Protecting Semiconductor Chip Design Under The Semiconductor Chip Protection Act Of 1984 (SCPA) ' Part II (Infringement And Defense)

• Jurisdiction: United States,Federal
• Law Firm: Sheppard Mullin Richter & Hampton
• Subject Matter: Intellectual Property, Copyright
• Author: Pengju (PJ) Shang and Edwin Komen
• Published date: 16 January 2023

Mask Work Infringement

In analogizing semiconductor chips to traditional areas of copyright law, the legislative history notes that, just as a plagiarist who copies only one chapter of a book may be held liable for infringement, a person may be liable for copying a part of a mask work if it is a qualitatively important portion that results in substantial similarity.

This 'substantial similarity' test has been applied in cases like Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed. Cir. 1992). In Brooktree, the court stated that 'If the copied portion [of the mask work] is qualitatively important, the finder of fact may properly find substantial similarity under copyright law and the Semiconductor Chip Protection Act,' even if other portions of the chip were not copied. Id. at 1564.

The principle of 'substantial similarity' recognizes that the existence of differences between the accused and copyrighted work may not negate infringement if the material portion of the copyrighted work is appropriated. 17 U.S.C.A. ' 106. Whether the copied portions are 'material portions' would require resolution on a fact-dependent, case-by-case basis. No hard and fast rule or percentage governs what constitutes 'substantial similarity.' Substantial similarity may exist where an important part of the mask work is copied, even though the percentage of the entire chip which is copied may be relatively small. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1564 (C.A. Fed. (Cal.),1992)

Takeaway

It is always recommended for a mask work applicant to identify the 'novel points' in the design during the registration step (e.g., by specifying the material portions in the MW form when registering the mask work). The registration history may be introduced as one piece of evidence to show the materiality of the copied portions.

Mask Work Infringement Defense

As a defendant in a mask work infringement case, a statutory defense is 'reverse engineering' authorized by the SCPA. This reverse engineering provision explicitly protects industry practices and encourages innovation.

Under the SCPA, it is not an infringement of an owner's exclusive right and protected mask work for another person, through reverse-engineering, to photograph and to...