JUVE Comment

On the one hand, the well-positioned patent litigation practice of this German full-service firm represents its core base of SME clients within a broad technical spectrum. On the other, the team is especially active for generics manufacturers in proceedings over traditional pharma patents, biosimilars and SPCs. It is litigating, for example, for two companies in suits by originators involving a multiple sclerosis drug.

This expertise was transferred years ago from of counsel Thomas Bopp to next-generation litigator Matthias Sonntag, who is now leading the patent team. Under his leadership, the practice is now present in a wide technical spectrum of litigation and advisory activity, as shown by work for Procter & Gamble concerning consumer goods, as well as for southwest German technology leaders like Kärcher and Robert Bosch.

Gleiss attracted much attention for its intensive work for Supponor and Sportfive over hardware-based technology for electronic perimeter advertising in stadiums. This battle is also taking place in London and has the potential to spread to other countries where sports advertising has a high relevance.

The team does not, however, operate at the forefront of the market in the major mobile communications proceedings, even though it has experience in SEP and FRAND disputes. The most prominent client in this segment is a French IT corporation, though this is no longer being sued before the German courts by NPEs for mobile communications patents.

Strengths

Litigation over pharmaceuticals patents.

European set-up

Gleiss’ patent litigation team is active from time to time in pan-European suits. This is always limited to the German proceedings and mostly in connection with pharma patents, for instance for a European generics company over a multiple sclerosis drug. Gleiss’ best-known international case at present, however, is most likely the dispute for Supponor and Sportfive against AIM Sport Vision.

The gateway to such cases for the patent team is the extensive litigation experience of its partners. As part of a nationally independent full-service firm, the Gleiss team cannot rely on a steady stream of work from its own international IP network, like Hogan Lovells or Hoyng ROKH Monegier can. Indeed, the practice must rely on the international relations to Gleiss’ best friends. With the exception of Gide in Paris, these do not have any established patent litigation know-how and Gide also works with other patent teams in German law firms. In addition, the Gleiss patent team has established its own relationships to some well-known IP boutiques in London and other UPC countries. But these are not exclusive.

When it comes to UPC litigation in Germany, Gleiss is present with its own offices at the locations of all four local chambers. But the team is currently too small compared to the market leaders. The partnership of the more deal-focused firm could make a lasting commitment to its own patent practice with a further partner appointment, and thus promote a specialisation by the partners in individual technical fields, as is common in the market.

Recommended individuals

Matthias Sonntag (“simply excellent”, competitor), Herwig Lux

Team

2 partners, 4 counsel, 5 associates, 1 of counsel

Specialties

All-round advice on IP with a strong focus on patent litigation. Employee invention law, trade secrets, R&D cooperations, licences and M&A transactions. In SEP claims, advice on the interface with antitrust.

Clients

Litigation: frequent litigation for Kärcher, Procter & Gamble and French IT company; Supponor and Sportfive (defendants) against AIM Sport Vision over hardware-based technology for electronic perimeter advertising in stadiums (all public knowledge); General Atomics/Diazyme/DiaSys (claimant) against Brahms over biomarker procalcitonin (settled in 2021); European pharma company regarding arthritis drug containing active ingredient adalimumab; German generic drug companies (defendants) against innovator over multiple sclerosis drug; German SME (defendant) against Korean competitor over solar technology. Advice: ongoing to Bosch, Procter & Gamble; Sony on mobile communications and HbbTV.