Recently, the SPC, through its Judgement for the Case (2021) ZuiGaoFaZhiMin Zhong No. 1313, clarified the rules on how to deal with infringement proceedings regarding an integrated circuit layout design where the exclusive right of the integrated circuit layout design has been revoked. In this judgement, the SPC pointed out that under the circumstance that the exclusive right of the involved integrated circuit layout design had been revoked, the plaintiff's lawsuit was rejected by making reference to the treatment of infringement proceedings regarding a patent where the patent has been declared invalid.
In this case, the plaintiff, i.e. the right holder of the exclusive right of the integrated circuit layout design with the registration No. BS.095006249, held that the defendant's chip with the model No. AiP1637 copied the plaintiff's layout design and thus violated the plaintiff's exclusive right. Therefore, the plaintiff filed a lawsuit, requesting the defendant to stop the infringement and compensate for the losses. During the first-instance trial, the defendant filed a revocation request against the involved layout design with the CNIPA. On February 18, 2021, the CNIPA issued a decision to revoke the integrated circuit layout design with registration number BS.095006249. Then, the court of first instance, after hearing, determined that the plaintiff had lost the basis of the right to file this lawsuit, and thus rejected the lawsuit.
Unsatisfied with the first-instance judgement, the plaintiff appealed to the SPC, arguing that they had filed an administration lawsuit against the CNIPA's decision of revoking the involved integrated circuit layout design, so the first-instance trail should have been suspended. The plaintiff also held that although the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights stipulates that "Where the claim alleged by the right holder in a patent infringement lawsuit is declared invalid, the court hearing the patent infringement dispute may rule to reject the lawsuit brought by the right holder based on the invalidated claim", such regulations are limited to patent infringement disputes, and there are no similar provisions in laws, regulations or judicial interpretations with respect to disputes about the exclusive right of integrated circuit layout designs, so the trial should have been suspended.
The SPC held that, although the appellant (i.e. the plaintiff in the first-instance trial) filed an administrative lawsuit against the CNIPA's decision within the statutory time limit, the basis of its right was still uncertain, and if the CNIPA's decision was not ultimately revoked by an effective judgement, the plaintiff's exclusive right of the involved integrated circuit layout design would be deemed as non-existent from the beginning, and thus the plaintiff would lose the basis of the right to bring this lawsuit. If the court of first instance had suspended the trial to await the outcome of the administrative litigation, the first- instance trial would probably have remained unresolved over a long time. Moreover, the infringement upon the exclusive right of an integrated circuit layout design is also a dispute about intellectual property rights, so in the case that the exclusive right of the involved integrated circuit layout design had been revoked, the plaintiff's lawsuit could be rejected by making reference to the treatment of infringement proceedings regarding a patent where the patent has been declared invalid. If the CNIPA's decision of revoking the exclusive right of the integrated circuit layout design is subsequently revoked by an effective administrative judgment, and the plaintiff's exclusive right of the involved integrated circuit map design is definitely stable, the appellant (i.e. the plaintiff in the first-instance trial) may bring another lawsuit and this will not cause serious harm to its legal rights. The SPC therefore ruled against the appellant and upheld the first-instance judgement.
https://mp.weixin.qq.com/s/DhS8TyZ8atBHXKVmFDoqBg
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