Q-FREE is a technology company based in Trondheim, Norway, that specialises in transportation management. They work to improve traffic flow on roads, reduce congestion, improve road safety and enhance air quality around road networks.
Dehns has been working with Q-FREE for many years, drafting and filing many of their patent applications and we have built a large IP portfolio on their behalf.
In January 2022, Q-FREE publicly announced a trial of their new technology, supported by patents which Dehns had drafted and prosecuted, which related to road pricing involoving road tolls would charge varying prices based on environmental pollution levels. This pricing model is designed to discourage car-users driving at certain times and on certain days where pollution is highest.
Having announced the trial, a “patent troll”, an entity that does not manufacture or develop products, merely acquires or licences patents for the sake of enforcing the patent rights against accused infringers of those rights, approached Q-FREE and said that they held patents to the technology, that Q-FREE was infringing their patent rights, and therefore they wanted compensation. As a result, Q-FREE approached Dehns for advice.
The same third party had previously contacted Q-FREE in 2019, in an effort to sell their existing patent rights in this technology area. At the time, Dehns reviewed the patent rights in question and it was decided that it was not commercially attractive to purchase these patent applications, partly because their validity appeared relatively weak.
Adrian and Martha reviewed the patents and informed the 3rd party (the “patent troll”) that their patents were not relevant and that the 3rd party didn’t have much of a case. The 3rd party continued to cause trouble, even contacting Q-FREE’s investors to warn them of the alleged infringement, which is a very underhand tactic.
The 3rd party then offered a settlement agreement to Q-FREE, which we advised Q-FREE to turn down. The 3rd party continued to harass our client, so we advised the client to have the 3rd party’s patents revoked at the Norwegian Intellectual Patent Office (NIPO).
Dehns applied to have two of the 3rd party’s patents to be revoked (i.e. cancelled) so that the 3rd party would no longer harass our client. For this, Adrian and Martha had to argue the case as to why these two patents should be revoked.
For the first patent, Dehns was entirely successful and NIPO agreed that the patent should never have been granted in the first place – the patent was invalidated. The 3rd party appealed to the Norwegian Appeal board, and the Appeal board agreed with the original ruling that the patent should never have been granted. A revocation action going to Appeal is unusual, so it was very satisfying to win such a rare case.
The second patent was not revoked in the first instance at NIPO. However, Dehns took this to Appeal, and subsequently, the Appeal Board found in our favour. The second patent was therefore also declared invalid. Q-FREE was also awarded a significant proportion of legal costs in this case. We were informed that this was a large figure compared to other decisions from the Appeal Board. This was very gratifying, and we were delighted that some of the costs incurred by Q-FREE during the extensive Appeal proceedings could be returned to them.
The 3rd party has now had to stop pursuing infringement actions against Q-FREE.
For this case, Dehns worked closely with Norwegian lawyers Simonsen Vogt Wiig, who undertook the procedural and legal work, while Dehns handled the substantive and technical arguments.
This case study highlights our ability to support clients wherever they are, winning cases which involve rare and unusual proceedings and collaborating with experts in their field to achieve the best results for our clients.
Needless to say, the client was delighted that Dehns was able to make this problem go away:
“I am delighted, very delighted! You have done a remarkable job to argue in this case. You should buy a cake and celebrate tomorrow!”