JUVE Comment

The well-positioned patent practice at this German full-service law firm has built its reputation through extensive litigation for core SME clients such as Kärcher. This expertise has now yielded considerable success in UPC proceedings, including cases for Trumpf and CeraCon. The team led by Matthias Sonntag regularly handles strategic advice, pre-litigation licensing negotiations and patent litigation. The practice, like the firm as a whole, demonstrates an excellent specialisation in pharmaceuticals, frequently representing key clients such as Hexal and Sandoz in extensive proceedings. Its regular work for long-standing client Procter & Gamble also reflects the firm’s deep roots in the consumer goods sector.

While litigation concerning mobile communications and FRAND has played a less prominent role recently, a team regularly advises automotive industry clients on SEP and FRAND issues. To strengthen its position in this area, Gleiss Lutz will need to expand its team. Developing a second partner appears the logical next step, following Noerr’s approach with two salary partners.

European set-up

Gleiss Lutz made its UPC debut representing TGI Supponor and Sportfive regarding hardware-based technology for electronic perimeter advertising in sports stadiums. The team had handled the case nationally for two years before running parallel UPC proceedings

Like many national full-service firms, the small team initially made a slower start in UPC work compared to internationally established practices such as Taylor Wessing or Hogan Lovells. The Gleiss Lutz team is now involved in four additional cases: for Topcon concerning optical devices, CeraCon regarding foam sealing technology, Abbexa over medical diagnostic technology, and – its most significant UPC matter – the dispute between Trumpf and IPG concerning industrial lasers.

Technology-focused SMEs currently provide the team’s strongest foundation at the new court. Over recent years, the team has also gained valuable experience conducting pan-European proceedings alongside other law firms, particularly in life sciences. Should the industry overcome its hesitancy towards the UPC, this could present another significant opportunity for growth.

Strengths

Litigation concerning pharmaceuticals and for SME clients.

Recommended individuals

Matthias Sonntag (“has the talent of presenting complex matters in a simple way”, “very effective litigator”, competitors), Herwig Lux

Team

12 lawyers

Clients

Litigation: TGI Supponor and Sportfive against AIM Sport Vision over hardware-based technology for electronic perimeter advertising in stadiums; Topcon against Optopol over optical devices; D-Link against Paimira over wi-fi patents (ended 2024); Everlight against Nichia regarding damages in dispute over LEDs for mobile devices; Procter & Gamble against Valutis over electronic toothbrushes; Hexal against Biogen over MS drug Tecfidera. Advice: ongoing to Gideon Richter and Alfred Kärcher; Procter & Gamble on FTO, licencing and strategic advice; Sony on mobile communications and HbbTV.