Juve Patent has published its UK rankings for 2021 in which EIP's litigation and filing practices receive recommendations.
EIP’s litigation practice rises in the rankings to four stars (out of five) with editorial commenting that ‘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.’ The editorial mentions the team’s notable success in the UK Supreme Court and that the ruling had ‘made headlines around the world in summer 2020’. It also notes that ‘few other UK prosecution teams have seen such strong growth as EIP’ and that the firm ‘has become a role model for how to develop a mixed patent practice with patent attorneys and lawyers.’
Head of litigation, Gary Moss is listed as a leading individual for litigation with “terrific, deep knowledge of FRAND matters both within the UK and internationally” who is a “no nonsense litigator who gets the job done in a very tenacious way”.
To complement the firm’s patent litigation ranking, our patent filing team is recommended for medical technology, digital communication and computer technology, and electronics. In addition, several partners are listed as recommended individuals: Andrew Sharples for digital communication and computer technology; Darren Smyth for chemistry and digital communication and computer technology; and Jerome Spaargaren for digital communication and computer technology and electronics.
EIP has been listed in JUVE’s 2020 ranking of litigation lawyers in Germany.
JUVE noted EIP’s strength in “litigation for NPEs concerning mobile communications SEPs” and “good starting position for cross-border disputes in particular for US clients in the mobile communications sector”.
In addition to the firm ranking, EIP partners, Christof Höhne and Florian Schmidt-Bogatzky, were listed as Recommended Individuals. One client interviewed by JUVE said about Florian that he is “hard working, aggressive and creative, very good at finding the best strategy”.
EIP’s JUVE Patent Germany 2020 ranking can be viewed here.
On October 23, 2020 EIP secured a significant victory for client Conversant Wireless in Germany. EIP successfully asserted a Standard Essential Patent (SEP) for Conversant against Stuttgart carmaker Daimler in a dispute that will have repercussions across the sector.
The Munich Regional Court found that LTE (Long-term evolution) capable cars sold by Daimler infringed the German designation of EP 2 934 050. The decision forms part of ongoing proceedings around connected cars which is shaping the current SEP litigation landscape in Germany.
Daimler has faced a number of proceedings against various patent holders for mobile technology for connected cars. The infringed patent in the Conversant case relates to establishing a connection with a core network element and was held essential by the court to the LTE standard.
Besides legal questions, the proceedings involved complex competition law topics: The fair, reasonable, and non-discriminatory (FRAND) defence raised by Daimler included arguments that any licensing should take place in the supply chain. Correspondingly, several suppliers of different tiers joined the litigation as interveners, including Continental, Harman, Bosch, Bury and TomTom group companies.
The Regional Court rejected this defence as well as a requested referral to the European Court of Justice to further clarify licensing obligations in the supply chain. In consequence, the Court inter alia awarded an injunction, which is subject to posting a bond and preliminary enforcement. The judgment can be appealed.
The ruling marks the third time that Daimler has been defeated in as many months, after previous losses against Nokia and Sharp.
Dr. Christof Höhne, Partner at EIP, said: “We are very happy with the judgment by one of Germany`s most active courts in electronics cases. The decision highlights obligations of parties in SEP licensing negotiations and, in effect, sanctions practicing hold-out.”
EIP has been highly rated in the 2021 edition of Chambers & Partners UK.
Researchers highlighted EIP for its “excellent patent prosecution and oppositions practice” and its “highly capable trademark and designs offering” and notes the “much admired in-house patent litigation team”.
Sources comment: "They consistently make significant efforts to achieve desirable goals for the clients," while another praises the firm's "depth of knowledge."
The litigation team garners praise as "Their experience in FRAND issues is pretty much unrivalled."
Jerome "is a quick and deep thinker, and his ideas are full of originality."
Gary is a “very experienced litigator with a good feel for what is a good or bad point” and "is extremely bright and is always cognisant of achieving the objectives."
Further details on Chambers UK 2021 rankings can be viewed here.
Last Friday, 16October 2020, judgment was handed down by Mr Justice Birss in the High Court, London, in the first of four technical trials listed in EIP client Optis’ UK patent litigation and long-standing licensing dispute against Apple. Two non-technical trials focusing on licencing issues are also in the court’s diary.
The four technical trials all concern patents from Optis’ portfolio of standard essential patents. In this first test of the strength of that portfolio Optis were successful in establishing that its patent (EP (UK) 1,230,818) was valid and essential to the process of handing over a mobile telephone from a 4G or a 3G network to a 2G network (a process important in ensuring network coverage as mobile phone users move between locations).
The patent had previously been successfully asserted against Huawei and Samsung but had been subjected to new arguments from Apple who relied upon prior art that had not featured in that earlier litigation.
The trial was highly unusual in that it commenced on 5 October with closing argument finishing on the 13 October, yet the Judge produced his fully reasoned judgment, running to 214 paragraphs in less than three days.This was because the 818 patent expired on 20 October and a pre-trial hearing, the court had indicated that, were the patent to be found valid and essential, the Court would consider granting an injunction against Apple for the short, remaining life of the patent.In the event this did not prove necessary as shortly before judgment was handed down Apple undertook that, subject to certain the Court making additional findings at a subsequent trial scheduled for July 2021, and the Court determining that one or more Optis patents was valid and essential, Apple would enter into a FRAND licence as determined by the Court.
Gary Moss, EIP’s Head of Litigation said: “Technical success at the first opportunity combined with the undertaking provided by Apple is a significant step forward in Optis’ battle to secure proper compensation for Apple’s use of its portfolio consistent with its ETSI undertakings. EIP is pleased to have been able to represent Optis in this matter and to help it achieve this early success in these proceedings and a step forward in the long running dispute.”
Counsel acting for Optis were Adrian Speck Q.C., Mark Chacksfield Q.C. and Thomas Jones all of the Chambers of Mr James Mellor Q.C. 8 New Square, Lincolns Inn.
The EIP team on the technical case was Robert Lundie Smith, Joanne Welch, Jack Dickerson, David Brinck, Jerome Spaargaren, Sunny Bansal and Stephanie Harris.
The EIP team dealing with non-technical / injunction issues was Gary Moss, Kathleen Fox Murphy, and Catherine Howell.
Arty Rajendra of Osborne Clarke acted as co-Counsel on the case.
 Optis Cellular Technology LLC, Optis Wireless Technology LLC and Unwired Planet International Ltd v Apple Retail UK Ltd., Apple Distribution International Ltd and Apple Inc. (HP-2019-000006).