EIP

IAM Research

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Silver - Firms: prosecution

Silver - Firms: litigation

Traditionally a go-to for precision prosecution, EIP is increasingly making incursions in the contentious space – and the landmark victory it recently secured in the Unwired Planet/Conversant litigation will only serve to further elevate its standing on the market. The architect of this win was litigation head and “huge name” Gary Moss – a “terrific litigator” and “leading light who really knows his stuff”. Working alongside him on the brief was Andrew Sharples, a dual-qualified solicitor and European patent attorney whose FRAND expertise is matched by prowess in the life sciences: he heads the group dedicated to this discipline. The firm is also acting for Conversant in complex litigation against Apple, spearheaded by solicitor-advocate Robert Lundie Smith. With a PhD in chemistry/chemical physics, he is ideally qualified to handle technically challenging cases. Also making their mark on the solicitors’ side are Kathleen Fox Murphy, who has a complete command of issues as varied as SPCs and FRAND licensing; and Matthew Jones, an equally dexterous practitioner with unparalleled pharmaceutical insight from a biotechnology PhD and a stint as senior counsel at Teva. Meanwhile, the firm maintains its burnished reputation for prosecution: “EIP gets the details right and interacts efficiently with inventors, forming a collaborative working team with them to consider, build or reject ideas. It presents patent law and its implications clearly, helping clients to make well-informed commercial and strategic decisions.” Heading up the digital practice group is founder Jerome Spaargaren, a shrewd coordinator of global patent prosecution and enforcement programmes in fields as diverse as machine learning, data processing, cloud computing and unmanned vehicles. Other electronics and software mavens include Matt Lawman, Laurence Brown and Heather McCann. Roles in-house at BT and Hewlett-Packard have given Lawman a bird’s-eye view of the innovation process; while Brown is an adroit portfolio curator whose illustrious clientele includes the likes of Sony, Sonos Inc and Morphy Richards. McCann previously served time at a major telecommunications group and has lately been filing a stack of patent applications on behalf of VISA. In the life sciences, synthetic organic chemistry experts Gareth Probert and Darren Smyth are the names to note. Probert has appeared in more than 250 opposition and appeal proceedings, and has prevailed against the odds in many; while Smyth likewise has a pristine contentious track record and is “intelligent, detail oriented and articulate, while also being affable and an absolute pleasure to work with”.

Bronze - Firms: infringement

While perhaps best known for its hybrid practice in the United Kingdom, EIP’s German IP litigation squad is a formidable force. This year it has continued to act for Conversant – both on the German component of its sprawling pan-European litigation against Huawei, ZTE and LG, and in a brace of hotly contested connected cars disputes with Daimler and Tesla. Avago has also engaged it in litigation against Daimler; while Broadcom has sought it out for out-of-court portfolio analysis and infringement advice. Providing input on all of these briefs is Florian Schmidt-Bogatzky, an “extremely creative and hardworking attorney who can quickly master new technologies”. Leading on the Conversant matter and heading up the Dusseldorf office, Christof Höhne litigates across the electronics, pharmaceuticals and mechanical engineering industry and regularly pairs up with patent attorneys to defend clients in EPO oppositions.

Firm Profile

EIP is a leading IP law firm advising on high-value patent matters. EIP’s combination of patent attorneys with specialist IP litigators presents its clients with significant advantages, being able to give advice on all stages of patent protection around the world, and patent litigation in the United Kingdom and Germany.

The benefit of this combination is well illustrated by EIP’s successful representation of clients in high-stakes patent litigation before the UK High Court, Court of Appeal and Supreme Court, and before the German district and federal courts.

Aside from the more mainstream drafting and prosecution practices, EIP’s patent attorneys work closely with the litigation team in the United Kingdom and Germany, providing additional technical expertise on large-scale international patent litigation matters.

EIP is increasingly involved in advisory and strategic project work in relation to the enforcement of patent rights, including portfolio analyses, infringement and validity analyses and claim charting, as well as strategic IP advice such as due diligence related to acquisitions and joint ventures. Team members often counsel clients on strategic patent portfolio management and development matters, and EIP has been retained to assist in developing high-level IP strategies for some of the world’s largest companies.

EIP has represented clients in hundreds of oppositions before the EPO over the past two decades and represent clients in person at hearings at the EPO in Munich, The Hague and Berlin, as well as via videoconference hearings.

The firm’s integrated team of patent attorneys, litigators and paralegals can act in national court litigation alongside EPO opposition proceedings for a seamless, consistent and effective service.

EIP’s litigation team has built a strong reputation for quality and success among its competitors and clients. During 2020 the team had success before the UK Supreme Court for clients Conversant and Unwired Planet along with three further successes before the High Court in technical trials, which represents yet another exceptional year for EIP and yet further proof of the abilities of its team.

Clients

EIP has a diverse international client base advising blue-chip companies through to small and mid-sized enterprises. Clients include VISA, Airbus, AP Moller-Maersk, Conversant Wireless Licensing, Sonos, Broadcom and PanOptis.

Clients choose EIP for its commercial outlook, in-house experience, honest opinions and pioneering approach to dealing with patents. Our attorneys and lawyers have considerable technical knowledge in the areas of high tech, advanced engineering, chemistry, life sciences, biotechnology, pharmaceuticals, healthcare, medical technology and energy.

Firm overview

EIP was established in 2000 and has rapidly grown to be a leading IP firm with 24 partners and more than 170 staff practising from its four UK offices in Bath, Cardiff, Leeds and London, its US office in Denver, Colorado and its German office in Dusseldorf.

In 2021 EIP was named “Firm of the Year for Patent Litigation” for the fourth year in a row by Managing Intellectual Property. EIP is a Legal 500, Chambers & Partners, IAM Patent 1000, IP Stars, and JUVE recommended firm as well as being recognised in the FT list of Europe’s Leading Patent Law Firms.

Notable cases

EIP has built an enviable reputation in patent litigation and in 2020 alone won the following high-profile cases for clients:

  • EIP secured a landmark victory in the UK Supreme Court for its clients Unwired Planet and Conversant Wireless, in Unwired Planet v Huawei and Conversant Wireless v Huawei & ZTE – the most eagerly anticipated telecoms cases in years. The Supreme Court’s combined ruling defines the licensing of patented technology considered essential to the international standards for previous and future generations of wireless telecommunications technology. 
  • EIP secured a significant victory for client Conversant Wireless in Germany. EIP successfully asserted a standard essential patent (SEP) for Conversant against Stuttgart carmaker Daimler in a dispute that will have repercussions across the sector.
  • EIP obtained a victory in the Dusseldorf District Court for its client Conversant Wireless in two patent infringement decisions against Huawei and ZTE. The Court affirmed infringement of two 3G-related SEPs by Huawei and ZTE products. Subject to enforcement, the ruling awarded, among other things, an injunction against both companies, confirming a previous but non-accepted licence offer by Conversant as fair, reasonable and non-discriminatory.

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