JUVE Comment

Very active for a long time for NPEs, competitors are keen to describe Noerr as a “pure NPE firm” in patents. But the team, which is highly visible in patent litigation, is seeing a transformation. In line with Noerr’s actual orientation as an industry firm, it is increasingly working for production companies, e.g. for generics manufacturer TAD Pharma in the pharmaceuticals sector and for an auto manufacturer in mobile communications. Advisory work has always centred on industry companies, a clientele for whom the patents team is also looking to litigate. But this plan is putting the close ties to the patent attorneys at Bosch Jehle to the test. Both teams became known for litigation in NPE suits, which gave them both much experience with mobile communications suits and FRAND issues that few competitors have.

Strengths

Mobile communications litigation for NPEs.

European strategy

As part of a nationally independent firm, the patents team struggles to forge a pan-European alliance for the UPC. The Lex Mundi network only offers limited opportunities. But the team is preparing for the new requirements with strategic foresight: firstly, Noerr wants to balance out the lack of its own litigation experts at the key UPC venues with close ties to small but hard-hitting patents firms in Amsterdam, London and Paris. But tangible success has yet to materialize, probably because the UPC starting date is still unclear. Secondly, the firm has been working closely with the Bosch Jehle patent attorneys for years to offer technical expertise. Thirdly, Noerr is tapping synergies with its own litigation practice (▹dispute resolution), to tackle UPC cases with large teams.

Recommended individuals

Dr. Ralph Nack.

Team

1 equity partner, 2 salary partners, 4 associates

Practice

Besides trademarks and unfair competition, IP activity has a clear focus on patent litigation. Contract drafting, licences, strategic advice and transactions.

Clients

Litigation: Wilan against Sony regarding LTE patents; Thomson Licensing against Pioneer concerning licence fees; Sound Unit against Philips regarding audio coding; Data Scape concerning cloud technology; Parker Vision regarding mobile communications and RFID chips; TAD Pharma against Gilead concerning Truvada; Sanofi against Merck regarding licence payment; Popsockets concerning cell phone holder. Advice: Streetscooter on development and sale of delivery trucks.