JUVE Comment

As one of the largest IP firms in Germany, Grünecker is positioned in the German market for patent disputes with a leading team of patent attorneys and a team of lawyers that is close behind the top of the market. The firm sets itself apart from competitors by appearing in proceedings with mixed teams with a consistency similar to Bardehle Pagenberg. The technologies covered range from solar technology for Longi Solar, to traditional mechanical engineering for a manufacturer of food cutting machines, to SEP and FRAND actions for Vestel.

The litigation team recently celebrated a huge win for the latter, when Düsseldorf Regional Court classified a licence offer of an SEP holder as non-FRAND for the first time and dismissed the lawsuits of members of the Access Advance patent pool.

But beyond this, the Grünecker team is found less often in the major SEP battles than Bardehle Pagenberg or other market-leading firms. In pharma and biotech suits, too, the firm is a less frequent guest than many leading outfits. However, cases involving other technologies have come to the fore in 2022, mostly stemming from the technically very broad prosecution work.

Grünecker is currently not, however, able to respond to the huge litigation volume by growing its lawyer team. Recently the IP firm’s litigation team appointed a lawyer as non-equity partner. This is a first step in the right direction, but Grünecker’s litigation team still has too few partners and associates.

In contrast, the market-leading prosecution team saw much stronger growth. One setback was the retirement of the renowned Martin Aufenanger. But Grünecker countered this in good time by appointing two new equity partners in the mechanical engineering sector and one in physics. It also bolstered the pharma practice with a non-equity partner. The latter was a wise move, because although the Grünecker patent attorneys frequently assist companies from the life sciences sector with filing and oppositions, the prosecution practice still displays less activity in the pharma sector than competitors like Hoffmann Eitle or Vossius.

Strengths

Litigation concerning mechanics, semiconductors and mobile communications standards. Well-positioned pan-European prosecution team active in many renowned technical fields.

European set-up

Grünecker is involved in the German proceedings of international patent disputes, like those for Vestel against the Access Advance patent pool or for Longi Solar over solar technology, for which it always assembles mixed teams. For Vestel, the firm even coordinated the entire dispute. It also conducts many proceedings on its own, however, for German companies strong in the technology sectors or companies from its international prosecution client list in Germany. Some of these suits have the potential to be UPC cases.

The firm and above all litigator Ulrich Blumenröder have therefore been preparing intensively for the new court for some time now. Here the firm wants to manage its international presence by itself. With its mixed litigation team and established Munich and Paris offices, Grünecker has very strong foundations for a good presence in UPC cases. But with stronger international relationships, especially to UK and Dutch firms, the litigation team could strengthen its position when big-ticket cross-border litigation is awarded. Stronger visibility in Düsseldorf could help as well. But an office there is currently not on Grünecker’s agenda, unlike for competitors Vossius and Meissner Bolte.

Recommended individuals

Bernd Allekotte (“he is calm and seasoned and able to explain complicated concepts in simple terms”, client), Ulrich Blumenröder; patent attorneys: Jens Hammer (“quick, reliable and competent”, competitor), Moritz Höffe, Reinhard Knauer, Thomas Schuster, Heike Vogelsang-Wenke

Team

90 patent attorneys, 9 lawyers

Partner moves

Martin Aufenanger (retired)

Specialties

All-round IP activity. Clear focus on technical protection rights with a broad technical spectrum. Opposition and nullity suits and infringement proceedings with mixed teams.

Clients

Litigation: Vestel (defendant) against Access Advance patent pool over video coding standard HEVC/H.265 including FRAND; ECI (co-defendant of Deutsche Telekom) against Intellectual Ventures over LTE patents; Longi (defendant) against Hanwha Q-Cells over solar technology; Hytera (defendant) against Motorola Solutions over BOS radio technology, e.g. for police; Eurofilters (claimant) against Melitta over filters for vacuum cleaners; Rehau (defendant) against Bulthaup over plastic edges for furniture; US internet corporation (defendant) against NPE over mobile communications; German mechanical engineering company (defendant) against US company over sausage slicing machines. Prosecution: filing and some oppositions for Edwards Lifesciences, Fruitcore Robotics, Fuji, Globalfoundries, Identy, JFE Steel, Krones, Lear Corp., Magna, Microsoft, Nissan, Panasonic, Philip Morris, Roche Diabetis Care, Rockwell, Samsung, Tyco, Vestas Wind Systems, Weber Maschinenbau, Yamaha (some public knowledge).