JUVE Comment

This Berlin IP firm underscored its good position in disputes on the side of Chinese mobile communications companies. In the German landmark proceedings involving SEP and FRAND issues, Gulde litigated for Haier against Sisvel in two cases up to the Federal Court of Justice (Bundesgerichtshof). After defeats here, Gulde even pushed the dispute as far as the Federal Constitutional Court (Bundesverfassungsgericht). The SEP and FRAND expertise of the patent attorneys and lawyers is now attracting many clients from Asia. TCL, ZTE and Hisense defended themselves against NPE suits with Gulde’s assistance. Young partner Martin Thimm is now conducting this work. This bears witness to the success of the generation change since the firm founders left two years ago.

The firm’s strong ties to Asian companies chiefly stem from its busy filing activity for Chinese and Korean companies from the mobile communications and electronics sectors. One high-profile prosecution client is the Samsung Group. The firm’s own offices in Beijing and Yokohama are also important for its close relationships with Asian companies. Thanks to Asian clients like Tasly, Gulde now has access to pharma companies, including European industry giants which had previously been inaccessible.

Litigation work often arises from filing patents for clients, for example from the tobacco industry. The firm litigated for Imperial Tobacco subsidiary Reemtsma in actions involving cigarette packaging and has long advised the parent company on strategic portfolio management. It is not involved, however, in the current e-cigarette cases.

Strengths

Patent prosecution and litigation related to electronics and telecoms patents. Strong presence among Asian companies.

Recommended individuals

Marco Scheffler; patent attorneys: Sönke Lorenz, Martin Thimm (“extremely good technical understanding in mobile commnunications”, competitor)

Team

24 patent attorneys, 3 lawyers

Specialties

All-round IP activity. Patent prosecution with two technical specialties in chemicals, pharmaceuticals, electronics and IT. Licences, nullity suits and infringement proceedings, partially with the firm’s own lawyers.

Clients

Litigation: Haier (defendant) against Sisvel; Hisense (defendant) against IP Bridge, NEC, Panansonic and Tagivan; TCL (defendant) against Panansonic; TCT (defendant) against Fraunhofer-Gesellschaft; Wiko (defendant) against Sisvel and LG (all over mobile communications); TCL (defendant) against LG over digital video broadcasting technology; Reemtsma (defendant) against BAT on revocation case over cigarette packaging; regular litigation for Fontem Ventures. Advice: strategic portfolio management for Imperial Tobacco. Prosecution: patent filing and oppositions for Imperial Tobacco, Fontem Ventures, Apotronics, Autel Robotics, Audi, Robert Bosch, BYD, SDI, Siemens, Tasly, Volkswagen, various Samsung subsidiaries; oppositions for Bundesdruckerei.