Game over: Subsonic prevails against Sony in infringement case over PlayStation controllers

Since 2014 the parties have been locked in a fierce battle over three patents, EP 0 867 212, EP 08 34 338 and EP 13 31 974. They cover controllers for the popular Sony PlayStation games console. All three patents have long expired: EP 212 and EP 338 in 2017, with EP 974 expiring in 2020.

In late 2016, Sony undertook a product seizure at Subsonic’s headquarters in France and subsequently filed a lawsuit, accusing its French competitor of infringing several features of Sony’s three patents with its controllers.

Subsonic in turn claimed that the patents were invalid due to lack of inventive step and that its controllers did not infringe. Furthermore, Sony Interactive Entertainment could not prove it was the owner of the French part of the patents at the time of the lawsuit and seizure in late 2016. At that time, the French patent office INPI had received no registration of the transfer of the patents from the original applicant Sony Computer Entertainment.

Sony Computer Entertainment is registered in the European Patent Register as the applicant for all three patents. However, according to the Japanese company, it transferred the patent rights to Sony Interactive Entertainment during a restructuring in 2010.

Ownership proven

In 2020 the Judicial Court Paris dismissed the infringement action. The judges claimed that the plaintiff could not prove it was the official patent owner at the time it filed the suit.

The court’s decision was based on the formalities of registration in the National Patent Register as maintained by the INPI. The transfer of the patents in question took place on 13 August 2018 — over 18 months after the court heard the infringement action. As long as Sony had not entered the transfer of the IP rights into the register, the court concluded that the infringement action was inadmissible. Sony filed an appeal, which the Court of Appeal dismissed in 2022 (case ID: 20/12901).

No infringement proven

Sony appealed the decision to the Supreme Court. In April 2024, the French Supreme Court overturned the Court of Appeal’s decision. According to the Cour de Cassation in Paris, “From the registration in the register of the transfer of ownership of the patent, the successor in title is entitled to bring an action for infringement for the purpose of obtaining compensation for the damage caused to them by the acts committed since the transfer as well as, if the act transferring the rights specifies it, for the damage caused to them by the acts committed before the transfer.”

The case was remitted to the Court of Appeal, which in a recent ruling held that Sony was procedurally entitled to sue and that the patents themselves were valid. However, the court found that Sony failed to prove infringement. At the same time the court also dismissed a claim by Sony France of unfair competition (case ID: 24/11672). An appeal against this decision to the Supreme court is possible.

Hoyng vs Plasseraud

Sony retained a Paris-based team from Hoyng ROKH Monegier. Litigation partner Sabine Agé represented the client from the start when she was still with Véron & Associés. She brought the client with her when the firm merged with Hoyng ROKH Monegier in 2018. Agé worked with partner Marta Mendes and associate Laurène Borey provided assistance.

Plasseraud Avocats represented Subsonic. Jean-Christophe Guerrini has advised the company since the start of the litigation, bringing the case when he joined Plasseraud in 2021. He worked on the case with Raphaël Fleurance, partner and patent attorney at Plasseraud IP.