JUVE Comment

This mixed IP firm is one of Germany’s active prosecution practices but is also busy in litigation. The latter is focussed firstly on intensive work in EPO oppositions, especially for technology companies from the German Mittelstand, such as Enercon or Sennheiser. Secondly, the litigation team is increasingly involved in mobile communications suits. Patent attorney Jochen Ehlers successfully fought for Sisvel against Haier alongside lawyers from Arnold Ruess, with the Federal Court of Justice (Bundesgerichtshof) ruling on precedent FRAND issues. The firm also displayed its expertise in SEP and FRAND aspects in mixed teams for regular client Philips and the HEVC Advance pool. This pronounced specialty would make Eisenführ a candidate for connected cars litigation, but it has no ties to clients in the auto sector. Regular clients Sisvel and Philips – although Avanci pool members – do not currently play a role in the litigation against carmakers. The firm boasts a broad technical setup both in prosecution and disputes. Many competitors, such as Cohausz & Florack or Vossius, however, are far more active in the life sciences sector. This has not been a traditional Eisenführ specialty before now, but the Munich office is developing activities here, e.g. for BASF concerning CRISPR/Cas patents.

Strengths

Patent prosecution with a broad technical background. Litigation for NPEs concerning mobile communications SEPs as well as regarding mechanics and electronics.

European strategy

Eisenführ has raised the possibility of opening international offices when the UPC launches and significant work develops locally, e.g. due to its excellent connection to Philips in Amsterdam. But in the meantime, the firm wants to put itself forward for cross-border disputes with its tried-and-tested mixed approach. This makes sense with the launch of the new court uncertain. Internationally, Eisenführ relies on ties to partner firms, although it is rarely seen in major cross-border cases. Mostly it looks after individual projects for regular German clients abroad, e.g. Symrise, Enercon or Werner & Mertz. Litigation for Philips, on the other hand, tends to be part of pan-European litigation. Despite fierce competition from English and Dutch firms, Eisenführ has been firmly in the saddle at the Dutch corporation for years.

Recommended individuals

Volkmar Henke; patent attorneys: Jochen Ehlers (“outstanding tactically and in litigation”, competitor), Klaus Göken, Joachim von Oppen, Manuel Söldenwagner

Team

41 patent attorneys, 4 lawyers

Specialties

Clear focus on patent prosecution and litigation with a broad technical spectrum. Opposition, nullity and infringement cases and arbitration. Transactions and assessment of protection rights. Trademarks and unfair competition.

Clients

Litigation: Philips (claimant) against Asus, Google and others; Vodafone (defendant) against Intellectual Ventures; Sisvel (claimant) against Wiko and Haier (all over mobile communications); Via Licensing (claimant) against Wiko over audio coding; HEVC Advance pool member (claimants) against Mas Elektronik over video coding; Enercon (claimant) in EPO opposition against Senvion over wind plants patent and in arbitration; Nordson (defendant) against Baumer over industrial glue; Symrise (claimant) on infringement suits in China over cosmetics; Harting (claimant) against Phoenix Contact over industrial plug; Aqua Select (defendant) against Brita over water filters; Bego (claimant) over dental technology; Eis GmbH (claimant as well as defendant) against Wow Tech over sex toys; BASF on EPO opposition over CRISPR/Cas. Prosecution: Evonik Degussa, Symrise and ThyssenKrupp on opposition work; filing and oppositions for Allos Semiconductors, BASF, Bego, CeWe Stiftung, Donaldson, Edwards Lifesciences, Enercon, Eppendorf, Minimax, Nordson, Panasonic, Philips, Sennheiser, Signify, Symrise, Wabco. Advice: licensing projects for Fraunhofer and Gemalto; strategic advice, licences and FTO analysis for Big Dutchman, Eis GmbH, Fun Factory, Nordson.