JUVE Comment

As a pure IP firm that has deeply internalised the mixed approach, Bardehle is among the market leaders for patent litigation on the lawyer and patent attorney side in equal measure. The firm is extremely strong in telecommunications patents. It represents many well-known industrial companies including BMW, Robert Bosch, TomTom, Microsoft and AirFrance/KLM, but also NPEs like Intellectual Ventures. Bardehle masters this balancing act magnificently, building up a wealth of knowledge on FRAND issues. This is a forward-looking specialty, as advice on networking in other industry sectors will increase.

The firm is also developing a growing presence in the pharma sector, for instance litigating for Amgen. The client base here is nowhere near as solid as in telecommunications proceedings, putting the firm behind competitors like Bird & Bird or Hoyng ROKH Monegier in this sector.

Some clients were more restrained in filing patents given the economic situation during the coronavirus pandemic. But this brief setback has been overcome. Some clients have even caught up on filing already. Bardehle’s overall development has not been damaged.

Strengths

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

European strategy

Bardehle has used its market leadership in Germany to make a charge on other European markets. The Paris office is especially well positioned and boasts much experience litigating for NPEs, e.g. Intellectual Ventures. It has now added industrial names to its client base, as litigation for Robert Bosch against an NPE shows. The up-and-coming French team is now following the example of the integrated German practice. To catch up to the top of the market, it could use a boost from experienced lawyer or patent attorney laterals since this teamwork for clients still offers immense potential, something which the firm has increasingly been exploiting.

The Spanish practice also made strides and strengthened its client contacts. Bardehle did, however, close its prosecution-focused Verona office, as it was unprofitable. The move still comes as a surprise as Bardehle, like other German firms, is litigating in a growing number of cases in Italy. The firm has a well-oiled network for this.

To catch up to European champion Hoyng ROKH Monegier the firm will certainly need to widen its presence. It has no office in the key litigation cities of London and Amsterdam. Now is not the ideal time for London due to the uncertainties surrounding Brexit, but the Netherlands could be worth considering.

Recommended individuals

Johannes Heselberger, Tilman Müller-Stoy (“strong litigation skills and involvement in technically complex proceedings”, competitor), Peter Chrocziel; patent attorneys: Christof Karl, Johannes Lang

Team

37 patent attorneys, 26 lawyers

Partner moves

Bastian Best (own firm)

Specialties

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

Clients

Litigation: BMW (defendant) against Broadcom over connected cars patents (settled in 2021); Robert Bosch and TomTom (both co-defendants of Daimler) against Conversant and Nokia over connected cars patents (settled in 2020/21); TomTom (co-defendant of Daimler) against Sharp (settled in 2021) and IP Bridge over connected cars patents; Intellectual Ventures (claimant) against DTAG, Telefónica and Vodafone; Microsoft (defendant) against Philips over tablets and streaming technology; Microsoft (defendant) against Uniloc over network technology; Microsoft (defendant) against ViaTech over digital content; Microsoft (defendant) against Zoe over cloud technology; Dell (defendant) against Neodron and Wsou over software technology (all related to telecommunication); Nintendo (defendant) against Avago over chips; Nintendo (defendant) against BigBen over Wii (all public knowledge); DWS (claimant) against Formlabs over 3D printer; AirFrance/KLM and Cathay Pacific (defendants) against Aeritas over mobile boarding passes; Cisco Systems (defendants) against Centripetal Networks over computers; Emporia (co-defendant of Conrad Electronic) against Seoul Semiconductor over LEDs; Micron (defendant) against Innovative Memory over volatile storage; Rogers (claimant) against KCC over DCB Master Cards; Ranpak (claimant) against Sprick and Storopack over paper packaging; Topseat (claimant) against Hornbach over toilet seat lids; Emerson (defendant) against Sipco over industry automisation; 10X Genomics (defendant) against Bio-Rad over microfluidic chips; Amgen (claimant) against Regeneron/Sanofi over Praluent; Daiichi Sankyo (claimant) against Ratiopharm and TAD Pharma over generics; regularly for Ethicon Endo, Schöck Bauteile. Prosecution: filing and oppositions for Adidas, Apple, AusBio, Aptiv, Bridgestone, Carl Zeiss, Dell, Dropbox, Ejot, Emerson, Fico Cables, Ficosa, Gerresheimer, Hyster-Yale, Jaguar Land Rover, JTI, Kverneland, Livinguard, Memorial Sloan Kettering Cancer Center, Mitsubishi Heavy Industries, Nintendo, Qualcomm, Samsung, Signode, Theva Dünnschichttechnik, Wago (all public knowledge). Advice: Audi, VW (both public knowledge), Juno Therapeutics, Sana Biotechnology on licences.