JUVE Comment

The well-positioned patent litigation team of the German full-service law firm represents its core Mittelstand clients across a broad technical spectrum. The team is particularly active for generics manufacturers in cases concerning classic pharma patents, biosimilars and SPCs. Its longstanding defense for Diazyme concerning biomarkers and for a European pharmaceuticals manufacturer of an arthritis drug are the team’s hallmarks. This expertise was transferred years ago from of counsel Thomas Bopp to the younger generation around partner Matthias Sonntag. The latter has managed to widen the technical spectrum of litigation and advisory activity, as shown by work for Procter & Gamble concerning consumer goods and a Japanese electronics corporation, as well as for southwest German technology leaders like Kärcher and Robert Bosch.

The team does not, however, operate at the forefront of the market in the major mobile communications proceedings. Although it has experience in SEP and FRAND disputes, regular Gleiss client Daimler chose competitor Quinn Emanuel to defend it against Nokia. But the Gleiss patent team does have an ace up its sleeve with the renowned antitrust practice, especially in SEP actions. In cooperation, the two practices advised Daimler on the antitrust aspects of Europe’s highest-stakes connected cars proceedings. The patent team will have to capitalise on this combination more often in the future, especially because suits from other SEP holders against further carmakers are likely.

To create the ideal conditions to handle such major proceedings, the patent team will have to raise its headcount, mainly at partner level. The Gleiss team is small compared to the market leaders. The partnership of the more deal-focused firm could make a lasting commitment to its own patent practice with a further partner appointment and thus promote a specialisation by the partners in individual technical fields, as is common in the market.

Strengths

Litigation over pharmaceuticals and telecoms patents.

European strategy

With its currently slim partner setup and the strategically restricted scope as part of a national, independent full-service firm, the patent team remains limited for more involvement in cross-border disputes, as well as for UPC proceedings.

In addition, it must rely on the international relations to Gleiss’ best friends. With the exception of Gide in Paris, these do not have any established patent litigation know-how and Gide also works with other German patent firms. In addition, the Gleiss patent team has established its own relationships to some well-known IP boutiques in important UPC countries. In London, for example, the firm has good ties to renowned firms, but these are not exclusive.

Recommended individuals

Matthias Sonntag (“makes complex technology seem simple”, competitor), Herwig Lux

Team

2 partners, 4 counsel, 6 associates, 1 of counsel

Specialties

All-round advice on IP, especially in trademarks and unfair competition, and patent litigation. Employee invention law, trade secrets, R&D cooperations, licences and M&A transactions. In SEP claims, advice on the interface with antitrust.

Clients

Litigation: Daimler (claimant) in complaint at EU commission regarding Nokias use of SEPs; General Atomics/Diazyme/DiaSys (claimant) against Brahms over biomarker procalcitonin (PCT); Japanese electronics corporate (co-defendant) in litigation over LEDs; European pharma company (defendant) regarding arthritis drug containing active ingredient adalimumab; frequent litigation for Kärcher and Procter & Gamble (all public knowledge). Advice: ongoing to Bosch and Procter & Gamble; Asian electronics corporate on mobile communications and HbbTV.