Robert Lundie Smith

Partner, Solicitor
London, EIP Europe LLP

Robert Lundie Smith is qualified as a Barrister and Solicitor and practises as a Solicitor Advocate in EIP Legal. His practice focuses on contentious and non-contentious IP matters. Alongside his law degree, Robert has an MSci in chemistry and a PhD in chemistry/chemical physics, and before coming to law Robert was a research fellow at the University of Lund in Sweden.

Robert has extensive experience in advising in disputes (both High Court and Court of Appeal) relating to a wide range of IP issues and related contractual matters (including patents, SPCs, trademarks, copyright, designs and confidential information) and in a wide range of industries ranging from pharmaceutical/biotechnology to telecommunications, from consumer goods to the arts. Robert also has experience of proceedings before the Court of Justice of the European Union and regularly advises on matters that form part of wider, multi-national, disputes.

Experience

  • Unwired Planet International Limited vs Huawei, Samsung and Google. Acted for Unwired Planet in its successful first instance enforcement of EP (UK) 2,229,744 against Samsung & Huawei. Currently acting for Unwired Planet in relation to the associated appeal proceedings. (link)
  • Unwired Planet International Limited vs Huawei, Samsung and Google. Acted for Unwired Planet in its successful first instance enforcement of EP (UK) 1 230 818 against Samsung & Huawei. Currently acting for Unwired Planet in relation to the associated appeal proceedings. (link)
  • Unwired Planet International Limited vs Huawei, Samsung and Google. Acting for Unwired Planet in its enforcement of EP (UK) 0,989,712 against Google, Samsung & Huawei.
  • Good Technology v MobileIron and AirWatch. Acted for Good Technology Inc. in patent proceedings before the High Court as part of multinational patent litigation in the field of mobile device management and security against MobileIron and AirWatch on successful settlement with AirWatch. (link)
  • Novartis AG & Anr -v- Johnson & Johnson Medical & Anr. Robert was part of the UK solicitor team before the High Court and senior associate in the solicitor team before the Court of Appeal, acting for Novartis in a multination patent dispute regarding extended wear contact lenses.
  • Kirin Amgen Inc. -v- Lietuvos Respublikos valstybinis patentu biuras. Robert was the senior associate in the solicitor team acting for Kirin Amgen before the Court of Justice of the European Union regarding supplementary protection certificates.
  • Porton Capital Technology Funds & Ors -v- 3M. Robert was part of the solicitor team representing Porton Capital in a contractual dispute relating to medical devices for diagnostic tests.
  • Vestergaard Frandsen v Bestnet Europe Ltd & Ors. Robert was instructed to act as junior counsel for Bestnet before the High Court in an action for breach of confidence concerning impregnated mosquito nets.
  • Armour Group PLc -v- Leisuretech Electronics Pty Ltd. Robert was instructed to act as junior counsel for Leisuretech in a patent dispute concerning home entertainment systems.
  • W L Gore & Associates GmbH v Geox SPA. A patent action concerning ‘breathable’ shoes. As a pupil barrister Robert worked on the High Court trial under Thomas Moody-Stuart (now QC) and Richard Meade QC. (link)
  • Whirlpool Corporation & Ors v Kenwood Ltd. A trademark and passing off action concerning the iconic KitchenAid mixer and Whirlpool’s associated trademarks (including a 3D mark). As a pupil barrister Robert worked on the High Court trial under Thomas Moody-Stuart (now QC) and James Mellor QC. (link)
  • Ancon Ltd v ACS Stainless Steel Fixings Ltd. A patent action concerning a channel assembly for use in the construction of high rise buildings, as a pupil barrister Robert worked on the High Court trial under James St. Ville and Daniel Alexander QC. (link)
  • H Lundbeck AS v Generics & others*. One of a series of enantiomer patent cases that Robert gained experience of during his pupillage, Robert was involved in the 2008 appeal proceedings under Michael Tappin QC. (link)
  • Autonomy Corporation Ltd v The Comptroller General of Patents. An appeal from the UKIPO concerning the computer program and presentation of information patentability exclusions (worked on during pupillage under Michael Tappin QC). (link)
  • Symbian Ltd v Comptroller General Of Patents. An appeal from the UKIPO concerning the computer program exclusion from patentability (worked on during pupillage under Charlotte May (now QC)) (link)
  • Murphy v Media Protection Services Ltd; The Football Association Premier League Ltd v QC Leisure & Ors. A well-known series of cases concerning copyright issues associated with the use of foreign satellite decoder boxes to access UK based satellite broadcasts. As a pupil barrister, Robert worked on the High Court copyright litigation for the FAPL (link) and appeal proceedings before the High Court for MPS (link) under Charlotte May (now QC) and James Mellor QC.
  • JHP Ltd v BBC Worldwide Ltd & Anor. A copyright action concerning Dr Who and the Darleks, as a pupil barrister Robert worked on the High Court trial under Charlotte May (now QC). (link)

Recent work

  • Unwired Planet International Limited vs Huawei, Samsung and Google. Acting for Unwired Planet in patent and FRAND litigation against Google, Samsung & Huawei (patents concerning Android, 2G, 3G and LTE technologies) including conduct of technical trials A, C, and E (see “Experience” for more details and links to judgments).
  • Good Technology v MobileIron and AirWatch. Acting for Good Technology Inc. as part of multinational patent litigation in the field of mobile device management, including conduct of Good’s UK patent enforcement proceedings (see “Experience” for more details).

Published articles

  • 12 June 2018
    IP Pro, The man who can be sued (link)
  • October 2016
    IP Magazine, Takedown trolls and copyright censorship
  • September 2016
    World Trademark Magazine, Weighing up your options - Trademark counsel from law firms across 20 jurisdictions in Europe provide an overview of the performance of their countries' EU trademark courts (link)
  • May 2016
    World Trademark Review Daily, Preliminary ruling could extend effects of coexistence agreements (link)
  • January 2016
    World Trademark Review Daily , Olympus falls in figurative ‘3D’ mark case.
  • June 2015
    World Trademark Review Daily , OHIM held to have erred in finding likelihood of confusion between 'black' marks
  • September 2014
    World Trademark Review Daily, Trademark surveys - a phoenix from the flames?
  • July 2014
    World Trademark Review Daily, Perpetual protection for retail design? Apple suceeds before the ECJ
  • January 2014
    World Trademark Review Daily, Pinterest fails to prevent registration of PINTEREST by UK firm
  • September 2013
    World Trademark Review Daily, Samsung v Apple saga: Invalidity division rules on validity of Apple's tablet RCD
  • June 2013
    World Trademark Review Daily, Interflora: High Court considers infringement by broad matching without negative matching?
  • May 2013
    Journal of Intellectual Property Law and Practice, Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?
  • May 2013
    World Trademark Review Daily, Interflora represents victory for brand owners - but how much protection does it really give?
  • April 2013
    Journal of Intellectual Property Law and Practice, UK to be one-stop-shop for non-infringement across Europe?
  • 2013
    Entertainment Law Review , Supreme Court defines “intellectual property” and the scope of privilege against self-incrimination
  • 2013
    Computer and Telecommunications Law Review , Right to First Market within the EEA is Unfettered by Freedom of Movement of Goods
  • September 2012
    World Trademark Review Daily, M&S v Interflora: death of the witness gathering exercise regulation
  • September 2012
    World Trademark Review Daily , Interflora - a further move towards tighter control of witness gathering exercises?
  • June 2012
    World Trademark Review Daily, Court of Appeal interprets Article 91(1) of Community Designs Regulation
  • March 2012
    World Trademark Review Daily, High Court closes litigation floodgates on rehearing Nominet rulings
  • February 2012
    World Trademark Review Daily, Court determines ownership issues in brotherly dispute
  • January 2012
    World Trademark Review Daily, Rugby Board fails to retrieve domain name because it does not contain 'rugby'
  • November 2011
    World Trademark Review Daily, Defendant held to have arrived at same design independently
  • September 2011
    World Trademark Review Daily, ‘Cross-bottling’ found to infringe trademark
  • September 2011
    World Trademark Review Daily, Claimant shows breach of contract through actions amounting to passing off
  • September 2011
    World Trademark Review Daily, Documentation of creative process is key to overcoming inference of copying
  • July 2011
    World Trademark Review Daily, European Commission releases new strategy on IP rights
  • July 2011
    Journal of Intellectual Property Law & Practice, Forum shopping: is the England and Wales Patents Court really a non-starter for patentees?
  • June 2011
    World Trademark Review Daily, High Court clarifies when it will grant permission to adduce survey evidence
  • February 2011
    World Trademark Review Daily, Injunction refused due to greater risk of injustice to defendants
  • January 2011
    World Trademark Review Daily, Damages assessed on 'user' principle available
  • November 2011
    Journal of Intellectual Property Law and Practice, Patents: How much longer can the Aerotel/Macrossan test survive?
  • 2011
    Computer and Telecommunications Law Review , Registered trade mark infringement claims in relation to parallel imports: “Euro-defences” based on the EC Treaty considered
  • 2011
    Entertainment Law Review, ITV Broadcasting Ltd v TV Catch Up Ltd
  • 2011
    Entertainment Law Review , Is Submission of Expert Evidence on Copying of Themes and Sub-Plots a Bar to Summary Judgment?
  • 2011
    European Intellectual Property Review (Volume 33 Issue 12 2011) , Can the SPC Regulation be rendered fit for purpose? – The Court of Appeal Refer more questions to the CJEU
  • July 2010
    World Trademark Review Daily, Threat to market replica vacuum cleaner amounts to passing off
  • October 2010
    World Trademark Review Daily, Court of Appeal considers 'Euro defences' in parallel imports case
  • June 2010
    World Trademark Review Daily, Consultation paper on EU Customs Regulation published
  • March 2010
    Journal of Intellectual Property Law and Practice, Just how ‘anti-patent’ are the UK courts?
  • September 2009
    World Trademark Review Daily, FROM RUSSIA WITH LOVE opposition fails

Education and qualifications

 

  • 2005 — 2007
    Bachelor of Laws, College of Law, London
  • 2006 — 2007
    Bar Vocational Course, College of Law, London
  • 2005 — 2006
    Graduate Diploma in Law, College of Law, London
  • 1999 — 2003
    PhD Chemistry/Chemical Physics, King's College London
  • 1995 — 1999
    Chemistry - Master of Science (MSci), King's College London

Career history

  • 2014 — present
    Partner, EIP
  • 2012 — 2014
    Senior Associate , EIP
  • 2009 — 2012
    Associate, McDermott Will & Emery
  • 2008 — 2009
    IP Barrister, practicing out of 8 New Square, Lincoln’s Inn
  • 2007 — 2008
    Pupil Barrister, 8 New Square
  • 2003 — 2005
    European Union Marie Curie Postdoctoral Research Fellow, Department of Chemical Physics, University of Lund, Sweden
  • 1999 — 2003
    Demonstrator in Organic, Inorganic and Physical Chemistry , King’s College London

Awards and recognition

  • IAM Patent 1000, 2018. “Lundie Smith drafts excellent statements of claim. He’s very analytical, extraordinarily diligent and easy to work with – someone who really goes the extra mile for clients and whose reputation is well deserved.” (link)
  • WTR Trademark 1000, 2018. Robert Lundie Smith is "a star of the future" and has "clear and concise advice and accurate risk assessments". (link)
  • Legal 500, 2017. (link)
  • IAM Patent 1000, 2017. Chemistry PhD Smith is “technically excellent, with a good eye for the detail. Tactically, he runs his cases very well, positioning himself to extract every ounce of benefit he can from his client’s position, and with the ability to change gears and direction when opportunities present themselves”.
  • Legal 500, 2016. Robert is an "exceptionally skilled litigator". (link)
  • IAM Patent 1000, 2016. Robert “drafts fantastic statements; he is really analytical and, moreover, easy to work with”.

Speaking engagements

  • 15 July 2016
    UAL Graduate Futures Week, You own your ideas: protecting your work and intellectual property (link)
  • 25 April 2016
    Society of Chemical Industry, What a chemist needs to know about patents
  • 2 March 2016
    King’s College London, Pharmaceutical Sector Spotlight: Patent Law
  • 3 April 2014
    Society of Chemical Industry, What a chemist needs to know about patents
  • October 2013
    Own-It, How to enforce your IP rights (link)
  • 23 April 2013
    UAL Student Enterprises and Employability workshop , Trademarks
  • 19 April 2013
    Equity, IP Small Claims Track
  • March 2013
    Central St Martins College, IP Overview workshop
  • 13 February 2013
    Central St Martins College, IP Overview workshop

Additional information

  • Called to the Bar of England and Wales July 2007
  • Contributor to Kluwer Patent Blog
  • Regular advisor in ‘Own-It’ pro-bono IP clinics