Subsonic and Plasseraud defeat Sony in litigation over PlayStation controllers

The dispute revolves around three patents, EP 08 67 212, EP 08 34 338 and EP 13 31 974, which cover controllers for the popular Sony PlayStation games console. All three patents have now expired: EP 212 and EP 338 in 2017, with EP 974 expiring in 2020.

The Court of Appeal in Paris dismissed the infringement action (case ID: 20/12901), thus following a decision of the first-instance Judicial Court of Paris from 2020. At the core of the decision was whether plaintiff Sony Interactive Entertainment officially owned the patents at the time it filed the suit.

Sony mixes up

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.

In the present case, the latter company is thus the plaintiff. It acts alongside its European licensee Sony Interactive Entertainment Europe, and French distributor Sony Interactive Entertainment France.

Defendant Subsonic, founded in 2008, manufactures products and accessories for video and computer games, electronic games and leisure articles. Among its offering are PS3 controllers for the PlayStation 4 console.

Question of unfair competition

In November 2014, the parties signed an agreement. Subsonic agreed to refrain from marketing products bearing any form of symbols or marks similar to Sony trademarks in circulation as of May 2014. For the sale of the products in stock, Sony granted the French company a grace period of ten months.

Then, in October 2016, Subsonic turned to the competition authority, alleging that Sony was using package deals to exclude competitors. It accused the Japanese electronics manufacturer of negatively impacting the compatibility of Subsonic’s controllers with its technical requirements. This case is currently still pending.

At the same time, Subsonic questioned the validity of Sony’s three patents EP 212, EP 338 and EP 974.

Time of transfer

Then, in 2017, Sony undertook a saisie-contrefaçon, known as a product seizure, at Subsonic’s headquarters in France. Consequently, it filed a lawsuit against Subsonic at the Judicial Court of Paris (case ID: 17/01825). Sony accused its French competitor’s controllers of infringing several features in the Sony’s three patent claims.

However, Subsonic countered that according to an agreement from November 2014, it had received permission from Sony to market its PS3 controllers on the condition that the controllers did not contain any characters that infringe Sony’s trademark.

Moreover, 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.

In addition, Subsonic doubted the legal validity of the patent due to a lack of inventive step.

Sony stumbles

Thus, in the first-instance decision, the court dismissed the infringement action. The judges claimed that the plaintiff could not prove 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 National Patent Register as maintained by the INPI. Regarding the transfer of the patents in question, this took place on 13 August 2018 – over 18 months after the court heard the infringement issue. 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.

Although the judges did grant Sony France, as a distributor, the right to sue for unfair competition, the party must first prove infringement.

No luck twice

Sony appealed against the ruling, which the Court of Appeal has now rejected. While the second-instance judges established that Sony’s patent transfer took place on 1 April 2010, the court based its decision on the fact that the registration of the transfer had only taken place in 2018.

Sabine Agé

If the plaintiff decides to pursue this matter further, the Supreme Court will decide on whether the registration of a patent transfer from one owner to the next is necessary in order to accept infringement claims.

Although, in principle, the Court of Appeal also confirmed the admissibility of Sony France’s action on the basis of unfair competition, the plaintiff relied on the same documents and arguments as for the infringement action.

Since the court rejected the latter, judges also dismissed the claim for unfair competition.

Subsonic uses mixed firm

Sony retained Sabine Agé, who at the time of the first case being filed was still with Véron & Associés. She brought the client with her when the firm merged with Hoyng ROKH Monegier in 2018. Sony recently also relies on Hoyng ROKH Monegier in Germany, for example in the dispute against Virtual Paper Licensing over digital books.

Jean-Christophe Guerrini

Plasseraud, which was previously a pure patent attorney firm, represented Subsonic in proceedings. The outfit took its first step towards becoming a mixed firm a year ago when it added two litigators.

Jean-Christophe Guerrini has advised Subsonic since the start of the litigation, bringing the case when he joined Plasseraud in 2021.

For Sony
Hoyng ROKH Monegier (Paris): Sabine Agé, Marta Mendes (partners); associate: Laurène Borey
Grappotte Benetreau (Paris): Anne Grappotte Benetreau (attorney specialised in appeal procedures) (public knowledge)
Germain & Maureau (Paris): Philippe Verriest (partner, patent attorney)
In-house (London): Hogarth Andall (global lead – IP enforcement)

For Subsonic
Plasseraud (Paris): Jean-Christophe Guerrini (partner), Raphaël Fleurance (partner, patent attorney)
Lesenechal (Paris): Nathalie Lesenechal (attorney specialised in appeal procedures) (public knowledge)

Court of Appeal, Paris, 2nd Chamber
Laurence Lehmann (presiding judge), Agnès Marcade, Françoise Barutel