JUVE Patent

Taliens – France 2023

JUVE Comment

The well-positioned Paris patent litigation team of this international IP boutique has a wealth of experience with telecoms and mechanics patents. Partner Jean-Frédéric Gaultier is renowned for telecoms litigation, for regular client ZTE among others. Litigation for the Chinese mobile phone manufacturer has helped him to establish a good name for himself in FRAND matters.

The past year has seen the life sciences sector act as a counterweight to the Paris team’s strong telecoms practice. Veteran Grégoire Triet brought along good contacts in the sector, for example to the Johnson & Johnson Group, which he worked for while a partner at Gide. He left the firm in 2021 after having reached the partner age limit. The client has now engaged him for the first time at Taliens for litigation. The main challenge will be to transfer his excellent contacts to the younger lawyers, so that the firm can gain a permanent footing in the sector. On the other hand, the seasoned lawyer brings a wealth of experience in litigation in other sectors, which could help the boutique to gain a foothold at the UPC. After all, given the relatively small size of the national teams, Taliens will only be attractive for UPC proceedings if the offices closely coordinate their expertise and manpower.

Strengths

Litigation in telecommunications, including SEP and FRAND issues.

European set-up

Taliens is a Franco-German IP boutique with an excellent international set-up that not many IP boutiques of this size can rival. The concept is based on the positioning of two similarly sized teams in Paris and Munich. In Madrid, the firm works closely with the IP firm Baylos.

In pan-European cases Taliens is present mainly in SEP and FRAND litigation. Long-standing client ZTE for instance is relying on both the Munich and the Paris teams. But away from this, the two teams rarely develop instructions together, as an internationally positioned boutique ideally should. Here, rival and market leader Hoyng ROKH Monegier is the point of reference for Taliens. The Johnson & Johnson contact brought by Triet is a good starting point, as it is very likely that the life sciences corporation will take action against generics companies in both countries.

With the UPC launch approaching, a more solid position for both offices in the pharma sector would secure Taliens’ position for as long as it remains unclear whether it will be as active here for mobile communications companies as it has been so far in the national courts.

On the other hand, with its current set-up Taliens could be an especially attractive partner regarding mobile communication cases for UK firms seeking closer ties to the continental European system. So far Taliens does not have its own presence in Italy or the UK, but this could be useful in pan-European cases, especially if it expands its presence in life sciences.

Recommended individuals

Jean-Frédéric Gaultier (“very experienced litigator”, competitor), Grégoire Triet (“he has a very broad understanding of the European market”, competitor)

Team

3 partners, 4 associates

Specialties

Exclusively active in IP. Much patent litigation. Also contract drafting, licences and strategic advice. Trademarks and unfair competition.

Clients

Litigation: ZTE (defendant) against Intellectual Ventures over mobile communications; ZTE (defendant) against WSOU over mobile communications; Shimano (defendant) against Bell over bicycle helmets (ended 2022); Bausch Health (claimant) against the French PTO’s decision to refuse an SPC; Tractel (claimant) against Petzl over a harness system technology; Envases (claimant) against L’Oréal over the packaging of an eye palette; ArcelorMittal regarding knowhow protection; frequent litigation for Johnson & Johnson Group over pharmaceutical drugs.

Location

Paris