JUVE Comment

This IP firm’s strongly positioned litigation team traditionally follows a mixed approach. Lawyers and patent attorneys litigate together, chiefly for SME clients like packaging manufacturer Sprick in the design dispute against Activatec. That said, the patent attorneys also work alongside external lawyers in infringement disputes, for instance with Graf von Westphalen for Hörmann against Assa Abloy and with Linklaters for Bundesdruckerei against Credit Card Supplies.

Litigation work like this often stems from the very busy prosecution practice, which files a huge number of patents spanning a broad technical spectrum. While in infringement cases the team above all represents SMEs concerning mechanics and life sciences patents, the list of (occasionally long-standing) prosecution clients includes numerous notable IT corporations – Intel and Microsoft, for example – which are advised on electronics and mechanics patents. Asian companies such as LG and Huawei are also increasingly putting their faith in the team. A variety of universities and companies from the pharma and biotech sector, such as Samsung Bioepis, also count on the expertise of the patent attorneys in EPO oppositions.

But Boehmert has not yet succeeded at transferring these relationships with notable IT companies, some of which have existed for a long time, to the litigation practice for infringement proceedings. The firm is less visible than other mixed teams, such as Hoffmann Eitle and Vossius, and is not seen in large-scale cross-border litigation like these.

The firm did, however, see a rise in advice on life sciences infringement proceedings, for pharma companies from the US and India, for example. And with the well-known litigation for Polytech Health and MED-EL, Boehmert underlined its expertise in medical technology. The firm flanked this development in the litigation practice with the addition of two lawyers.

Strengths

Litigation for SMEs in mechanical engineering, medical devices, electronics and pharmaceuticals. Patent prosecution with renowned technical specialties in electronics, chemicals, pharmaceuticals and biotech.

European set-up

With a mixed team in Munich and an office in Paris, the firm is well positioned for the UPC. Boehmert & Boehmert bolstered this axis by naming a lawyer from the German team head of the Paris office. So far the firm deliberately focuses its lawyer litigation team in Munich. That is surprising since the path to a top position in infringement cases in Germany is nearly always through strong visibility in Düsseldorf – the reason why direct competitors like Vossius and Bardehle are stepping up their Düsseldorf presence. Boehmert is therefore missing its chance to take a greater role in cross-border cases.

The firm is far less visible than competitors in this respect. Although many of its instructions from German SMEs feature cross-border elements – such as Bossauto against 3M or Beauty Union against various cosmetics manufacturers – the team rarely makes an appearance in litigation spanning several countries. The good contacts among medical technology manufacturers harbour much potential here, as companies in this sector often doggedly enforce their patents in more than one country. A prime example here was advice to MED-EL known in the market by a mixed Boehmert team in the German part of a dispute stretching across multiple countries concerning cochlear implants, which could move the firm into the spotlight for such cross-border cases.

Recommended individuals

Heinz Goddar, Jan Krauss, Christian Appelt, Thomas Bittner, Markus Engelhard (all patent attorneys)

Team

44 patent attorneys, 9 lawyers

Specialties

All-round IP activity, including trademarks, unfair competition, copyrights and transaction advice. Patent law focuses on patent prosecution. Large filing practice with broad technical expertise, opposition and nullity suits and infringement proceedings. Licences and R&D contracts.

Clients

Litigation: MED-EL (claimant) against Advanced Bionics over cochlear implants; Polytech Health (claimant) against Silimed over breast implants (both public knowledge); Rittal (claimant) against Eldon over electronic switchboards; Joma (claimant) against Richardt over insulation; Minitüb (claimant) against IMV over technology for animal reproduction; Bundesdruckerei (defendant) against Credit Card Supplies and VTT over passports (public knowledge); Hörmann (claimant) against Kruzik over garage doors; Sprick (claimant) against ActivaTec over packaging; Sprick (defendant) against Ranpak over dunnage conversion machine (settled 2022); Gabo Systemtechnik (claimant) against Dura-Line over laying fibreglass cables (settled 2021); JVC Kenwood (claimant) against HMD, Harman International and smartphone manufacturers over DVDs, displays and streaming (all settled 2021/2022); University of Heidelberg in entitlement action against Molecular Insight Pharmaceuticals (settled 2021). Prosecution: filing and oppositions for Ab Initio, BauerandMore, Blink, Gennova Biopharmaceuticals, Hewlett Packard, Johann Wolfgang Goethe University of Frankfurt, King Faisal Specialist Hospital and Research Centre, Lupus Electronics, Panasonic, Proline, RWTH Aachen, Senju Pharmaceutical. Oppositions for Samsung Bioepis, Novo Nordisk. Filing for Antpool Technologies, Arbiom, Borgers, Fuji Electric, Gira Giersiepen, Huawei, Intel, LG Energy, Kubota, Microsoft, Sprick, Red Bull, Regensburg University, Technical University of Munich (all public knowledge).