JUVE Comment

This small team is exceptionally active in patent litigation and saw a strong influx of new clients. Noerr impressed the market first and foremost for its activity in the mobile communications sector for such notable manufacturers as TCL and Xiaomi in infringement proceedings over mobile communications standards.

The recent realignment is bearing fruit. Whereas the patent practice was best known as an NPE representative a few years ago, the team around Munich partner Nack now exclusively advises and litigates for implementers of mobile communications technologies and manufacturing companies from other industrial sectors.

This potentially opens the door for Noerr to litigate for notable carmakers; other Noerr practices already nurture close connections to these clients. But so far, the firm has been unable to transfer these existing contacts from its network to litigation activity, for example regarding connected cars.

Noerr has also developed into a port of call for lawsuits involving cutting-edge technology. Examples include the litigation for Centripetal in the dispute over a technology to identify dangerous data streams and for AIM Sport Vision in a dispute over ad overlays in TV broadcasts.

Strengths

Mobile communications litigation including SEP and FRAND issues. Licence agreements.

European set-up

As part of a nationally independent firm, the patent team is limited to forging a pan-European alliance for cross-border disputes. The Lex Mundi network only offers limited opportunities. On the other hand, the firm has close ties to patent teams in similar firms in the Netherlands and France. These, however, demonstrate just as little hunger for closer cooperation as the Noerr team. The firm will only be able to put itself forward for cross-border disputes through its professional expertise for the time being. But its success in this respect is shown by the example of AIM Sports; Noerr is coordinating the company’s parallel action in the UK, with Powell Gilbert. In mobile communication cases, on the other hand, the team is mostly active at the German courts as its clients are typically only sued there.

Recommended individuals

Ralph Nack (“thinks out of the box, has a strong international focus and excellent worldwide network”, competitor)

Team

3 partners, 5 associates

Specialties

IP activity has a clear focus on patent litigation. Contract drafting, licences, strategic advice, transactions as well as trade secrets.

Clients

Litigation: AIM Sport Vision (claimant) against Supponor and SportFive over ad overlays in TV broadcasts; Xiaomi (defendant) against Crystal Clear Codec over SEP; Xiaomi (defendant) against VoiceAge over speech-coding technology; TCL (defendant) against MPEG LA over AVC codex (settled 2021); TCL (defendant) against Sisvel over DVBT-2; Cambridge Mobile Telematics (co-defendant) against Appy over technology for monitoring driver behaviour; Centripetal Networks (claimant) against Cisco over network security solutions. Advice: Cellex on IP in M&A transaction, German research company over R&D cooperations and technology transfer; German pharmaceutical company on employee invention program, licences and R&D cooperation; R&D company on patents, cooperation and technology transfer.