JUVE Comment

This mixed IP firm is without a doubt one of the market leaders in patent prosecution and litigation on the patent attorney side. The coronavirus crisis has even fuelled this further, as for years Hoffmann Eitle has litigated for medical product manufacturers like Edwards Lifesciences and pharma companies such as Sanofi-Aventis and Zentiva, as well as biotech companies like Samsung Bioepis with its mixed team. Clients also rely on Hoffmann Eitle for innovative key patents: Allergan hired the team regarding CRISPR/Cas patents, as did Moderna for an RNA-based therapy.

The list of IT and mobile communications suits in which patent attorneys were involved is just as impressive: they are providing technical advice to Match Group on communications patents and to Assia on DSL technology. For regular client Ericsson, the patent attorneys were in action in the short but fierce battle against Samsung. This had the makings of one of the largest global series of cases over mobile communications standards but was settled in spring 2021.

The performance put in by the Hoffmann Eitle lawyers in such SEP proceedings is nowhere near as strong as in the life sciences sector. In mobile communications proceedings, for example for Ericsson, the patent attorneys tend to work alongside external lawyers. Mixed firms such as Vossius & Partner have demonstrated how it is possible to successfully offer clients mixed litigation teams more often, for example with strategic lateral hires. In addition, more and more pure lawyer practices like Quinn Emanuel are litigating in nullity suits and EPO oppositions without external patent attorneys – a frontal assault on Hoffmann Eitle’s original work.

A more consistent strategy – for instance also with an experienced lateral – would therefore be a good idea and would round off the range of advice. The firm already took the first step by hiring two associate lawyers, thus raising its capacities for large proceedings.

The firm has one major advantage over many competitors: its prosecution work gives it direct access to many top-class clients, mainly from Asia. Oppo, for instance, is a Chinese mobile communications manufacturer that is likely to have more actions brought against it in the future.

Strengths

Patent prosecution across a broad technical field. Pharma litigation.

European strategy

Hoffmann Eitle is a truly pan-European IP boutique with offices in Amsterdam, Düsseldorf, Hamburg, London, Madrid, Milan and Munich. With this setup, Hoffmann Eitle is represented in almost all the key patent courts in Europe. Only Paris is lacking. But the firm is also slowly turning its attention to the French market, having already strengthened its Munich office with a French patent attorney. To further secure its position, Hoffmann Eitle is using its excellent name among Japanese clients to put its feelers out towards China and Korea. At most offices, the firm provides patent prosecution for national clients, but it only has a prominent patent litigation team in Munich. The firm is in excellent shape for the European competition for patent prosecution. In cross-border litigation it cannot yet compete across Europe with leading European practices like Hogan Lovells.

Recommended individuals

Niels Hölder (“meticulously works his way into technical details”, competitor), Dirk Schüssler-Langeheine, Clemens Steins; patent attorneys: Thorsten Bausch (“excellent both in litigation and in prosecution”, competitor), Mark Jones, Matthias Kindler, Peter Klusmann, Markus Müller, Leo Polz (“you can tell by his work that he has longstanding experience in pharma cases”, competitor), Joachim Renken, Georg Siegert, Andreas Stefferl, Peter Schweighart, Joseph Taormino

Team

84 patent attorneys, 10 lawyers

Specialties

All-round IP activity with a strong focus on patent prosecution and very broad technical expertise. Opposition and nullity suits and infringement proceedings. Renowned trademarks and unfair competition practice.

Clients

Litigation: Moderna (defendant) in EPO opposition over RNA-based therapeutics; Novo Nordisk (defendant) in EPO opposition against Sanofi Aventis over hypodermic needle; Allergan (claimant) against University of California in EPO opposition over CRISPR/Cas patent; Sanofi/Regeneron (defendant) against Amgen over cholesterol-lowering drug Praluent; Eisai (claimant) against Eli Lilly in EPO opposition over Alzheimer drug; GSK (defendant) against various competitors in nullity suit over vaccine for children; Zentiva (defendant) against Eli Lilly over cancer drug pemetrexed; Samsung Bioepis (claimant) against Genentech over herceptin; Alnylam (claimant) against Alexion in EPO opposition over antibody eculizumab for PNH treatment; Sysmex (defendant) against Beckman Coulter over diagnostics technology for laboratories (public knowledge); Edwards Lifsciences (claimant) against Neovasc over heart valves (public knowledge); NuCana (claimant) against Gilead regarding various drugs like Sovaldi containing sofosbuvir; Friesland Campina (claimant) against BASF over palm-oil-free whipping agents; Insulet (claimant) against Medtrum over portable insulin pump; Match Group (Tinder; defendant) against Hoccer over communication patents; IP Bridge (claimant) against HTC over mobile communications; Ericsson (claimant) against Samsung over mobile communication patents (settled 2021); Ericsson (claimant) against IPCom in EPO opposition over mobile communication patent; Assia (claimant) over DSL technology (public knowledge); PopSockets (defendant) against Out of the Blue over mobile phone holder; regular litigation for AstraZeneca, Accord, Asus, Boehringer Ingelheim, Lundbeck, NTT DoCoMo, Seiko Epson, Takeda and Toshiba. Prosecution: filing and part oppositions for Alnylam, Allergan, Federal Mogul, Fertin Pharma, Janssen Pharmaceuticals, Moderna Therapeutics. Filing: Astellas, Boeing, Dexcom, Fujitsu, Hyundai, Japan Tobacco, LG Chem, Mitsubishi, NTT Docomo, Oppo Mobile, Seiko Epson, Sysmec, Takeda, Toshiba (all public knowledge).