JUVE Comment

This patent practice is traditionally well positioned for infringement proceedings when it comes to advising and litigating for German SMEs from a range of sectors. Clients benefit from its close ties to other patent teams in the CMS network; the German practice coordinates cases with these for regular client Erbe (medical products) and Leifheit (kitchen scales).

By collaborating with international offices, the team has raised its visibility for international clients. US carmaker Tesla was a new client last year and Chinese mobile communications company TCL has now followed suit, relying on CMS in large-scale proceedings. CMS thus had the chance to demonstrate its SEP and FRAND experience. The firm is also seen in disputes over patents from a broad spectrum of technologies – from medical technology, pharma and household appliances to defence technology and solar technology. In addition to Jinko Solar, another solar cell manufacturer now counts on the team. Great potential lies in particular in disputes over IP rights for renewable energies, as CMS is one of the leading firms in Germany for advice to the energy sector. Here, the team can make greater use of the firm’s own contacts and get into position in this promising market. The same goes for pharma, since CMS also boasts an excellent German practice for the healthcare sector.

Strengths

Litigation with a broad technical spectrum.

European set-up

With offices in all the important UPC locations, the firm has a good setup for the European patent court as well as for cross-border disputes, even if the individual teams are not at the top of the market in each country. The firm’s work on integrating the worldwide CMS network over the past few years has been slow to bear fruit.

However, it is seeing results in some cross-border litigation work, as illustrated by the cooperation between the UK and German teams to advise Jinko on solar technology. Various CMS offices are also conducting numerous proceedings against competitors for Leifheit.

Within the CMS network, the various CMS firms also make use of the services of the patent prosecution practice, which is a subsidiary of British firm CMS Cameron McKenna Nabarro Olswang and therefore located in London. Further potential for CMS to carve out a stronger position for international pharma litigation lies in this firm’s contacts among some long-standing and high-profile prosecution clients from the pharma sector, including Kymab and Foundation Medicine. This is all the more the case as CMS has an excellent pharmaceuticals and healthcare practice in Germany and could leverage these contacts more for the patent practice. Competitors like Simmons & Simmons and Allen & Overy are further ahead on this score.

Team

7 partners, 8 counsel, 12 associates

Specialties

Large IP group focusing on trademarks and unfair competition. In technical protection rights, mainly litigation as well as advice on R&D cooperation, licences and trade secrets. Advice on the interface with antitrust.

Clients

Litigation: TCL/TCT (defendant) against Philips over mobile communication patents (public knowledge); Sky and Comcast (defendants) against Promptu over satellite and broadband TV systems; Jinko Solar (defendant) against Q-Cells over solar technology; Leifheit (claimant) against various competitors over kitchen carts; Häfele (claimant) in patent dispute in Russia and Turkey over furniture fittings; Fine Decor (defendant) in opposition over films for furniture; regular litigation for Erbe, Elmos Semiconductor, Honeywell, Cooper Standard, Stanley Black & Decker, Tesla. Advice: Enpro on R&D cooperations; auto manufacturer on FTO analysis.