in the lawsuit that they had filed a lawsuit in the Hong Kong Special Administrative Region regarding their claimed infringement, and that the plaintiff’s lawsuit did not comply with legal provisions.
The court held that the defendants did not file a lawsuit or withdraw the warning regarding the plaintiff’s alleged infringement within a reasonable time, which placed the plaintiff’s operations in an unstable state. The plaintiff’s lawsuit met the acceptance conditions for confirming non-infringement, and the evidence in this case could not prove that the plaintiff infringed on the trade secrets claimed in the defendants’ infringement warning letter. Therefore, the court ruled to confirm that the plaintiff did not infringe on the defendants’ trade secrets. After the judgment, the parties did not appeal, and the judgment has taken legal effect.
Typical Significance
Confirming non-infringement lawsuits are a special judicial remedy aimed at providing legal protection for those warned of infringement, preventing rights holders from abusing infringement warnings. When a warned party does not recognize the claims of the rights holder upon receiving an infringement warning, they can legally request the warning party to withdraw the lawsuit or file a lawsuit. If the rights holder neither withdraws the warning nor files a lawsuit, the warned party can file a lawsuit to confirm non-infringement.
In this case, although the defendants filed a lawsuit in Hong Kong, since Hong Kong and the mainland belong to two different legal jurisdictions, and the plaintiff primarily conducts business in the mainland, the defendants’ lawsuit in Hong Kong does not eliminate the unstable state of the plaintiff’s operations caused by their infringement warning letter. Therefore, the plaintiff’s lawsuit still meets the legal acceptance conditions, and the judgment accurately defines the conditions for filing a lawsuit to confirm non-infringement of intellectual property rights.
Additionally, this case clarifies that the burden of proof for confirming non-infringement lawsuits lies with the rights holder who issued the infringement warning letter. If the rights holder cannot clearly specify the content of their trade secrets, the people’s court will be unable to review and determine whether the information involved meets the criteria for commercial secrets. In this case, the defendants, as the rights holders, did not specify the specific content of their claimed trade secrets and failed to fulfill the necessary burden of proof, making their claims of infringement in the warning letter lack factual basis and suggesting an abuse of the infringement warning. In this situation, the plaintiff lawfully exercised the right granted by the litigation system to confirm non-infringement of intellectual property rights, effectively safeguarding its legitimate rights and interests.
02
Utilizing Technical Investigation Advantages to Accurately Identify Equivalent Features
Basic Case Facts
The plaintiff, Juyuan Optoelectronics Technology Co., Ltd., acquired an invention patent named “Light Emitting Device” from an external party. According to the transfer agreement, it has the right to file a lawsuit for patent infringement that occurred before the patent transfer took effect. The defendant, Pumai R&D Co., Ltd., is a wholly-owned subsidiary of Pumai Company in the United States established in Wuxi, and its LED chips and packaging products are used in lighting, backlighting, and other fields, competing with the plaintiff in the market.
The plaintiff purchased products sold by the defendant’s distributors through notarized preservation and commissioned relevant testing agencies to conduct cutting tests on the products, resulting in a cutting position diagram, a full view diagram, and a partial position measurement diagram, as well as EDS point scanning tests on the cross-section testing area, producing relevant elemental spectrum diagrams. Based on this, the plaintiff believed that the aforementioned products fell within the protection scope of the involved invention patent and infringed upon the patent rights, and thus filed a lawsuit in court, requesting the defendant to cease infringement and compensate for damages.
During the trial, both parties compared the accused infringing products with the protection scope of the involved patent rights, and the technical investigation officer assisted in the comparison process, listening to both parties’ comparative opinions.
The court held that based on the testing results, the second distance of the accused infringing product was 18.2% of the horizontal length of the light-emitting structure, which did not correspond to the technical feature in the involved patent claim 1 stating that “the second distance is 3% to 15% of the horizontal length of the light-emitting structure.” The former’s proportion does not fall within the latter’s range, and including the former’s proportion within the protection scope of the involved patent claim would harm public interest. Additionally, the two have different technical effects, thus it could not be determined to constitute equivalent features. Therefore, the accused infringing product did not correspond to the technical features of the involved patent claim and did not constitute infringement of the involved patent rights, leading to the court’s dismissal of all the plaintiff’s claims. The plaintiff appealed, and the Supreme People’s Court upheld the original judgment in the second instance.
Typical Significance
Patent infringement comparison is a core aspect of patent litigation. Only when the accused infringing technical solution contains or equals all technical features in the claims can it be determined to fall within the protection scope of the involved patent rights and infringe upon the involved patent rights.
In this case, the court accurately determined through comparison that the accused infringing product did not have the same technical features as the involved patent claims, and in cases where the involved patent claims clearly defined relevant numerical ranges, it explicitly pointed out that values exceeding those ranges do not constitute equivalent features, establishing corresponding adjudication rules for determining equivalent features.
Additionally, this case is also a typical example of the technical investigation officer assisting in clarifying technical facts. The technical investigation officer analyzed the technical features of both parties, listened to their on-site comparative opinions, and provided opinions on whether the technical features were different or equivalent, especially regarding the analysis of equivalent features, which aligns with technical logic and legal provisions, reflecting the important role of technical investigation officers in improving the efficiency and accuracy of clarifying technical facts.
03
Timely Issuing Injunctions to Quickly Prevent Damage
Basic Case Facts
The plaintiff, Zexin Electronics Co., Ltd., is the exclusive rights holder of the integrated circuit layout design with registration number BS.225525712, which is currently in a stable state. The plaintiff purchased a chip model TS3260 from the defendant, Chip Semiconductor Co., Ltd., through notarized preservation and commissioned relevant institutions to issue a layout design comparison report, concluding that the accused chip replicated the involved integrated circuit layout design. The accused chip was commissioned for production by the defendant, Chizhong Semiconductor Technology Co., Ltd., and some batches of products are about to be delivered.
The plaintiff believes that the accused chip is priced significantly lower than its similar products, and once it enters the market, it will inevitably seize its market share, causing irreparable damage to the plaintiff. Therefore, it requests the court to order both defendants to stop replicating the involved integrated circuit layout design and cease selling the accused chip containing the involved integrated circuit layout design, and to assist in stopping the delivery of the accused chip.
The court reviewed and found that the plaintiff’s involved integrated circuit layout design rights were in a stable state, and the evidence submitted initially proved the possibility of infringement of the involved integrated circuit layout design rights by the accused chip. The accused chip is about to be delivered and enter the market, and if no preservation measures are taken, it may greatly harm the plaintiff’s legitimate rights and interests, causing irreparable damage. Taking preservation measures would not harm public interest. The plaintiff provided a guarantee when making the application, thus the plaintiff’s application complies with legal provisions and should be granted.
Accordingly, the court ruled to order both defendants to cease production and sales of the accused chip from the date the ruling takes effect until the case judgment takes effect. It also issued an execution assistance notice, requiring the external party to stop delivering the accused chip.
Both defendants were dissatisfied and filed a reconsideration request with the Supreme People’s Court. After review, the Supreme People’s Court found the reconsideration request unfounded and ruled to dismiss it.
Typical Significance
Behavioral preservation (temporary injunction) is a legal system for rights holders to seek legal remedies in intellectual property infringement litigation. Through behavioral preservation, rights holders can obtain legal protection before or during litigation, effectively preventing economic losses and damage to reputation caused by ongoing or imminent infringement, thus avoiding irreparable harm to rights holders.
This case is the first nationwide case involving behavioral preservation in disputes over exclusive rights to integrated circuit layout designs, and it is also the first case in which the Supreme People’s Court supported a reconsideration ruling on behavioral preservation. The behavioral preservation ruling was based on the imminent delivery of the accused infringing product, its significant value, and the urgency of the situation, as its entry into the market could lead to reduced transactions and price erosion for the rights holder. The ruling confirmed that the application for preservation met the granting conditions, effectively safeguarding the legitimate rights and interests of semiconductor enterprises and preventing the occurrence of suspected infringement and its damaging consequences, reflecting the timeliness and efficiency of the court’s judicial protection of intellectual property in the semiconductor industry.
04
Strategically Planning from Multiple Angles to Achieve Comprehensive Protection of Intellectual Property
Basic Case Facts
The plaintiff, Jizhong Electronics Technology Co., Ltd., is the copyright holder of a work titled “6-inch 17-point RTD Wafer Product Diagram” and has registered the copyright for it. The product diagram shows the wafer divided into inner and outer circles, with eight solder points in the outer circle and eight solder points in the inner circle, evenly distributed. The solder points on the left side of both circles are not connected, connected by a ring, and a small red icon and text are printed on the thin thermocouple.
The plaintiff discovered during the 11th China Semiconductor Equipment Annual Conference and Semiconductor Equipment and Core Components Exhibition that the defendant, a fellow exhibitor, used the aforementioned wafer sensor image to create display boards and brochures, which the plaintiff believed infringed its copyright, and thus filed a lawsuit in court.
During the litigation, the defendant claimed that the accused infringing image was downloaded by its employees from the internet for use in product descriptions. This case went through first and second instance trials, and the court determined that the plaintiff held copyright over the involved image and publicly used it. The accused infringing image used by the defendant at the exhibition was substantially similar to the involved image, and both parties were in the same industry. Based on the copyright infringement principles of “contact” and “substantial similarity,” the court ruled that the defendant infringed upon the plaintiff’s copyright of the involved image, ultimately ordering the defendant to cease infringement and compensate the plaintiff for economic losses and reasonable expenses.
Typical Significance
Semiconductor enterprises should not only focus on the innovation and maintenance of technical intellectual property rights such as patents and integrated circuit layout designs in their production and operations but also pay attention to the planning and layout of other non-technical intellectual property rights such as copyrights and trademarks.
The plaintiff, engaged in the production of wafer sensor products, timely registered the copyright for the corresponding product images and obtained the relevant registration certificate, thus enabling it to file a lawsuit as a copyright holder and engage in rights protection.
Although the case is not complex and the trial difficulty is not high, the judgment serves as a reminder for enterprises to have awareness of intellectual property layout and planning. Only by comprehensively utilizing various means such as patent rights, trademark rights, copyright, trade secrets, and exclusive rights to integrated circuit layout designs can they effectively promote comprehensive protection of intellectual property and safeguard their legitimate rights and interests without any omissions.
This case also warns enterprises about the risks of infringing copyright when using images, texts, and other materials collected from the internet or public channels in their promotions, urging them to strengthen awareness of intellectual property infringement risk prevention and avoid the negative impacts of intellectual property infringement.
Source: Wuxi Intellectual Property Court
