The Judgment Digests of the Intellectual Property Court of the Supreme People's Court (2020) (the Digests) was released on Feb. 26th, 2021. The Digests include 46 adjudication rules extracted from 55 typical cases selected from a total of 2,787 technology-related intellectual property cases as concluded by the Intellectual Property Court (the IPC) of the Supreme People's Court (the SPC) in 2020, which may reflect the judicial ideology, trial concepts, and adjudication methods of the IPC in dealing with difficult and sophisticated cases as well as new types of cases in the field of judicial protection of technology-intensive intellectual property.

[Disclaimer: below is the English translation of the original version of the Digests in Chinese. In case of any discrepancy between the two versions, the Chinese version shall prevail.]

I. Civil Patent Cases

1. Factors to be considered when issuing anti-suit injunction

[(2019) SPC IP Civil Final 732, 733, and 734 - Cases of Disputes over Declaration of Patent Non-infringement and over SEP Licensing Between Appellant Conversant Wireless Licensing S.A.R.L and Appellees Huawei Technologies Co., Ltd., Huawei Terminal Co., Ltd. and Huawei Software Technologies Co., Ltd.]

In case of any application for act preservation that prohibits the application for enforcement of an extraterritorial court ruling, the people's court shall comprehensively consider the following factors while making its decision: whether the respondent's application for enforcement of the extraterritorial court ruling has a substantial impact on the trial and enforcement of the lawsuit in China; whether it is indeed necessary to implement the act preservation measure; whether the damage to the applicant caused by failure to implement the act preservation measure exceeds the damage to the respondent caused by implementing such a measure; whether implementing the act preservation measure harms public interest; whether implementation of the act preservation measure is in line with the principle of international comity; and other factors that may be contemplated by the court. With respect to whether the respondent's application for enforcement of the extraterritorial court judgment will have a substantial impact on the trial and enforcement of the lawsuit in China, the following factors can be considered: whether the parties to the lawsuits in China and overseas are the same, whether there is any overlap between the trial subject matters, and whether the respondent's act of filing the extraterritorial lawsuit interferes with the lawsuit in China. In determining the necessity of the act preservation measure, the focus shall be on examining whether failure to implement the act preservation measure causes irreparable damage to the applicant's legitimate rights and interests or any other damage, like difficulty in enforcing the case ruling, in which case the damage shall include both tangible material damage and intangible damage like damage of business opportunities and market interests; both damage of economic interests and damage of litigation interests; and both damage to interests in China and damage to interests outside China. With respect to the principle of international comity, factors to be considered include the sequence of case acceptance, the appropriateness of case jurisdiction, and the appropriateness of the impact on the trial and judgment of extraterritorial courts.

2. Daily fine to be imposed in violation of anti-suit injunction

[(2019) SPC IP Civil Final 732, 733, and 734 - Cases of Disputes over Declaration of Patent Non-infringement and over SEP Licensing Between Appellant Conversant Wireless Licensing S.A.R.L and Appellees Huawei Technologies Co., Ltd., Huawei Terminal Co., Ltd. and Huawei Software Technologies Co., Ltd.]

The act preservation measure that prohibits the respondent from certain acts is unique. If the respondent refuses to comply with its obligation to refrain from certain acts as determined by the act preservation ruling and illegally conducts an act that changes the original status quo, such an intentional illegal act shall constitute a continuous violation of the act preservation ruling and a continuous change of the original status quo. Therefore, the respondent shall be deemed as committing the illegal act every day, in which case the court may impose a daily fine as it sees appropriate and such fine shall be accumulated on a daily basis.

3. Prerequisite for determining employer inventions

[(2020) SPC IP Civil Final 1258 - Case of Patent Ownership Dispute Between Appellants Wuxi Lertech Technology Co., Ltd. and Bai Jianmin and Appellee Jiangsu Multi-Dimension Technology Co., Ltd.]

The prerequisite for determining employer inventions is that the inventor shall have an employment relationship with the unit or a temporary work unit, as stated in Paragraph 2 of Article 12 in the Detailed Rules on the Implementation of the Patent Law, and the judgment criterion for the determination rely on whether the unit has obtained the control over the inventor's labor, including his/her creative labor for completing the invention involved in the case. If the unit only has a general cooperation relationship with the inventor but does not have control over the inventor's labor, the involved invention of the inventor is not an employer invention.

4. Ownership of rights to employer invention achieved within one year after leaving the original unit

[(2019) SPC IP Civil Final 799 - Case of Patent Application Right Ownership Dispute between Appellants Guangzhou Wondfo Biotech Co., Ltd., Yang Bin, and Lai Yuanqiang, Appellee Edan Instruments Co., Ltd., and Defendant of First Instance Wang Jihua]

An invention achieved by an employee within one year after leaving the original unit but related to his/her job or assigned tasks in the original unit shall be the employer invention of the original unit, with related patent application right and patent right belonging thereto. Even if the invention is also related to the employee's job or assigned tasks in the new unit, the new unit does not necessarily enjoy any right to the invention.

5. Ownership of rights in the case of patent application using others' technical secrets without permission

[(2020) SPC IP Civil Final 871 - Case of Patent Ownership Dispute between Appellant Tianjin Greenpine Pharmaceutical Co., Ltd. and Appellee Huabei Pharmaceutical Hebei Huamin Pharmaceutical Co., Ltd.]

Where the right holder of a technical secret claims ownership to the patent application right or patent right on the ground of infringement of the technical secret, the people’s court shall examine whether the technical secret is disclosed in the patent documents or used in the technical solution of the patent, and whether the technical secret constitutes the substantial content of the technical solution. If the answers to both questions are in the affirmative, then the right holder of the technical secret shall have corresponding rights to the relevant patent application or patent.

6. Liability for damages for failure to perform duty of good faith during patent ownership dispute

[(2019) SPC IP Civil Final 424 - Case of Property Damages Dispute between Appellants South China Sea Fisheries Research Institute of CAFS and Guangzhou Yujing Fishery Technology Co., Ltd., Appellee Guangzhou Degang Fishery Equipment Technology Co., Ltd., and Defendants of First Instance Jiang Hanping, Li Chunhou, Jie Xiaoyong, and Guangzhou Chuangling Fishery Technology Co., Ltd.]

During the dispute over the ownership of patent application right or patent right, the patent applicant or registered patentee shall perform its duties in good faith, and make active efforts to have the patent granted or maintain the validity of granted patent, under the principle of good faith. Failure of the patent applicant or registered patentee to fulfill this duty of good faith without justifiable reasons, resulting in the termination or loss of the right and thus damaging the legitimate rights and interests of the real right holder, constitutes an infringement on the property right of the other party, for which the patent applicant or registered patentee shall bear the civil liability to compensate for economic losses caused thereby.

7. Interpretation of "a" or "an" in claims

[(2020) SPC IP Civil Final 1070 - Case of Invention Patent Infringement Dispute between Appellant Shenzhen Zhongtianmei Science Technology Co., Ltd. and Appellee Shenzhen CUZDO Environmental Hi-Tech Co., Ltd.]

The use of "a" or "an" in claims does not necessarily place any restriction in quantity. Its specific meaning shall be determined according to the general understanding of person skilled in the art, after reading the claims and the specifications.

8. Identification of "for production and business purposes" in determining patent infringement

[(2020) SPC IP Civil Final 831 - Case of Invention Patent Infringement Dispute between Appellant Jiao Ruili and Appellees Feed Research Institute of CAAS and Agricultural and Rural Affairs Bureau of Daxing District, Beijing]

"For production and business purposes" in Paragraph 1 of Article 11 in the Patent Law cannot be simply equated with engaging in profit-making activities, nor can it be identified only according to the institutional nature of the patent exploiter. The focus of the comprehensive identification shall be made by the act of patent exploitation itself, on considering whether the act belongs to a market activity, whether it affects the market interests of the patentee, etc. Wherever government agencies, public institutions, public welfare organizations, and other entities mainly engaging in public administration, social services, and public welfare undertakings, exploit a patentee or participate in market activities that may damage the market interests of the patentee, they can be identified as committing an act that constitutes "for production and business purposes".

9. Identification of patent co-exploiters

[(2020) SPC IP Civil Final 212 - Case of Invention Patent Infringement Dispute between Appellants Qinghai Lvda Ecological Sand Control Co., Ltd. and Qinghai Wulan Shenglong Agriculture and Forestry Co., Ltd. and Appellees Tianjun County Forestry and Grassland Bureau of Haixi Mongolian and Tibetan Autonomous Prefecture of Qinghai Province and Qingdao Xinkeda Engineering Consulting Co., Ltd.; (2019) SPC IP Civil Final 181 - Case of Utility Model Patent Infringement Dispute between Appellant Dongguan Hongding Home Co., Ltd., Appellee Dongguan Kangsheng Furniture Co., Ltd., Plaintiff of First Instance Guangdong Qisheng Furniture Co., Ltd., and Defendant of First Instance Xinyang Agriculture and Forestry University]

The tenderee who specifies a technological solution in a bidding relationship or the client who provides a technological solution in a processing contract relationship has the substantial power over the implementation of the technological solution of the patent and shall thus constitutes the co-exploiters of the patent along with the successful bidder, the contractor, and other participants who are directly exploiting the patent.

10. Restrictions on Intentional Exclusion in application of the doctrine of equivalents

[(2020) SPC IP Civil Final 1310 - Case of Utility Model Patent Infringement Dispute between Appellant Shenzhen City Xinhualong Technology Co., Ltd. and Appellee Deng Yuzhi]

If after reading the claims and specifications, an ordinary technician in the art can conclude that the patent applicant or patentee has deliberately emphasized the linguistic meaning of a certain feature in the claims, to intentionally exclude specific technological solutions, the doctrine of equivalents shall not be applied to bring the excluded technological solutions into the protection scope of the patent.

11. Identification of Non Substantial Difference in Prior Art Defense

[(2019) SPC IP Civil Final 804 - Case of Utility Model Patent Infringement Dispute between Appellant Foshan Shunde Fashion Electrical Appliances MFG. Co., Ltd. and Foshan Yidou Technology Co., Ltd. and Appellee Zhejiang iSMAL Hi-Tech Electrics Co., Ltd.]

In cases concerning prior art defense, if certain technical feature in the accused technical scheme and its corresponding technical feature in the prior art are both conventional technical means and can be directly substituted by one another, then it shall be deemed that there is no substantive difference between the two.

12. Burden of proof in determining the amount of damages based on infringement profits

[(2019) SPC IP Civil Final 725 - Case of Invention Patent Infringement Dispute between Appellant Shenzhen WayOS Technology Co., Ltd., Appellee Shenzhen Dunjun Technology Co., Ltd., and Defendant of First Instance Quanzhou Guanfeng Network Technology Co., Ltd.]

In a dispute over invention patent infringement, if the right holder can actively produce evidence for alleged amount of damages, on which infringement profits can be reasonably inferred, the claim of damage of the right holder shall be granted; if the alleged infringer asserts that the alleged amount should not be supported, it turns to his burden of proof to counter the claim evidence and prove his actual infringement profits.

13. Deliberations on relevant factors in application of statutory damages or discretionary damages in determining the amount of patent damages

[(2020) SPC IP Civil Final 357 - Case of Utility Model Patent Infringement Dispute between Appellant Zhongshan Pinchuang Plastic Products Co., Ltd., Appellee Winners’ Sun Plastic Electronics (Shenzhen) Co., Ltd., Defendant of First Instance Liu Tao; (2020) SPC IP Civil Final 376 - Case of Utility Model Patent Infringement Dispute between Appellant Winners' Sun Plastic Electronics (Shenzhen) Co., Ltd. and Appellee Chenxi Communications Department at Yinhe East Road of Helan County]

In disputes over patent infringement, the statutory damages shall be applied when it comes to be of weak evidence of infringement losses, infringing profits or referable licensing fee, or the discretionary damages shall be applied when it is difficult to prove the specific amount of losses despite of the above evidence, factors to be comprehensively considered such as the nature of the alleged infringement, profit margin of infringing products, the operating status and subjective malice of the alleged infringer, and the damage awards to the right holder in related cases as well. Higher damages for infringement shall be ruled against manufacturers, and patentees are encouraged to trace manufacturers as the source of the infringement and safeguard their rights and interests directly at the stage of the manufacturing process of the alleged infringing products. With respect to retailers and users of the alleged infringing products, their legal responsibilities shall be in accordance with law on ascertained facts and realistic practices. Where evidences can be confirmed that the infringement damage caused thereby is above or below the ceiling of statutory damages, the amount of damages can be approved beyond the limit.

14. Methods for calculating infringement profits by operating profits

[(2019) SPC IP Civil Final 830, 831, 832, 833, 834, 851, 881, 886, and 888 - Cases of Invention Patent Infringement Dispute Between Appellant Creators Community (Guangzhou) Co., Ltd., Appellee Appotoronics Corporation Limited, and Defendant of First Instance Shenzhen SUNET Technology Co., Ltd.]

When calculating the infringement profits based on operating profits, two methods can be used: deducting sales cost and VAT from sales revenue and then deducting sales expenses, overheads, and financial expenses (collectively referred to as "three fees"), or simply multiplying the sales revenue by operating profit margin.

15. Liability of remaining co-infringers after some co-infringers' settle with and make a compensation to the patentee

[(2019) SPC IP Civil Final 181 - Case of Utility Model Patent Infringement Dispute Between Appellant Dongguan Hongding Home Co., Ltd., Appellee Dongguan Kangsheng Furniture Co., Ltd., Plaintiff of First Instance Guangdong Qisheng Furniture Co., Ltd., and Defendant of First Instance Xinyang Agriculture and Forestry University]

In a case of patent infringement dispute, if some co-infringers have settled with and made compensation to the right holder for part of its losses, the remaining co-infringers will only be jointly and severally liable for compensation to the right holder for its infringement losses after deducting the paid compensation, to avoid double enrichment of the right holder.

16. Distribution of proceeds from patent exploitation by one patent co-owner alone

[(2020) SPC IP Civil Final 954 - Case of Invention Patent Infringement Dispute Between Appellant First Affiliated Hospital of Wenzhou Medical University and Appellee Shenzhen Huili Sitong Information Technology Co., Ltd.]

If there is no agreement between the co-owners of a patent application right or patent right on exercise of such right, then in the case where one co-owner applies the afore-said patent unilaterally while the other co-owner claims for distribution of the proceeds from such patent on the ground of patent co-ownership, the people's court will not support such claim.

17. Acceptance of lawsuit for declaration of non-infringement when a patent right is declared invalid

[(2020) SPC IP Civil Final 225 - Case of Dispute over Confirmation of Patent Non-infringement filed by the Appellant Bank of Dongguan Co., Ltd.]

The examination decision on an application for patent invalidation does not have definite legal effect immediately after it is made. Before the decision has definite legal effect, the patent right is still valid, and the infringement warning still has the right basis. Therefore, the people's court shall accept a lawsuit filed by the warned person against the infringement warning for declaration of non-infringement if it meets the statutory conditions for bringing a lawsuit.

18. Remedy for infringement of a utility model patent applied for on the same day and based on the same technological solution as an invention patent application after that application is rejected

[(2020) SPC IP Civil Final 699 - Case of Utility Model Patent Infringement Dispute Between Anhui Langting Landscaping Engineering Service Co., Ltd. and Appellee Sun Xixian]

If a party applies for invention patent and utility model patent based on the same technical solution on the same day, however the application for invention patent is not granted for lack of novelty or because it is identified as lacking inventiveness based on a comparison document in the same technical field, and its legal status has been determined, then when the party applies for remedy for infringement based on the granted utility model patent, the people’s court will not support it.

II. Administrative Patent Cases

19. Determination of whether a claim with its protection scope limited by more than two groups of different numerical ranges as technical features can be supported by the specifications

[(2020) SPC IP Admin. Final 406 and 407 - Cases of Administrative Dispute over Invalidation of Invention Patent Between Appellants Ren Xiaoping and Sun Jie, Appellees Apple Electronic Products Commerce (Beijing) Co., Ltd. and Apple Computer Trading (Shanghai) Co., Ltd., and Defendant of First Instance China National Intellectual Property Administration]

When more than two groups of different types of numerical ranges are included in the claims as technical features to define the scope of protection, if a person having ordinary skill in the art can conclude from the specifications that there is a mutual correspondence between the numerical ranges, can obtain mode(s) of carrying out the invention that meet(s) the purpose of the invention through a limited number of experiments, and can exclude technological solutions that cannot achieve the purpose of the invention without excessive labor, it shall be concluded that the claim is supported by the specifications.

20. Identification of commonsense evidence

[(2020) SPC IP Admin. Final 35 - Case of Administrative Dispute over Reexamination of Invention Patent Application Between Appellant China National Intellectual Property Administration and Appellee Jiangsu Targetpharma Laboratories (Jiangsu) Co., Ltd. and High-tech Research Institute of Nanjing University, Changzhou]

Commonsense evidence usually refers to technical dictionaries, technical manuals, textbooks, and other literature that record basic technical knowledge in the art. Whether literature other than technical dictionaries, technical manuals, and textbooks are commonsense evidence needs to be specifically identified in combination with factors such as the literature's medium, contents, characteristics, audience, and dissemination scope.

21. Identification of whether information in cyberspace requiring authorization for access constitutes prior design or prior art

[(2020) SPC IP Admin. Final 422 - Case of Administrative Dispute over Invalidation of Design Patent Between Appellant Liu Xiaosheng, Appellee Chaozhou Chaoan District Xiangxingfa Electronic Technology Co., Ltd., and Defendant of the First Instance China National Intellectual Property Administration]

Whether information in cyberspace that requires authorization for access, such as QQ Space and WeChat Moments, constitutes prior design or prior art shall be determined based on whether such information is freely available to the public before the date of patent application after comprehensive analysis on the main usage of the cyberspace, upload time, disclosure status of the information, etc. If the cyberspace that requires authorization for access is mainly used for commercial purposes, it can be presumed that it is open to the public, unless there is evidence to the contrary that the cyberspace is not open or is open to specific individuals only.

22. Consideration of inventive concept in the identification of distinguishing technical features

[(2020) SPC IP Admin. Final 279 - Case of Administrative Dispute over Invalidation of Invention Patent Between Appellants Oerlikon Textile GmbH & Co. KG, China National Intellectual Property Administration and Appellee Zhejiang Yuejian Intelligent Equipment Co., Ltd.]

If the invention concept is a combination of multiple technical elements, and neither the teaching nor the technical effect of this combination has been disclosed in prior art, then the multiple technical elements combined with each other can be viewed as a whole and identified as one distinguishing technical feature when determining the distinguishing technical features between the patent and its closest prior art.

23. Consideration of "raising a problem" in determination of nonobviousness

[(2020) SPC IP Admin. Final 183 - Case of Administrative Dispute over Invalidation of Utility Model Patent Between Appellant Shenzhen DJ Lingmou Technology Co., Ltd., Appellee China National Intellectual Property Administration, and Third Party of the First Instance Du Wenwen]

The nonobviousness of the technological solution of a patent can come from both "solving a problem" and "raising a problem". When the difficulty of advancement in prior art lies in discovering the problem, one may fall prey to hindsight bias and underestimate the inventive step of the technological solution if it fails to consider whether "raising a problem" is obvious to those of ordinary skill in the art.

24. Source of motivation to improve prior art

[(2019) SPC IP Admin. Final 76 - Case of Administrative Dispute over Reexamination of Invention Patent Application Between Appellant U.K. Department of Health and MacFrom Co., Ltd. and Appellee China National Intellectual Property Administration]

The motivation to improve prior art does not necessarily come from overcoming the defects of the closest prior art. Technical problems that need to be solved may exist even when the closest prior art does not have obvious defects, thus giving rise to the motivation for improvement.

25. Impact of explicit exclusion of distinguishing technical feature by the closest prior art on identification of the motivation for improvement

[(2020) SPC IP Admin. Final 185 - Case of Administrative Dispute over Invalidation of Utility Model Patent Between Appellant China National Intellectual Property Administration, Appellee Shanghai Guojing Machinery Equipment Co., Ltd., and Third Party of the First Instance Ningbo General Lashing System Co., Ltd.]

If a distinguishing technical feature exists between the technological solution of an invention-creation and the closest prior art, and is explicitly excluded by that prior art, it can be concluded that the person having ordinary skill in the art lack the motivation to make the corresponding technical improvement to the prior art to obtain the technological solution to be protected when facing a technical problem solved by the distinguishing technical feature.

26. Impact of claim modification in parallel invalidation procedures

[(2020) SPC IP Admin. Final 93 - Case of Administrative Dispute over Invalidation of Utility Model Patent Between Appellant Guy A. Shaked Investments Ltd., Appellee China National Intellectual Property Administration (CNIPA), and Third Party of the First Instance Shenzhen Nasv Electronic Co., Ltd.]

If the patentee modifies the claims in one of the examination procedures for multiple invalidation requests of the same patent, and the modification was accepted by the CNIPA, the administrative case of patent validity confirmation arising from an alleged decision made after the modification based on the claims before the modification, does not need to be tried as the lack of examination basis. In this situation, the people’s court shall revoke the alleged decision made after the modification, but does not need to order the CNIPA to remake a new decision.

27. Burden of proof to overturn the lack of novelty presumption of a compound

[(2020) SPC IP Admin. Final 97 - Case of Administrative Dispute over Reexamination of Invention Patent Application Between Appellant Albemarle Corporation and Appellee China National Intellectual Property Administration]

If a compound that a patent application or a patent requires to protect has been disclosed in prior art literature, it can be presumed lack of novelty of the patent application or the patent has no novelty, unless the patent applicant or the patentee can produce evidence to prove that the compound cannot be prepared before the application date. In this situation, the patent applicant or the patentee shall not only prove that the compound cannot be prepared by the experimental method contained in the prior art literature, but also prove that the compound cannot be prepared by using conventional experimental methods in the technical field and by giving full play to the conventional skills of those of ordinary skill in the art.

28. Whether a Chinese translation should be submitted when China National Intellectual Property Administration cites foreign literature as comparison documents

[(2020) SPC IP Admin. Final 500 - Case of Administrative Dispute over Reexamination of Invention Patent Application Between Appellant Luo Guopei and Appellee China National Intellectual Property Administration]

When China National Intellectual Property Administration cites foreign literature as comparison documents for patent examination, it does not have the statutory obligation to provide a Chinese translation provided by a qualified translation agency.

III. New Plant Variety Cases

29. Determination of infringement of seed sales beyond agreed scale in entrusted production contract

[(2019) SPC IP Civil Final 953 - Case of New Plant Variety Right Infringement Dispute between Appellant Jiangsu Mingtian Seeds Science & Technology Co., Ltd. and Appellees Xuyi Jinqiao Seeds Co., Ltd. and Sun Huanxue]

When the owner of a new plant variety right entrusts others to produce the seeds of this variety and clearly limits the production scale, then such sale by the entrusted party of the seeds beyond the scale agreed in the contract without permission, constitutes an infringement of the new plant variety right.

30. Determination of exceptions to "propagation and use of propagating material by farmers themselves"

[(2019) SPC IP Civil Final 407 - Case of New Plant Variety Right Infringement Dispute between Appellant Qin Yonghong and Appellee Jiangsu Gaoke Seed Technology Co., Ltd.]

The "exceptions to propagation and use of propagating material by farmers themselves" stipulated in Paragraph 2 of Article 29 in the Seed Law shall at least meet the following two conditions: the applicable subject is a lease-holding farm household, i.e., a member of the rural collective economic organization who has signed rural land management contract with the rural collective economic organization and obtained the lease-holding right of the land. The scope of application should not exceed the land contracted by the lease-holding farm household itself.

IV. Technical Secret Cases

31. Determination of technical secret confidentiality measures

[(2020) SPC IP Civil Final 538 - Case of Technical Secret Misappropriation Dispute between Appellant Jinan SYSTESTER Technology Co., Ltd. and Appellee Jinan Languang Electromechanical Technology Co., Ltd.]

If the carrier of a technical secret is a product circulating in the market, the right holder's act of affixing a label on the product to make a unilateral declaration of the technical secret and prohibit third parties who do not have the agreed confidentiality obligation from dismantling the product, does not constitute the confidentiality measure stipulated in the Anti-unfair Competition Law.

32. Determination of "committing infringement as occupation (business)"

[(2019) SPC IP Civil Final 562 - Case of Technical Secret Infringement Dispute between Appellants Guangzhou Tinci Materials Technology Co., Ltd. and Jiujiang Tinci Materials Technology Co., Ltd., Appellants Hua Man, Liu Hong, and Anhui Newman Fine Chemicals Co., Ltd., and Appellees Wu Danjin, Peng Qiong, Hu Sichun, and Zhu Zhiliang]

If the conductor knows that his conduct constitutes infringement and has in fact conducted the infringement act, and the infringement is his/her main business, then such conductor can be identified as "committing infringement as his/her occupation (business)".

33. Considerations for determination of "serious circumstances" in application of punitive damages

[(2019) SPC IP Civil Final 562 - Case of Technical Secret Infringement Dispute between Appellants Guangzhou Tinci Materials Technology Co., Ltd. and Jiujiang Tinci Materials Technology Co., Ltd., Appellants Hua Man, Liu Hong, and Anhui Newman Fine Chemicals Co., Ltd., and Appellees Wu Danjin, Peng Qiong, Hu Sichun, and Zhu Zhiliang]

When determining whether the act of infringing of technical secrets constitutes a "serious circumstance" for which punitive damages shall apply, factors to be considered include: whether the alleged infringer takes infringement as his occupation (business), whether the infringement constitutes a criminal offence, whether there is any act of obstructing production of evidence in litigation, and the amount of infringement losses or profits, scale, duration of infringement, etc.

V. Computer Software Cases

34. Determination of computer software copyrights infringement

[(2020) SPC IP Civil Final 209 - Case of Computer Software Copyright Infringement Dispute Between Appellant Beijing Junyi Oriental Electrophoresis Equipment Co., Ltd. and Appellee Beijing DFRL Technology Co., Ltd.]

The criterion of "access and substantial similarity" shall continue to be followed in determining infringement of computer software copyrights, while source code comparison is not a necessary condition and inevitable step in such a determination.

35. Identification of the effectiveness of technical measures

[(2020) SPC IP Civil Final 1206 - Case of Computer Software Copyright Infringement Dispute Between Appellant Wei Qinghua and Appellee DER LIH FUH CO., LTD.]

The technical measures for copyright protection stipulated in the Copyright Law refer to those that can effectively prevent infringement under a normal use environment, but do not require the technical measures to be completely unavoidable or uncrackable.

36. Understanding of payment by stages in computer software development contracts

[(2020) SPC IP Civil Final 1545 - Case of Computer Software Development Contract Dispute between Appellants Wuhan C-NBS Software Co., Ltd. and Li Qun and Appellee Wuhan Jingke Lvyuan Technology Co., Ltd.]

Computer software development contracts usually have the characteristics of a long performance period and dynamic adjustments of software function requirements along with the development process. Accordingly, proportional payment by stages has become the norm of trade in the field of computer software development. In view of the interdependence and close connection between different development stages, whether the payment made by the client in each stage should only be understood as the consideration of the work achievements in the corresponding development stage shall be specifically determined according to the contract agreement and performance situation.

VI. Integrated Circuit Layout-Design Cases

37. Determination of protection scope of exclusive rights to layout-designs of integrated circuits

[(2019) SPC IP Civil Final 490 - Case of Dispute over Infringement of Exclusive Rights to Layout-Designs of Integrated Circuits Between Appellants Shenzhen Yusheng Technology Co., Ltd., Hu Caihuan, Huang Jiandong, and Huang Sailiang and Appellee Xysemi Inc.]

The registration of layout-designs of integrated circuits aims to determine the protection object of the layout-designs, but not to disclose the contents thereof. Therefore, disclosure of the contents of layout-designs is not a prerequisite for obtaining the exclusive rights to layout-design of integrated circuits.

38. Identification of originality in layout-designs of integrated circuits

[(2019) SPC IP Civil Final 490 - Case of Dispute over Infringement of Exclusive Rights to Layout-Designs of Integrated Circuits Between Appellants Shenzhen Yusheng Technology Co., Ltd., Hu Caihuan, Huang Jiandong, and Huang Sailiang and Appellee Xysemi Inc.]

The protection object of a layout-design of integrated circuits is the original three-dimensional configuration of components and circuits to perform certain electronic functions. A right holder claiming originality of the three-dimensional configuration of its layout-design in whole or in part shall give a reasonable explanation or description of the originality. If the alleged infringer cannot overturn the explanation or description of the right holder, the originality of the layout-design shall be identified.

VII. Anti-trust Cases

39. Treatment of the requirement of an implementer of a horizontal monopoly agreement that other implementers thereof shall compensate for its so-called economic losses

[(2020) SPC IP Civil Final 1382 - Case of Monopoly Dispute between Appellants Sichuan Yibin Wuqiao Building Materials Industry Co., Ltd., Cao Peijun, and Yibin Brick & Tile Association and Appellees Zhang Renxun, Yibin Hengxu Investment Group Co., Ltd., Yibin Sihe Building Materials Co., Ltd. and Yibin Cuiping District Chuangli Clay Brick Co., Ltd.]

The implementer of a horizontal monopoly agreement has no right to require other implementers thereof to compensate for its so-called economic losses caused by the implementation of the horizontal monopoly agreement.

40. Acceptance conditions of civil monopoly dispute cases arising from abuse of administrative power

[(2020) SPC IP Civil Final 934 - Case of Dispute over Refusal of Transaction Between Appellant Chaoyang Deyao Heating Co., Ltd. and Appellee Guodian Power Chaoyang Thermal Power Co., Ltd.]

In a case of civil monopoly dispute, when the alleged monopolistic act committed by the defendant arises from the use of administrative power to restrict the transaction, or from the enforcement requirements of an administrative organ or an organization authorized by laws and regulations to manage public affairs, then, the people's court may refuse to accept the case or reject the lawsuit if the relevant administrative act has not been determined as constituting abuse of administrative power to exclude or restrict competition when the plaintiff filed the lawsuit.

VIII. Jurisdictional and Other Procedural Cases

41. Trial scope of objection to jurisdiction procedure and scope of transferee court

[(2020) SPC IP Civil Jurisdiction Final 361 - Appellant Case of Objection to Jurisdiction of Invention Patent Infringement Dispute Between Appellant Yantai Taihaimanuer Nuclear Equipment Co., Ltd. and Appellee SINOMACH Heavy Equipment Group Co., Ltd.]

The scope of trial by the people's court in an objection to jurisdiction procedure shall not be limited to the grounds of objection raised by the objecting party. If the original court accepting the case does not have jurisdiction, the transferee court shall not be limited to the one requested by the party raising the objection.

42. Application of constant jurisdiction principle when new facts appear in proceedings

[(2020) SPC IP Civil Jurisdiction Final 68 - Appellant Case on Objection to Jurisdiction of Technical Secret Infringement Dispute Between Appellant Sennics Co., Ltd. and Appellees Receiver of Shanxi Xiangyu Chemical Co., Ltd., Yuncheng Jin Teng Chemical Technology Co., Ltd., and Chen Yonggang]

The principle of constant jurisdiction is not applicable where the court of first instance holds that it has no jurisdiction over the case. If any new fact appears later, which may impact the jurisdiction over the case, the determination on whether the court of first instance entails the jurisdiction shall be made according to the new fact.

43. Application of appropriate connection principle in the cases of Objection to jurisdiction of foreign-related civil dispute cases

[(2019) SPC IP Civil Jurisdiction Final 157 - Appellant Case on Objection to Jurisdiction of SEP Licensing Dispute Between Appellant Conversant Wireless Licensing S.A.R.L and Appellee ZTE Corporation Limited]

Whether Chinese courts have jurisdiction over foreign-related civil dispute cases in which the defendant has no domicile or representative offices in China shall be determined by examining whether the disputes are appropriately connected to China. Factors to be considered on the above mentioned appropriate connection to China include whether the location of the subject matter of the licensing and the places of patent exploitation, contract signing, or contract performance and so on are in China. Where any one of the aforesaid places is in China, it shall be deemed that the case has appropriate connection to China, and the Chinese court has jurisdiction over the case.

44. Jurisdiction of civil monopoly dispute cases involving overseas monopolistic acts

[(2019）SPC IP Civil Jurisdiction Final 32 – Appellant Case on Objection to Jurisdiction of Dispute over Abuse of Dominant Market Position Between Appellants Telefonaktiebolaget LM Ericsson and Ericsson (China) Co., Ltd. and Appellees TCL Group Corporation, TCL Communication Technology Holdings Limited, TCL Communication (Shenzhen) Co., Ltd. and Huizhou TCL Mobile Communication Co., Ltd.]

If one party files a lawsuit because of losses in China due to overseas monopolistic acts, then, the place where the alleged overseas monopolistic acts have excluded and restricted market competition in China, can be concerned the connecting point for determining case jurisdiction.

45. Considerations for evidence preservation according to application

[(2020) SPC IP Civil Final 2 - Case of Invention Patent Infringement Dispute Between Appellant Zhejiang Corrugated Steel Web Co., Ltd, Tunnel and Bridge of China and Appellees Zhengzhou Hi-Tech Dajian Bridge Steel Co., Ltd., Henan Dajian Corrugated Steel Web Co., Ltd., and Chengdu Huachuan Highway Construction Group Co., Ltd.]

When making judgment on an application for evidence preservation, the people's court shall comprehensively consider the correlation between the preliminary evidence on which the application is based and the facts of the case to be proved, and the necessity and feasibility of evidence preservation, etc. The necessity of evidence preservation can be determined by considering factors like whether the evidence applied for preservation is related to the facts of the case and whether it is at risk of loss or difficult to obtain in the future, and whether the applicant has exhausted all reasonable and legal means of obtaining the evidence.

46. Application of counter-act preservation in patent infringement disputes involving e-commerce platforms

[(2020) SPC IP Civil Final 993 - Case of Utility Model Patent Infringement Dispute Between Appellants Yongkang Lianyue Industry and Trade Co., Ltd. and Zhejiang Xinghao Plastics Co., Ltd., Appellee Cixi Bosheng Plastic Product Co., Ltd., and Defendants of the First Instance Zhejiang Tmall Network Co., Ltd. and Xie Hui]

In a case of intellectual property infringement dispute involving an e-commerce platform, when the alleged infringer files an application for act preservation, requesting the platform operator to cancel measures like deletion, blocking, and disconnection of links and termination of transactions and services, etc., then, the people’s court shall examine the application. In determining "irreparable damage", the people's court can consider whether failure to take act preservation measure will cause serious damage to the applicant's reputation, goodwill, and other rights, and whether it will cause serious damage to the applicant's market competition advantage or serious losses of the applicant's business opportunities. Huge losses that are difficult to calculate, despite the possibility of claiming monetary compensation, can be considered as constituting "irreparable damage". The mode of "fixed security plus dynamic security" can be used for the act preservation security, in which the dynamic security can be determined according to the benefits that are available after cancelation of the above measures.