一起模具定作合同中商业秘密纠纷案代理纪实

纠纷起因 缘于合作双方缺乏诚信

某电器公司与某模具厂为联合开发飞羚125摩托车，于1995年8月签订联营开发摩托车塑料件模具合同一份，约定由某模具厂刻制摩托车模具，费用双方各半承担；某模具厂与电器公司联合开发摩托车模具合同签订后，交由厂外四模具工进行制作；该模具于1996年3月底初步制作完成并于下半年投入批量生产。1997年3月，双方由签订摩托车塑料件购销合同一份，约定某模具厂利用联合开发的模具制作塑料件供货给某电器公司。因双方在摩托车塑料件货款结算问题上发生争执，某模具厂拒绝向某电器公司供货。某电器公司以某模具厂所供摩托车塑料件未达质量要求为由，于1996年10月份开始，委托甲模具工等人重新制作与联营模具相同的模具，由于双方缺乏合作诚意，引起联营模具合同纠纷（本诉）和联营模具制作的塑料件购销合同纠纷（反诉）；在此期间，某模具厂于1997年9月以四模具工侵犯其模具制造工艺技术的商业秘密为由，对四模具工向台州市黄岩区人民法院提起商业秘密侵权之诉。

纠纷争执 在于商业秘密是否存在

某模具厂在对四模具起诉认为：自已与某电器公司签订模具联营合同后，已投入大量资金对开发摩托车模具进行计算机测绘、造型设计，研制出一套完整的图纸和技术资料，而四模具工利用上述资料又为某电器公司制作相同的模具，违反了合同约定的保密义务。

针对某模具厂的起诉，四模具工答辩认为：1、四模具工为某模具厂制作模具期间，已承担了合同约定的保密义务，对模具制作模具所需的实样已交还，不存留存之事实；2、某模具厂所谓的技术资料、图纸在合同签订和以后履行过程中，均未有上述资料之事实，合同中有关图纸条款均划掉的；3、某模具厂提供刻制模具的实样，系某电器公司从市场购买摩托车后交给某模具厂，该实样不具有公开性，利用该实样进行计算机测绘所得的技术资料，任何单位或个人只要拥有计算机测绘技术机器设备等，同样可得上述技术资料，该技术资料具有公开性，不符合商业秘密构成条件；4、如该技术资料能成为商业秘密，在本案中某模具厂没有证据证明对上述技术资料，采取了何种形式的保密措施。可见，某模具厂所谓的商业秘密并不存在。

初次审理 未见商业秘密具体内容

法庭根据双方争执焦点，要求某模具厂提供要求保护商业秘密的内容，某模具厂认为本案争执的商业秘密是模具制作技术及其资料，制作图纸。经某模具厂举证，只列举了所谓模具制作图纸，作为四模具工的代理人周显根律师认为：作为要求保护的商业秘密图纸，应是在签订合同或在合同履行过程中四模具工知道或由某模具厂交给四模具工技术资料，因该图纸没有制作时间、制作人，图纸上没有标注任何技术参数，无法确定该图纸形成的时间，故不能作为商业秘密予以保护；同时该图纸是产品图纸，而不是模具制作图纸，这与某模具厂所要保护的内容不符；且在本案中某模具厂未提供其他证据证实其商业秘密具体内容，故本案某模具厂所谓的商业秘密并不存在。

前案未了 基层法院决定中止审理

由于某电器公司和某模具厂模具联营合同和购销合同正在台州市中级人民法院审理中，一审法院以本案处理结果需以他案审理结果为据，中止了本案商业秘密侵权纠纷的审理；期间，四模具工和某电器公司报告初审法院认为：本案商业秘密纠纷与某电器公司和某模具厂的模具联营纠纷、购销合同纠纷无涉，要求恢复本案的审理，未得初审许可。某电器公司和某模具厂经过五载的诉讼，终于2001年10月由浙江省高级人民法院作出终审判决，该终审判决，双方各有输赢。

恢复审理 电器公司追加成为被告

某模具厂与某电器公司联营合同纠纷和购销合同纠纷终审判决所载认为：某电器公司背着某模具厂，委托制造联营模具的模具工，按照联营模具制作了相同的模具，违反了合同履行中应遵循的诚实信用原则……，同时某模具厂根据联营合同规定，已向某电器公司交付了全套塑料件模具测绘图纸；某模具厂以终审判决为据，向一审法院要求追加某电器公司为本案被告并增加诉讼请求，要求：

1、停止侵犯某模具厂模具制造技术及用该技术生产的模具和产品；

2、要求四模具工和某电器公司赔偿损失304余万元。鉴于某模具厂诉称超出了一审法院级别管辖，一审法院把案件移送至台州市中级人民法院审理。审理中，某模具厂把本案的商业秘密表述为：计算机模型类、图纸类、数据类，该部分技术信息的载体分别为光盘、图纸。

针对某模具厂提供的证据，作为某电器公司法律顾问和四模具工代理人的周显根律师认为：

1、某模具厂提供的光盘、图纸均未记载制作时间、制作人员和产品名称，故无法证明所记载的内容即某模具厂所谓的加工工艺、加工程序用于了讼争的联营模具和四模具工利用上述技术用于为某电器公司加工的模具之中。

2、某模具厂所谓的商业秘密技术参数，是指运用其购买的CAD计算机辅助设计软件中的造型技术测出的技术参数，仅是运用三相坐标测出某实物外部形状数据，该技术是公知技术，只要拥有该仪器设备的单位，均能完成该项工作；某模具厂运用的实物，是某电器公司从市场购买的本田125摩托车零部件，故某模具厂运用CAD计算机辅助设计软件中的造型技术测出的技术参数，是公众能从公开渠道直接获取，不具有商业秘密“不为公众所知悉”的特征。

3、某模具厂所谓的商业秘密图纸，由于双方在模具制作联营合同及其技术协议中规定：某模具厂在模具制作完成后，应向某电器公司提交全套图纸，故某电器公司图纸取得程序合法；同时对该图纸是否进行保密、是否可以使用等，双方在合同中未有规定也未有限制，依据《合同法》第341条规定，双方均有权使用或转让，故即使某电器公司把该图纸提供给模具工使用，也不构成对某模具厂的侵权。

4、如上述参数、图纸能成为某模具厂的商业秘密，则在本案中某模具厂未有证据证明其采取了何种保密措施。一审法院经过审理认为某模具厂要求保护的模具制造技术商业秘密是公知技术，其起诉要求四模具工和某电器公司承担侵权责任依据不足，驳回某模具厂的诉讼请求。

不服上诉 二审庭上辩论交锋激烈

某模具厂上诉，二审法院进行了六次的公开庭审和一次庭审前证据交换，双方就某电器公司和四模具工是否构成侵权进行了重新举证和质证并展开了激烈辩论；某模具厂不但调整商业秘密范围、举证内容，并且更换了代理律师。对本案涉及的商业秘密有关问题进行了举证辩论，焦点集中在以下几个方面：

一、某模具厂在上诉期间可否扩大商业秘密范围

经过二审法院的四次审理，某模具厂确定了本案商业秘密范围即把本案争议的商业秘密界定为五大类七小点即计算机模型类、图纸类、数据类、技术决窍类、制作方法类并对每类所要保护的内容进行七小点分化说明。上述商业秘密的范围，扩大某模具厂在原审诉讼请求范围，为此，对后二项技术信息，周显根律师发表意见认为：

1、某模具厂在二审程序中确定的商业秘密范围，其中后二大类，超出了原诉称的范围，是在二审程序中增加的商业秘密保护范围，在二审程序中不应予以支持，对此最高人民法院《关于适用中华人民共和国民事诉讼法若干问题意见》第184条已作了规定。

2、作为商业秘密，应是某模具厂在起诉时应当存在并且符合商业秘密特征要求；作为保护商业秘密的侵权纠纷，应以一审时提出的范围为准，因为伴随着双方举证的深入，如果许可权利人不断加以变化和任意增加商业秘密的范围，就会使权利人所要保护的范围始终处于不定状态，作为权利人的指控者，也无法进行诉讼上的抗辩。

3、权利人要求保护的商业秘密，在诉讼中只应充许权利人进行解释、补充说明，不能就权利保护的内容范围进行扩大。而某模具厂代理律师认为：某模具厂报要保护的商业秘密范围并未进行扩大，只是根据在原审法院提交的材料进行分类说明，该说明并没有超出原审诉称范围，但对后二类技术信息，作为原审诉称中的何类技术信息，并未作出归类划分。最后二审法院以后二类技术信息属增加的商业秘密为由认定该二类技术信息不属于某模具厂所要保护的技术秘密为由不予支持。

二、“石膏石墨仿型工艺”方法能否制作模具

某模具厂从一审到二审认为：四模具工和某电器公司利用其计算机模型类、图纸类、数据类技术信息，为某电器公司刻制了相同的模具为某电器公司使用；而四模具工认为：自已为某模具厂制作的联营模具和为某电器公司制作的模具均采用。为此双方在制作方法问题上展开了举证、质证。某模具厂为了证明自已拥有计算机模型类、图纸类、数据类技术信息并证明四模具工已接触该技术信息，在二审庭审中向法庭列举了从国外引进的CAD/CAM计算机辅助设计软件系统设备发票、四模具工与其签订的厂内承包合同及工资表等新证据，由此认定四模具工运用CAD/CAM计算机辅助设计软件系统进行制作模具，针对上述证据，周显根律师认为：从国外引进的CAD/CAM计算机辅助设计软件系统，只属于模具制作的生产工具，不能证明某模具厂就自然拥有本案诉争的技术信息；四模具工与其签订的合同名称虽然是厂内承包合同，但不能由此认定四模具工是其职工，因为合同订明要求四模具工开具加工增值税发票，由此可以推定双方之间是定作合同法律关系，而不是厂内承包合同法律关系；四模具工以工资名义领取的款项，是模具加工款，因合同已订明四模具工提供增值说发票额度为75%，另25%以工资形式予以支付；同时在二审庭审中，某模具厂的法定代表人明确告知：安装在数控加工中心的有关计算机辅助软件，必须由专门人员进行操作，有关技术资料，没有专门技术是打不开、拆不下；四模具工不是专门技术人员，无法接触和掌握上述有关技术信息，因此四模具工即使是其厂内职工，也没有运用CAD/CAM计算机辅助设计软件系统进行制作模具。四模具为证实其制作方法的可行性，向二审法院提供了其模具采用“石膏石墨仿型工艺”方法制作过程，并当场言明：如某模具厂向法院提交100万元的模具重新制作保证金，四模具工可以在二个月内向法院提交由法院指定的任何一付模具；实际上，采用“石膏石墨仿型工艺”方法制作模具在今天还是存在的；由于上述二种方法真假难辩，二审法院决定启动鉴定程序。

三、对商业秘密侵权纠纷鉴定时是否先确定商业秘密是否存在

由于本案模具存在二种不同的制作方法并且任何一方均声称能制作本案模具和联营模具，二审法院为确定四模具工是否侵犯某模具厂的商业秘密，从模具工的制作方法入手进行确定；如经过鉴定确定四模具工为某模具厂制作的联营模具和为某电器公司制作的模具采用的“石膏石墨仿型工艺”方法能制作模具，即使某模具厂存在商业秘密，则四模具工的行为同样不构成侵权。表面认为法院的决定是正确合理的，实则隐藏了本案所要解决的焦点即某模具厂的商业秘密到底是否存在这一关键事实，如鉴定结论认定四模具工制作方法不能成立，则为模具厂制作方法正确性立下了基础；为论述法院这种鉴定方法的不正确性和不合理性，周显根律师与某电器公司代理律师均认为：本案首先要确定的是某模具厂诉称的商业秘密到底是否存在，如不存在，本案对四模具制作方法进行鉴定就无必要；如果某模具厂存在商业秘密，则应对该商业秘密即某模具厂提供的制作方法能否制作模具进行鉴定，而不应对四模具制作方法进行鉴定；二审法院对被上诉方律师合理的意见予以否定，反而决定对不是商业秘密的模具工制作方法进行鉴定；二审法院采用反向思维逻辑确定解决本案商业秘密侵权纠纷，这对四模具工而言是不公平的。

四、四模具工的制作方法被鉴定单位否定

鉴于二审坚持对四模具工制作方法进行鉴定，鉴定结果是：凭实样采用石膏石墨仿型工艺不能制作联营模具和本案诉争模具，理由是：该制作方法是传统落后的工艺，只能制作简单或精度不高的模具，而本案诉争模具其形状、精度要求高，居国内同类产品领先水平。联营模具和本案模具均是采用数控加工方法制作即CAM/CAD方法制作。针对鉴定结论，周显根律师代表四模具工和某电器公司提出书面异议认为：1、鉴定人员没有测量模具本身，有关模具精度仅以四模具工与某电器公司签订的技术员协议为据予以确定；2、本案鉴定对象应是模具本身，而不是技术协议规定的有关技术条款；3、模具有关溢边超差，可以通过修整达到精度要求；4、鉴定人员以四模具工陈述作为鉴定依据，缺乏科学性。基于上述理由，周显根律师认为：本案鉴定方法存在缺陷，鉴定结论缺乏科学性。而某模具厂代理律师认为：法院委托的鉴定结论，其依据充分，结论科学，程序合法，应当作为本案证据予以使用。周显根律师认为：即使鉴定结论正确，但该鉴定结论仅是对四模具工制作方法进行的鉴定，并不是对本案诉争商业秘密是否真实存在进行鉴定，该鉴定结论与本案商业秘密侵权无关联性。

五、专家问倒专家 鉴定结论被否定

由于鉴定结论对四模具工和某电器公司产生不利的结果，在此情况下，单凭律师力量不足以驳倒鉴定结论有关论据和理由，在此情况下，四模具工和某电器公司商定聘请专家作为四模具工代理人对鉴定结论进行论证；在鉴定人员出庭作证期间，周显根律师结合异议书就鉴定结论向鉴定人员提出发问，发问结果印证了异议内容的真实性；同时四模具工聘请的专家针对鉴定结论向鉴定人发问：模具制作是否有行业规定的精度标准，鉴定人员回答是没有的；四模具工聘请的专家当场出示了有关国家部门制定的模具精度划分标准。最后法院以鉴定方法存在缺陷，其论证的理由与依据缺乏说服力为由予以否定。

七载诉讼 终审落定

围绕四模具工是否侵犯某模具厂商业秘密，经过七年的诉讼，二审法院于2003年12月9日下达终审判决，判决认为：某模具厂主张其拥有模具制造技术秘密并界定为五大类，然而在一审时仅主张五类中的前三类，故法院审查某模具厂的商业秘密范围也仅限于该三类技术信息。而该三类技术信息要构成商业秘密，某模具厂首先必须举证证明其“不为公众所知悉”，模具厂陈述将摩托车实样进行测绘，得出来的一系列参数及技术人员根据该参数得出转换而成的光盘、产品图纸，由于制作时间、人员和产品名称均未记载，故无法证明上述技术信息用于联营模具的制作。某模具厂将图纸交付给某电器公司，是联营合同及其技术协议规定的要求，该图纸并未与某电器公司约定保密义务，对某电器公司而言，拥有该图纸是合法的，并不存在对图纸的非法接触，故该图纸不构成某模具厂的商业秘密。退一步说，即使数据类构成技术秘密，某模具厂仍需举证四模具工在为某电器公司制作模具时，也采用了与其相同的数据，而不能仅通过判断产品或方法是否相同，就认为具体数据相同。综上，某模具厂诉请保护的商业秘密不存在，故其请求某电器公司和四模具工承担侵权责任的诉讼请求不予支持，其上诉理由不予采信，故驳回上诉，维持原判。

掩卷思考

本案经过七年的诉讼，告诉我这样一个基本的哲理：律师无论参与何种案件的代理活动，均离不开对案件基本事实的了解和对法律的深入研讨，只有在此基础上，才能确定代理案件的基本思路。作为商业秘密侵权纠纷案件，律师不管代理何方，首先要确定“商业秘密是什么？”其构成条件如何？如是侵权，则侵权行为又以种形式加以表现和实施？本案七年诉讼的代理，本人就始终抓住这一中心环节进行举证质证，中间虽有波澜，但始终未离开案件争议的中心发表自已的观点。本案某模具厂之所以败诉，在于起诉前未确定自已商业秘密到底是什么？产生了一、二审程序中对自已要求法院保护的商业秘密作了不同的表述。因而在市场经济激烈竞争的今天，企业不但要用好自已的商业秘密，更重要的是要保护好自已的商业秘密，这样才能使自已在市场经济中立于不败之地。

Agency Record of a Trade Secret Dispute Case in a Mold Customization Contract

The cause of the dispute is due to the lack of integrity on both sides of the cooperation

In August 1995, an electrical company and a mold factory signed a contract for the joint development of plastic parts molds for motorcycles in order to jointly develop the Feiling 125 motorcycle. It was agreed that a mold factory would produce motorcycle molds, and both parties would bear the cost equally; After a contract was signed between a mold factory and an electrical company to jointly develop motorcycle molds, it was handed over to four mold workers outside the factory for production; The mold was initially manufactured at the end of March 1996 and put into mass production in the second half of the year. In March 1997, both parties signed a motorcycle plastic parts purchase and sales contract, which stipulated that a mold factory would use jointly developed molds to produce plastic parts and supply them to an electrical company. Due to a dispute between the two parties over the settlement of payment for motorcycle plastic parts, a mold factory refused to supply a certain electrical company. A certain electrical company, citing that the plastic parts for motorcycles supplied by a certain mold factory did not meet the quality requirements, began in October 1996 by entrusting a mold worker and others to remake the same mold as the joint venture mold. Due to the lack of cooperation between the two parties, a dispute arose over the joint venture mold contract (this lawsuit) and a dispute over the purchase and sales contract for plastic parts produced by the joint venture mold (counterclaim); During this period, a certain mold factory filed a trade secret infringement lawsuit against the four mold workers to the Huangyan District People's Court of Taizhou City in September 1997, citing the infringement of their mold manufacturing technology trade secrets by the four mold workers.

The dispute lies in the existence of trade secrets

A mold factory filed a lawsuit against the four molds, claiming that after signing a mold joint venture contract with an electrical company, they had invested a large amount of funds in computer surveying and design for the development of motorcycle molds, and developed a complete set of drawings and technical data. The four mold workers used the above information to make the same mold for a certain electrical company, violating the confidentiality obligation stipulated in the contract.

In response to the lawsuit filed by a certain mold factory, the four mold workers argued that: 1. During the period when the four mold workers were producing molds for a certain mold factory, they had assumed the confidentiality obligation stipulated in the contract and had returned the actual samples required for mold production without any retained facts; 2. The fact that the so-called technical data and drawings of a certain mold factory did not contain the above information during the contract signing and subsequent performance process, and the relevant drawing clauses in the contract were crossed out; 3. A mold factory provides actual samples of engraved molds, which are purchased by an electrical company from the market and handed over to a mold factory. The actual samples are not public, and the technical data obtained from computer surveying using the actual samples can also be obtained by any unit or individual as long as they have computer surveying technology, equipment, etc. The technical data is public and does not meet the conditions for forming trade secrets; 4. If the technical information can become a trade secret, there is no evidence in this case that a certain mold factory has taken any form of confidentiality measures for the above-mentioned technical information. It can be seen that the so-called trade secrets of a certain mold factory do not exist.

No specific content of trade secrets found in the initial trial

The court, based on the focus of the dispute between the two parties, requested a certain mold factory to provide the content required to protect trade secrets. A certain mold factory believed that the trade secrets in this case were mold production technology and its materials, as well as production drawings. According to the evidence provided by a certain mold factory, only the so-called mold production drawings were listed. Lawyer Zhou Xiangen, as the agent of the four mold workers, believes that as a trade secret drawing that requires protection, it should be known to the four mold workers during the signing or performance of the contract or handed over by a certain mold factory to the four mold workers' technical data. As the drawing does not have a production time or producer, and there are no technical parameters marked on the drawing, the time when the drawing was formed cannot be determined, Therefore, it cannot be protected as a trade secret; At the same time, this drawing is a product drawing, not a mold production drawing, which is inconsistent with the content that a certain mold factory needs to protect; And in this case, a certain mold factory did not provide other evidence to confirm the specific content of its trade secrets, so the so-called trade secrets of a certain mold factory in this case do not exist.

The previous case has not been resolved, and the grassroots court has decided to suspend the trial

Due to the ongoing trial of the mold joint venture contract and purchase and sales contract between a certain electrical company and a certain mold factory by the Taizhou Intermediate People's Court, the first instance court suspended the trial of the trade secret infringement dispute in this case based on the results of other cases; During this period, the four mold workers and a certain electrical company reported to the preliminary court that the trade secret dispute in this case was not related to the mold joint venture dispute or purchase and sales contract dispute between a certain electrical company and a certain mold factory. They requested the resumption of the trial of this case and did not obtain a preliminary trial permit. After five years of litigation, a certain electrical company and a certain mold factory finally made a final judgment in October 2001 by the Zhejiang Provincial High People's Court. The final judgment had both sides winning and losing.

Resumption of trial: Electrical company added defendant

The final judgment on the joint venture contract dispute and purchase and sales contract dispute between a certain mold factory and an electrical company states that a certain electrical company entrusted a mold worker to manufacture the joint venture mold behind the back of a certain mold factory, and made the same mold according to the joint venture mold, violating the principle of good faith that should be followed in contract performance... At the same time, a mold factory has delivered a complete set of plastic mold surveying drawings to a certain electrical company according to the joint venture contract provisions; A mold factory, based on the final judgment, requests the first instance court to add an electrical company as the defendant in this case and increase the litigation request, requesting:

1. Stop infringing on the mold manufacturing technology of a certain mold factory and the molds and products produced using this technology;

2. Request four mold workers and an electrical company to compensate for losses of over 3.04 million yuan. Considering that a certain mold factory claimed that it exceeded the jurisdiction of the first instance court, the first instance court transferred the case to the Taizhou Intermediate People's Court for trial. During the trial, a certain mold factory expressed the trade secrets of this case as: computer models, drawings, and data. The carriers of this part of technical information are CD and drawings, respectively.

Regarding the evidence provided by a certain mold factory, Lawyer Zhou Xiangen, who serves as the legal advisor and agent of the four mold workers for a certain electrical company, believes that:

1. The CD and drawings provided by a certain mold factory do not record the production time, production personnel, and product name, so it cannot be proven that the recorded content is that the so-called processing technology and program of a mold factory were used in the joint venture mold in dispute, and the four mold workers used the above technology in the mold processed for a certain electrical company.

2. The so-called trade secret technical parameters of a certain mold factory refer to the technical parameters measured using the modeling technology in the purchased CAD computer-aided design software, which only uses three-phase coordinates to measure the external shape data of a certain object. This technology is well-known and can be completed by any unit that owns the instrument and equipment; The physical objects used by a certain mold factory are Honda 125 motorcycle parts purchased by an electrical company from the market. Therefore, the technical parameters measured by a mold factory using the modeling technology in CAD computer-aided design software are directly accessible to the public through public channels and do not have the characteristic of trade secrets being "unknown to the public".

3. The so-called trade secret drawings of a certain mold factory are legally obtained by an electrical company due to the provision in the mold production joint venture contract and its technical agreement that a mold factory should submit a complete set of drawings to a certain electrical company after the mold production is completed; At the same time, there are no provisions or restrictions in the contract regarding whether the drawing is confidential or usable. According to Article 341 of the Contract Law, both parties have the right to use or transfer it. Therefore, even if an electrical company provides the drawing to a mold worker for use, it does not constitute infringement on a mold factory.

4. If the above parameters and drawings can become trade secrets of a certain mold factory, then in this case, a mold factory has no evidence to prove that it has taken any confidentiality measures. The first instance court, after trial, found that the trade secrets of the mold manufacturing technology that a certain mold factory requested to protect were publicly known technology. The basis for the lawsuit requiring four mold workers and an electrical company to bear infringement liability was insufficient, and rejected the lawsuit request of a certain mold factory.

Disappointed appeal, intense debate and confrontation in the second instance court

A certain mold factory appealed, and the second instance court conducted six public hearings and one pre-trial evidence exchange. The two sides provided new evidence and cross examined whether a certain electrical company and four mold workers constituted infringement, and engaged in intense debate; A certain mold factory not only adjusted the scope of trade secrets and the content of evidence, but also changed its proxy lawyer. A debate on the issues related to trade secrets involved in this case was conducted, with a focus on the following aspects:

1、 Can a certain mold factory expand the scope of trade secrets during the appeal period

After four trials by the second instance court, a certain mold factory has determined the scope of trade secrets in this case, that is, defining the disputed trade secrets in this case into five categories and seven small points, namely computer models, drawings, data, technical know-how, and production methods, and providing a seven point differentiation explanation of the content to be protected for each category. The scope of the above-mentioned trade secrets has expanded the scope of a mold factory's original litigation requests. Therefore, regarding the latter two technical information, Lawyer Zhou Xiangen expressed an opinion that:

1. The scope of trade secrets determined by a certain mold factory in the second instance procedure, including the latter two categories, goes beyond the scope of the original claim and is an added scope of trade secret protection in the second instance procedure, which should not be supported in the second instance procedure. Article 184 of the Supreme People's Court's Opinion on Several Issues Concerning the Application of the Civil Procedure Law of the People's Republic of China has already been stipulated.

2. As a trade secret, it should exist and meet the requirements of trade secret characteristics when a certain mold factory sues; As an infringement dispute for protecting trade secrets, the scope proposed during the first instance should prevail, because with the deepening of evidence provided by both parties, if the licensed rights holder constantly changes and arbitrarily increases the scope of trade secrets, the scope of protection that the rights holder needs to protect will always be in an uncertain state, and as the accuser of the rights holder, they cannot defend themselves in litigation.

3. The trade secrets that the right holder requests to protect should only be allowed to provide explanations and supplementary explanations in the litigation, and the scope of rights protection cannot be expanded. The lawyer representing a certain mold factory believes that the scope of trade secrets reported by the mold factory for protection has not been expanded, but has been classified and explained based on the materials submitted in the original trial court. This explanation does not exceed the scope of the original trial claim, but the latter two types of technical information, as what type of technical information is included in the original trial claim, have not been classified and classified. The court of second instance did not support the determination that the second class technical information does not belong to the technical secrets that a certain mold factory needs to protect, as it is considered as an added trade secret.

2、 Can the "Gypsum Graphite Copying Technology" Method Be Used to Make Molds

A certain mold factory believes from the first to second review that the fourth mold worker and an electrical company used their computer model, drawing, and data technical information to carve the same mold for a certain electrical company for use; And the four mold workers believe that both the joint venture molds they have made for a certain mold factory and the molds they have made for an electrical company are used. Therefore, both parties conducted evidence and cross examination on the issue of production methods. In order to prove that a certain mold factory possesses computer model, drawing, and data technical information and that the four mold workers have access to this technical information, new evidence such as invoices for imported CAD/CAM computer-aided design software system equipment, factory contract contracts and salary schedules signed between the four mold workers and them were presented to the court in the second instance, Based on the above evidence, Lawyer Zhou Xiangen believes that the CAD/CAM computer-aided design software system imported from abroad is only a production tool for mold production, and cannot prove that a certain mold factory naturally possesses the technical information in this case; Although the contract name signed between the four mold workers and them is an internal contract, it cannot be determined that the four mold workers are their employees because the contract specifies that the four mold workers are required to issue processing value-added tax invoices. Therefore, it can be inferred that the legal relationship between the two parties is a customized contract, rather than an internal contract legal relationship; The payment received by the four mold workers in the name of salary is the mold processing payment. As the contract stipulates that the four mold workers provide value-added services, the invoice amount is 75%, and the other 25% is paid in the form of salary; At the same time, in the second instance trial, the legal representative of a certain mold factory clearly informed that the relevant computer-aided software installed in the CNC machining center must be operated by specialized personnel, and the relevant technical information cannot be opened or removed without specialized technology; The four mold workers are not specialized technical personnel and are unable to access and master the relevant technical information mentioned above. Therefore, even the four mold workers in their factory do not use CAD/CAM computer-aided design software systems to make molds. To verify the feasibility of its production method, the Fourth Mold provided the court of second instance with the process of using the "gypsum graphite imitation process" for its mold production, and stated on the spot that if a mold factory submits a deposit of 1 million yuan for mold remaking to the court, the Fourth Mold worker can submit any mold specified by the court within two months; In fact, using the "gypsum graphite molding process" to make molds still exists today; Due to the difficulty in distinguishing the authenticity of the two methods mentioned above, the second instance court has decided to initiate the appraisal procedure.

3、 Is it necessary to first determine the existence of trade secrets when identifying disputes over infringement of trade secrets

Due to the existence of two different production methods for the mold in this case, and both parties claiming to be able to produce the mold and the joint venture mold, the second instance court determined whether the fourth mold worker had infringed on the trade secrets of a certain mold factory by starting with the mold worker's production method; If it is determined through appraisal that the four mold workers can produce molds using the "gypsum graphite molding process" method for a joint venture mold made by a certain mold factory and a mold made by an electrical company, even if a certain mold factory has trade secrets, the actions of the four mold workers do not constitute infringement. On the surface, it is believed that the court's decision is correct and reasonable, but in reality, it hides the key fact that the focus of this case is whether the trade secrets of a certain mold factory exist. If the appraisal conclusion determines that the four mold manufacturing methods cannot be established, it lays the foundation for the correctness of the mold factory's manufacturing methods; To discuss the correctness and irrationality of the court's appraisal method, Lawyer Zhou Xiangen and the lawyer representing a certain electrical company both believe that the first thing to determine in this case is whether the trade secret claimed by a certain mold factory actually exists. If it does not exist, it is unnecessary to conduct appraisal on the four mold production methods in this case; If a certain mold factory has trade secrets, it should be evaluated whether the production method provided by the mold factory can produce molds, rather than the four mold production methods; The second instance court denied the reasonable opinion of the appellant's lawyer and instead decided to conduct an appraisal of the mold making method that is not a trade secret; The second instance court used reverse thinking logic to determine the resolution of the trade secret infringement dispute in this case, which is unfair to the fourth mold worker.

4、 The production method of the four mold workers was rejected by the appraisal unit

Considering that the second instance insisted on evaluating the production method of the fourth mold, the appraisal result was that the use of gypsum graphite molding technology based on the actual sample cannot produce the joint mold and the disputed mold in this case. The reason is that the production method is traditional and outdated technology, and can only produce simple or low precision molds. However, the disputed mold in this case has high requirements for shape and accuracy, ranking at the leading level of similar products in China. Both the joint venture mold and the mold in this case were made using CNC machining method, namely CAM/CAD method. In response to the appraisal conclusion, Lawyer Zhou Xiangen raised a written objection on behalf of the Fourth Molder and a certain electrical company, stating that: 1. The appraisal personnel did not measure the mold itself, and the accuracy of the mold was only determined based on the technician agreement signed between the Fourth Molder and a certain electrical company; 2. The appraisal object of this case should be the mold itself, rather than the relevant technical clauses stipulated in the technical agreement; 3. The overflow of the mold is out of tolerance and can be adjusted to meet the accuracy requirements; 4. The appraisers used the statements of the four mold workers as the basis for the appraisal, which lacked scientific validity. Based on the above reasons, Lawyer Zhou Xiangen believes that the appraisal method in this case has flaws and the appraisal conclusion lacks scientific validity. And a lawyer representing a certain mold factory believes that the appraisal conclusion entrusted by the court has sufficient basis, scientific conclusion, and legal procedure, and should be used as evidence in this case. Lawyer Zhou Xiangen believes that even if the appraisal conclusion is correct, it is only an appraisal of the four mold manufacturing methods and not an appraisal of whether the disputed trade secrets in this case truly exist. The appraisal conclusion is not related to the infringement of trade secrets in this case.

5、 Expert questioning, expert appraisal conclusion denied

Due to the adverse effects of the appraisal conclusion on the four mold workers and a certain electrical company, the lawyer's strength alone is insufficient to refute the relevant arguments and reasons for the appraisal conclusion. In this case, the four mold workers and a certain electrical company have agreed to hire experts as their agents to argue the appraisal conclusion; During the testimony of the appraisers in court, Lawyer Zhou Xiangen raised questions about the appraisal conclusion to the appraisers based on the objection letter, and the questioning results confirmed the authenticity of the objection content; At the same time, the experts hired by the four mold workers asked the appraisers about the appraisal conclusion: whether there is an industry standard for precision in mold production, and the appraisers answered that there is no; The expert hired by the four mold workers presented the mold accuracy classification standards formulated by relevant national departments on the spot. Finally, the court denied the argument on the grounds that the appraisal method was flawed and the reasons and basis for its argument lacked persuasiveness.

Seven Year Litigation Finalized

After seven years of litigation, the second instance court issued a final judgment on December 9, 2003, regarding whether the four mold workers had infringed on the trade secrets of a mold factory. The judgment held that a mold factory claimed to possess mold manufacturing technology secrets and defined them as five categories. However, in the first instance, it only claimed the first three categories of the five categories. Therefore, the court's review of a mold factory's trade secrets was limited to these three categories of technical information. In order for these three types of technical information to constitute trade secrets, a certain mold factory must first provide evidence to prove that it is "not known to the public". The mold factory states that the actual motorcycle sample will be surveyed and a series of parameters obtained, as well as the CD and product drawings converted by technical personnel based on these parameters, cannot prove that the above technical information is used for the production of joint molds because the production time, personnel, and product name are not recorded. The delivery of drawings by a certain mold factory to an electrical company is a requirement stipulated in the joint venture contract and its technical agreement. The drawings do not have any confidentiality obligations with a certain electrical company. For a certain electrical company, owning the drawings is legal and there is no illegal contact with the drawings. Therefore, the drawings do not constitute a trade secret of a certain mold factory. To put it a step further, even if the data constitutes a technical secret, a certain mold factory still needs to provide evidence that the four mold workers used the same data when making molds for a certain electrical company, and cannot simply judge whether the product or method is the same, and consider the specific data to be the same. In summary, a certain mold factory's request for protection of trade secrets does not exist. Therefore, its request for an electrical company and four mold workers to bear infringement liability is not supported, and its appeal grounds are not credible. Therefore, the appeal is rejected and the original judgment is upheld.

Masking thinking

After seven years of litigation, this case has taught me a basic philosophy: no matter what kind of agency activities a lawyer participates in, they cannot do without an understanding of the basic facts of the case and in-depth discussion of the law. Only on this basis can the basic ideas of agency cases be determined. As a trade secret infringement dispute case, regardless of the party represented by the lawyer, the first thing to determine is "what is a trade secret?" What are the conditions for its composition? If it is an infringement, how can the infringement be manifested and implemented? As an agent in the seven year litigation of this case, I have always seized this central link for providing evidence and cross examination. Although there were some ups and downs in the middle, I have never left the center of the dispute in the case to express my own views. The reason why a certain mold factory lost the lawsuit in this case is that it was not determined what their own trade secrets were before the lawsuit was filed? Different expressions have been made in the first and second instance procedures regarding the trade secrets that the court has requested for protection. Therefore, in today's fiercely competitive market economy, enterprises not only need to make good use of their own trade secrets, but more importantly, protect their own trade secrets, in order to make themselves invincible in the market economy.