JUVE Comment

This Berlin IP firm underscored its strong position in disputes in work for Chinese mobile communications company Haier against Sisvel before the Federal Court of Justice (Bundesgerichtshof) in much-observed landmark proceedings involving standard essential patents. The firm even filed a constitutional complaint for its client against the controversial, SEP-friendly precedent decision of the highest German patent court – an extremely rare approach in patent proceedings. In the case so far, Gulde & Partner has demonstrated the good cooperation within its mixed team and vast experience in SEP and FRAND issues. Not many mixed firms of this size can do this. The case also underlines the firm’s strong ties with Asian companies, for whom the team files many patents. G&P has offices in Beijing and Yokohama. Litigation work often stems from filing for clients, e.g. in the tobacco industry. The firm is litigating for Imperial Tobacco subsidiary Reemtsma in proceedings involving cigarette packaging; it has long advised the parent company on strategic portfolio management. But the firm is not involved in the current e-cigarette cases, partly because its client has not yet had action brought against it by BAT, currently the main antagonist when it comes to this next-generation technology. A case of such high public interest offers the new, young management team the chance to operate even more visibly. They took over the fate of the firm from the founding partners two years ago. More litigation work for other Asian mobile communications corporations could also help. Gulde, for example, has close contacts in the Samsung Group.

Strengths

Patent prosecution and litigation related to electronics and telecoms patents. Strong presence among Asian companies.

Recommended individuals

Marco Scheffler (“highly experienced in SEP suits”, competitor); patent attorney: Sönke Lorenz (“great for patent filing”, client)

Team

24 patent attorneys, 3 lawyers

Specialties

All-round IP activity. Patent prosecution with two technical specialties in chemicals/pharmaceuticals and electronics/IT. Licences, nullity suits and infringement proceedings, partially with own lawyers.

Clients

Litigation: Haier (defendant) against Sisvel over mobile communications; Reemtsma (defendant) against BAT on revocation case over cigarette packaging; TCT (defendant) against Fraunhofer-Gesellschaft; Wiko (defendant) against Sisvel as well as 3G Licensing and LG (all over mobile communications). Prosecution: Imperial Tobacco (incl. strategic portfolio management) and Fontem Ventures (incl. litigation); filing and oppositions for Autel Robotics, Audi, Robert Bosch, BYD, Siemens, Tasly, Volkswagen, various Samsung subsidiaries. Oppositions for Bundesdruckerei.