JUVE Comment

This small patent team is well positioned for litigation and licensing advice and has continued its strategic realignment. NPE suits hardly play any role at all now. In line with the overall firm’s direction, industrial clients predominate; the patent team mostly represents these as defendants. More and more mobile communications manufacturers are calling on the Noerr team; it currently works for TCL against NPEs in several mobile communications cases. The team also works for HTC and Xiaomi in this field.

Ralph Nack and team are very active advising large German carmakers on the development of industry standards, partly owing to the firm’s strong connections among these companies. Nevertheless, this year, too, the patent team was unable to get a look in in the major connected cars suits. This is still prevented by Nack’s longstanding work for SEP holders, the current opponents of the carmakers, especially since the competition from top firms on the user side is fierce.

In pharma cases, too, the practice is often seen on the side of defendants due to its intensive work for generics manufacturer Kirka and its subsidiary TAD. Here, regulatory aspects play a key role, and the patent team works closely with the firm’s pharma lawyers.

To cope with extensive litigation and advice across a broad technical spectrum after the loss of a salary partner last year, the team quickly ramped up its associate headcount. Noerr also appointed a counsel with expertise in pharma cases and trade secrets to salary partner. This emphasises the Noerr partnership’s commitment to the patent team, although the firm is otherwise geared towards big-ticket M&A work.

Strengths

Mobile communications litigation including SEP and FRAND issues. Licence agreements.

European strategy

As part of a nationally independent firm, the patent team is limited to forging a pan-European alliance for cross-border disputes. The Lex Mundi network only offers limited opportunities. On the other hand, the firm has close ties to patent teams in similar firms in the Netherlands and France. These, however, demonstrate just as little hunger for closer cooperation as the Noerr team. The firm will only be able to put itself forward for cross-border disputes through its professional expertise for the time being.

Recommended individuals

Ralph Nack (“highly experienced, especially in terms of strategy”, competitor)

Team

3 partners, 4 associates

Specialties

Besides trademarks and unfair competition, IP activity has a clear focus on patent litigation. Contract drafting, licences, strategic advice, transactions as well as trade secrets.

Clients

Litigation: TCL (defendant) against VoiceAge over LTE language coding; TCL (defendant) against MPEG-LA over AVC codex; TCL (defendant) against Sisvel over DVBT-2; HTC (defendant) against OneButton over Android feature; Sound United (defendant) against Philips over audio coding; AIM Sport Vision (claimant) against Supponor and SportFive over ad overlays in TV broadcasts; Centripetal Networks (claimant) against Cisco over network security solutions; Kirka/TAD (defendant) against Daiichi over blood pressure medication OlmeAmlo; German car manufacturer (defendant) against patent holder over electric motors. Advice: Schunk (claimant) on suits over ultrasonic welding technology in Chinese courts against Chinese manufacturer; standards organisation on FRAND policy over connected cars patents; German toy manufacturer and German weapons manufacturer on FTO analysis; German pharmaceutical company on employee invention program, licences and R&D cooperation; R&D company on patents, cooperation and technology transfer.