JUVE Comment

Working with the Grünecker lawyers, these market-leading patent attorneys conducted three successful series of lawsuits for Broadcom/Avago against VW, BMW and Daimler regarding connected cars patents. The companies settled these in 2020. These suits enabled the small but hard-hitting litigation team to join the ranks of the market leaders. The firm has not been seen in high-stakes SEP suits since the settlements. However, the team nurtures solid ties to Broadcom, and actions against other auto manufacturers are likely. This could help Grünecker raise the visibility of its litigation team further.

Cases involving other technologies have come to the fore in 2021, mostly stemming from the technically very broad prosecution work. The team is currently battling hard for Longi (solar technology), Vestel (video coding standards) and Eurofilters (vacuum filters).

Grünecker was not, however, able to respond to the huge litigation volume by growing its lawyer team, which is small compared to those of the market leaders and has too few partners. This will limit the team in the long term if it wants to gain a stronger foothold in pharma proceedings or conduct several major cases of Broadcom/Avago’s calibre at once.

The prosecution team appointed two non-equity partners from its own young talent, thus strengthening the physics and pharma practice. The latter was a wise move, because although the Grünecker patent attorneys frequently assist companies from the life sciences sector with filing and oppositions, the prosecution practice displays less activity in the pharma sector than competitors like Hoffmann Eitle or Vossius. This will have to change if the Grünecker lawyers are to gain a better footing in pharma proceedings.

Strengths

Well-positioned pan-European prosecution team active in many renowned technical fields. Litigation over semiconductors and mobile telecommunications standards.

European strategy

The firm wants to manage its international presence by itself. With its mixed litigation team and established Munich and Paris offices, Grünecker has very strong foundations for a good presence in cross-border and UPC cases, if the new court ever launches. But with stronger international relationships, especially to UK and Dutch firms, the litigation team could strengthen its position when big-ticket cross-border litigation is awarded. In disputes like those for Broadcom over connected cars, Grünecker has already attracted the attention of international law firms. But for closer cooperation it needs to be more regularly present in such high-profile cases.

Compared to the large international teams at Hogan Lovells, Bird & Bird or Allen & Overy, Grünecker lawyers are still the exception rather than the rule in cross-border disputes. However, through its prosecution work, the firm has excellent contacts to international corporates. Stronger visibility in Düsseldorf could help as well. But an office there is currently not on Grünecker’s agenda, unlike for competitors Vossius and Meissner Bolte.

Recommended individuals

Bernd Allekotte (“competent international expert”, competitor), Ulrich Blumenröder; patent attorneys: Martin Aufenanger, Jens Hammer (“outstanding expertise in healthcare litigation”, competitor), Moritz Höffe, Reinhard Knauer, Thomas Schuster, Heike Vogelsang-Wenke

Team

95 patent attorneys, 9 lawyers

Specialties

All-round IP activity, including copyrights, trademarks and unfair competition. Clear focus on technical protection rights with a broad technical spectrum. Opposition and nullity suits and infringement proceedings with mixed teams.

Clients

Litigation: Vestel (defendant) against HEVC Advance over video coding standard HEVC/H.265; Broadcom/Avago (claimant) against BMW and Daimler over connected cars (settled in 2020); Longi (defendant) against Hanwha Q-Cells over solar technology; Hytera (defendant) against Motorola Solutions over BOS radio technology, e.g. for police; Eurofilters (claimant) against Melita over filters for vacuum cleaners, Skyventures (claimant) against ISG over indoor skydiving technology; German mechanical engineering company (defendant) against US company over sausage slicing machines (all public knowledge). Prosecution: filing and some oppositions for Fuji, Globalfoundries, JFE Steel, Krones, Lear Corp., Microsoft, Nissan, Panasonic, Philip Morris, Rockwell, Samsung, Tyco, Yakazi, Yamaha.