关于知识产权 知识产权培训 树立尊重知识产权的风尚 知识产权外联 部门知识产权 知识产权和热点议题 特定领域知识产权 专利和技术信息 商标信息 工业品外观设计信息 地理标志信息 植物品种信息(UPOV) 知识产权法律、条约和判决 知识产权资源 知识产权报告 专利保护 商标保护 工业品外观设计保护 地理标志保护 植物品种保护(UPOV) 知识产权争议解决 知识产权局业务解决方案 知识产权服务缴费 谈判与决策 发展合作 创新支持 公私伙伴关系 人工智能工具和服务 组织简介 与产权组织合作 问责制 专利 商标 工业品外观设计 地理标志 版权 商业秘密 WIPO学院 讲习班和研讨会 知识产权执法 WIPO ALERT 宣传 世界知识产权日 WIPO杂志 案例研究和成功故事 知识产权新闻 产权组织奖 企业 高校 土著人民 司法机构 遗传资源、传统知识和传统文化表现形式 经济学 金融 无形资产 性别平等 全球卫生 气候变化 竞争政策 可持续发展目标 前沿技术 移动应用 体育 旅游 PATENTSCOPE 专利分析 国际专利分类 ARDI - 研究促进创新 ASPI - 专业化专利信息 全球品牌数据库 马德里监视器 Article 6ter Express数据库 尼斯分类 维也纳分类 全球外观设计数据库 国际外观设计公报 Hague Express数据库 洛迦诺分类 Lisbon Express数据库 全球品牌数据库地理标志信息 PLUTO植物品种数据库 GENIE数据库 产权组织管理的条约 WIPO Lex - 知识产权法律、条约和判决 产权组织标准 知识产权统计 WIPO Pearl(术语) 产权组织出版物 国家知识产权概况 产权组织知识中心 产权组织技术趋势 全球创新指数 世界知识产权报告 PCT - 国际专利体系 ePCT 布达佩斯 - 国际微生物保藏体系 马德里 - 国际商标体系 eMadrid 第六条之三(徽章、旗帜、国徽) 海牙 - 国际外观设计体系 eHague 里斯本 - 国际地理标志体系 eLisbon UPOV PRISMA UPOV e-PVP Administration UPOV e-PVP DUS Exchange 调解 仲裁 专家裁决 域名争议 检索和审查集中式接入(CASE) 数字查询服务(DAS) WIPO Pay 产权组织往来账户 产权组织各大会 常设委员会 会议日历 WIPO Webcast 产权组织正式文件 发展议程 技术援助 知识产权培训机构 COVID-19支持 国家知识产权战略 政策和立法咨询 合作枢纽 技术与创新支持中心(TISC) 技术转移 发明人援助计划(IAP) WIPO GREEN 产权组织的PAT-INFORMED 无障碍图书联合会 产权组织服务创作者 WIPO Translate 语音转文字 分类助手 成员国 观察员 总干事 部门活动 驻外办事处 职位空缺 采购 成果和预算 财务报告 监督
Arabic English Spanish French Russian Chinese
法律 条约 判决 按管辖区浏览

中国

CN028-j

返回

HiTrend Technology (Shanghai) Co., Ltd. V. Renergy Micro-Technologies (Shenzhen) Co., Ltd. and Shanghai Yachuang Texin Electronics Co., Ltd.(2014) HGMS (Z) ZZ No. 12, Shanghai High People’s Court

HiTrend Technology (Shanghai) Co., Ltd. V. Renergy Micro-Technologies (Shenzhen) Co., Ltd. And Shanghai Yachuang Texin Electronics Co., Ltd. (2014) HGMS (Z) ZZ No. 12, Shanghai High People’s Court

 

Cause of action: Dispute over infringement of protected integrated circuit layout design


Collegial panel members:
 Ding Wenlian | Ma Jianfeng | Xu Zhuobin


Keywords: 
exclusive rights in an integrated circuit layout design, originality, reproduction, reverse engineering, substantial similarity


Relevant legal provisions: 
Regulations on Protection of Layout Designs of Integrated Circuits, articles 2, 3(1), 4, 7, 23, 30 and 33(1)


Basic facts:
 In the case of a dispute over infringement of an exclusive right to an integrated circuit (IC) layout design between claimant HiTrend Technology (Shanghai) Co., Ltd. (hereinafter “HiTrend Company”) and respondents Renergy Micro-Technologies (Shenzhen) Co., Ltd. (hereinafter “Renergy Company”) and Shanghai Yachuang Texin Electronics Co., Ltd. (hereinafter “Yachuang Company”), HiTrend Company had completed its IC layout design “ATT7021AU” on March 1, 2008, and registered the design in the same year. The registered IC layout design drawing indicated 16 layers. The “Brief Description of Structure, Technology and Functions of ATT7021AU IC Layout Design”, included among the registration documents, recorded that the design:

 

(a) satisfied the state-of-the-art bestof- breed layout design requirements of function/performance-optimized area (single-phase energy measurement);

 

(b) was a chip layout design with digital–analogue hybrid high anti interference high electrostatic protection; and

 

(c) applied circuit design technology and layout technology, such as rational layout of the metal layer, diffusion layer and signal flow, to achieve sensitive signal noise shielding and isolation of big and small signal interference.

 

A review conducted by the Patent Re-examination Board of the State Intellectual Property Office (hereinafter the “Patent Re-examination Board”) did not find any defect under the Regulations on the Protection of Layout Designs of Integrated Circuits (hereinafter “the Regulations”) that would warrant revocation of HiTrend Company’s exclusive right in the layout design; hence, Renergy Company’s application to the Patent Re-examination Board for its revocation was dismissed.

 

On January 20, 2010, HiTrend Company made a notarized purchase of 100 pieces of IC chips (model no. RN8209G) from Yachuang Company’s business site. Yachuang Company confirmed that it sold those chips; Renergy Company confirmed that it manufactured and sold RN8209 and RN8209G chips. Renergy Company’s website showed that, as of September 2010, the sales volume of RN8209 exceeded 10 million pieces. Some VAT special invoices seized from Renergy Company indicated that a total of 1,120 RN8209G chips were sold, at a unit price largely ranging between RMB4.80 and RMB5.50, with one invoice bearing a unit price of about RMB2; a total of 6,610 pieces of the RN8209 chips were sold, with the unit price ranging between RMB4.20 and RMB4.80.

 

Shanghai No. 1 Intermediate People’s Court commissioned Beijing Zitu Intellectual Property Judicial Appraisal Center (hereinafter the “Zitu Appraisal Center”) to carry out a judicial appraisal, which concluded as follows.

 

(a) RN8209 and RN8209G are identical to the Original Feature No. 5 in HiTrend Company’s claim (a layout for connection of digital ground rack and analogue ground rack).

 

(b) RN8209 and RN8209G are identical to the layout of independent booster circuit in the second section of the Original Feature No. 7 in HiTrend Company’s claim (a layout for the analogue-to-digital conversion circuit).

 

(c) Based on existing evidences, the two foregoing items were ascertained to be original and exclusive, and not conventional.

 

In 2006, HiTrend Company signed employment contracts and confidentiality agreements with Chen Qiang and Zhao Cong. HiTrend Company hired Chen Qiang as its sales manager; Zhao Cong was to engage in IC design work in its research and development department. Later, Chen Qiang worked at Renergy Company as its general manager and Zhao Cong also went to work at Renergy Company. During proceedings, Zhao Cong stated that he had seen the layout design of HiTrend Company’s ATT7021AU IC chip while he was working at that company; Renergy Company did not reverse engineer HiTrend Company’s ATT7021AU IC chip.

 

HiTrend Company claimed that the acts of Renergy Company and Yachuang Company infringed on its exclusive rights in the IC layout design, and it filed a lawsuit with the court, asking that it order the two to cease the infringement, to make public apology and to compensate HiTrend Company RMB15 million for its economic losses.

 

Held: On December 24, 2013, the Shanghai No. 1 Intermediate People’s Court ruled that:

 

(a) Renergy Company should immediately cease the infringement on HiTrend Company’s exclusive right in the IC layout design ATT7021AU (Registration No. BS.08500145.7);

 

(b) Renergy Company should compensate HiTrend Company RMB3.2 million for its economic losses and reasonable expenses for stopping the infringement; and

 

(c) HiTrend Company’s remaining claims were to be rejected.

 

Both HiTrend Company and Renergy Company were dissatisfied with the decision, and each appealed to Shanghai High People’s Court. Shanghai High People’s Court dismissed the appeals on September 23, 2014, and affirmed the first-instance judgment.

 

Reasoning: Shanghai Higher Intermediate People’s Court held as follows.

 

 I. On whether the corresponding layout designs of RN8209 and RN8209G chips were the same as the “layout for connection of digital ground rack and analogue ground rack” and the “independent booster circuit layout” in HiTrend Company’s ATT7021AU IC layout design

 

Because there is limited scope for innovation in IC layout design, strict standards should be adopted when assessing whether two designs are identical or substantially similar in instances alleging infringement. The main features of the “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” of the RN8209 and RN8209G chips were found to correspond and be identical to the main features of HiTrend Company’s “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout”. Although the wiring in the two parties’ layout designs differed in terms of the M2 layer, the three-dimensional configuration of the combination between the wiring and the interconnected components was not substantially altered. As for the difference claimed by Renergy Company with respect to connection position, rack width, arrangement of specific layout, size and shape, and the difference in size of the MOS tube in M1, M2, M3 and PL layers, all of these were found to be minor and insignificant, and not to substantially change the three-dimensional configuration of the combination between the wiring and the interconnected components. The difference in the ST layer was caused by the parties using different processes. These differences were held, on appeal, not to be sufficient to change the first-instance judgment that the two layout designs were substantially similar. Therefore, in this case, even in accordance with the more stringent judgment criteria, the corresponding layout designs of Renergy Company’s RN8209 and RN8209G chips were found to display a substantial similarity to the “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in HiTrend Company’s ATT7021AU IC layout design.

 

II. On whether there is originality in the “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in HiTrend Company’s ATT7021AU IC layout design According to the provisions of article 4 of the Regulations, “originality” of a layout design means that the layout design is the result of the inventor’s own intellectual work and that, at the time of its creation, the layout design is not a standard design generally accepted by layout design inventors and integrated circuit manufacturers. Moreover, HiTrend Company should bear the burden of proof for the originality of the IC layout design for which it claims protection, but it was neither necessary nor possible for HiTrend Company to exhaust all relevant conventional layout designs to prove that its layout design was an unconventional design. As long as the evidence it provided and the explanations it offered could prove that the layout design for which it claimed protection was not a conventional design, HiTrend Company was to be deemed to have satisfied the preliminary burden of proof. In this context, Renergy Company argued that the relevant layout design was a conventional design and that it should be able to overturn HiTrend Company’s claim by providing only one identical or substantially similar conventional layout design. In this case, to substantiate its claim that its “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in the ATT7021AU IC layout design were original, HiTrend Company had already provided the relevant Registration Certificate for IC Layout Design and the Patent Re-examination Board’s conclusion that there was no defect that warranted revocation of the registration, as well as the conclusions of the Zitu Appraisal Center and other such evidence. These actions were found to be sufficient to meet the requirements of preliminary burden of proof. In this context, the evidence provided by Renergy Company, or the circuit schematic diagram, or the layout design in which the feature points differed from HiTrend Company’s layout design were all insufficient to prove that its “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in the ATT7021AU IC layout design were conventional. It could therefore be affirmed that HiTrend Company’s “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” had originality.

 

III. On whether Renergy Company’s conduct in producing and selling RN8209 and RN8209G chips violated HiTrend Company’s exclusive rights in the ATT7021AU IC layout design According to article 30 of the Regulations, reproduction of all or any of the original parts of a protected layout design constitutes an infringement. It is apparent that any original part of the protected layout design is protected under law, regardless of its size or role in the overall layout design. In this case, there were conventional designs readily available for “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout”. Renergy Company had the choice of either adopting these conventional designs or independently developing different layout designs with originality. Renergy Company did not take either approach, but instead directly copied the “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in HiTrend Company’s ATT7021AU IC layout design, so as to manufacture and sell the RN8209 and RN8209G chips involved in this case. Such practice therefore straightforwardly constituted infringement.

 

Chips that achieve the same or similar functions will inevitably have similar circuit work mechanisms and these do not meet the criteria granting the designer exclusive rights as stipulated in the Regulations. The law therefore does not prohibit the act of reverse engineering other designers’ chips by photographing their layout design and analyzing the circuit work mechanisms. However, the law does not allow the direct copying of other people’s layout designs through reverse engineering, because such copying will massively reduce the time and costs invested by the imitators and hence severely weaken the competitive advantage of the business that created the original design, which will ultimately lower the incentives for innovation in the entire IC industry. In this case, Renergy Company’s motivation in partially copying HiTrend Company’s ATT7021AU IC layout design was neither for a personal purpose nor for the purpose of evaluation, analysis, research, teaching and so on, but for developing a new IC for commercial exploitation. Renergy Company admitted that it did not obtain HiTrend Company’s ATT7021AU IC layout design through reverse engineering; instead, it directly copied the original “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” in HiTrend Company’s ATT7021AU IC layout design, using it to manufacture and sell the RN8209 and RN8209G chips involved in this case. Regardless of whether Renergy Company’s RN8209 and RN8209G chip layout designs were original, therefore, article 23 of the Regulations should not apply to any of its practices.

 

In summary, Renergy Company admitted that it had accessed HiTrend Company’s ATT7021AU IC layout design. Without HiTrend Company’s permission, Renergy Company had incorporated the original “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” of the ATT7021AU IC layout design into the RN8209 and RN8209G chips that it produced and sold. Such practices violated HiTrend Company’s exclusive right to the ATT7021AU IC layout design and Renergy Company was therefore to bear the relevant civil liabilities.

 

IV. On whether the amount of compensation decided by the court of first instance was reasonable

 

Because Renergy Company refused to provide its financial information, it was apt to use the information on the sale of 10 million pieces, as displayed on its website, as the basis for calculating the amount of compensation due in this case. In this case, neither party had submitted evidence to prove the profit from the sales of the alleged infringing products; the appraisal report clarified that the other original parts claimed by HiTrend Company were not identical with or substantially similar to those of Renergy Company, so there was no basis on which HiTrend Company could claim compensation on the full profits of Renergy Company on the ground that there was similarity in other modules. The “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout” did not play a core and important role in the allegedly infringing chip, and they took up only a very small area. By directly copying HiTrend Company’s “layout for connection of digital ground rack and analogue ground rack” and “independent booster circuit layout”, Renergy Company saved on its investment in research and development, shortened its chip development time and, accordingly, obtained a competitive advantage in the market. The amount of compensation therefore could not be determined solely on the basis of the proportion of the two layouts in the whole chip. In summary, it was not appropriate for Shanghai No. 1 Intermediate People’s Court to rule, based on the facts of the case, that Renergy Company compensate HiTrend Company RMB3.2 million for its economic losses and reasonable expenses.