The dispute centres on three patents, EP 08 67 212, EP 08 34 338, and EP 13 31 974, all of which cover controllers for Sony's popular PlayStation games console. EP 212 and EP 338 both expired in 2017, with EP 974 expired in 2020.
Following a decision of the Paris Judicial Court of First Instance from 2020, the Court of Appeal in Paris dismissed the infringement action (case ID: 20/12901). The decision hinged on whether plaintiff Sony Interactive Entertainment actually owned the patents when it filed the suit.
Sony Computer Entertainment is listed as the applicant for all three patents in the European Patent Register.
However, during a restructuring in 2010, the Japanese company transferred the patent rights to Sony Interactive Entertainment. It is thus the plaintiff in this case. It collaborates with Sony Interactive Entertainment Europe, its European licensee, and Sony Interactive Entertainment France, its French distributor.
Defendant Subsonic, founded in 2008, manufactures video, computer, and electronic games, as well as leisure articles. PS3 controllers for the PlayStation 4 console are among its offerings.
The parties signed an agreement in November 2014. Subsonic agreed not to market products bearing any symbols or marks similar to Sony trademarks in use as of May 2014. Sony granted the French company a ten-month grace period for the sale of stock products.
Subsonic then filed a complaint with the competition authority in October 2016, alleging that Sony was using package deals to exclude competitors. It accused the Japanese electronics manufacturer of interfering with Subsonic's controllers' compatibility with its technical requirements. This case is still in the works.
Simultaneously, Subsonic questioned Sony's three patents, EP 212, EP 338, and EP 974.
Then, in 2017, Sony conducted a saisie-contrefaçon, or product seizure, at Subsonic's French headquarters. As a result, it filed a lawsuit against Subsonic at the Paris Judicial Court (case ID: 17/01825). Sony accused the controllers of its French competitor of infringing on several features of Sony's three patent claims.
Subsonic, on the other hand, claimed that under a November 2014 agreement, it had received permission from Sony to market its PS3 controllers on the condition that the controllers did not contain any characters that infringed on Sony's trademark.
Furthermore, Sony Interactive Entertainment was unable to demonstrate ownership of the French portion of the patents at the time of the lawsuit and seizure in late 2016. The French patent office INPI had received no registration of the patent transfer from the original applicant Sony Computer Entertainment at the time.
Furthermore, Subsonic questioned the patent's legal validity due to a lack of inventive step.
As a result, the court dismissed the infringement action in the first instance.
According to the judges, the plaintiff was unable to demonstrate that it was the official patent owner at the time it filed the infringement suit.
The court's decision was based on the formalities of registration in the INPI's National Patent Register. The patents in question were transferred on August 13, 2018, more than 18 months after the court heard the infringement case. The court ruled that the infringement action was inadmissible because Sony had not entered the transfer of IP rights into the register.
Although the judges granted Sony France the right to sue for unfair competition as a distributor, they must first prove infringement.
Sony filed an appeal against the ruling, which was denied by the Court of Appeals.
While the second-instance judges determined that Sony's patent transfer occurred on April 1, 2010, the court based its decision on the fact that the transfer was only registered in 2018.
If the plaintiff decides to pursue the case further, the Supreme Court will rule on whether registration of a patent transfer from one owner to the next is required in order to accept infringement claims.
Although the Court of Appeal upheld the admissibility of Sony France's unfair competition action in principle, the plaintiff relied on the same documents and arguments as in the infringement action.
Because the court rejected the latter, the claim for unfair competition was also dismissed.
Three companies belonging to the Sony group ordered to pay 100,000 euros to Subsonic .The Paris Court of Appeal confirms the inadmissibility of Sony's action and orders them to pay the sum.
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