JUVE Comment

The well-positioned patent team of this European IP boutique owes its current visibility in the French market to the SEP suits for NPEs Intellectual Ventures and IPCom. Frontman Julien Fréneaux has a good reputation for his experience in extensive telecoms cases. Despite a setback at the Paris patent court, Intellectual Ventures is showing great perseverance and loyalty to Bardehle. This case, currently the largest litigation series in the telecoms sector, is unlikely to be over any time soon and will keep the team busy for a long time to come.

But the focus on these two series of proceedings is hindering the small team’s efforts to reel in more work. Bardehle’s reputation in the French market for mobile communications cases is impeccable, therefore the goal must be to consistently retain clients, especially in other sectors like mechanical or life sciences patents – ideally more often in cooperation with the strong German practice.

With the hire of two experienced patent attorneys in 2021 Bardehle underscored its ambitions of establishing a strong mixed team with a litigation focus in France and of branching into the life sciences sector. But the French practice has not succeeded in growing the patent attorney team since then. Bardehle recently strengthened its lawyer team in Paris by appointing an associate from its own ranks as partner. The team must also continue to grow to enable expansion into other sectors in addition to handling future UPC cases.

Strengths

Experienced patent litigation for NPEs.

European set-up

Bardehle prepared early for the UPC launch, not only with its successful mixed approach. Bolstering the German practice with three well-known litigators at once and opening a Hamburg office demonstrates Bardehle’s ambitions to play a leading role in the European market, especially before the UPC.

The new additions gave Bardehle a boost above all in mobile communications litigation, where the German practice has recently established itself firmly on the side of implementers such as Xiaomi, Oppo and one or two carmakers. Their intensive relationships with US tech companies like Apple, Cisco, Microsoft and Qualcomm are also likely to fuel this.

The German practice has yet to share this work with its French colleagues. The only instruction in common is the long-running litigation for Intellectual Ventures against mobile communications providers in France and Germany. But if the firm wants to make a lasting impact in UPC cases, it will have to do more than bolster its German practice; the German and French teams will need to coordinate their development of work. The Paris office still does not benefit often enough from the German practice’s mobile communications work and both teams are seen too infrequently in high-profile life sciences cases.

With offices in Paris, Munich, Düsseldorf and Hamburg, Bardehle is present at the central UPC venues. But Bardehle has no office in the key litigation cities of Amsterdam and London. The firm will have to keep a watchful eye on the development of the patent courts in both cities, if nothing else because important competitors like European champions Hoyng ROKH Monegier and Hogan Lovells are present here. On the other hand, Bardehle has its own office in Barcelona.

Recommended individuals

Julien Fréneaux (“a good lawyer and a worthy opponent”, competitor)

Team

4 lawyers, 2 patent attorneys, 1 dual qualified

Specialties

Mixed patent practice with a focus on telecommunications and technology.

Clients

Litigation: Intellectual Ventures (claimant) against Bouygues Telecom, SFR, Orange and various suppliers such as Huawei and Broadcom over SEP for DSL; IPCom (claimant) against Lenovo and Motorola over mobile communication patents (Court of Appeal); Cash Systèmes Industrie (defendant) over cash register technology. Prosecution: patent filing for Cardia, Peptinov SAS, Parrot Drones, University of Florida (all public knowledge).