JUVE Comment

The German litigation practice of this international full-service firm remains an important challenger to the market-leading practices. Unlike in previous years, however, the lawyers’ work is no longer dominated by suits concerning pharma and biotech patents, but by significantly more suits over high-tech and mobile communications patents. In late summer 2020, TW landed a coup with the preparation of a class action for German chip manufacturer Globalfoundries against competitor TSMC and 19 of its customers, including Apple and Google. The suit was settled before the Taylor Wessing team could show what it can do in the courtroom. Nonetheless, this was the first time in a long while that the firm was at the centre of a major patent battle. The firm can also be seen in other high-tech cases, e.g. for ZTE and Asus over mobile communications and Fraunhofer-Gesellschaft over semiconductors. The patent team played a central role for Hexal regarding pemetrexed, one of the year’s highest profile pharma suits. Traditionally, the German team has an excellent name for litigation involving medical product and drug patents, in cooperation with the London office. It works for both generics manufacturers and originators alike. Abbott, Mylan and Pfizer are among the regular clients of the European practice. Recent months have been eventful in staffing terms: the experienced Philipp Krusemarck from DLA Piper bolstered the Munich team as salary partner. He brings experience in mobile communications and electronics and thus closes a gap, as Munich had previously focused on pharma suits. This reinforcement is strategically sound, given the fact that Munich Regional Court (Landgericht) has become considerably more important lately for SEP suits and FRAND issues – especially in high-profile cases involving connected cars. However, Taylor Wessing does not play a role in these at present.

Strengths

Litigation related to pharmaceuticals and telecoms. Good contacts in China and Japan.

European strategy

Taylor Wessing continues to strengthen its pan-European cross-border offering, with a strong presence in London, Munich and Düsseldorf. As well as its well-positioned teams in Amsterdam, Eindhoven and Paris, the firm also has a small offering in Brussels. In France the patent team’s visibility is not as high as some of its main European competitors such as Hogan Lovells and Bird & Bird. Although the firm has a presence in most of Europe’s important patent venues, Taylor Wessing is, compared to the market-leading practices, seen less often representing key clients in pan-European disputes over multiple offices. With its litigation for mobile communications company Asus in the Netherlands, UK and Germany, the practice has taken an important step towards redressing the historic emphasis on pharmaceutical cases. Taylor Wessing’s offices are not fully integrated and its teams develop joint work between offices less frequently than some of the market leaders. Nevertheless, the patent team’s setup in all major jurisdictions is a good base for more cross-border work. However, unlike Bird & Bird, Hogan Lovells and some other firms, Taylor Wessing has not built up its own patent-attorney practice yet.

Recommended individuals

Christoph de Coster, Gisbert Hohagen (“highly experienced in the courtroom”, competitor), Dietrich Kamlah, Roland Küppers (“very good cooperation”, competitor), Christian Lederer, Anja Lunze

Team

7 equity partners, 5 salary partners, 6 associates, 1 of counsel

Partner moves

Philipp Krusemarck (from DLA Piper)

Specialties

All-round activity in IP. In patents, activity focuses on infringement proceedings. Very close cooperation with the European patent team and international life sciences practice. Also licensing and cooperation contracts. Trademarks and unfair competition.

Clients

Litigation: regularly for Mylan, Nichia; Globalfoundries (claimant) against TSCM over computer chip technology (settled 2019); ZTE (defendant) against Sisvel over mobile communication; Asus (defendant) against Philips over mobile communications; Fraunhofer Gesellschaft (claimant) against Schneider Electric and Delta over semiconductors; Agfa (claimant) against DuPont over printing plates (settled 2019); Abbott (claimant) against Edwards Lifesciences over repair equipment for heart valves; Hexal/Sandoz (defendant) against Eli Lilly over pemetrexed; Metatron (claimant) against VW over gas injection system; REC (defendant) against Hanwha/Q-Sells over solar technology; Sprick (defendant) against Ranpak over paper technology; Truma (claimant) against GOK over camping equipment; JTI over manufacture of cigarette filters; Asian mobile phone manufacturer (defendant) against NPE over displays. Advice: Hexal, JTI and Pfizer/Hospira regarding FTO analysis.