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25 Sep 2019

Adaptive Spectrum And Signal Alignment Inc. v. Koninklijke KPN N.V., KPN B.V., Telfort Zakelijk B.V., XS4ALL Internet B.V. and Nokia Solutions and Networks Nederland B.V., District Court The Hague, 25 September 2019, Case no. C/09/563488 / HA-ZA 18-1176

On 25 September 2019 the District Court of The Hague rendered a final judgment in the case of ASSIA v KPN and Nokia. The court ruled that the standard essential patent, invoked by ASSIA, is invalid in light of a successful added matter defence. The FRAND defence of both KPN and Nokia therefore did not have to be considered and was disregarded in the judgment.

Adaptive Spectrum and Signal Alignment Inc. (ASSIA) first brought the case for infringement of the standard essential patent EP 2 259 456 B1 (EP ‘456) against Dutch telecom provider Koninklijke KPN N.V. and its subsidiaries (KPN) on 5 October 2018. EP ‘456 relates to a dynamically controlling system that affects performance in communication systems such as DSL and has been submitted to various standard setting organizations, such as ITU.

In its claims, ASSIA requested the Court primarily to grant an injunction against KPN for infringement of EP ‘456. Alternatively, ASSIA requested the Court to declare that KPN infringes its patent EP ‘456 and that KPN should be ordered to accept a license for a fee of € 2.25 for every existing or new user of KPN’s broadband network in The Netherlands that uses the method protected by EP ‘456. According to ASSIA, KPN refused to accept the license offered by ASSIA against FRAND conditions, which is why ASSIA would be entitled to an injunction in The Netherlands.

With the Court granting 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. According to KPN and Nokia, only the patentee itself would be entitled to enforce the patent under Dutch law, which includes claims for injunctions and the determination of a FRAND-royalty. As the patentee (The Board of Trustees of the Leland Stanford Junior University) was no party to the proceedings, ASSIA should be found inadmissible.

Although the Court agreed with KPN and Nokia that only the patentee is entitled to enforce the patent, ASSIA could demonstrate that it had obtained a mandate from the patentee to represent the patentee in the present proceedings. Consequently, ASSIA was admissible in its claims. This, however, also meant that the counterclaim for revocation of the patent was admissible.

This latter claim for revocation of EP ‘456 by KPN and Nokia was allowed by the Court in light of a successful challenge for added matter. Compared to the original application, the feature of independent claims 1 and 16 of EP ‘456 that stipulated how energy had to be allocated in frequency independently was no longer limited to preferred (non-linear) precoders and cancellers. The Court considered this an impermissible intermediate generalisation, thus revoking both independent claims 1 and 16.

ASSIA was finally ordered in the costs of the proceedings of both KPN and Nokia, amounting to a total of wide € 1.25 million.

A copy of the judgment can be found here (in Dutch).

Headnote: Eelco Bergsma and David Mulder, Taylor Wessing