JUVE Comment

With notable, cross-border clients in telecommunications litigation, this IP boutique has carved out a solid position among the challengers of the market leaders in just a few years. Contributing to this is litigation for well-known NPEs in attention-grabbing FRAND cases, following the double success before the Supreme Court in the high-profile SEP cases for Conversant and Unwired Planet in 2020. For example, EIP has been busy as co-counsel with Osborne Clarke for PanOptis and its subsidiary Optis Cellular in the dispute against Apple.

Another regular client is IP Bridge, for whom EIP took to the field in another series of SEP proceedings against Huawei. At the same time, the team led by renowned partner Gary Moss is using the expertise in SEPs to broaden the client base away from NPEs to include implementers. One example is the work for Turkish electrical appliance manufacturer Vestel, which EIP represented in the dispute against the patent pool HEVC Advance and Philips over video compression technology.

When it comes to litigation in technical fields beyond the established telecoms sector, however, EIP continues to struggle. Boosting the litigation team with a litigator experienced in life sciences in 2019 has yet to bear visible fruit.

On the other hand, the IP boutique’s team of patent attorneys, which is traditionally active for manufacturers from a wide spectrum of industries, landed some pharma, biotech and life sciences clients. Among these are Cycle Pharmaceuticals and the A2 Milk Company, which the firm advised on patent filing, prosecution and EPO oppositions. There is great potential here for the litigation practice to position itself in future life sciences patent disputes in the UK. Such an expansion of the client base is necessary in order to challenge more broadly-positioned market leaders in the future.

Following last year’s rapid growth at the patent attorney level, EIP has raised its associate headcount in the litigation team. The market’s perception of the litigation practice is still dominated, however, by team leader Gary Moss. His reputation outshines the work of the other litigation partners, who are much less visible in the market.

Strengths

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

European strategy

EIP used its success in the mobile communications sector to expand its UK practice and further strengthen its office in Düsseldorf. After the headcount of the German team rose over the past twelve months, EIP was able to transfer more client work than ever from London to Düsseldorf. With clients like Conversant and Sonos, EIP is advising two prominent cross-border NPE cases on both sides of the Channel. However, in the life sciences sector, EIP did not make nearly as much progress. If EIP succeeds in significantly expanding its client base in the life sciences sector in the London practice, this would also be a good basis for the German team to expand its activities in this field.

With the two locations and the mixed approach of the UK team, 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 Paris or Munich would make sense for the litigation team now, as the UPC is likely to start. But as the UK has left the UPC, this could 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 (“has advanced law on FRAND”, competitor), patent attorneys: Darren Smyth (chemistry, digital communication and computer technology), Jerome Spaargaren (“thorough, does comprehensive work”, competitor; digital communication, electronics)

Team

19 lawyers, 55 patent attorneys

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.

Clients

Litigation: Optis Cellular (claimant) against Apple over mobile communications; Vestel (defendant) against HEVC Advance over consumer products; IP Bridge (claimant) against Huawei over mobile communications (all FRAND-related). Patent filing and oppositions: Airbus Operations and Hewlett-Packard. Patent filing: Arm, BAT, BioCryst Pharmaceuticals, Cycle Pharmaceuticals, Flirtey, Siemens Healthcare, Sonos, Visa, Amazon (some public knowledge).