JUVE Comment

This mixed firm is one of the undisputed market leaders for litigation by patent attorneys. The latter advise on the technical matters of high-profile infringement proceedings on the side of external lawyers, both in life sciences and mobile communications patents. When it comes to pharma proceedings, they are often in action with the firm’s own strongly positioned lawyers.

Patent attorney Georg Siegert advised, for example, on the technical aspects of the IP Bridge suit (in partnership with Wildanger and Cohausz & Florack) in the short but fierce battle against Ford. The carmaker accepted a licence following a sales ban in Germany that was ordered by Munich Regional Court and drew much attention internationally. Hoffmann Eitle also represents its clients before the EPO, for instance Ericsson in an EPO opposition against IPCom.

On the other hand, Hoffmann Eitle appears with mixed teams in suits over pharma patents, for which the firm’s lawyers also have an excellent reputation. The team around lawyer Niels Hölder and patent attorney Thorsten Bausch won a case for Scottish pharma startup NuCana in a dispute with Gilead before Düsseldorf Regional Court.

The lawyers do not enjoy anywhere near the visibility of the patent attorneys in mobile communications proceedings, however. Bringing in a lawyer from another firm with experience here could help. Potential for the lawyers to be more involved in mobile communications infringement proceedings is offered by the close connections of the prosecution practice – which has one of the largest headcounts in Europe – to Asian clients from the electronics and telecoms sectors, such as Oppo and Fujitsu or carmakers like Hyundai. A young lawyer with Japanese roots left the team, however, which was a setback.

Strengths

Pharma litigation. Patent prosecution across a broad technical field.

European set-up

Hoffmann Eitle is a truly pan-European IP boutique with offices in Amsterdam, Düsseldorf, Hamburg, London, Madrid, Milan and Munich. Another Spanish office was recently opened in Barcelona. At most offices, the firm provides patent prosecution for national clients, but it only has a prominent patent litigation team in Munich.

Nevertheless, with this setup Hoffmann Eitle is represented in almost all the key patent courts in Europe and most UPC locations. 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.

In particular, Hoffmann Eitle’s German patent attorneys also act – mostly alongside external lawyers – in German parts of comprehensive cross-border litigation. For example, they advised Ericsson (with Kather Augenstein and Taylor Wessing) in its dispute against Apple, Dexcom (with Quinn Emanuel) against Abbott, and AMO against Alcon. The lawyers, however, are not involved in these cases. In cross-border litigation the firm 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 (“very competent and dedicated”, competitor), Clemens Steins; patent attorneys: Thorsten Bausch (“excellent both in litigation and in prosecution”, competitor), Mark Jones, Matthias Kindler, Peter Klusmann, Markus Müller, Leo Polz (“long-standing experience”, competitor), Joachim Renken, Georg Siegert, (“exceptional in tech proceedings”, competitor), Andreas Stefferl, Peter Schweighart, Joseph Taormino

Team

110 patent attorneys, 11 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: NuCana (claimant) against Gilead regarding various drugs containing sofosbuvir such as Sovaldi; Dexcom (claimant) against Abbott over glucose-monitoring technology; AMO (claimant) against Alcon over laser-eye technology; Sysmex (defendant) against Beckman Coulter over diagnostics technology for laboratories; (all public knowledge); Match Group/Tinder (defendant) against Hoccer over communication patents; IP Bridge (claimant) against Ford over connected car patents; Ericsson (claimant) against Apple over mobile communications; Novo Nordisk (defendant) in EPO opposition against Sanofi Aventis over hypodermic needle; Allergan (opponent) in EPO opposition against CRISPR/Cas patent of University of California; Assia (opponent) over DSL patent; regular litigation for AstraZeneca, Boehringer Ingelheim, Insulet, Lundbeck, NTT DoCoMo, Seiko Epson, Takeda and Toshiba. Prosecution:filing and part oppositions for Alnylam, Allergan, Clariant, Ericsson, Federal Mogul, Fertin Pharma, Janssen Pharmaceutica, Krka, Moderna Therapeutics. Filing for Astellas, Boeing, Dexcom, Fujitsu, Hyundai, Henan Fengbo, Japan Tobacco, LG Chem, Mitsubishi, NTT Docomo, Oppo Mobile, Seiko Epson, Sysmex, Takeda, Toshiba (all public knowledge).