The Eastern High Court finds that Huawei and Sony infringe Sonion's patent and utility model rights, upholding the preliminary injunction granted by the Maritime and Commercial High Court. The case concerns several public interest issues regarding the enforcement of patent rights. Plesner represented Sonion in the legal proceedings.
The case concerns the protection of a number of Sonion's patent and utility model rights to a special vibration sensor (the VPU bone sensor) which was part of a line of headphones marketed by Sony and Huawei.
The Maritime and Commercial High Court issued a preliminary injunction against Huawei and Sony in 2022. Both Huawei and Sony appealed this decision to the Eastern High Court. We refer to our insight from 2022.
After the Maritime and Commercial High Court case, Sonion's European patent, also the parent application of Sonion's utility models, was maintained by the EPO's Opposition Division in amended form (meaning the EPO did not find that the patent was valid in the form as issued in Denmark). That decision was appealed to the Technical Board of Appeal at the EPO.
Accordingly, the main issues in the Eastern High Court case were:
- Was Sonion's preliminary injunction invalid already for the reason that the patent had only been maintained in amended form and the EPO's assessment of the patent had changed from the Maritime and Commercial High Court's decision to the Eastern High Court's decision;
- Did the Eastern High Court have the competence to assess amended patent and utility model claims;
- Were Sonion's rights valid; and
- Did Sony and Huawei's products infringe Sonion's rights, including by technical equivalence
The Eastern High Court dismissed all the objections - Preliminary injunction upheld
Among other things, the Eastern High Court said that the preliminary injunction as granted was not limited to a particular version of the disputed rights. In addition to this, the Eastern High Court found that it was competent to address the amendments that the EPO's Opposition Division had made to the patent claim.
The Eastern High Court said in this respect that considering the concern for effective legal protection, which is the aim of the injunction system in chapter 40 of the Administration of Justice Act, as well as Articles 3 and 9 of the Enforcement Directive, the fact that the EPO Opposition Division decided to maintain the patent in amended form only did not entail that the preliminary injunction had to be withdrawn for that reason alone.
This should probably be viewed in light of the Eastern High Court's other reasoning, in which the court stated that it was common practice to amend patents in opposition proceedings, and that a patent holder cannot change or submit new claims in appeal proceedings regarding an issued preliminary injunction.
The Eastern High Court also found that Sonion's rights were valid and had been infringed.
Further, Sonion's legal costs awarded in the Maritime and Commercial High Court case were increased.
Key take aways
The Eastern High Court's decision is important for several reasons.
Among other things, the Eastern High Court has clarified whether it is necessary to specify the registered version of the right being enforced, and which legal effect it has if this version is not specified.
The court has also established that a preliminary injunction as granted can be upheld even though the patent on which said injunction is based was only maintained in amended form during opposition proceedings at the EPO and the amended patent has yet to be finally issued. A patent being upheld in amended form strengthens the presumption of validity.
This means that the Eastern High Court (indirectly) addressed amendments to a patent claim and found itself competent to assess compiled patent claims and minor linguistic amendments.
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