UPDATE2 Court of Appeal Rules BT FTTC Broadband Infringes ASSIA Patents

The Court of Appeal has this morning ruled that two patents owned by California-based ISP ASSIA, which relates to the field of Dynamic Spectrum Management, have been infringed upon by BT’s Next Generation Access (NGA) Fibre-to-the-Cabinet (FTTC / BTInfinity) superfast broadband technology.

ISPreview.co.uk understands that BT has been defending the claims brought by ASSIA since November 2011, which initially targeted three patents against BT. But during the proceedings ASSIA had to narrow their allegations and withdraw one of the patents entirely.

The two patents in the case – EP (UK) 1,869, 790 (‘790’) and EP (UK) 2,259,495 (‘495’) – describe inventions fundamental to DSL management technologies that are alleged to “underpin BT’s most advanced broadband system, Infinity, which provides services to more than 2.7 million customers in the UK“. It might be more accurate to say they were a part of Openreach’s underlying FTTC service rather than just BT’s consumer specific variant of FTTC, which is called BTInfinity.

Never the less ASSIA continued to target the two remaining patents and hired the Intellectual Property team from law firm Wragge Lawrence Graham & Co to fight their corner.

Noah Mesel, ASSIA’s General Counsel, told ISPreview.co.uk:

“Today’s ruling affirms ASSIA’s role as an innovator in the field of broadband performance optimisation. Major operators around the world license our products because they recognise the value ASSIA’s software adds to their businesses. BT should do likewise. Wragge Lawrence Graham & Co has given us tireless support and service, outwitting the BT team at all stages.”

Alexandra Brodie, Wragge Partner, added:

“This is an excellent result for ASSIA, whose legitimate expectation that its valuable intellectual property should be protected has been vindicated. Thanks to excellent work by our whole team, dealing with incredibly complex subject matter, the court has agreed.”

According to ASSIA, this judgment by the Court of Appeal that the NGA system infringes two patents is “likely to be significant in terms of its practical and financial impact“. But a spokesperson for BTOpenreach disagreed and told ISPreview.co.uk that they were “disappointed with today’s ruling“. BT also claims to have already made “minor changes to our programming which means these two decisions will have no material effect on the operation of our networks” (cost for past infringement may be another matter).

BT said that the High Court, in January 2014, found BT was infringing on only a minor part of one patent, and today the Court of Appeal, whilst “invalidating the majority of the claims of ASSIA’s other patent“, has ruled that BT’s network infringes what remains of the other patent. After a little digging we found a full copy of the judgement (here), although at 30 pages long it’s not a read for those without a technical eye and some degree of patience.

UPDATE 24th Nov 2014

The court has now granted a final injunction, which appears to have resulted in BT switching off its Next Generation Access Dynamic Line Management (NGA DLM) system at 6am last Friday, 21st November.

BT had initially asked for a stay of the injunction (paten 495) until 8th December 2014 in order “to enable it to make alterations to its systems to render them non-infringing“, but this would have required them to pay extra costs and so instead they appear to have simply disabled the system (BT already claims to have adopted an alternative approach, as per the original article above).

David Barron of Wragge Lawrence Graham & Co told ISPreview.co.uk: “This latest judgment from the Court of Appeal further vindicates ASSIA’s determination to seek proper recompense for BT’s use of ASSIA’s cutting-edge DSL technology.”

ASSIA said they will now proceed with the claim for damages, which they believe will amount to “many millions of pounds“. They said BT will also have to pay a significant proportion of ASSIA’s legal costs (as per the above linked ruling). BT has also been refused permission to appeal, but has yet to indicate whether it will seek permission directly from the Supreme Court.

UPDATE 1st Dec 2014

Apparently ASSIA has won another little victory after the Patent and Trade Mark firm, Boult Wade Tennant, successfully represented the company at the European Patent Office (EPO) on 19th Nov after BT filed an opposition asserting that one of ASSIA’s patents should be revoked as invalid. After the hearing, the EPO Opposition Division issued a provisional decision in ASSIA’s favour.

Noah Mesel, ASSIA’s general counsel, said: “This EPO decision is very important to ASSIA, particularly in view of the related UK litigation and ASSIA’s on-going licensing efforts. Jo and Jason’s performances at the hearing were outstanding. Boult Wade Tennant’s work in defending against BT’s attack on EP 2,259,495 greatly enhanced the value of not only that patent but our whole portfolio.“