JUVE Comment

This mixed IP firm is one of the very active German prosecution practices, but also put in a strong performance in litigation.

One of the cornerstones of the practice is its longstanding connections to Philips, for which it conducts much litigation involving household appliances and consumer goods, and above all mobile communications standards. The patent attorneys and lawyers have thus gained a wealth of experience in SEP and FRAND proceedings, which they brought into play in four major campaigns for Philips, Sisvel, Via Licencing and Access Advanced. Few German firms enjoy such a strong presence in proceedings on the patent holder side, including many NPEs. That said, clients such as Sisvel or Philips have not hired Eisenführ exclusively.

Compared to others in the market, the team of lawyers is still extremely small. Nevertheless, it handles a huge number of proceedings with the Eisenführ patent attorneys, in other technologies, too. Many are conducted for long-time prosecution clients like Enercon, Harting or Nordson. The patent attorneys have also long been very active in EPO oppositions and nullity suits for a large number of technology companies from the German Mittelstand, such as Enercon or Sennheiser.

In line with the high volume of work in recent months, the firm bolstered its lawyer team with Michael Schneider from Pinsent Masons. The new partner brings experience litigating in relation to pharma, medical technology and mobile communications patents. His arrival means that, for the first time, Eisenführ is able to offer litigation expertise from a lawyer at the Munich office. A litigation team in Düsseldorf would round off the service offering. But the firm is not currently planning to open an office here. What is even more pressing is that the firm grow the small litigation team’s associate base, if it wants to keep step with the quality of the leading litigation practices.

In terms of the top of the German litigation market, Eisenführ is seen relatively rarely in cases regarding life sciences patents. Apart from a few successes for BASF (CRISPR/Cas patents) and Euroimmun (diagnosis procedure for antibodies), pharma companies are found too seldom in what is otherwise technically broad prosecution work. The litigation practice will not be able to capitalise on Michael Schneider’s experience with life sciences patents until Eisenführ creates a stronger basis for prosecution.

Strengths

Patent prosecution with a broad technical background. Litigation for NPEs concerning SEPs and FRAND for patent holders (including various NPEs) 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, for example 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, for example Symrise, Enercon or Werner & Mertz. Litigation for Philips and Sisvel, 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 with both clients for years.

Recommended individuals

Volkmar Henke, Michael Schneider (“great job in life sciences”, competitor); patent attorneys: Jochen Ehlers (“extremely experienced in mobile communications cases”, competitor), Klaus Göken, Joachim von Oppen (“highly competent and solution-oriented”, client), Manuel Söldenwagner

Team

44 patent attorneys, 5 lawyers

Partner moves

Michael Schneider (from Pinsent Masons)

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, Wiko and Xiaomi; Vodafone (defendant) against Intellectual Ventures; Sisvel (claimant) against Haier and Wiko (all concerning mobile communications); Sisvel (claimant) against Oppo/Oneplus and Xiaomi (settled) over UMTS patents; Via Licensing (claimant) against Wiko over audio coding; HEVC Advance pool member (claimants) against Mas Elektronik, Xiaomi and Vestel over video coding; DivX (claimant) against Netflix over video streaming patent; Philips (claimant) against Fitbit over GPS technology (public knowledge); Philips (claimant) against competitors concerning household appliances and razors; Enercon (claimant) in EPO opposition against Senvion over wind plant patent and in arbitration; Nordson (defendant) against Baumer over industrial glue; Symrise (claimant) on infringement suits in China over cosmetics; Harting (claimant and defendant) against Phoenix Contact over industrial plug; Hoya (defendant) against Alcon over intra ocular delivery system; Werner & Merz (claimant) against Compad over cleaning agent; DPG (defendant) against Envipco over German bottle deposit system (settled in 2021); Bego (claimant) against competitors over dental technology; Eis GmbH (claimant as well as defendant) against Wow Tech; BASF (claimant) against Sigma-Aldrich in EPO opposition over CRISPR/Cas; BASF (claimant and defendant) against FrieslandCampina and Verbio over nutrition patents; Euroimmun (claimant) against Biotrend over diagnostics for antibodies. Prosecution: oppositions for Evonik Degussa, Symrise and ThyssenKrupp; filing and oppositions for Allos Semiconductors, BASF, Bego, CeWe Stiftung, Donaldson, Edwards Lifesciences, Enercon, Eppendorf, Fun Factory, KWS Saat, Minimax, Nordson, Panasonic, Philips, Olympus, Sennheiser, Signify, Wabco. Advice: FTO analysis, licensing projects and transactional advice for Alos, Eis GmbH, Fun Factory, Nordson and various venture capital funds, including High-Tech Gründerfonds; strategic advice, licences and FTO analysis for Big Dutchman and KWS Saat.