JUVE Comment

Hardly any other UK patent firm has achieved such important litigation victories in the past two years, and at the same time seen such dynamic personnel growth as EIP. As a result, the mixed IP firm has now for a good two years operated at the same level as the market leaders in mobile communications litigation.

The EIP litigators led by frontman Gary Moss are the masterminds behind the two NPEs’ success against Huawei and ZTE before the UK Supreme Court. The rulings made headlines around the world in summer 2020, strengthening the position of the UK courts as an SEP and FRAND jurisdiction. EIP was active in both series of proceedings from the very beginning. This work has since solidified the partners’ reputation for NPE cases, and as plaintiff representatives for mobile communications patents. The excellent connection to PanOptis, which is pressing ahead with another major suit against Apple in London via its subsidiary Optis Cellular, also contributes to this. When it comes to litigation in other technical fields, however, there is room for improvement. This is partly because the wins for Unwired Planet and Conversant in mobile communications by far outshine these areas.

EIP is slowly but surely developing a track record in life science cases. But the addition of a pharma litigator in 2019 has not yet contributed to the firm being seen as a real heavyweight in this sector. EIP will therefore have to develop litigation clients more consistently from the growing prosecution practice in life science if it wants to seriously challenge the market leaders in the future.

The next logical step could be to translate its telecoms expertise into further advice and litigation for implementers. In Germany, numerous IP boutiques, such as Arnold Ruess or Ampersand, have shown that the difficult balancing act between representing NPEs and implementers is by no means impossible. This could work for EIP too, as it is active for numerous industrial companies, including Amazon, Sonos and Visa, in patent prosecution.

EIP was able to capitalise on the momentum from its successful NPE suits to add patent attorneys to the prosecution team. Before now, the team’s most visible specialties were in electronics, mobile communications and computer patents as well as in mechanics. But EIP has now widened its patent prosecution expertise in the life sciences sector with two new partners. It also bolstered the prosecution practice overall with several associates. However, a partner from the telecoms team left EIP after a little over a year.

Overall, few other UK prosecution teams have seen such strong growth as EIP. With its recent development, the 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.

And the firm shows no signs of stopping, even following its double success at the UK Supreme Court. The patent attorney team is ready to snatch business away from strong German competitors. As video hearings have become standard practice at the EPO during the coronavirus pandemic, EIP now finds itself at an advantage over Munich-based prosecution firms, especially for US clients. The new way of conducting hearings could mean that Munich firms lose their locational advantage at the EPO headquarters.

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

EIP used its success in the mobile communication sector to expand its UK practice and further strengthen its only overseas office in Düsseldorf. After a partner arrival from Bird & Bird, the headcount of the German team is now stable with two young partners. With clients like Unwired Planet and Conversant, EIP is advising two prominent cross-border NPE cases on both sides of the Channel. The German team also advised Conversant in the high-profile German connected cars cases against Daimler. These cases have currently no parallel proceedings before the UK courts.

The litigation teams in London and Düsseldorf are also increasing their track record in the life sciences field, although these cases are less visible than EIP’s activities in the SEP and FRAND field.

With the two locations and their mixed approach, EIP has a much better starting position for cross-border disputes and the UPC than other London boutiques with a single office policy – especially when it comes to advising US clients in the mobile communications sector. Another location in Munich or Paris would make sense for the litigation team if the UPC were to start. After the UK has left the UPC, all central divisions of the new court will be concentrated in both cities. This could, however, lead to internal discussions with the patent attorneys. They are no longer seeking to set up an office in Munich, the headquarters of the EPO.

Recommended individuals

Gary Moss (“terrific, deep knowledge of FRAND matters both within the UK and internationally”, “no nonsense litigator who gets the job done in a very tenacious way”, competitors), Andrew Sharples; patent attorneys:  Darren Smyth (chemistry; digital communication and computer technology), Jerome Spaargaren (digital communication, electronics)

Team

5 partners, 11 associates; lawyers plus 58 patent attorneys

Partner moves

Gareth Probert (patent attorney from HGF); Monika Rai (patent attorney from Mathys & Squire); Pete Wilson (patent attorney in-house to Ocado Group)

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 offices in Düsseldorf and Denver.

Clients

Litigation: Conversant (claimant) against Huawei and ZTE; Unwired Planet (claimant) against Huawei (both over mobile communications before the UK Supreme Court); Optis Cellular (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. Patent filing and oppositions for Airbus Operations and Hewlett-Packard. Patent filing for Arm, BAT, Flirtey, Siemens Healthcare, Sonos, Visa, Amazon (some public knowledge).