JUVE Comment

This well-positioned litigation practice operates with a rather untypical setup for an international firm. Firmly anchored among German Mittelstand companies in the technology sectors, the German team is gearing itself more and more towards large-scale proceedings, which it coordinates with the patent teams of other European and Asian CMS firms. Litigation with other CMS firms in several European countries runs particularly smoothly for regular clients Erbe (medical products) and Leifheit (kitchen scales). Tesla also hired several European CMS practices, for instance in the German connected cars suits. The firm’s expertise in FRAND matters was evidenced by work for a Chinese mobile communications manufacturer in actions brought by two SEP holders.

On top of this, the team is continuously active for Jinko Solar concerning solar technology. The settlement of the dispute over crucial technology for the German bottle deposit system brought yet another major case to a close. Here, on the side of beverage manufacturer Gerolsteiner, CMS showed that regular clients have long put their trust in the team for high-stakes proceedings, instead of turning to other firms as used to be the case.

With a partner retiring in Stuttgart – the nucleus of the German patent team – and the growing importance of the Munich patent court, CMS is now stepping up cooperation between both offices. This is a logical move as Munich promises greater visibility and higher end work than Stuttgart. The next step is to establish a visible partner in Munich.

The German team is thus getting set, together with the other CMS offices, to take on internationally positioned firms like Simmons & Simmons or Taylor Wessing. While CMS’ network structure, in its difference to the integrated competitors, has not done it any harm as such, the two competitors are far better positioned than CMS when it comes to pharma suits. There lies untapped potential in the CMS network here, especially via UK firm CMS Cameron McKenna.

Strengths

Litigation with a broad technical spectrum.

European strategy

With offices in all the important UPC locations, the firm has a good setup for the European patent court as well as for cross-border disputes, even if the individual teams are not at the top of the market in each country. The firm’s work on integrating the worldwide CMS network over the past few years has been slow to bear fruit.

However, it is seeing results in some cross-border work, especially in its patent prosecution arm. Although the teams are not fully integrated, they are beginning to work together more often. Various CMS offices are conducting numerous proceedings against competitors for Leifheit. Several CMS offices have been hired by Tesla or Jinco Solar to handle disputes over connected cars and solar technology.

Within the CMS network, the firms also make use of the services of the patent prosecution practice, which is a subsidiary of British firm CMS Cameron McKenna Nabarro Olswang and therefore located in London.

Recommended individuals

Matthias Eck

Partner moves

Klaus Ikas (retired)

Team

7 partners, 8 counsel, 12 associates

Specialties

Large IP group focusing on trademarks and unfair competition. In technical protection rights, mainly litigation as well as advice on R&D cooperation, licences and trade secrets. Strong focus on the biotech, pharmaceuticals, medical products and mechanics sectors. Advice on the interface with antitrust.

Clients

Litigation: Tesla (defendant) against Conversant over SEPs (settled; public knowledge); Gerolsteiner (co-defendant) against Envipco over reverse vending machines for bottles with refundable deposit (settled; public knowledge); Leifheit (claimant) against various competitors over kitchen carts; Jinko Solar (defendant) against Q-Cells over solar technology; Häfele (claimant) in patent dispute in Russia and Turkey over furniture fittings; Fine Decor (defendant) on opposition over films for furniture; Chinese mobile communications manufacturer (defendant) against two SEP holders over mobile communications patents; regular litigation for Erbe, Elmos Semiconductor, Honeywell, Cooper Standard, Stanley Black & Decker. Advice: Enpro on R&D cooperations; auto manufacturer on FTO analysis.