From courtroom to boardroom: Young litigators seize in-house opportunities

Until recently, Eelco Bergsma was a partner at Taylor Wessing in Eindhoven. He was part of the team that advised Ericsson in various major proceedings. Bergsma’s career was by no means at a standstill. Nevertheless, the Dutch lawyer decided to move in-house to Ericsson.

Bergsma’s move is far from an isolated occurrence. A few weeks earlier, Simmons & Simmons counsel Sebastian Horlemann joined Huawei, where he now works closely with Chief EU IP Litigation Counsel Thomas Dreiser. Dreiser also worked at a law firm before joining Huawei in late 2022. Horlemann’s new position at the Chinese mobile communications giant is senior IP counsel. He supports patent licensing and litigation projects in Europe, focusing on SEP and FRAND issues.

Before that, Apple, Google, Nokia, and ZTE had also established their own litigation teams in Europe, staffed with European lawyers. Other Chinese mobile phone manufacturers such as Xiaomi and Oppo have also maintained in-house teams in Europe for some time. Unlike Huawei and ZTE, however, they have opted for experts from China.

Increasingly complex landscape

Global SEP law is becoming ever more complex. With the Unified Patent Court now handling many SEP proceedings, the situation is increasingly challenging. Companies no longer rely solely on external counsel. They are bringing in in-house experts with litigation experience to manage these multifaceted and legally complex cases. These lawyers also conduct licensing negotiations and represent their companies’ positions within the industry and in the political arena.

These in-house moves usually follow the same pattern. A mobile communications company is looking for new employees. A young lawyer is looking for a new challenge. They usually know each other – ideally, they have already worked together on a case. They quickly reach a deal.

In-house broadens horizons

Eelco Bergsma (37) already had a close working relationship with his new employer. One could say Ericsson was something of a favourite client. In 2024, Bergsma and Taylor Wessing senior partner Wim Maas launched a campaign for Ericsson against AsusTek at the UPC’s local divisions in Lisbon and Milan. The team, which includes main representative Kather Augenstein, is also defending Ericsson against three actions brought by Motorola and Lenovo.

“At Taylor Wessing I had led a few high-profile cases in the UPC and we were at the thrust of shaping UPC case law, which was of course very exciting,” Bergsma recalls. “But when the opportunity came by to work from within Ericsson, with which I already had a good relationship, and to be involved in Ericsson’s global litigation strategy — including the UPC — I knew that this was something I simply could not turn down.”

In less than 20 days, Bergsma will take on the role of director of assertion, reporting to Vice President of Patent Assertion and Enforcement Robert Earle, who is based in the US. Bergsma will continue to operate from the Netherlands and coordinate European patent litigation. UPC cases will form a significant part of his work. Although Bergsma’s position is new, Ericsson already has a strong patent litigation team in Europe. But it comprises mostly patent attorneys, whereas Bergsma is a lawyer.

Bergsma does not know exactly what to expect in his new role, but he remains curious. “I can now broaden my horizons, see what the commercial side of patent litigation looks like and be part of the global perspective of SEP licensing and the related patent litigation strategy,” he says.

Staying abreast of decisions

Armin Schwitulla, lead litigation counsel (EU) at Nokia, and Thomas Dreiser (44) at Huawei have been frequent visitors to the UPC’s courtroom in recent months. They have been following important UPC cases very closely on behalf of their companies. Both companies also had their own cases at the new court: Huawei vs Netgear over wi-fi routers and Nokia vs Amazon over streaming services.

Schwitulla (38) joined Nokia in June 2021. Before that, he was a senior associate at Bardehle Pagenberg. He believes the UPC has made Europe even more relevant in licensing disputes within the mobile communications industry. “The court is staffed with top judges, has a good cost structure and efficient procedures, and in the end we get predictable decisions.” Over the past two years, one of Schwitulla’s tasks has been to familiarise himself with the new court’s decisions. “You always have to be up-to-date and at least know all the decisions on FRAND,” says Schwitulla.

Movers, shakers and policymakers

“The UPC has made litigation strategies much more complex because you now have to coordinate your own arguments even more closely. But this coordination work across borders is also what makes my job so fascinating for me,” says Dreiser.

Since the UPC’s launch, both in-house lawyers have travelled extensively — not only in Europe but also internationally — attending negotiations and conferences. “The FRAND space is very politically charged. I have to constantly represent Huawei’s position and liaise with key players such as other companies, lawyers and academic representatives,” says Dreiser.

This is known as policymaking. As the EU Commission had planned to introduce a new system to improve the setting of FRAND rates for SEP portfolios, companies like Huawei, Ericsson, and Nokia lately had a great deal to contend with. As owners of large portfolios, they were not enthusiastic about the EU Commission’s intentions. The in-house lawyers of SEP holders were busy behind the scenes during this time and made no secret of their views at conferences.

The bottom line

“SEP holders who do not have their own in-house lawyers in the key jurisdictions are making a mistake,” Schwitulla asserts. “We in-house lawyers ensure better results through collaboration with the litigators and more cost-efficient processes.”

Dreiser shares a similar view. He believes that large companies without their own litigation departments in Germany and Europe would not achieve optimal results. “You can’t put litigation exclusively in the hands of external lawyers, at least not in global patent disputes,” he says.

The main difference between his work and that of a trial lawyer is the strategic thinking, Dreiser explains. By this he means, for example, the licence agreement, which he must always keep in mind. “Because in the end, what counts for the company is the result, which in my case is the licence.”

Schwitulla explains, “You also have to treat it as a business case, which you can see from the fact that I first have to convince my management that it’s economically worthwhile to go to court.” In his in-house role, Schwitulla feels more responsibility than he did as a lawyer at a law firm. “I am responsible for the successful completion of a project.”

Business shifts to Europe

Experienced litigators moving in-house is nothing new. However, it has become increasingly common. Companies are creating more and more of these positions, especially in Europe, because that is where the action is.

The UPC began operating in June 2023 and is now attracting a considerable number of high-stakes SEP cases. The UK is not part of the UPC system, but the UK High Court has nevertheless established itself as the global court for setting FRAND rates. Two globally relevant courts are therefore located in Europe.

Clemens Heusch is arguably one of the longest-serving in-house representatives at a mobile communications company. He joined Nokia in 2008 as head of European litigation. Today, he is global head of dispute resolution and a well-known figure in the global patent community. Before that, he worked as an associate in the Düsseldorf patent team of Bird & Bird. During this time, he helped represent Nokia in the dispute with IPCom — the first major NPE battle before German patent courts.

Heusch’s move to Nokia was not only a career boost for him, it also strengthened Bird & Bird’s ties with one of its most important clients.

DLA Piper and Apple also had a working relationship when Munich-based DLA Piper lawyer Sonja Bohusch moved to Apple full time in January 2023. Prior to the move she spent a year on secondment at the iPhone maker. Bohusch now works under the US litigation department head Collette Reiner Mayer.

A phenomenon becomes a trend

The list of in-house movers goes on. Ralf Uhrich spent almost four years as an associate at Quinn Emanuel Urquhart & Sullivan, litigating for Google before moving to the US firm’s biggest client. Bohusch and Uhrich were their companies’ first patent litigators in Europe — the anchors, so to speak, for the US department in an increasingly important market.

ZTE hired Juliane Buchinski as lead IP litigation counsel Europe in 2015. She previously worked as a senior associate at Hogan Lovells, the law firm that represented ZTE in the landmark case against Huawei before the CJEU.

Former lawyers from Bardehle Pagenberg in particular seem to have filled many in-house positions. Thomas Dreiser and Armin Schwitulla are the most recent examples. In November 2022, former Bardehle Pagenberg partner Alexander Haertel moved to German mobile communications provider Deutsche Telekom. In his role as cluster lead patent he now oversees all of the company’s patent issues.

Bardehle Pagenberg is not exactly known for its close relationships with Nokia, Huawei or Deutsche Telekom. However, having alumni at various industry giants is no disadvantage for the law firm. Most law firms have an interest in maintaining good contact with former employees now working in-house – some even actively place them in important positions. This is known as outplacement.

Commercial impact of patent cases

Most former law firm employees do not regret their move in-house. Many have worked in-house for several years and, like Clemens Heusch, have gone on to have highly successful careers.

What Dreiser appreciates about his work, in contrast to his previous role as a lawyer, is that he no longer has to think in terms of billable hours. His responsibilities include licensing negotiations, litigation support, policymaking, and patent prosecution.

Schwitulla says, “The work as an in-house litigator is characterised by legal and economic content in an international context. In my view, this makes the work very interesting and more varied than that of a pure patent litigator, who concentrates predominantly on national court disputes.”

Alongside his law studies, Schwitulla always had an interest in business administration and even considered doing a parallel business degree and an MBA. In the end, however, he opted for an LL.M. in London. “To be successful as an in-house litigator, you should be interested in law and business management topics,” says Schwitulla.

What Schwitulla particularly enjoys about his current work is the international aspect. This includes the international team at Nokia, working with lawyers in Europe, Asia and America, but also the challenge of keeping Nokia’s arguments in a case consistent across jurisdictions.

Dreiser is fascinated by the run-up to and aftermath of a patent case. “Litigation is often preceded by years of licensing negotiations, and at the end of a court case you just have a piece of paper, namely a judgment, but still no licence agreement in your hand.”

The court proceedings are only a small part of the overall process that he supervises as an in-house lawyer, Dreiser explains. “Life as a patent litigator in a law firm is exciting, but it mainly consists of drafting and court work.”

More choice for young talent

Dreiser advises young lawyers interested in patent litigation to start by working in a law firm to learn the necessary courtroom skills. Those who prefer to work in licensing or policy could also start directly in a company.

For prospective patent lawyers, working in this field has become a genuine and diverse career alternative. “You can choose between litigation, including licences and policy, but also soft IP such as trademark, copyright and design law,” says Dreiser.

Young lawyers also have the option of moving to the legal department with a role outside of IP law. “You don’t usually have this choice and flexibility in a law firm,” Dreiser explains. In addition, there is usually no strict up-or-out policy in-house.