Filing third-party observations against the patentability of an application

Dehns was first introduced to Bob Briscoe in late 2015 when he was working as the Chief Research Scientist in Communications Systems at Simula Research Laboratory AS, Norway.

Simula is a Norwegian non-profit research organisation, affiliated with the University of Oslo. It conducts fundamental research in the fields of computer networks and distributed systems, scientific computing, and software engineering.

Before joining Simula, Bob had previously been British Telecom's Chief Researcher in Network Infrastructure.

Simula asked Dehns to advise on the patentability and strength of a European patent application owned by a third party, Alcatel-Lucent. This patent application was proving problematic in the development of a new standard by the IETF (the Internet Engineering Task Force), relating to techniques for removing delay from data communications over the Internet. The new standard alters the Internet Protocol (IP) itself, which is the primary standard for Internet communication. Participants were reluctant to include techniques in the new standard, which would expose many vendors of Internet equipment to the risk that Alcatel-Lucent might assert their patents and demand license payments.

In 2016, Dehns filed third-party observations against the patentability of Alcatel Lucent’s European patent application, on behalf of Simula Research Laboratory AS, citing new prior art and arguments that had not previously been considered by the European Patent Office Examiner.

The Examiner subsequently rejected the pending patent claims, making use of material we had submitted in the observations to do so. 

Alcatel Lucent attempted to overcome these objections but did not succeed. In September 2018, ultimately Alcatel-Lucent withdrew the patent application.

This was, of course, a very successful outcome for our client.

In March 2019, Bob approached us again, this time on behalf of his own consultancy company, Limited. The matter concerned a closely-related Alcatel-Lucent patent application which, again, was causing concern within the IETF standardisation group.

Dehns reviewed some analysis Bob had already undertaken, and advised him further regarding the scope, strength and validity of the relevant patent claims in Alcatel Lucent patent family, which spanned multiple countries.

In June 2019, as a result of efforts made by Bob, Dehns and others, Nokia (who acquired Alcatel Lucent in November 2016) agreed to reverse its previous policy of “fair, reasonable and non-discriminatory” (FRAND) licensing for this patent family and instead provided the IETF with a written assurance that it would not assert the patents against anyone implementing the relevant Internet standard.

This case involved a drawn-out struggle because Nokia had never previously offered such an assurance, which some expected might set a precedent for other, future negotiations. Therefore, Bob and the community behind Internet standardization were extremely pleased with this outcome, which has enabled the standardisation work to move forward unhindered by concerns about these patents.