Beijing Wei Chixue Law Firm--Discussion on the Strategy of Trade Secrets Infringement and Right Ownership Dispute

Jie CHEN
Chinese Attorney-at-Law
Wei Chixue Law Firm

In a modern society, the flow of personnel is inevitable, and the flow of personnel is conducive to the exchange, integration and development of technology, and promotes scientific and technological progress and industrial upgrading, which has positive social significance. However, personnel turnover can be a serious risk for business operations, not only the loss of talents, but also the leakage of trade secrets. In fact, the vast majority of trade secrets infringement cases are closely related to departing employees. A common situation is that after leaving the company, the employee violates the confidentiality obligation and discloses the trade secrets obtained from the former employer to the new one he or she recruited, and the new employer uses these trade secrets to produce competing products, thus having a serious adverse impact on the market position and economic interests of the former employer. It often happens that the new employer has applied for patents for the relevant technical solutions. Under such circumstance, in order to protect its own legitimate rights and interests, the former employer could take legal actions to pursue the infringement liability of the former employee and the new employer for trade secrets infringement, and at the same time, it can request confirmation of the ownership of the patent applied for by the new employer through a right ownership lawsuit. The trade secrets infringement dispute and patent ownership dispute both are much more complex than general intellectual property infringement cases in terms of evidence collection, application of law, and other aspects. A case that simultaneously involves trade secrets infringement and patent ownership dispute is obviously more complex. This article provides a brief analysis of some issues that may affect the entire strategy for coping with the dispute for readers' reference.

I. Goals of the actions

1. Trade secrets infringement lawsuit

The main goal of a trade secrets infringement lawsuit is to protect the exclusivity of trade secrets. Through litigation, the plaintiff can seek legal remedies to stop the defendant's infringement and protect its trade secrets from being illegally obtained, disclosed, or used. The outcome of the lawsuit may include a ban on the defendant from continuing to use or disclose the trade secrets, as well as compensation for the plaintiff's losses suffered as a result of the infringement. However, the ownership of the patent infringing trade secrets cannot be directly determined in such lawsuit.

For example, in the second-instance judgment of Geely v. WM for Trade Secrets Infringement of Vehicle Chassis ((2023) SPC IP Civil Final No. 1590), also known as the "No. 1 New Energy Vehicle Technical Secrets Case", which concluded in June 2024, the Supreme Court found that "WM side not only committed the act of obtaining all the technical secrets involved in the case by improper means, but also carried out the act of illegally disclosing some of the technical secrets involved in the case by applying for patents, and used all the technical secrets involved in the case to manufacture WM EX series electric vehicle chassis and chassis parts and components (including EX5, EX6, E5). WM side’s act has constituted an infringement of Geely's technical secrets involved in the case", and ordered the four companies of WM side to immediately stop disclosing, using, and allowing others to use Geely's technical secrets involved in the case, and the time for stopping the infringement shall continue until the date when the information on the technical secrets involved in the case is known to the public; and stop manufacturing and selling vehicle chassis and chassis parts and components by using the technical secrets involved in the case; VM shall not exploit the 12 utility model patents involved in the case or license others to implement these patents, and these patents shall not be transferred, pledged, or otherwise disposed of, including not maliciously relinquishing the patent rights by failing to pay patent annuities in full and on time or not actively responding to requests for patent invalidation; Within the performance period specified in the judgment, under the supervision of the court or being witnessed by the right holder of the technical secrets involved in the case, all drawings, mathematical modeling and other technical materials containing the technical secrets involved in the case held or controlled by the four companies of WM side and their affiliates, all current or former employees, as well as the suppliers of the chassis and chassis parts and components of WM EX series electric vehicles, shall be destroyed or transferred to the rights holder of the technical secrets involved in the case; In addition, the shareholders, directors, supervisors, senior management, all employees and subsidiaries, branches, other affiliated companies with investment relations and suppliers of WM EX series electric vehicle chassis and chassis parts shall be notified.

It can be seen from the above judgment that even if the court has determined that the relevant patent application is an act of trade secrets infringement, since the claim does not involve ownership, the court considers that it is not appropriate to directly determine the ownership of the relevant patent, but orders that the relevant patent shall not be exploited and disposed of in any means.

Of course, in addition to the above-mentioned judgment on stopping the infringement, the Supreme Court also calculated the base amount of punitive damages and the final amount of damages in the case based on the facts of WM side's infringement, and finally determined that WM side should compensate Geely for its economic losses of RMB 637,596,249.6 and Geely's reasonable expenses of RMB 5,000,000 for stopping the infringement. In total, WM side was finally awarded to compensate about 643 million yuan. It can be seen that stopping the infringement of trade secrets and pursuing damages are the two important goals that could be achieved via trade secrets infringement litigation.

2. Patent ownership dispute lawsuit

The fundamental purpose of patent ownership dispute lawsuit is to determine the ownership of the technological achievements related to the patent. Through litigation, the court will make a ruling on the ownership of the right to apply for a patent or the patent right in accordance with relevant laws and regulations and factual evidence. In ownership disputes, the judgment may include clarifying the ownership of rights and ordering the defendant to assist in the procedures for changing the ownership, etc., but it is difficult to pursue the liability for infringement of trade secrets, and it is difficult to directly claim the losses suffered by the real rights holder, and even the reasonable expenses incurred is difficult to be claimed directly.

For example, in the case (2023) SPC IP Civil Final No. 347, the court of first instance found that the defendant had intentionally intercepted the patent right involved in the case, ruled that the patent right involved in the case should belong to the plaintiff, and ordered the defendant to assist in the transfer of the patent right and bear the reasonable expenses incurred by the plaintiff for the protection of rights in this case. In the second instance, although the Supreme Court also held that “the patent involved in the case is related to the work of PENG Moulin and XIONG Mou in company A, and it was made within one year after leaving company A, and it belongs to company A’ service invention-creation, and the patent right involved in the case should belong to company A”, it held that “the patent ownership dispute is a dispute over the confirmation of rights rather than an infringement dispute, and the existing laws and judicial interpretations do not clearly stipulate that the reasonable expenses incurred for rights protection by the winning party in the ownership dispute shall be borne by the losing party, and there is no such agreement between the parties, so the reasonable expenses incurred for rights protection claimed by Company A in this case lack legal basis”. So the Supreme Court upheld the judgment on the determination of the ownership of rights and provision of assistance in handling the procedure of changing ownership, but the judgment that the defendant should bear the reasonable expenses of rights protection was revoked.

II. Facts and legal basis

1. Facts and legal basis for trade secrets infringement dispute

Article 9 of the Anti-Unfair Competition Law stipulates the illegal acts of trade secrets infringement and the corresponding civil and administrative liabilities, and the Criminal Law further stipulates criminal liability in the event of serious infringement of trade secrets.

Trade secret infringement typically involves the following facts:

● 1. The right holder owns trade secrets: Trade secrets usually include technical information and business information, which have commercial value and are not known to the public, and the right holder has taken a series of confidentiality measures to protect such information. That is, three requisites should be met: secrecy, value and confidentiality measures.

● 2. The infringer has committed infringement: Article 9 of the Anti-Unfair Competition Law has detailed provision, and the infringement includes that the infringer obtains the trade secrets of the right holder through improper means (such as theft, bribery, fraud, coercion, electronic intrusion, etc.), or discloses, uses or allows others to use the trade secrets in its possession in violation of the confidentiality obligation or the right holder's requirements for keeping trade secrets. The act of applying for a patent without permission is against the will of the right holder and will cause the trade secrets to be disclosed, which is also an infringement.

● 3. Causing damage: The infringer's act usually causes economic losses to the right holder, including the loss of the value of trade secrets, the reduction of market share, the decline of sales revenue, etc.

In a trade secrets infringement dispute, the above three facts need to be proved by the rights holder. Of course, due to the nature of the infringement being hidden, in judicial practice, the fact of infringement is usually inferred through the method of “access + similarity”, and the court's surprise investigation and evidence preservation of the infringer's location is also a measure often used in trade secrets infringement litigation.

For example, in the trade secrets infringement case (2024) Chuan IP Civil Final No. 108 represented by our firm, our firm first preliminarily proved to the court “access (the defendant’s engineer was a former employee of the plaintiff and had a record of reading the confidential drawings involved in the case) + similarity (the defendant's external publicity of the technical category of the product is the same as the plaintiff’s)”, and further applied for evidence preservation, and the court preserved the technical drawings used by the defendant at the defendant's factory, and these technical drawings were substantially the same as the plaintiff's drawings involved in the case after comparison. In the end, the courts of first instance and second instance both upheld our claim and found that the trade secrets infringement was established.

2. Facts and legal basis for patent ownership dispute

There are two main types of patent ownership disputes, one is related to service inventions, and the other is related to breach of contract or infringement. In judicial practice, patent ownership disputes related to service inventions account for the majority.

(1) Patent ownership disputes related to service inventions

According to Article 6 of the Patent Law, the right to apply for a patent for a service invention-creation belongs to the employer. Article 13 of the Implementation Rules for the Patent Law further elaborates that “the term service invention-creation accomplished in the performance of the tasks of the employer” as mentioned in Article 6 of the Patent Law refers to: (1) invention-creation made in one’s work; (2) invention-creation made in the performance of tasks assigned by the employer, other than one’s work; (3) invention-creation made within one year after retirement, departing from the former employer, or after the termination of labor or personnel relations, related to the work undertaken in the former employer or the tasks assigned by the former employer. Patent ownership disputes arising from departing employees are often related to the above mentioned situation (3).

In the case (2019) SPC IP Civil Final No. 799 of a dispute over the ownership of the right to apply for a patent between Edan Instruments, Inc. and Guangzhou Wondfo BIOTECH Co., Ltd. et al. included in the Gist of the Judgment of the Intellectual Property Tribunal of the Supreme Court (2020), the Supreme Court summarized the above-mentioned provision into four applicable conditions: “1. The inventor who made the invention-creation was an employee of the former employer claiming the rights; 2. The employee has made creative contributions to the substantive characteristics of the invention-creation; 3. The invention-creation is made within one year after the employee leaves the former employer; 4. The content of the invention-creation is related to the employee's work or tasks assigned by the former employer.”

Among these four conditions, the fourth condition is the most critical. As to this condition, in the guiding case No. 158 with court reference number (2019) SPC Civil Retrial No. 6342, Shenzhen Weibond Technology Co., Ltd. v. Li Jianyi and Shenzhen Distance Automation Equipment Co., Ltd., the Supreme Court mentioned that when determining whether the invention-creation involved in the case is a “relevant invention-creation” as provided for in Item 3 of Paragraph 1 of Article 12 of the Implementation Rules for the Patent Law (amended in 2010), attention should be paid to maintaining the balance of interests between the former employer, the departing employee, and the new employer of the departing employee. The following factors should be comprehensively considered: Firstly, the specific content of the work undertaken by the departing employee in the former employer or the tasks assigned by the former employer, including job responsibilities and authority, and the technical information related to the patent involved in the case that can be accessed, controlled, and obtained. Secondly, the specific circumstances of the patent involved in the case, including its technical field, the technical problems solved, the purpose of the invention and the technical effect, the scope of protection defined by the patent claims, the “substantive characteristics” of the patent involved in the case relative to the prior art, etc., as well as the relationship between the patent involved in the case and the work or tasks assigned by the former employer. Thirdly, whether the former employer has carried out technology research and development activities related to the patent involved in the case, or whether it has a legal source for the relevant technology. Fourthly, whether the right holder or inventor can give a reasonable explanation for the R&D process or technology source of the patent involved in the case, including factors such as the complexity of the technical solution of the patent involved in the case, the required R&D investment, and whether the right holder or inventor has the corresponding knowledge, experience, skills or material and technical conditions, and whether there is evidence to prove that they have carried out relevant R&D activities.

In a patent ownership dispute involving a service invention, the above-mentioned conditions are the main points to be proved by the right holder. For example, in a series of disputes with court reference numbers (2022) Yue 73 IP Civil First No. 335-337 represented by our firm, we proved that the departing employee’s work in the former employer was closely related to the patent involved in the case by adducing a large amount of evidence such as labor contract, job evaluation reports, weekly work reports, emails and technical materials attached in the emails of the departing employee in the former employer, and the court of first instance supported our claim and determined that the patent application involved in the case was a service invention and its ownership should belong to the former employer, and these cases are now in the second instance.

(2) Patent ownership disputes related to breach of contract or infringement

In this type of cases, what shall be proved is that the patent application involved in the case violates the contract or infringes upon legitimate rights and interests, usually trade secrets. That is, in such cases, the main points to be proved are basically the same as those of the above-mentioned trade secrets infringement disputes. At this point, the act of applying for a patent and the technical solution of the patent application involved in the infringement have been disclosed, so it is less difficult to prove the infringement than other trade secrets infringement disputes.

For example, in the case (2020) SPC IP Civil Final No. 902, the Supreme Court held that “in this case, VMI has adduced evidence to prove that it owns prior confidential technology, and has proved that Safe-Run has the opportunity and channel to access VMI’s prior confidential technology before the filing date of the patent involved in the case, and the technical solution of the patent applied for by Safe-Run and granted is substantially the same as VMI’s prior confidential technology, and that VMI’s prior confidential technology has constituted the substantive content of the patented technical solution involved in the case. Under such circumstance, although Safe-Run claimed that the patented technical solution involved in the case was independently developed by Safe-Run, the so-called R&D evidence submitted by it in the first instance trial was not sufficient to prove its claim, so this court did not admit Safe-Run’s claim. Moreover, during the second instance trial of this court, in the event that VMI adduced further evidence to prove that Safe-Run had the possibility of access and actual access had already made, Safe-Run did not provide further evidence to prove its claim of independent research and development. Therefore, Safe-Run’s defense claim that it enjoyed rights to the patent involved in the case in accordance with the law lacked factual and legal basis. Accordingly, based on the evidence adduced by both parties and the court’s ascertainment of the facts, it can be determined that Safe-Run obtained VMI's prior confidential technology by improper means and then applied for and was granted the patent involved in the case. Therefore, the patent rights involved in the case should belong to VMI.”

III. Legal procedures for trade secrets infringement lawsuit and patent ownership dispute lawsuit

1. Whether it is possible to combine the two lawsuits in one single case and the order to file the two lawsuits

As mentioned above, the purposes and outcome of the trade secrets infringement lawsuit and patent ownership dispute lawsuit are different, so in order to resolve the issues entirely, is it possible to claim trade secrets infringement and meanwhile request determination of ownership of the patent in one case? Since trade secrets infringement and patent ownership dispute are two different causes of action, they are usually requested to be filed separately when the cases are filed with the court. However, the Supreme Court made it clear in the second-instance ruling (2019) SPC IP Civil Final No. 672 that since the dispute involving infringement of technical secrets and the dispute over the ownership of patent rights are highly overlapping in the main facts and implicated in the adjudication results, which are closely related, the two lawsuits can be combined for trial in a single case. The Supreme Court has commented on this aspect as follows:

(1) Where a party's litigation claim involves two different legal relationships and both are disputed legal relationships, the two legal relationships may be combined for trial in a single case by juxtaposing the causes of action.

(2) The law allows having two different legal relationships in dispute to be combined in a single case for trial. Moreover, under certain circumstances, resolving different legal relationships that are closely related based on the same facts or other reasons in a single lawsuit is conducive to clarifying the facts of the case, clarifying legal responsibilities and avoiding conflicts in adjudication, and is conducive to protecting the interests of the parties and achieving the goal of litigation economy. Considering that the technical secrets infringement dispute and the patent ownership dispute involved in the lawsuit filed by Bomexc in this case are closely related to each other in terms of the main facts and the adjudication result, this court considers that it is appropriate to combine the above two lawsuits for trial in one single case.

However, it should be noted that a high degree of overlap in the main facts and implication of the adjudication results mentioned above often occurred in the rights ownership disputes related to trade secrets infringement. In rights ownership disputes related to trade secrets infringement, the focus of judgment is whether the act of applying for a patent constitutes trade secrets infringement, which is the basis for a high degree of overlap in the main facts with trade secrets infringement disputes. However, in the cases of rights ownership disputes related to a service invention, the focus of the judgment is whether the content involved in the invention is relevant to the employee’s work and tasks in the former employer, which is obviously different from the judgment on trade secrets infringement.

If the two causes of action could not be claimed in one single case, is there an order to file the two lawsuits? At present, Chinese law does not clearly stipulate that trade secrets infringement lawsuit and rights ownership dispute lawsuit must be filed at the same time or sequentially. Therefore, the parties could flexibly choose the order in which the lawsuit is filed according to the circumstances of the case and the parties’ needs in litigation.

2. Jurisdiction

In terms of territorial jurisdiction, a trade secrets infringement lawsuit is an infringement dispute, and the court of the defendant's domicile and the place where the infringement occurred has jurisdiction. While the territorial jurisdiction of patent ownership disputes needs to be determined according to the circumstances, and if the dispute is caused by contract or infringement, the competent court can be determined with reference to the contract dispute or infringement dispute. For example, in the case (2022) SPC IP Civil Final No. 341, the Supreme Court ruled that “for the territorial jurisdiction of patent ownership disputes, it is necessary to distinguish whether the cause of the ownership dispute is a contractual relationship or infringement, and determine the jurisdiction of the case in accordance with the jurisdiction rules of the Civil Procedure Law and relevant judicial interpretations on contract and infringement cases.” Different from the above, in the case of a dispute over the ownership of a service invention, the court of the defendant’s domicile has jurisdiction. For example, in the case (2020) SPC IP Civil Jurisdiction Final No. 100, the Supreme Court clearly stated that "the cause of action is a dispute over the ownership of patent rights, and there is no foundational legal relationship such as a contractual relationship or infringement between the parties. The core of the substantive issues in this case is whether the patent involved in the case is a service invention, not the existence of a contractual relationship or infringement, and it is not appropriate to determine the competent court based on the contract lawsuit or infringement lawsuit.”

In a patent ownership dispute where the court of the defendant's domicile has jurisdiction, if the defendant is a foreign party without a place of residence in China, how should jurisdiction be determined? Article 276 of the Civil Procedure Law stipulates that “for foreign-related civil disputes, lawsuits, except lawsuits involving identity relationships, against defendants who do not have a domicile within the territory of the People's Republic of China, may be under the jurisdiction of the people's courts of the place where the contract is signed, the place where the contract is performed, the place where the object of the subject matter of the lawsuit is located, the place where the property can be seized, the place where the infringement occurred, and the place where the representative office is located, if these places are within the territory of the People’s Republic of China. Except as provided in the preceding paragraph, where the foreign-related civil disputes have other appropriate connections with the People’s Republic of China, they may be under the jurisdiction of the people’s court.” In judicial practice, the Beijing Intellectual Property Court where the China National Intellectual Property Administration is located or the court where the plaintiff is domiciled may be considered to have jurisdiction.

In terms of hierarchical jurisdiction, the first instance court for technical secrets infringement disputes is the intellectual property court or the intermediate court with an intellectual property tribunal, and the second instance court was originally the Supreme Court, but after November 1, 2023, according to the revised Provisions of the Supreme People’s Court on Several Issues Concerning Intellectual Property Tribunals, it has been changed to the High Court above the first instance court, but the second instance of major and complex technical secrets cases may still be subject to the jurisdiction of the Supreme Court. The jurisdiction of the first instance of patent ownership disputes is the same as that of technical secrets infringement disputes, while the jurisdiction of the second instance depends on the type of patent, with the Supreme Court having jurisdiction over the ownership of invention patents and the High Court above the first instance court having jurisdiction over the ownership of utility models and designs, and the Supreme Court may still have jurisdiction over major and complex utility model ownership disputes.

It can be seen that even if a trade secrets infringement lawsuit and a patent ownership dispute lawsuit are related to some degrees, they may not fall under the jurisdiction of the same court, and it is naturally more difficult to have them combined in one single case.

IV. Relationship with patent invalidation request

1. Relationship between patent ownership dispute and patent invalidation request

When there is a dispute over the ownership of the patent involved in the case, according to the Implementation Rules for the Patent Law, “if a party has a dispute over the right to apply for a patent or the ownership of the patent right, and has requested the patent administration department in charge of patent affairs to mediate or has filed a lawsuit with the people’s court, it may request the patent administration department under the State Council to suspend the relevant procedure.” “The relevant procedure” hereof includes invalidation request. According to the Implementation Rules for the Patent Law and the Examination Guidelines before amendment, when a party to a dispute over the ownership of rights applies for suspension of the invalidation procedure, it will often be approved. Therefore, in judicial practice, when a patent is faced with the risk of being invalidated, there were cases where the patentee resolved to fabricate ownership disputes in order to suspend the patent invalidation examination. To this end, the Implementation Rules for the Patent Law and the Examination Guidelines both revised in 2023 stipulate that if the patent administration department of the State Council considers that the reasons for suspension put forward by the parties are obviously untenable, it may not suspend the relevant procedures. Therefore, the invalidation request does not necessarily result in suspension even if there is a dispute over patent ownership.

This may lead to a situation where the patent has been declared invalid in the course of a patent ownership dispute. When the rights no longer exist, is there any need to continue the patent ownership dispute? In the case (2022) Su 05 Civil First No. 496, the court of first instance held that when the disputed patent was declared invalid, the parties no longer have an interest in the subject matter of the dispute, thus the ownership dispute lawsuit filed did not meet the conditions for filing civil lawsuits, and this lawsuit should be dismissed, and referring to the judicial interpretation regarding patent infringement, the ownership dispute should “be dismissed first and a separate lawsuit may be filed if the patent is finally maintained valid”. In the second instance of the case, the Supreme Court, in the civil ruling (2022) SPC IP Civil Final No. 2505, held that the aforesaid determination was wrong in the application of law, revoked the first-instance ruling, and ordered the court of first instance to hear the case. Moreover, in a series of cases such as (2021) SPC IP Civil Final No. 2395, the Supreme Court clearly ruled that "the ownership of the rights of an invention-creation is a different legal relationship from whether the invention can be granted a patent and whether the validity of the patent right can be maintained in the procedure of affirming the right, and the judicial judgment standards are not the same. In a dispute over the granting and affirmation of patent rights, what needs to be judged is whether an invention-creation meets the conditions for granting a patent; However, in the case of a dispute over the right to apply for a patent and the ownership of the patent right, what should be determined is the ownership of the rights and interests of an invention-creation, and the criterion for judging should be whether the plaintiff has a legally protected interest in the claimed invention-creation, rather than whether the patent is granted and whether the patent right remains valid. Even if the patent application is rejected or the patent right is declared invalid, the innocent party may separately claim infringement liability against the at-fault party based on the results of the determination of the ownership of the rights and interests in the invention-creation in the ownership dispute cases of the right to apply for a patent and patent right. Therefore, in a case of a dispute over the right to apply for a patent or a patent right, if the patent application is rejected or the patent right is declared invalid, the people’s court shall still hear the ownership of the rights and interests of the invention-creation involved.”

In addition, the Examination Guidelines revised in 2023 also clearly stipulate that if the patent invalidation procedure is not suspended, the parties to the patent ownership dispute may request to participate in the invalidation procedure. In the case (2022) SPC IP Administrative Final No. 836, one of the cases included in the Summary of the Judgments of the Intellectual Property Tribunal of the Supreme People’s Court (2023), the Supreme Court also pointed out that “after the patent administration department declares the patent claims invalid in whole or in part, if the party claiming rights in a patent ownership dispute case files an administrative lawsuit for affirming patent right, it may be determined that the party may constitute a potential interested party to the decision of the invalidation request being sued, and it is not appropriate to rule to dismiss the lawsuit simply on the grounds that the plaintiff is not qualified; Whether the party constitutes a qualified plaintiff in an administrative lawsuit for patent right affirmation depends on the outcome of the trial of the patent ownership dispute case, and if the patent ownership dispute has not been substantively resolved, the trial of the administrative lawsuit for patent right affirmation may be suspended according to the circumstances.” Such determination can avoid occurrence of a situation where the nominal right holder intends to abandon the patent when faced with an ownership dispute and believes that there is a risk of losing, but the real right holder is unable to participate in the invalidation procedure, thereby harming the interests of the real right holder.

2. Relationship between trade secrets infringement and patent invalidation request

When the accused infringement of trade secrets is the act of applying for a patent, whether the information disclosed in the patent application is trade secrets is one of the key aspects of the trial. Trade secrets should first meet the condition of secrecy. When a patent is invalidated due to novelty or inventive step, does it mean that the information disclosed in the patent is not secrets?

In the civil judgment (2022) SPC IP Civil Final No. 2501, the Supreme Court interpreted the relationship between patent invalidation and trade secrets as follows: “The criteria for judging whether particular technical information is secrets are different from the criteria for judging the novelty and inventive step of a patent, and even if the patented technical solution lacks novelty or inventiveness relative to the prior art at the filing date (or priority date), it does not necessarily mean that the technical information embodied in the technical solution has been generally known and easily accessible to those skilled in the art at the time of the accused infringement. In this case, the technical information involved in the case is mainly recorded in the specific embodiments and drawings of the specification of the utility model involved in the case, and the patent claims of the utility model involved in the case only reflect part of the technical secrets involved in the case, and the judgment on whether the patent claims of the utility model involved in the case are novel and inventive in the invalidation decision of the utility model does not necessarily affect the court's judgment on whether the technical information involved in the case is secrets.”

It can be seen that the circumstance that a technical solution suspected of infringing on the trade secrets of others which has been applied for a patent but has been declared invalid does not mean that the infringement of trade secrets must not be established.

Summary

Trade secrets infringement and patent ownership dispute are both complex intellectual property disputes, and it requires comprehensive consideration of factors such as the facts of the case, the evidence that can be collected, and the goals that need to be achieved, etc. to decide what actions to take in order to achieve the best results.