One Case a Day | China: Integrated Circuit Layout Design Right – "Lithium Battery Protection Chip" Case – Supreme People's Court Guiding Case No. 218

Case Introduction

This case is Guiding Case No. 218 issued by the Supreme People's Court, involving a dispute over the protection of integrated circuit layout design rights. The case addresses several core issues regarding integrated circuit layout designs, such as: Does the protection of integrated circuit layout designs require disclosure as a prerequisite? How are originality determined and assessed? What is the basis for infringement comparison? In cases involving multiple innovative points, what is the maximum scope (minimum comparison unit)? How is substantial similarity determined? We believe everyone can gain insights from this case.

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Case Information

• First-Instance Information: (2015) Shen Zhong Fa Zhi Min Chu Zi No. 1106
• Second-Instance Information: (2019) Supreme People's Court Zhi Min Zhong No. 490 [Supreme People's Court Guiding Case No. 218]

Key Points of the Judgment

1. The purpose of registering an integrated circuit layout design is to define the protected subject matter, not to disclose the design content. Disclosure of the layout design content is not a condition for obtaining exclusive rights to the integrated circuit layout design.
2. The scope of protection for exclusive rights to an integrated circuit layout design can generally be determined based on the copies or drawings of the layout design submitted during the registration application. For layout design content that cannot be identified from the copies or drawings, it may be determined based on samples consistent with the copies or drawings.
3. Registration of an integrated circuit layout design does not automatically imply that the registered layout design content is original. The rights holder must still provide a reasonable explanation or clarification regarding the originality of the layout design for which rights are claimed. If the alleged infringer cannot provide sufficient counter-evidence to refute this explanation or clarification, the relevant layout design may be deemed original.

Basic Facts

The rights holder registered the integrated circuit layout design for a "Single-Chip Negative Protection Lithium Battery Protection Chip Integrating Controller and Switching Tube" in 2012 (BS.12500520.2).

Upon the rights holder’s application, the first-instance court obtained the layout design chip samples filed by the rights holder with the National Intellectual Property Administration and the filed copies of the layout design drawings (A4 size). The layout design consisted of 20 A4 drawings, including an overall diagram and 17 process/structure layers. In the design, the rights holder claimed six original points.

Further, upon the rights holder’s application, the first-instance court commissioned the Beijing Zitu Intellectual Property Judicial Appraisal Center to determine whether the layout design of the alleged infringing integrated circuit product was identical or substantially similar to the rights holder’s integrated circuit layout design.

Since the filed drawings were blurry black-and-white A4 images and could not directly reflect the original points, the appraisal agency used chip cross-sectioning (physical reverse analysis) to compare the registered chip and the alleged infringing chip layer by layer and unit by unit. It was determined that among the six claimed original points, five were substantially similar, and one was completely identical. Although there were minor local differences, they did not affect the overall judgment of substantial similarity. The appraisal report also confirmed that the six original points claimed in the integrated circuit layout design were original.

Controversial Issues

• Can chip cross-sectioning be used to determine the scope of protection for the involved layout design?
• Can the scope of protection only be determined based on content disclosed at the time of registration?
• How is originality judged?
• Is infringement established?

Second-Instance Court

1. Copies, Drawings, or Samples Used to Determine the Scope of Protection for Layout Designs
   Article 16 of the Regulations stipulates: "To apply for layout design registration, the following shall be submitted: (1) a layout design registration application form; (2) copies or drawings of the layout design; (3) if the layout design has been commercially exploited, samples of the integrated circuit containing the layout design; (4) other materials specified by the intellectual property administrative department of the State Council."

Article 14 of the Implementing Rules for the Regulations on the Protection of Integrated Circuit Layout Designs stipulates: "Copies or drawings of the layout design submitted in accordance with Article 16 of the Regulations shall meet the following requirements:
(1) Paper copies or drawings shall be enlarged to at least 20 times the size of the integrated circuit produced using the layout design; applicants may also provide electronic versions of the copies or drawings; electronic versions of copies or drawings shall contain all information of the layout design and specify the file data format;
(2) If there are multiple paper copies or drawings, they shall be sequentially numbered and accompanied by a directory;
(3) Paper copies or drawings shall use A4 paper format; if larger than A4, they shall be folded to A4 format;
(4) Copies or drawings may include brief written explanations describing the structure, technology, function, and other necessary details of the integrated circuit layout design."

During layout design registration, materials submitted to the registration department that contain layout design content include: paper copies or drawings, electronic versions of copies or drawings, and samples. Among these, paper copies or drawings must be submitted; samples are submitted if the layout design has been commercially exploited; electronic versions of copies or drawings are submitted voluntarily, with the specific requirement that electronic documents must contain all information of the layout design and specify the file data format.

It is evident that paper copies or drawings are mandatory documents for registration. Generally, the scope of protection for a layout design should be determined based on paper copies or drawings. With the development of the semiconductor industry, layout designs can now achieve more complex configurations on smaller semiconductor substrates, significantly increasing integration levels. Even if paper copies or drawings are enlarged to at least 20 times the size of the integrated circuit produced, as required by Article 14 of the Implementing Rules, there may still be cases where the enlarged copies or drawings are insufficient to fully and clearly reflect the layout design content. In such cases, provided the samples are consistent with the paper copies or drawings, chip cross-sectioning may be used. Through technical means, the detailed information contained in the chip samples can be accurately restored, extracting three-dimensional configuration information to determine layout design details that cannot be identified from the paper copies, thereby defining the layout design content.

2. Whether the Scope of Protection Can Only Be Determined Based on Content Disclosed at Registration
   The defendant appealed, arguing that exclusive rights to layout designs are based on "disclosure in exchange for protection," and the scope of protection should be limited to the parts disclosed to the public.

The second-instance court held that, unlike the patent system for inventions and creations, which adopts a disclosure-for-protection approach, the Regulations do not require rights holders to disclose layout designs as a condition for protection.

Article 39 of the Regulations states: "After the layout design registration is announced, the public may request to consult the layout design registration file or request the National Intellectual Property Administration to provide a copy of the registration file. The public may also request to consult paper copies or drawings of the layout design. Electronic versions of copies or drawings as mentioned in Article 14 of the Implementing Rules shall not be consulted or copied by anyone except for infringement litigation or administrative handling procedures."

Article 15 states: "If the layout design has not been commercially exploited before the application date, the layout design registration application may contain confidential information, which shall not exceed 50% of the total area of the integrated circuit layout design. The page numbers and total number of pages of copies or drawings containing confidential information shall match those filled in the layout design registration application form. If the layout design registration application contains confidential information, paper copies or drawings containing such confidential information shall be submitted in a separate confidential document bag. Except for infringement litigation or administrative handling procedures, no one may consult or copy the confidential information."

It is evident that for confidential information in paper copies or electronic versions of layout designs that have been commercially exploited, except for infringement litigation or administrative handling procedures, no one may consult or copy it. From the above provisions, it can be seen that neither during the registration process nor after registration announcement is there a requirement for unconditional full disclosure to the public of electronic versions containing all layout design information or confidential information in paper copies of commercially exploited layout designs.

3. Nature of Layout Design Registration
   Related to the above two issues is the nature of layout design registration. The Regulations adopt a specialized law model for the protection of layout designs. As mentioned above, the protection of layout designs does not follow rules similar to patent protection for inventions and creations, i.e., it does not involve disclosing layout design content through registration in exchange for exclusive rights. At the same time, the protection of layout designs under the Regulations is not entirely the same as copyright protection for works under the Copyright Law. China’s Copyright Law stipulates that copyright arises upon completion of the work, and registration of works is entirely voluntary and not a condition for obtaining copyright. The Regulations adopt a registration-based protection system for the creation of exclusive rights to layout designs, meaning that protection of layout designs is conditional upon registration, regardless of whether they have been commercially exploited. Registration of layout designs is a process of defining the protected subject matter and a condition for obtaining exclusive rights to layout designs, not a process of disclosing layout design content or obtaining exclusive rights protection in exchange for disclosure.
4. Judgment of Originality
   4.1. Meaning of Originality in Layout Designs
   First, layout design protection covers three-dimensional configurations and does not extend to ideas, etc.

Article 2(2) of the Regulations states: "‘Integrated circuit layout design’ (hereinafter referred to as ‘layout design’) means the three-dimensional configuration of two or more elements, at least one of which is an active element, and part or all of the interconnecting lines in an integrated circuit, or such three-dimensional configuration prepared for the manufacture of an integrated circuit."

Article 5 states: "Protection under these Regulations for layout designs shall not extend to ideas, processes, operational methods, mathematical concepts, etc."

According to the above provisions, exclusive rights to layout designs protect the three-dimensional configuration of elements and lines in integrated circuits. At the functional level of layout designs, since they do not contain three-dimensional configurations of elements and lines, they are not protected. Below this level, originality gradually increases, and protection may be granted for element allocation, arrangement, interconnections between components, information flow relationships, combination effects, etc.

Second, the original parts protected should be capable of independently performing certain electronic functions.

Article 7(1) of the Regulations states that the rights holder of a layout design has the exclusive right to reproduce the entire protected layout design or any original part thereof.

Article 30(1)(1) states that reproducing the entire protected layout design or any original part thereof constitutes infringement.

From the above provisions, it can be seen that the originality of a protected layout design may be reflected in any original part of the layout design or in the layout design as a whole. Any original part of a layout design is protected by law, regardless of whether it occupies a major part in the overall design or can achieve the core performance of the overall design. If a layout design consists of a combination of公认的常规设计, the combination as a whole should be original.

At the same time, according to Article 2(1) of the Regulations, "‘Integrated circuit’ means a semiconductor integrated circuit, i.e., a final or intermediate product that integrates two or more elements, at least one of which is an active element, and part or all of the interconnecting lines on or within a semiconductor material substrate to perform certain electronic functions." Thus, if the rights holder claims original parts, such parts should be capable of independently performing certain electronic functions.

Third, originality is required.

Article 4 of the Regulations states: "A protected integrated circuit shall be original, i.e., the layout design is the result of the creator’s own intellectual effort and, at the time of its creation, is not a commonplace design among layout design creators and integrated circuit manufacturers. A protected layout design consisting of commonplace designs shall, as a whole, meet the conditions specified in the preceding paragraph." The above provisions indicate that originality is a prerequisite for the protection of layout designs. The originality of a layout design includes two meanings: it is independently designed and completed; it is not a commonplace design at the time of creation among layout design creators and integrated circuit manufacturers.

4.2. Objections to and Proof of Originality in Layout Designs
In infringement litigation, when the alleged infringer raises objections to the originality of the layout design, the people’s court shall determine the originality of the layout design based on the claims and evidence submitted by both parties.

When the rights holder selects original parts of the layout design and originality judgment is focused on the parts claimed by the rights holder, it should be conducted at two levels sequentially. First, the protected layout design must involve a three-dimensional configuration of elements and lines for performing certain electronic functions; otherwise, it cannot be protected by exclusive rights to layout designs. Second, the three-dimensional configuration contained in the above parts must not be a commonplace design at the time of creation.

When the rights holder claims original parts, they may provide explanations for originality. The rights holder’s originality explanation may summarize or abstract the original parts from different perspectives and may not necessarily include descriptions of the three-dimensional configuration content. However, when judging the originality of the parts indicated by the rights holder, the specific three-dimensional configuration of elements and lines contained in the parts indicated by the rights holder should be the subject of judgment, based on the rights holder’s originality explanation.

In the process of proving the original parts claimed by the rights holder, since the registration procedures for layout designs under the Regulations do not involve substantive examination of whether the applied layout design meets the originality conditions of Article 4, it cannot be assumed that the entire layout design or any part thereof is original simply because it has been registered and filed. However, regarding the proof of originality, the burden of proof on the rights holder should not be excessively increased, requiring them to exhaust all means to prove the originality of the layout design. In contrast, the alleged infringer only needs to provide one publicly available commonplace layout design to refute the originality of the parts claimed by the rights holder. Therefore, the allocation of the burden of proof for originality should fully consider the characteristics of integrated circuit layout designs, the current registration status of integrated circuit layout designs in China, the举证能力 of both parties, and other factors. Based on the original parts claimed by the rights holder, the rights holder should first be required to provide sufficient explanation or preliminary proof for the claimed original parts. Then, the alleged infringer should provide counter-evidence to disprove originality, and judgment should be made after comprehensive consideration of the above facts and evidence.

4.3. Originality of the Involved Layout Design
In this case, the rights holder claimed six original points and provided corresponding explanations for originality, comparing the original points of the involved layout design with commonplace designs. Original points 1–4, as a whole, correspond to parts that can independently perform the function of protecting lithium batteries from overcurrent, overcharging, etc., using a single-switch MOS tube. These parts belong to components that can independently perform certain electronic functions and may constitute original parts protected by layout design rights. Original point 5 emphasizes the connection relationship of the single-switch NMOS tube, and original point 6 describes the relationship between the overtemperature protection circuit and the NMOS circuit. Neither involves the three-dimensional configuration of elements and lines and cannot be protected as layout designs.

The defendant submitted evidence questioning the originality of the relevant original points. Upon examination, the relevant evidence did not disclose original points 1–3. The original points 1–4 claimed by the rights holder, as a whole, should be protected as original parts.

5. Infringement Judgment
   Original point 4 defines the proportional data range for the sizes of Mc, Mf, and Mo. Although the rights holder did not explain the special meaning of this data range, the proportional quantities of the registered chip fell within the range claimed for the original point. Additionally, the appraisal opinion used chip cross-sectioning of the samples as the basis for comparison. After analysis in the appraisal report, it concluded that "the shapes of Mc, Mf, and Mo in the two chips are the same, with slight differences in quantity." There is currently no statutory standard for determining substantial similarity. The appraisal opinion followed the principle of considering the relative position, size, shape, and quantity of the layout, combined with the understanding level of ordinary technicians in the industry regarding integrated circuit layout designs. If the range is not considered, the proportions of the alleged infringing chip and the sample proportions of the involved layout design, based on the above principles, are substantially similar.

Considering the above factors comprehensively, the court, based on an overall consideration of the layout design involved in original points 1–4, determined that the corresponding parts of the alleged infringing chip’s layout design and the layout design involved in original points 1–4 claimed by the rights holder constituted substantial similarity.

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