Three Patents, One Reference,
One Trusted Vendor

The Client's Situation

The letter arrived the way these letters usually do — courteous, confident, and expensive. A major licensor had declared a portfolio of approximately 400 patents as essential to 5G standards, and was seeking a licence at a royalty rate the client's finance team calculated would consume a significant share of the product line's margin.

The client's engineers were skeptical. Their commercial team was cornered. And the asymmetry was familiar to anyone who has sat on the receiving end of an SEP demand: the licensor had spent years assembling and declaring its portfolio, while the client had weeks to respond.

They came to us with one question, and it was the right one. Not "can we avoid paying?" — but "how many of these patents are actually essential?"

The Complication

Here is the uncomfortable truth at the centre of standard-essential patent licensing: a declaration of essentiality is not a finding of essentiality.

Standards bodies such as ETSI require participants to declare patents that may be essential to a standard. That declaration is made by the patent owner, is not examined by anyone, and is deliberately over-inclusive — declaring broadly protects the owner and costs them nothing. Independent studies have consistently found that only a fraction of declared SEPs stand up as genuinely essential when tested claim-by-claim against the standard text.

So the client was not negotiating against 400 essential patents. They were negotiating against 400 declared patents — and nobody, including the licensor, knew precisely how many of those would survive scrutiny.

"That gap was the whole case. But closing it meant doing something laborious: reading every asserted claim against the actual clauses of the relevant 3GPP technical specifications, and doing it rigorously enough that the analysis would hold up under challenge."

The Turn

We began by narrowing the field, because not all 400 patents mattered equally. Working with the client's engineers, we identified the 80 patents the licensor was most likely to assert — the ones covering the features the client's products actually implemented.

For each, our telecom specialists carried out a full essentiality analysis:

Claim construction first: We interpreted the claim scope against the specification and, where available, the prosecution history — because essentiality turns on what the claim actually covers, not what the title suggests.

Mapping to the standard: Each claim element was mapped against the specific clause and release of the relevant 3GPP specification, with technical justification recorded element by element.

Distinguishing mandatory from optional: A patent reading only on an optional feature of the standard is not essential in the way that matters — a manufacturer can comply without practising it. This distinction alone reshaped the analysis.

Testing the strongest remainder: For the patents that survived as genuinely essential, we ran invalidity searches, unearthing prior art — including non-patent literature from IEEE conference proceedings and 3GPP working-group contributions — bearing on the strongest of them.

The result was not a rhetorical position. It was a claim-chart-backed technical file: a defensible, element-by-element account of which patents read on the standard, which read only on optional features, which the client's products did not implement at all, and which faced serious validity questions.

The Escalation

The client's negotiating posture changed entirely — and so did the conversation.

Rather than disputing the royalty rate in the abstract, the client's counsel could now say something far more powerful: here is our analysis, patent by patent, of your portfolio. Our team supported those sessions directly, with technical experts available to walk through the charts and answer the licensor's engineers on their own terms.

Of the 80 patents analysed, approximately 30% were assessed as genuinely essential to mandatory features implemented in the client's products.

The Build

The licence was concluded on renegotiated terms reflecting the analysed limited essentiality of the portfolio, without litigation.

But the more durable outcome was what the client kept. The essentiality methodology, the claim charts, and the technical taxonomy we built became a standing asset. When a second licensor approached the following year, the client was not starting from zero — and when they began evaluating their own portfolio for declaration and cross-licensing, they applied the same rigour to themselves.

We have since supported the client on ongoing SEP portfolio assessment / declaration, as their 5G products expanded into new assets.