Orange and Nokia fend off Assia infringement claims over DSL technology

After three years of being involved in a dispute over internet infrastructure software, Orange and Nokia have successfully defended claims from US-based company Assia at the Judicial Court of Paris. The court has determined that the two companies did not infringe Assia patent EP 2 259 495, and also found EP 2 187 558 invalid for extension of its scope beyond the content of its parent application.

Orange prevails over Assia

Assia develops solutions to improve internet services. The company owns EP 495, which covers “adaptive DSL margin and band control with functional measurements”, as well as EP 558 for the “adaptive FEC code word management”. The patent owner claims that Orange and Nokia Networks France, the latter previously known as Alcatel-Lucent, infringed the patents with their “Network Analyzer” software solution.

As a result, Assia sued Nokia and Orange before the Judicial Court of Paris, with Nokia Networks France involved as supplier to Orange. However, in a process which also involved trade secret litigation and several saisie-contrefaçons, the court has found in favour of the defendants. The decision was also one of presiding judge Nathalie Sabotier’s last, before her move to the Supreme Court.

Assia on the attack

During the COVID-19 pandemic in 2020, Assia launched four saisie-contrefaçons on Orange’s premises, which led to the parties disputing the question of trade secrets.

In May 2021, the judge ordered the setup of a confidentiality club – one of the first in France following a 2018 change in the law around trade secrets – to protect technical data seized by Assia, as well as Nokia’s software. In the order, the judge also ruled that some of Assia’s claims fall under a statute of limitations for computing damages.

A year later, in May 2022, the court heard an oral hearing on the merits where the judges discussed the questions of validity and infringement of EP 495 and EP 558. They also considered the admissibility of the seizures and damages. Now, in a decision rendered in early September, the Judicial Court of Paris ruled that Orange and Nokia have not infringed EP 495, while declaring EP 558 invalid for added matter. The judges also declared the seizures as inadmissible.

Marianne Schaffner

High costs, parallel proceedings

Over the course of the proceedings, Assia had reduced its first claim of €20 billion in damages to €13 billion, and then to €1 billion.

Due to the initially high claim, the judges ordered the US firm to pay €50,000 to Orange for abuse of procedure, as well as €1 million in reimbursement of costs split between the two defendants. It is not yet clear if Assia will appeal the decision in France.

However, Assia has already launched further proceedings against other network suppliers in Italy and the Netherlands. In February 2022, for example, the Court of Appeal in The Hague upheld a first-instance decision which found that Dutch telecommunication company KPN did not infringe Assia patent EP 1 869 790.

The court provisionally enforced an order for Assia to pay legal and appeal costs to both KPN and its co-litigant Nokia. Parallel proceedings regarding infringement and validity of EP 495 and EP 558, currently at the first instance, are ongoing in the Netherlands.

Abdelaziz Khatab

Sabotier moves to Supreme Court

The recent decision was one of the last judgments presided over by judge Nathalie Sabotier, who moved from the Judicial Court of Paris to the French Supreme Court (Cour de Cassation) in summer 2023.

Given her extensive experience in telecommunication cases, including the Intellectual Ventures case against multiple defendants over a similar network technology, some lawyers view her departure as a blow to the French patent courts.

Marianne Schaffner, partner at Reed Smith in Paris, is leading the case for Assia in France. She was assisted by Thierry Lautier, who recently left the firm to become a partner at Bird & Bird in Paris.

For the parallel Dutch proceedings concerning the same patents, Schaffner works alongside the Amsterdam-based team of Simmons & Simmons, led by Bas Berghuis van Woortman.

A mixture of firms

International firm Hogan Lovells and French IP boutique August Debouzy acted for Orange and Nokia Networks France respectively, with the latter involved as a supplier to Orange. August Debouzy counsel Abdelaziz Khatab led proceedings for the latter company alongside Grégoire Desrousseaux, with Khatab pleading in both the infringement and validity proceedings. The well-regarded Hogan Lovells partner Stanislas Roux-Vaillard led for Orange. (Co-author: Konstanze Richter)

Stanislas Roux-Vaillard

For Assia
Reed Smith (Paris): Marianne Schaffner (partner), Thierry Lautier (partner, now at Bird & Bird)

For Orange
Hogan Lovells (Paris): Stanislas Roux-Vaillard (partner); associate: Adrien Bonnet

For Nokia Networks France
August Debouzy (Paris): Abdelaziz Khatab (counsel, lead); Grégoire Desrousseaux, Martin Brion (both partners)
In-house (Munich): Clemens-August Heusch (VP, head of global litigation and dispute), Dhiren Patel (head of IPR licensing and litigation), Kian Hsia (senior IP counsel), Taliah Walklett (director litigation, London)

Judicial Court of Paris, 3rd chamber, 1st section
Nathalie Sabotier (president), Elodie Guennec, Malik Chapuis