VMI statement on court decisions in patent-infringement dispute with Safe-Run

VMI Wins Key Patent Infringement Cases Against Safe-Run in China

Despite a recent press release issued by Safe-Run, claiming victory in legal action against VMI, the true position, as confirmed by the relevant legal authorities, is a major defeat for Safe-Run and almost total vindication of VMI’s position. A detailed explanation of the court action and recent judgements is provided below. 

The Jiangsu High People’s Court (“appeal court”) of China recently issued final decisions in a series of patent infringement cases filed by VMI Holland B.V. (“VMI”) against Safe-Run Intelligent Equipment Co., Ltd (“Safe-Run”) and one patent declaratory judgment case filed by Safe-Run. 

Safe-Run were found infringing on VMI’s two key patents relating to tire building machines and were ordered by court to immediately stop infringements and pay VMI damages totaling RMB 2.46 million (around EUR 320,000).

The appeal court issued final decisions in four out of the five cases in July 2021. The decisions are final, effective and enforceable. The damages awarded are very high, comparing to the average damage awards of around RMB 100,000 in similar cases in China. 

As Safe-Run failed to pay damages within the required time period, VMI petitioned the court to execute judgement. 

The court then demanded payment from Safe-Run, which eventually complied and paid VMI’s damages in full, once required to do so by the court. 

For the patent relating to the drum, Safe-Run argued that the drum was purchased from a third party and it should not be liable for infringement. 

But both courts rejected such arguments and found infringement. 

Although the patent has expired, Safe-Run and its clients’ manufacturing, using, or selling of the infringing products before the expiry of the patent still constitutes infringements, and is subject to damage claims.  

For the patent relating to auto-gripper, Safe-Run and its clients’ any manufacturing, using, or selling of the infringing products constitutes infringement and is subject to both injunction and damages, and should immediately be removed by Safe-Run and its customers from use or production.  

As to the 5th still pending case asserting VMI’s patent CN 200880006690.4 relating to the cutting devices of tire building machines, VMI already won at trial court. 

Safe-Run tried to invalidate the patent, but the Chinese Supreme People’s Court’s Intellectual Property Tribunal issued a final decision upholding the validity of all claims of the patent. 

The patent is stable and enforceable. The appeal court is issuing decision and we are awaiting this decision with confidence.

As stated earlier, VMI has noted Safe-Run’s press release published on July 31, 2021, claiming “Safe-Run won the cases”. 

The statements made by Safe-Run in this press release are highly misleading and give an entirely false impression of the true position in ongoing litigation. 

Safe-Run was ruled by the court to have infringed on VMI’s key patents and was ordered by court to pay significant damages and to cease its infringements at once. This is a major defeat for Safe-Run and a strong vindication of VMI’s position. 

Attempting to mislead opinion within the industry by making false claims simply continues the pattern of deception that characterizes Safe-Run’s approach, and can only lead to further embarrassment and failure. 

This is just one of a series of legal cases between VMI and Safe-Run that are now before the courts in China. 

VMI has already been successful in court actions related to abuse of court and patent hijacking by Safe-Run and expects to have all its rights confirmed in the long term

VMI strongly believes that intellectual property rights belonging to all companies must be protected at all times. 

VMI also has complete respect for the Chinese judicial system, which has shown itself determined to act with integrity and impartiality to safeguard the rights of IUP owners. 

VMI believes any infringements or misappropriation of intellectual property rights should be subject to liabilities and is extremely pleased that the relevant Chinese courts have acted decisively to find in favour of VMI and, by doing so, support the rights of all innovators. 

VMI will continue to fight against infringement to protect its intellectual property rights and maintain healthy competition. 
 

Statement ends