Sony has not infringed a patent owned by German company Virtual Paper, meaning it does not have to pay damages. The German Federal Court of Justice came to the decision in mid-January, ending a ten-year dispute over digital book technology used in folding end devices, such as Sony's Vaio laptops.
26 January 2023 by Mathieu Klos
A long-running dispute between Virtual Paper Licencing and Sony, which concerned a special connection technology for mobile devices that makes digital books and laptops easier to use, is finally over. The parties had battled through all three instances for over ten years, until in mid-January the German Federal Court of Justice concluded that Sony had not infringed a Virtual Paper patent.
EP 16 59 501 protected a display device that contains an interface in the pivoting joint. Originally developed for digital-end devices that the user can open like a book, the technology enables better handling without interfaces and cables at the back. Therefore, the technology is also applicable to laptops and notebooks.
In December 2020, the Higher Regional Court Düsseldorf ruled that Japanese electronics manufacturer Sony had infringed EP 501 and would potentially have to pay damages. Now, however, the Federal Court of Justice has reversed the ruling and reinstated the judgment of the Düsseldorf Regional Court (case ID: X ZR 112/20).
In 2014, the Regional Court had ruled in favour of Sony and dismissed Virtual Paper’s claim due to non-infringement (case ID: 4a O 207/12).
However, Sony’s way was not straightforward since, originally, the Higher Regional Court Düsseldorf did not allow the appeal to the Federal Court of Justice. In most patent litigation in Germany, this means that the Higher Regional Court’s decision is final. Under German procedural law, the losing party is then left with the difficult task of applying for leave to appeal. However, in very few cases does the Federal Court of Justice subsequently allow an appeal.
Nevertheless, the court allowed the appeal and decided in favour of Sony, which now does not have to pay damages. The Federal Court of Justice has not yet published its reasoning in the verdict.
The Federal Court of Justice’s 10th Civil Senate had already dealt with the patent in the revocation case when, in November 2017, it upheld EP 501 in limited form. Its judges limited the interpretation of patent protection to the “digital book” listed in the first priority application (case ID: XZR 63/15). However, according to the ruling, the scope of protection does not fundamentally exclude devices such as laptops and notebooks. The patent expired in 2018.
Munich-based inventor Glenn Rolus Borgward owns the patent. He, along with a number of investors, is behind Virtual Paper Licensing. JUVE Patent is unaware whether the company will enforce the patent against other computer manufacturers.
Specialist lawyers always conduct these kinds of difficult appeal proceedings at the Federal Court of Justice. In this instance, for example, Sony secured the support of Christian Rohnke of Rohnke Winter. One of the most experienced Federal Court lawyers, Rohnke also focuses on IP cases. A team led by Munich-based Hoyng ROKH Monegier partner Klaus Haft supported him.
Haft had already represented Sony in the first two instances, together with Stuttgart patent attorney Stephan Keck.
Virtual Paper Licensing relied on lawyer Axel Rinkler, who is also admitted to the Federal Court of Justice. At the Higher Regional Court the firm relied on Olaf Giebe who recently stepped back from the partnership at Klaka. He was assisted by Klaka partners Constantin Kurtz and Stefan Eck. The IP boutique took over the litigation from Grünecker in 2018 but was no longer present in the proceedings before the Federal Court of Justice.
Rohnke Winter (Karlsruhe): Christian Rohnke (lawyer admitted to the Federal Court of Justice, partner)
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft (partner); counsel: Carina Höfer
Witte Weller & Partner (Stuttgart): Stephan Keck (patent attorney)
For Virtual Paper
Rinkler (Karlsruhe): Axel Rinkler (attorney admitted to the Federal Court of Justice)
Federal Court of Justice, 10th Senate
Klaus Bacher (presiding judge), Hermann Deichfuß, Nina Franziska Marx, Helga Kober-Dehm, Hartmut Rensen