JUVE Comment

Yet again, this mixed IP firm put in an incredibly strong performance in litigation on both the patent attorney and lawyer side. The patent attorneys are among the most persistent challengers to the market leaders; the lawyers are on their way there, with a growing presence in mobile communications proceedings.

The past year has seen the litigation team demonstrate its experience in mobile communications cases, especially involving SEPs and FRAND, in impressive fashion, with large pan-European series of proceedings for Sisvel, Philips and the members of the patent pools Access Advance and Via Licensing. Both the lawyers and patent attorneys are very active here. Eisenführ is now rightly counted as one of the busiest claimant firms in this sector. One of the cornerstones of the practice is its long-standing connections to Philips, for which it conducts much litigation, including ouside the mobile communication sector involving household appliances and consumer goods.

In line with the high volume of work in recent months, bolstering the Munich office with litigator Michael Schneider, who is experienced in NPE suits, in May 2021 was a logical move. But further growth at associate level is necessary. New partner Schneider was quickly involved in proceedings for high-profile regular clients such as Philips, but also brings experience litigating in relation to pharma and medical technology. He also brought along his own clients, including medical product manufacturer Optical Imaging and ZAP Surgical Systems from Pinsent Masons.

In line with the broad technical setup of the busy prosecution practice, which occupies two booming sectors – medical technology and energy – the patent attorneys are extremely active in EPO oppositions, for instance for regular clients like Enercon, Harting, Nordson, Stiebel Eltron as well as for BASF, for example over a CRISPR/Cas patent.

This is also reflected in the lawyers’ activity in infringement proceedings: they were recently involved in a high-stakes CJEU decision on German PI practice in the dispute with Phoenix Contact over plug connections. When it comes to pharma proceedings, the Eisenführ lawyers are still seen far less often than firms like Hoffmann Eitle or Vossius & Partner.

Strengths

Patent prosecution with a broad technical background. Litigation for patent holders (including various NPEs) in mobile communications, including SEPs and FRAND, as well as regarding mechanics and electronics.

European set-up

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 for the moment, the firm wants to put itself forward for cross-border disputes with its tried-and-tested mixed approach and the well-established ties to firms like Hoyng ROKH Monegier in Amsterdam and Paris as well as De Brauw in Amsterdam.

Eisenführ recently worked with both firms in various setups in major series of proceedings for Philips, Sisvel and the members of the Access Advance pool in mobile communications. In London, Eisenführ also works closely with Bristows. But Eisenführ’s German competitors also have good relationships with these firms. Hoyng ROKH has its own ambitions for its German team to play a central role at the UPC. Eisenführ’s connections to its partner firms will therefore no longer be a sure thing for the UPC. The firm will have to watch very carefully how its alliances develop under UPC conditions.

Despite the expansion in Munich, the litigation team will have to grow further if it wants to conduct multiple large series of mobile communications proceedings under UPC conditions. A litigation team in Düsseldorf would round off the service offering. But the firm is not currently planning to open an office here.

Recommended individuals

Volkmar Henke (“been happy with his work for years”, client), Michael Schneider (“very intelligent and experienced”, competitor); patent attorneys: Jochen Ehlers (“very satisfied with his work for years”, client), Klaus Göken, Joachim von Oppen (“excellent strategic instincts”, competitor), Manuel Söldenwagner (“perfect all-rounder”, client)

Team

47 patent attorneys, 5 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 Oppo and Wiko; Vodafone (defendant) against Intellectual Ventures (all concerning mobile communications); Sisvel (claimant) against Ford over LTE patents (settled 2022); Via Licensing (claimant) against TCL over audio coding; Access Advance pool member (claimants) against Xiaomi, Vestel and TCL over video coding; DivX (claimant) against Netflix over video-streaming patent; Philips (claimant) against Fitbit over GPS technology (public knowledge); Philips (claimant) against Belkin and Renesas concerning wireless charging technology for mobile devices; Philips (claimant) against competitors concerning household goods; Enercon (opponent) in EPO opposition against Siemens Gamesa over wind-farm patent; Enercon (claimant) against Light:Guard and others over night identification technology for wind turbines; Optical Imaging (claimant) against Zeiss over imaging technology in opthalmology; 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 & Mertz (claimant) against Compad over cleaning agent; Bego (claimant) against competitors over dental technology; BASF (opponent) in EPO opposition against Sigma-Aldrich over CRISPR/Cas; BASF (claimant and defendant) against FrieslandCampina and Verbio over nutrition patents; Euroimmun (claimant) against Biotrend over diagnostics for antibodies; Siegfried AG (defendant) against Zentiva over hypertension drug candesartan. Prosecution: oppositions for Evonik Degussa, Symrise and Thyssenkrupp; filing and oppositions for Allos Semiconductors, BASF, Bego, Big Dutchman, CeWe Stiftung, Donaldson, Edwards Lifesciences, Enercon, Eppendorf, Fun Factory, KWS Saat, Minimax, Nordson, Panasonic, Philips, Olympus, Sennheiser, Signify, Stiebel Eltron, Tencent, Wabco. Advice: FTO analysis, licensing projects and transactional advice for Allos, Fun Factory, Nordson and various venture capital funds, including High-Tech Gründerfonds.