After the District Court decided not in favor of ASSIA in first instance, ASSIA (again) loses the case against KPN and Nokia before the Court of Appeal. In the present case, the Court of Appeal declares that KPN and Nokia do not infringe the standard essential patent EP 456 of ASSIA, as said patent is in fact (completely) invalid, due to added matter (the case is published here).

Adaptive Spectrum and Signal Aligment Incorporated (ASSIA) is the exclusive licensee for the standard essential patent EP 2 259 456 B1 (EP 456 or the Patent), which is entitled “Dynamic digital communication system control”. The Patent relates to the vectored VDSL2 / G-Vector standard communication protocol. 

ASSIA first started proceedings against Dutch telecom provider KPN on 5 October 2018 (ECLI:NL:RBDHA:2019:10064).  ASSIA sought an injunction against KPN for infringement of EP456. According to ASSIA, KPN refused to accept the license offered by ASSIA against FRAND conditions. The District Court The Hague granted permission to Nokia Solutions and Networks Nederland B.V. (Nokia) to intervene in the proceedings on KPN’s side. KPN and Nokia first argued that ASSIA was inadmissible in its claims. The District Court agreed with KPN and Nokia, but ASSIA could demonstrate that it had obtained a mandate from the patentee to represent the patentee in the present proceedings. As a result thereof, ASSIA was admissible in its claims. However, this also meant that the counterclaim to annul EP 456 was admissible. The District Court ultimately ruled that the claims 1 – 7, 9, 13, 14, 16 and 17 were indeed invalid for added matter, and thus had to be revoked. Furthermore, ASSIA was ordered to pay the costs of the proceeding for both KPN and Nokia, which was in total € 1.25 million.

ASSIA appealed the decision of the District Court The Hague. The Court of Appeal agreed with the District Court that the independent claims 1 and 16 of EP 456 were invalid, due to added matter. According to the Appeal Court, the District Court correctly considered that amendments to a European patent application are only permitted within the limits of what the skilled person, taking account of his general knowledge of the subject-matter on the priority date, can directly and unambiguously derive, whether implicitly or explicitly, from the original application. According to the Court of Appeal this however applies to all the claims of EP 456. One of the features that was later added in the prosecution, was thus incorrectly not limited to non-linear precoding with a preferred precoder as was disclosed in EP 456. Therefore, the Court of Appeal annuls the decision in first instance, declares the (remaining) claims 8, 10, 11, 12, 15 and 18 of EP 456 also invalid and upholds the remainder of the decision in first instance. KPN and Nokia thus do not infringe the Patent of ASSIA. 

Since September 2020, new cost order limits for patent cases have been in place in The Netherlands. In this present case, the new limits were applied. This case was considered a ‘highly complex’ matter by the Court of Appeal, therefore the maximum legal cost order was set at € 250.000. Even though, the actual costs of Nokia were amounted at € 435.754. This is how the new cost order limits in patent cases will work from now on in the Netherlands.