Boris Kreye, LL.M.

I am partner in our IP practice group in Munich. Also, I am Co-Head of the IP Practice group of Bird & Bird. As a patent litigator, I obtained extensive experience in leading and handling multi-jurisdictional patent disputes over the years and decades. I represent national and international clients both on the offensive and the defensive side.

I appear before the UPC, all German patent infringement courts, the Federal Patent Court in Munich and the European Patent Office (EPO). I have particular expertise in coordinating international patent disputes in multiple countries and before the UPC, both for plaintiffs and defendants.

Over the years I have been involved in several high-profile cases. My areas of expertise include life sciences, consumer electronics mobile communications, SEP and FRAND, automotive and nano-technology. I have represented leading companies from the US, Japan and Europe in these industries.

Moreover, I represent clients in oppositions and nullity proceedings before the EPO, the German Patent and Trade Mark Office, the Federal Patent Court and the Federal Supreme Court. Furthermore, I am listed as a WIPO arbitrator.

Besides advising clients in all other IP matters, particularly in trademarks, unfair competition law and design rights, I also have experience in assisting and representing clients in ICC arbitration proceedings and evidence proceedings under the Hague Convention (mostly in connection with the US litigation).

I have been publishing articles in legal magazines and I also act as a conference speaker at international conferences, such as the Fordham IP conference, IPO and other business conferences.

• Representing a Japanese multinational corporation manufacturing imaging and optical products in a series of patent infringement proceedings and enforcement activities regarding counterfeits of toner cartridges. Obtaining leading decisions from the Court of Appeals and the Federal Supreme Court on doctrine of exhaustion.
• Leading a series of proceedings between a leading US manufacturer of medical devices and competitors for more than 10 years, including multiple patent infringement and opposition proceedings regarding cardiac valve prostheses, and coordination of multinational offensive and defensive strategies.
• Representing a global tech-company in the enforcement of multiple SEPs against a mobile phone manufacturer including FRAND defence.
• Representing a big mobile phone company in offensive and defensive cases against SEP holders, including FRAND defence.
• Representing Germany's largest applied research organisation in an international ICC arbitration about the ownership of patents relating to AAC technology. Winning the case for the client resulting in the successful defence of a monetary compensation claim. Representing the client in numerous proceedings and contractual matters involving audio and video coding technology.
• Enforcement of a patent relating to a neck-warming system ("Airscarf") against several car manufacturers. Obtaining landmark decision on "doctrine of equivalence" from the Federal Supreme Court.
• Representing a US company manufacturing automobile components in patent infringement proceedings against a competitor regarding lorry brakes, including parallel opposition and nullity proceedings.
• Representing a Japanese manufacturer of automotive parts in several patent infringement proceedings regarding wiper drives, including various nullity proceedings. Successful conclusion of settlement.
• Representing a US tech-company in numerous patent infringement and validity proceedings against several companies in the consumer electronics field for the use of EPG, smart TV and media patents. Conclusion of multiple settlement agreements with defendants for the clients.
• Representing a US company specialised in the touch feedback technology in infringement proceedings against a smartphone manufacturer regarding the tactile feedback technology. Successful conclusion of settlement agreement.
• Preparation of a freedom-to-operate opinion and assessment of the infringement risk of 40 patents of a competitor, including possible work-around solutions for the subsidiary of a Japanese conglomerate.