JUVE Comment

This small Munich patent team, which is well-positioned for litigation and licensing advice, has undergone a radical change of strategy in the past two years. Originally started as a team for NPE litigation, it is moving away from this to provide more support to the industry clients typical of the overall firm. The firm therefore ended its close relationship with patent attorney firm Bosch Jehle, with whom it had initiated many NPE suits. The team gained a great deal of experience in SEP and FRAND issues in these and is now bringing this into play for mobile phone manufacturers like TCL and HTC. Ralph Nack and his team are advising major German auto manufacturers on developing industry standards, partly as a result of the firm’s good carmaker contacts. However, the patent team is not seen in the large connected cars proceedings, as its previous work for NPEs is still causing many conflicts. In addition, the team is still too small to handle such large-scale litigation alone. Thomas Gniadek leaving the firm was therefore all the more of a blow. The departure of the long-time salary partner raises the question of whether the Noerr partnership, which is focused on top-level M&A work, will allow another patents partner. Without one, it will be difficult for the team to reel in work from industrial companies. Such clients, unlike NPEs, demand not only know-how, but also a strong headcount.

Strengths

Mobile communications litigation for NPEs. Licence agreements

European strategy

As part of a nationally independent firm, the patent team is limited to forging a pan-European alliance for cross-border disputes. The Lex Mundi network only offers limited opportunities. On the other hand, the firm has close ties to patent teams in similar firms in the Netherlands and France. These, however, demonstrate just as little hunger for closer cooperation as the Noerr team. The firm will only be able to put itself forward for cross-border disputes through its professional expertise for the time being.

Recommended individuals

Ralph Nack

Team

2 partners, 1 counsel, 3 associates

Partner moves

Thomas Gniadek (to Simmons & Simmons)

Specialties

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

Clients

Litigation: TCL (defendant) against VoiceAge over LTE language coding; HTC (defendant) against OneButton over Android feature; Sisvel (defendant) against IRT over calls for a licence for MP3 technology; Thomson Licensing (claimant) against Pioneer over licence fees; Sound United (defendant) against Philips over audio coding; Centripetal Networks (claimant) against Cisco over network security solutions; TAD Pharma against Gilead over Truvada; Regen Lab (claimant) against Estar Medical over separation of blood plasma; Popsockets (claimant) against various copycats over mobile phone holder; G3 Genuine Guide Gear over ski bindings. Advice: Lippert Components over components for caravans; metering company on industry standards for IoT devices in home technology; German auto manufacturer on licensing programmes for cars and trucks; international consortium of car manufacturer industry standards over Car2Car communication.