JUVE Comment

The patent attorneys and lawyers at this German IP firm are among the best in the market. The mixed team is particularly strong in semiconductors and telecommunications, and the firm also leads high-profile proceedings in the life sciences sector.

The firm’s determined growth strategy has made it the most dynamic of its market-leading competitors, such as Bird & Bird. The arrival of experienced patent litigators Tobias Wuttke, Volkmar Henke and Tilman Müller in early 2023 was seen as a clever move by the firm to further strengthen its already broad team with litigation experience. They bring experience in SEP and FRAND litigation, as well as in other technologies. Large clients such as Deutsche Telekom and some patent pools followed them to their new firm.

European set-up

Hardly any other law firm has attracted as much attention for its work in UPC proceedings as Bardehle Pagenberg. This is partly because the firm filed several actions at an early stage and partly because it regularly analyses developments at the court in the media.

Following the partner arrivals the previous year, Bardehle significantly strengthened its associate level in Germany. Since most proceedings are currently being conducted by German teams, and Bardehle is mainly handling its numerous cases without foreign cooperation partners, this strategy seems to be working in the UPC’s start-up phase.

In contrast to internationally integrated law firms such as Bird & Bird, Bardehle Pagenberg has also recently invested in its Paris office, but the focus is on the large, mixed German practice.

Whether this approach is more efficient and economical, as well as resulting in fewer internal conflicts than internationally integrated teams, and, above all, continues to convince clients, will become apparent in the next few years when there are more judgments and pharma proceedings. But Bardehle Pagenberg has made an impressively strong start to the UPC and is setting itself apart from competitors with the large number of proceedings it is involved in and the experience that comes with this.

The firm’s clients at the UPC are high-profile and technologically diverse. For example, it is representing 10x Genomics and Amgen in the field of antigens, as well as the automotive companies Audi, VW, and BMW and e-cigarette manufacturer Juul Labs in biotechnology. The latter is an example of the fact that not all clients use Bardehle Pagenberg’s extensive lineup exclusively. Juul Labs has split part of its extensive series of lawsuits with the significantly smaller, but highly specialised and experienced litigation boutique Thum IP. Competition among law firms is fierce at the UPC – a challenge that Bardehle is meeting head on.

Strengths

Patent prosecution and mixed litigation practice primarily for mobile communications (including SEP und FRAND) and software patents. Strong European presence and excellent US contacts.

Recommended individuals

Volkmar Henke, Johannes Heselberger (“in-depth expertise in litigation, great on litigation strategies, keeps business interests of the client in mind, cost effective”, client), Tilman Müller (“knows exactly what he’s doing”, competitor), Tilman Müller-Stoy, Tobias Wuttke (“dedicated, good overview and legal expertise of the highest calibre”, competitor); patent attorneys: Axel Berger, Christof Karl, Johannes Lang

Team

32 lawyers, 37 patent attorneys

Clients

Litigation: R2 Semiconductor against Intel over converters; Cisco Systems against Centripetal Networks over computer technology; BMW and Robert Bosch against Arigna over semiconductors; Deutsche Telekom against ELV Elektronik over video streaming and coding; various members of the Access Advance and Via Licensing patent pools against implementers over audio and video coding; Oppo against Nokia and Huawei over 5G patents; Amgen against Regeneron/Sanofi regarding Praluent; Microsoft against various NPEs regarding mobile devices and cloud technology. EPO oppositions for SHL Medical against straw man over medical technology.