JUVE Comment

The German patent litigation team of this European IP boutique lives up to its reputation as one of the market leaders and was a hit in numerous high-stakes infringement proceedings in various sectors. The team is represented in mobile communications and pharma – two crucial domains for patent disputes – in equal measure. The firm underscored its leading role in pharma suits in work defending BioNTech against claims by CureVac and Moderna over mRNA patents. These are the first high-profile disputes involving the technology on which the Covid-19 vaccine is based.

The renowned team of partners can also be seen in a range of top-level disputes over SEPs in mobile communications technology, for Apple (co-counsel with Hogan Lovells), among others. Hoyng ROKH is thus gradually shifting the emphasis of its work from SEP holders to users of standardised technologies, as last year’s activity for Huawei and Lenovo also showed.

In other sectors, the firm is still largely active for patent holders. For Heckler & Koch, Hoyng ROKH successfully enforced a patent against competitor C.G. Haenel. It also achieved a key victory in the second instance for Vorwerk against retailer Lidl in a dispute over Thermomix kitchen appliances.

Like no other IP boutique, Hoyng ROKH boasts an unusually high number of very renowned partners. The patent practice specifically opts to bring up talent through its own ranks rather than hire laterals. Hoyng ROKH stringently continued this strategy by appointing an equity partner and counsel Carina Höfer, who is already highly acclaimed in the market.

Strengths

Cross-border litigation over pharma, electronics and telecom patents, including SEP and FRAND suits.

European set-up

The firm sets itself apart from firms like Bird & Bird or Hogan Lovells with its approach as a pure IP boutique, despite an international setup with preeminent teams in Amsterdam, Paris and Germany. It is now clear that the merger of the formerly national boutiques has been a big success. Conflicts of interest between the offices have been resolved. The offices have acquired numerous new clients together, among them Apple, Lenovo or Hanwha Q-Cells.

The Dutch office also provides additional technical expertise with its own patent attorneys in international proceedings through its mixed setup. In addition, the firm has small offices in Brussels and Madrid. So far, it has shown no interest in London, an important location for pharmaceutical cases. In the current uncertain times for British firms, Hoyng ROKH Monegier’s lack of a London office is even an advantage – it will not be hindered by the turbulence and can operate as a strong cooperation partner to the two market-leading British boutiques.

At the same time, the firm is driving cross-border cooperation among the individual offices and is increasingly using multinational teams. This makes it currently the only IP boutique that can hold a candle to the large international practices of Allen & Overy, Bird & Bird and Hogan Lovells when it comes to cross-border work.

Recommended individuals

Klaus Haft (“exceptional expertise, especially in life sciences”, “well versed and always well prepared”, competitors), Martin Köhler (“proactive, highly service-oriented and creative”, client), Kay Kasper (“top team leader and coordination of complex patent disputes”, competitor), Tobias Hahn (“good lead negotiator, clever and strategic”, competitor), Carina Höfer (“rising star, good knowledge”, competitor), Christine Kanz (“quick grasp, always calm and assured, even under pressure”, competitor), Mirko Weinert (“competent and creative with extensive technical knowledge”, competitor), Stefan Richter, Tobias Hessel(“outstanding”, “excellent team leader and in coordination of complex patent disputes”, competitors)

Team

10 equity partners, 1 counsel, 12 associates, 1 of counsel

Specialties

Pan-European IP boutique focusing on patent infringement proceedings and nullity suits. Also licences, R&D cooperations and transactions.

Clients

Litigation: BioNTech (defendant) against CureVac and Moderna over mRNA patents; Apple (defendant) against Ericsson; Apple (defendant) against ParkerVision (both over mobile communications; public knowledge); Sony (defendant) against Virtual Paper Licensing over digital books (public knowledge); Philip Morris (defendant) against British American Tobacco over e-cigarettes (public knowledge); Heckler & Koch (claimant) against C.G. Haenel over weapons; Vorwerk (claimant) against Lidl and Hoyer over Thermomix kitchen appliance; Storopack Hans Reichenecker (defendant) against Ranpak over paper cushioning technology (public knowledge); Fujifilm (claimant) against Xerox over print-on-demand; Hanwha Q-Cells (claimant) against Longi, REC and Jinko over solar cells; Ceva (defendant) against Bayer over veterinary medicine (settled 2021, public knowledge); Deutsche Telekom (defendant) against Intellectual Ventures over mobile communications; Essity (claimant) against Industrie Cartarie Tronchetti over toilet paper (public knowledge); ongoing activity for Aspen Aerogels, Huawei, Samsung, Elekta (all public knowledge). Regular advice: BMW, Elekta, Dr. Kurt Wolff/Dr. August Wolff, Motorola, Samsung, Texas Instruments.