JUVE Comment

As a pure IP firm that has internalised the mixed approach like few other German IP firms, Bardehle is a market leader for patent disputes on the lawyer and patent attorney side alike. The firm has a particular strength in semiconductor and telecoms patents. After a long time warming up, the firm has also made the breakthrough into prosecution and litigation in the life sciences sector in recent months.

Not only did 10x Genomics and Amgen entrust the firm with further cases, other pharma manufacturers are preparing for infringement suits or major disputes at the EPO with Bardehle. The proportion of clients from the medical products sector is also rising continuously. AusBio Laboratories and Ethicon Endo Surgery feature on the litigation client list. Although Bardehle is on a strong upward trajectory in the life sciences segment compared to previous years, it has still not drawn level with other market leaders such as Hogan Lovells or Freshfields.

It is a different picture when it comes to suits over high-tech patents, where Bardehle can look back at an extremely successful year, at the centre of which was the work for Oppo, predominantly in active suits against Nokia within a global dispute over 4G and 5G licences. Hogan Lovells is defending Oppo against the Nokia claims. As in the first round of connected cars suits against Daimler, Bardehle is also part of the second wave of suits brought by members of the Avanci patent pool against carmakers. A mixed team is representing a carmaker in another major series of proceedings. The patent attorneys are still working for TomTom to nullify the connected cars patents of Conversant, Nokia and Sharp. The firm also stepped up litigation for regular US client Microsoft in NPE suits.

A look at Bardehle’s regular clients for patent prosecution, which include Apple, Dell, Qualcomm and Nintendo, shows the potential its network still harbours. These are joined by such companies as Cisco, Micron and Nvidia, for which the firm has already litigated in the past. Given such high-calibre work in the high-tech sector, activity for the NPE Intellectual Ventures is slipping into the background. The firm has now positioned itself successfully on the side of implementers.

One setback was the departure of partner Peter Chrocziel, who was best known for his expertise on the interface between patents and antitrust. He reached the age limit and decided to set up his own firm. Bardehle established younger partners to succeed him early on and will now need to raise their market visibility. Johannes Heselberger and Tilman Müller-Stoy are still Bardehle’s dominant names in the market.

Strengths

Patent prosecution and mixed litigation practice primarily for mobile communications (including FRAND) and software patents. Strong European presence and excellent US contacts.

European set-up

Bardehle has used its market leadership in Germany to make a charge on other European markets. The up-and-coming Paris office is especially well positioned and boasts much experience litigating for NPEs, for example Intellectual Ventures. Meanwhile the German practice is more present on the implementer side, where it brings its vast experience in SEP and FRAND cases for Oppo and Xiaomi into play in pan-European series of proceedings. Such instructions are a clear sign that the Bardehle litigators – lawyers as well as patent attorneys – will have a strong presence before the UPC. Their intensive relationships with US tech companies like Apple, Cisco, Microsoft and Qualcomm are also likely to fuel this.

Bardehle prepared early for the UPC launch, not only with its successful mixed approach. It also boasts very close ties to US clients, which not every market-leading patent firm in Germany can say. With offices in Munich, Paris and Düsseldorf, Bardehle is present at the central UPC venues.

But Bardehle has no office in the key litigation cities of Amsterdam and London. The firm will have to keep a watchful eye on the development of both patent courts, if nothing else because important competitors like European champions Hoyng ROKH Monegier and Hogan Lovells are present here. With the growing amount of life sciences litigation, Milan may also be worth considering in the long term, should the northern Italian city win the bid for the UPC central division for pharma and biotech.

Recommended individuals

Johannes Heselberger (“highly competent in defending against patent infringement”, client; “one of the best litigators in the business”, competitor), Tilman Müller-Stoy; patent attorneys: Axel Berger (“technically very competent and easy to work with”, competitor), Christof Karl, Johannes Lang

Team

40 patent attorneys, 26 lawyers

Partner moves

Peter Chrocziel (own firm)

Specialties

Filing across a broad technical spectrum with a growing presence in pharma and biotechnology. Much litigation, coordination and strategic advice on licences and antitrust.

Clients

Litigation: Xiaomi (defendant) against KPN over mobile communication patents; Oppo (claimant and defendant) against Nokia over 5G patents (public knowledge); TomTom against Conversant, Nokia and Sharp in nullity suits against connected cars patents; Intellectual Ventures (claimant) against DTAG, Telefónica and Vodafone; Microsoft (defendant) against Uniloc over network technology; Microsoft (defendant) against ViaTech over digital content; Microsoft (defendant) against Zoe over cloud technology; Dell (defendant) against Neodron, Sonrai Memory and Wsou over software technology (all related to telecommunications); Nintendo (defendant) against BigBen over Wii; Robert Bosch (co-defendant of Audi, BMW and Volkswagen) against Arigna over semiconductors; car manufacturer (defendant) against NPE over connected cars; DWS (claimant) against Formlabs over 3D printer; Cisco Systems (defendants) against Centripetal Networks over computers; Emporia (co-defendant of Conrad Electronic) against Seoul Semiconductor over LEDs; Micron (defendant) against Innovative Memory over volatile storage; Ranpak (claimant) against Sprick and Storopack over paper packaging; Karl Kruse (defendant) against Huber + Suhner over train wifi antennas (public knowledge); BMW (claimant) against London Optical Car Systems in nullity suit over technology for optical transport monitoring; BMW (defendant) against Kickert over vehicle fire extinguisher; 10X Genomics (defendant) against Bio-Rad over microfluidic chips; Amgen (claimant) against Regeneron/Sanofi concerning damages regarding Praluent; Daiichi Sankyo (claimant) against Ratiopharm and TAD Pharma over generics; AusBio Laboratories against competitors over lab technology; Ethicon Endo Surgery against various competitors over medical devices; regularly for Nvidia and Schöck Bauteile (some public knowledge). Prosecution:filing and oppositions for Adidas, Apple, AusBio, Aptiv, Bridgestone, Carl Zeiss SMS, Dell, Dropbox, Ejot, Emerson, Gerresheimer, Hyster-Yale, Jaguar Land Rover, Johnson Matthey, Livinguard, Memorial Sloan Kettering Cancer Center, Mitsubishi Heavy Industries, Nintendo, Qualcomm, Signode, Wago. Advice: Audi, VW (both public knowledge) and Qualcomm; adidas, Aptiv and Jaguar Land Rover on employee inventor compensation and FTO analysis; Bridgestone, Emerson and Signode on FTO analysis.