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"This article analyzes the identification of 'secret points' of trade secrets based on typical cases and a series of similar cases. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Zhang Zewu
The determination of the "secret point" of trade secrets is the starting point of infringement comparison, and also limits the scope of liability. For information outside the scope of "secret points", the defendant is not liable for trade secret infringement for its use. If the plaintiff cannot clarify the secret point of the information it claims to protect, the court will determine that the information involved in the case does not constitute a trade secret, and the plaintiff needs to bear the consequences of losing the lawsuit. In trade secret disputes, the plaintiff usually proves the secret point of its trade secret by providing process technology, equipment drawings, etc. Not all of the information carried by these carriers is confidential information, but contains some publicly known information, and whether this situation will affect the determination of the "secret point" of trade secrets often constitutes the focus of controversy in judicial practice.
1. The source of the case
Civil Ruling of the Supreme People's Court (2015) Min Shen Zi No. 2035
2. The name of the case
Xinfa Pharmaceutical Co., Ltd. and Yifan Xinfu Pharmaceutical Co., Ltd. applied for retrial of a trade secret infringement dispute.
III. Summary of the trial
In trade secret infringement disputes, the specific content of a trade secret cannot be understood as a concentrated embodiment of a paragraph of text due to the different types of technical information or business information requested to be protected as trade secrets, the different fields involved, and the different ways of infringement. To distinguish between the content and carrier of trade secrets, as long as the trade secret can be extracted through a limited scope of carriers, the content of the trade secret has been concretized, and even if the information involved in the case contains publicly known information, it does not prevent the overall combination of information from constituting a trade secret.
4. Case Introduction
Case information
1. Parties
Applicant for retrial (defendant of first instance, appellant of second instance): Xinfa Pharmaceutical Co., Ltd. (hereinafter referred to as Xinfa Company)
Respondent (plaintiff of first instance, appellee of second instance): Yifan Xinfu Pharmaceutical Co., Ltd. (hereinafter referred to as Xinfu Company)
2. Trial
First instance: Shanghai No. 1 Intermediate People's Court (2010) Hu Yi Zhong Min Wu (Zhi) Chu Zi No. 183 Civil Judgment
Second instance: Shanghai High People's Court (2012) Hu Gao Min San (Zhi) Zhong Zi No. 62 Civil Judgment
Retrial: Civil Ruling of the Supreme People's Court (2015) Min Shen Zi No. 2035
Background of the case
The plaintiff, Xinfu Company, is a company mainly engaged in the production of D-calcium pantothenate, and the company has the technology of "microbial enzyme splitting to prepare D-pantothenic acid lactone and used to produce D-calcium pantothenate and D-panthenol".
In order to improve the production technology and ability to produce D-calcium pantothenate, the defendant Xinfa Company sent the director of the company's security department and the defendant Jiang Moumou to Lin'an to look for employees of the plaintiff Xinfu Company, and carried out the act of illegally obtaining the production technology and information materials of the plaintiff Xinfu Company.
Xinfu Company sued Xinfa Company for trade secret infringement.
Xinfa Company asserted that the trade secrets at issue included a large amount of common sense and public information, and that Xinfu Company did not clarify the specific secret points of its claim, and that the trade secrets asserted by Xinfu Company were not clear.
Xinfu Company asserted that the trade secret points at issue were the technical points and specific parameters, which were obtained by Xinfu Company through a huge investment in experiments, and the overall combination of technical points, specific parameters and publicly known technology constituted trade secrets.
5. The Court's decision
Court of First Instance: The information involved in the case as a whole constitutes a trade secret
"In this case, according to the appraisal of the Intellectual Property Affairs Center of the Ministry of Science and Technology, the technical indicators in the process of microbial enzymatic splitting and production of calcium D-pantothenate, the specific methods and key points of production operations, and the technical information such as abnormal situation handling methods advocated by the plaintiff Xinfu Company, and the overall combination of technical information recorded in the process flow chart of 5000T calcium pantothenate are non-public technical information. ”
Court of Second Instance: Even if the information involved in the case contains publicly known information, it does not prevent the entire combination from constituting a trade secret
"With regard to the appellant's appeal opinion that the trade secrets contained publicly known information, the contents could not be verified, and the specific secret points were not clear, this court held that even if the 'technical indicators, specific methods and key points of production operations, abnormal situation handling methods and other technical information in the process of microbial enzymatic split production of D-calcium pantothenate, and the overall combination of technical information recorded in the process flow chart of 5000T calcium pantothenate', which are not publicly known technical information, do not prevent the overall combination from becoming a trade secret; The effective criminal judgment documents of the Lin'an Municipal People's Court of Zhejiang Province (2008) Linxing Chu Zi No. 358 Criminal Case and its appeal case have clearly determined the specific content of the infringed trade secrets of Xinfu Company based on the appraisal report and other evidence, and in this case, Xinfu Company claimed rights based on the above-mentioned criminal judgment documents, and there was no problem that the content of the trade secrets at issue could not be proven; The specific methods and key points of production operations, abnormal situation handling methods and other technical information, and the overall combination of technical information recorded in the process flow chart of 5000T calcium pantothenate constitute trade secrets, and it does not claim to protect the specific technical information in the overall combination, even if it is a specific combination of publicly known technical information, it can be protected as a trade secret. Therefore, this court does not accept this appeal opinion. ”
The retrial court: The specific content of the trade secret is not only reflected in the textual expression, but the plaintiff can realize the concretization of the content of the trade secret by limiting the scope of the carrier of the trade secret
Finally, Xinfa Company's application for retrial also asserted that Xinfu Company did not clarify the specific content of trade secrets, and that the protection of the overall combination of trade secret information and publicly known information as trade secrets in the first and second instance judgments violated scientific common sense and was not operable. This court held that the reason why Xinfa Company put forward the above claim was because it believed that the technical information involved in the case that Xinfu Company requested protection was 'the technical indicators in the process of microbial enzymatic splitting to produce D-calcium pantothenate, the specific methods and key points of production operations, and the methods for dealing with abnormal situations. The overall combination of technical information recorded in the process flow diagram of 5000T calcium pantothenate is relatively abstract, and its proposition is essentially to require Xinfa Company to specifically describe the content of trade secrets on the basis of 10 appraisal materials, the carrier of trade secrets, so as to facilitate its use in accordance with the requirements of the second-instance judgment. Generally speaking, in a trade secret infringement dispute, the right holder should describe the specific content of the trade secret, but due to the different types of technical information or business information requested to be protected as trade secrets, the different fields involved, and the different ways of infringement, the specific content of the trade secret cannot be understood as a concentrated embodiment of a paragraph of text, and the description of the specific content of the trade secret cannot be overly demanding. In this case, the trade secrets requested by Xinfu Company belonged to the technology of 'microbial enzyme splitting to prepare D-pantothenolactone and for the production of D-calcium pantothenate and D-panthenol', which was independently developed by the company and won the second prize of the National Technological Invention Award in 2003. Operating procedures and other relatively rich technical contents; Xinfa Company adopted obviously improper means to illegally obtain Xinfu Company's trade secrets in a targeted manner, indicating that Xinfa Company is well aware of the contents of the trade secrets, and its infringement liability is also very clear; Xinfu Company has selected 10 of the large number of technical information and materials illegally obtained by Xinfa Company as appraisal materials, of which 3-10 (a total of 19 pages) are the main carriers of its trade secrets, and it can be said that the content of the trade secrets it claims has been further concretized。 Under such circumstances, Xinfa Company is clear about the scope of the trade secrets that it should stop using, and there is no problem that the judgment cannot be operated, so it is not inappropriate for Xinfu Company not to further describe the specific content of the trade secrets. ”
6. Relevant laws and regulations
Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases of Infringement of Trade Secrets (2020)
Article 27: Rights holders shall clarify the specific content of the commercial secrets asserted before the conclusion of debate in the court of first instance. Where only a clear part can be clarified, the people's court is to hear the clear part.
Where the rights holder separately asserts the specific content of the trade secret that it did not specify in the first-instance trial procedure, the second-instance trial court may, on the basis of the principle of the parties' voluntariness, mediate the litigation claims related to the specific content of the trade secret; Where both parties agree that the second-instance trial court will hear the case together, the second-instance trial court may make a joint judgment.
Trade Secret Appraisal Specification (2023)
3.4 Secret Point & Secret Point Description
A secret point is the specific content of the trade secret information claimed by the parties, and a secret point description is a document that describes and explains the secret point.
7. Sort out similar cases
Similar case 1: The Supreme People's Court of the People's Republic of China (2020) Supreme Court Zhi Min Zhong No. 1889 Civil Judgment
In this case, Boyang Company was the owner of the technical secret of the "General Liquid for Photo-Initiated Chemiluminescence Analysis System". Former employees of Boyang Company joined Aixing Company after leaving their jobs and disclosed the aforesaid technical secrets to Aixing Company. Aixing Company uses the aforementioned technology to secretly produce and sell in vitro diagnostic kits. Boyang Company filed a trade secret infringement lawsuit on the grounds that the aforesaid acts of the former employees and Aixing Company constituted infringement of their rights and interests in technical secrets. In the lawsuit, Boyang claimed that its technical secrets were eight technical solutions for photoinduced chemiluminescence technology, and the carriers of the above-mentioned technical solutions were Boyang's "LiCA General Liquid Production Process Regulations" and "Luminescent Particle Quality Standards" and other process documents. In this regard, the former employee and Aixing Company believe that the process regulations and other documents of Boyang Company only reflect the scattered and Individual elements, technical solutions 1-8 contain 18 elements, the carrier documents only involve 6 elements, and none of the documents can reflect any of the complete 8 technical secret schemes, so the complete content of the 8 technical solutions of the technical secrets involved in the case asserted by Boyang Company does not correspond to the carrier documents such as the process specifications submitted by Boyang Company, and it cannot be proved that the above 8 technical solutions belong to Boyang Company.
The court of first instance held that:
"First of all, with regard to the content of 'photosensitive particles are not coated with polysaccharides' in the secret point, the content of 'photosensitive particles without coated polysaccharides' is not clearly contained in documents 1 and 5, and the relevant photosensitive particles and luminescent particle products in the embodiment of literature 1 are all from Boyang Company, and the content of 'photosensitive particles without coated polysaccharides' is not disclosed in the embodiment. Secondly, with regard to the 'CV≤20%' in the secret point, although the specific value of CV is lower than 20% in the literature submitted by Cheng and Aixing, there is no upper limit of CV value. Since the smaller the CV value, the higher the process requirements, the business value of setting an upper limit of the CV value is to reduce costs, and the upper limit of the value is not information that can be obtained without paying a certain price. Thirdly, the eight technical secrets claimed by Boyang Company were all complete technical solutions composed of a number of technical features, and the documents submitted by Cheng and Aixing Company were all aimed at a certain technical feature in the technical solutions, and there was no complete disclosure of the technical solutions. Cheng and Aixing Company also did not provide evidence to prove that each of the technical information asserted by Boyang Company could be obtained by a person skilled in the art through simple association, and even if the relevant literature had disclosed a certain feature of the technical information asserted by Boyang Company, it was not sufficient to affect the determination that the information constituted a trade secret. ”
The Supreme People's Court held in the second instance that:
In order to prove the existence and content of the technical secrets, the right holder usually summarizes, summarizes and refines the technical information that needs to be protected on the basis of the carrier documents embodying the above-mentioned technical secrets, and the technical secrets can be either technical solutions or part of the technical information constituting the technical solutions. When the asserted technical secret is part of the technical information constituting the technical solution, the protection of the technical secret under the Anti-Unfair Competition Law is actually the protection of that part of the technical information, rather than the protection of the technical solution composed of the technical information and other non-technical secret technical information. When the asserted technical secret is a complete technical solution, the protection of the technical secret under the Anti-Unfair Competition Law is actually the protection of the complete technical solution. When the right holder summarizes, summarizes and refines the secret information from its technical data and other carriers, it shall allow its confidential information to be combined with the prior art and common knowledge to form a complete technical solution to request protection. The technical solutions reasonably extracted by the right holder from technical documents such as process regulations and quality control standards that are not known to the public may be protected as technical secrets as long as they are not generally known to the public and easily obtainable. In this case, the technical secrets asserted by Boyang Company were eight technical solutions, each of which included a number of technical information, and the technical information of the later technical solutions was further limited or added to the technical information of the previous technical solutions, thus forming a progressive technical solution. ”
Similar case 2: Civil judgment of Hangzhou Intermediate People's Court of Zhejiang Province (2020) Zhe 01 Min Chu No. 287
The gist of the adjudication: Although the technical information carried by a single component has been known to the public, but the recombination and design of a new technical solution cannot be publicly obtained, the technical solution should be deemed not known to the public.
In this case, the plaintiff, CICC, clarified that the trade secrets asserted by it were the dimensional tolerances, geometric tolerances, roughness, drawing methods (expression methods), partial enlarged views, contents of the schedules, dimensional marking methods and technical requirements carried in the design drawings of the products involved in the case. The defendant, Nanyuan, argued that the confidential location of the trade secrets asserted by CICC was unclear and belonged to publicly known technology. Mr. Zhao, Mr. Wu, Mr. Jin, and Mr. Yao all argued that they could not obtain technical drawings.
The Hangzhou Intermediate People's Court held that although the dimensional tolerances and geometric tolerances carried by individual parts and components were already knowledge in the public domain, the technical information involved in the case was a new technical solution designed by recombination, which could not be obtained through consulting public information or other public channels, nor could it be directly obtained through the physical object of reverse engineering surveying and mapping products, so the technical information was not known to the public and constituted trade secrets within the meaning of the Anti-Unfair Competition Law.
Similar case 3: Guangdong Provincial High People's Court (2014) Yue Gao Fa Min San Zhong Zi No. 831 Civil Judgment
Gist of the adjudication: The disclosure of part of the code of the algorithm does not affect the overall composition of the algorithm as a trade secret
In this case, Liu, Xu, Sang, and Wang, the technical staff of the plaintiff Mindray, successively joined Mindray and participated in the research and development or had contact with Mindray's trade secrets, and then these employees joined the defendant Libon and illegally disclosed the trade secrets involved in the case to Lipon. Mindray sued Libon for trade secret infringement. In this case, Mindray requested protection of the trade secret was the ECG algorithm, and claimed that the technical secret was embodied through computer software, and Mindray submitted a CD-ROM copying the source program of the computer software to explain the content and carrier of the technical secret, and submitted the CD-ROM to the court of first instance in a sealed and encrypted manner.
The court held that: "The corresponding source code of Mindray's ECG algorithm as a whole is composed of various functions, and the functions are called and cooperated with each other, rather than simply listing and cooperating. Superposition, only if all these functions exist and are executed according to the established call relationship, can all the functions of the ECG algorithm be realized, and the lack of any part of the code, regardless of whether this part of the code is public or not, makes the ECG algorithm incomplete and cannot realize all the original functions, therefore, from the level of the entire ECG algorithm, the function can not be separated. ”
8. Summary of practical experience
1. The "secret point" of the trade secret is determined to distinguish between the content and the carrier. The "secret point" of a trade secret refers to the specific content of the trade secret, not the carrier. The number of carriers is not the same as the number of "secret points", and the specific content of the trade secret needs to be extracted from the scope of the carriers limited by the holder of the information involved in the case.
2. In trade secret litigation, if part of the information involved in the case is publicly known, it does not prevent the entire combination from constituting a trade secret, as long as the combination cannot be obtained through public means.
(Original title: The identification of a single technical information as a publicly known information does not hinder the "secret point" of the overall combination)
来源:IPRdaily中文网(iprdaily.cn)
Author: Zhang Zewu
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