DSL technology

KPN teams up with Nokia against Assia in the Netherlands

An invalidity ruling has been passed down by the District Court of The Hague in a first instance decision against Assia. Claims were first brought against KPN by ASSIA in 2018, with ASSIA alleging infringement of a patent for a dynamic controlling system. The granting of an injunction would adversely affect internet provision across the Netherlands.

2 October 2019 by Amy Sandys

KPN and Nokia, DSL technology, Bird & Bird, Freshfields The case brought against KPN and Nokia by Assia concerns DSL technology for the internet ©pitb_1/ADOBE STOCK

The claim was based on EP 22 594 56 B1, which relates to a method and system for mobile communication and data transmission according to multimedia development. The owner of the patent, which is standard essential, is the Board of Trustees of the Leland Stanford Junior University. However, Adaptive Spectrum and Signal Alignment (Assia) was party to the proceedings as an exclusive licensee of the Stanford patent. KPN and Nokia were the defendants.

The case was heard at the District Court of The Hague (case ID: C/09/563488), which passed an invalidity ruling on the SEP after a defence of added matter was brought by defendants KPN and Nokia. This decision followed the court finding all pleas admissible, counteracting an argument posited by the Dutch telecom provider and Nokia that, under Dutch law, only the patentee can enforce the patent.

New position for Nokia

The Finnish telecommunications giant is no stranger to litigation in Europe. As one of the biggest patent holders worldwide in the mobile phone sector, Nokia is usually the plaintiff. It is currently litigating heavily against car manufacturers in courts across Germany. But in the Assia case, Nokia is with KPN on the other side of the fence.

Amand Killan, Bird & Bird, The Hague, patent litigation, KPN and Nokia

Amand Killan

KPN and Nokia also put forward a FRAND defence before the District Court of The Hague. However, the patent was found invalid due to added matter. Accordingly, the FRAND defence was deemed unnecessary in the eyes of the court.

KPN and Nokia also argued that, as Stanford University is the official patentee, Assia determination of a FRAND royalty rate was inadmissible. However, Assia could prove that it had obtained a mandate from Stanford to act on behalf of the university.

Current CEO John Cioffi founded Assia, headquartered in California, in 2003. The company is a spin-off of Stanford University. The product and software development company primarily focuses on DSL technology. However, KPN chose to buy the same technology from Nokia. During the proceedings, the Dutch court also concluded that it could not rule on infringement.

New player

Although Assia is currently trying to get European users of DSL technology to take a licence, the company has brought suits before courts in Switzerland and the UK. However, KPN is its most prominent opponent to date. Freshfields Bruckhaus Deringer is representing Assia in a patent case for the first time. The full-service firm has a well-positioned patent team in Amsterdam.

Jelle Drok, KPN and Nokia, Freshfields Bruckhaus Deringer

Jelle Drok

The European patent was originally filed for Stanford University by UK patent filing firm Brookes IP. As in the Dutch proceedings, the question of validity played an important role. Both sides involved patent attorneys.

Both V.O. and NLO are among the most highly-regarded patent attorney firms in the Netherlands.

Fair and reasonable division

In the case against Assia, Allen & Overy IP partner Frits Gerritzen mainly focued on the FRAND defence. However, in the Dutch market, De Brauw Blackstone Westbroek is a regular advisor of the telecom giant. The national, full-service firm has a well-known patent team

Armand Killan, a partner based in Bird & Bird’s office in The Hague, has represented Nokia for twelve years. Whereas Gerritzen focused on FRAND, Killan dealt mainly on the validity aspects in the case against Assia. Bird & Bird is one of Nokia’s regular advisors throughout Europe.

In Germany, Hoyng ROKH Monegier and Arnold Ruess also work for Nokia. The latter firm is responsible for Nokia’s lawsuits against Daimler and its suppliers of connectivity modules, such as Continental. Nokia also has close ties to Bird & Bird in London. (Co-author: Mathieu Klos)

For Assia
Freshfields Bruckhaus Deringer (Amsterdam): Jelle Drok, Ruben Laddé, Eeke Kenninck
V.O. Patents & Trademarks (Amsterdam): Marco Box (patent attorney)
Inhouse (Redwood City): John Cioffi (CEO), Ioannis Kanellakopoulos (chief scientist), Ethan Andelman (general counsel)

Allen & Overy (Amsterdam): Frits Gerritzen, Lars Braams

For Nokia
Bird & Bird (The Hague): Armand Killan, Peter van Gemert, Kian Hsia
NLO (The Hague): Hans Hutter, Harm van der Heijden (both patent attorneys)
Inhouse (Munich): Clemens Heusch, Albin Schätzle

Rechtbank The Hague
Edger Brinkman (presiding judge), Margot Kokke, Johan de Vries