JUVE Comment

This mixed IP firm is a market leader for both patent litigation and patent prosecution. The firm solidified this position with two crucial moves. Firstly, it brought on board the young partner Alexander Haertel, who is experienced in mobile communications suits, as a partner for the Düsseldorf office, giving Bardehle Pagenberg  its first litigator at the site of this important patent court for some years. There were only two patent attorneys here before this, which put Bardehle Pagenberg at a disadvantage against most of the leading litigation firms who have much larger teams of lawyers in Düsseldorf. Secondly, the firm is getting into gear for litigation in the life sciences sector. This had long been uncharted territory in Bardehle Pagenberg’s otherwise top-class client pool. Following early success with Amgen and 10X Genomics, work for the sector has now ramped up considerably with a Japanese pharma manufacturer and other drug manufacturers. But Bardehle Pagenberg is not yet on a par with the major pharma practices, e.g. Hogan Lovells. This would require the partners being seen more in cases involving important active ingredients – ideally on the side of the originators. The firm does play in the top league, however, when it comes to mobile communications and FRAND suits. The litigation team easily manages the balancing act between representing NPEs like Intellectual Ventures on the one hand and mobile communications manufacturers like Blackberry and Microsoft on the other. In addition, few other firms are as well represented in connected cars suits as Bardehle Pagenberg. The team not only litigated for BMW against Broadcom, but also for Robert Bosch and TomTom as interveners for Daimler in the suits by Avanci pool members. The technically broad prosecution practice is an ideal basis for this. For years, Bardehle Pagenberg has been appearing in proceedings with teams of patent attorneys and lawyers more successfully and consistently than nearly all other mixed firms, with the possible exception of Bird & Bird. Bardehle Pagenberg also stands out from most German IP boutiques for its international focus, with teams in Barcelona, Paris and Verona. Only Hoyng ROKH Monegier is slightly ahead due to its deeper integration within the European team. Building up more litigation expertise at its other European offices would be a logical next step in the firm’s development if it is to keep step with the other market leaders in the competition for major cross-border proceedings.

Strengths

Patent prosecution and mixed litigation practice primarily for mobile communications and software patents. Strong European presence and excellent US contacts.

European strategy

Bardehle Pagenberg is on its way to becoming a top European firm. In Germany this mixed IP firm remains a market leader in both patent litigation and filing. The Paris patent litigation team is well positioned and best known for its vast experience litigating for NPEs. Bardehle Pagenberg has a mixed litigation approach, internationally oriented lawyers and offices at the key UPC venues in Düsseldorf, Munich and Paris and smaller offices in Barcelona and Verona. But the firm does not have an office in London. Due to the uncertainty surrounding the UPC, there seems to be no plans to boost its presence in London at the current time. If the court launches without the UK, however, an office in Amsterdam would be worth considering due to the firm’s focus on mobile communications.

Recommended individuals

Johannes Heselberger (“excellent strategist who is always thinking two steps ahead”, client), Tilman Müller-Stoy, Peter Chrocziel (“SEP expert and shrewd litigator”, client). Patent attorneys: Christof Karl (“pleasant and successful cooperation”, client), Johannes Lang

Team

33 patent attorneys, 20 lawyers

Partner moves

Alexander Haertel (from Kather Augenstein)

Specialties

Extensive activity in trademarks and unfair competition and technical protection rights. Filing on a broad technical spectrum. Much litigation, coordination and strategic advice on licences as well as antitrust.

Clients

Litigation: BMW (defendant) against Broadcom over connected cars patents; Robert Bosch and TomTom (both co-defendants of Daimler) against Conversant, Nokia and Sharp over connected cars patents; Intellectual Ventures (claimant) against DTAG, Telefónica and Vodafone; Blackberry against Nokia; Microsoft against Philips (all over mobile communications); Nintendo against Broadcom over chip technology; SK Hynix and Hewlett-Packard (both defendants) against Netlist over JEDEC standard (all public knowledge); 10X Genomics (defendant) against Bio-Rad over microfluidic chips; Amgen (claimant) against Regeneron/Sanofi over Praluent; Gerresheimer (defendant) against Roche Diabetes Care over injection device; Adidas over sneakers; Wago (claimant) against Molex over electric-connecting terminals. Prosecution: filing and oppositions for Adidas, Apple, Aptiv, Carl Zeiss, Dell, Jaguar Land Rover, JTI, Nintendo, Qualcomm, Samsung, Wago. Advice: Audi, VW and Juno Therapeutics on licences, Cisco Systems on R&D contracts and pre-litigation