JUVE Comment

This UK IP boutique has become a role model for how to develop a mixed patent practice with patent attorneys and lawyers. EIP was by no means the first patent attorney firm in London to successfully follow this strategy, but no other competitor has pursued it so consistently. One competitor attested that “the firm has seen very impressive development” but most outsiders see it as heavily focused on NPE suits with frontman Gary Moss. The firm has indeed recently seen a good deal of success with NPE cases in the mobile telecommunications sector. The team was involved in two precedent cases for Unwired Planet and Conversant concerning FRAND. These are particularly significant with the European patent community currently looking to the UK Supreme Court for an indication as to how London patent courts will rule on global licences. As such, EIP has a wealth of experience on the plaintiff side and successfully managed to export this to its German practice with the Conversant case. In other technical fields the litigation team is less visible, though EIP advises on a broad range of technical fields in patent filing, mainly on the manufacturer side. The firm’s experience in the mobile communication sector would suggest that sooner or later it is likely that manufacturing clients, such as the audio system provider Sonos, could make greater use of their FRAND expertise in disputes. In general, however, EIP’s clear focus on mobile communications has meant that the firm’s profile in other technical fields has declined. But the firm has attracted much attention for its consistent expansion course. EIP has been more dynamic than other mixed outfits in this regard and recently expanded its London litigation and prosecution team at partner level.

Strengths

Strong focus on patent filing and litigation in the mobile telecommunication sector. Litigation for NPEs. Mixed approach with patent attorneys and lawyers.

European strategy

Before the UPC was on the horizon, EIP expanded its litigation activities to Düsseldorf, mainly to serve its best-known client Unwired Planet before the German court. But the office got off to a faltering start. The firm recently invested in the Düsseldorf office by acquiring an experienced Bird & Bird lawyer as a new partner. Now the headcount is stable with two young partners. With its client Conversant, EIP is advising on another prominent cross-border NPE case on both sides of the Channel. But the litigation teams in London and Düsseldorf are also increasing their track record in life sciences disputes. With the two locations and their mixed approach, EIP also has a good starting position for the UPC and cross-border cases, which are particularly important for US clients in the mobile communications sector. Another location in Munich would make sense if the UPC were to start. It could also help the patent attorneys to increase their presence in the market.

Recommended individuals

Gary Moss; patent attorneys: Darren Smyth (“very experienced in semiconductor patents”, competitor), Jerome Spaargaren (digital communication, electronics)

Team

5 partners, 8 associates, plus 52 patent attorneys

Partner moves

Kathleen Fox Murphy (lawyer from Browne Jacobson); Pete Wilson (patent attorney from BT in-house)

Specialties

Full-service IP firm with a strong focus on patents. Patent prosecution and litigation through an experienced mixed approach with patent attorneys and lawyers. Patent filing in a wide range of technical fields with a strong focus on mobile communications and electronics patents. Own office in Denver.

Clients

Litigation: Conversant (claimant) against Huawei, ZTE and Apple over mobile communications; Unwired Planet (claimant) against Huawei over mobile communications; PanOptis (claimant) against Apple over mobile communications; Vestel (defendant) against HEVC Advance Over consumer products (all FRAND related); Teleste (defendant) against Technetix over cable television equipment; Clear Correct against Align Technology over orthodontic medical device. Prosecution: patent filing and oppositions for Airbus Operations and Hewlett Packard. Patent filing: Arm, BAT, Flirtey, Siemens Healthcare, Sonos, Visa.