JUVE Comment

Since entering the market two years ago, the German practice of this US law firm has established itself well. It has made a name for itself, particularly in litigation related to electronics, mechanics and chemical patents. The firm not only extended existing work, it has recently expanded its client base to include companies such as InnoScience. The Munich team led by Jochen Herr successfully combines its own business with numerous referrals from the international network, such as US clients MediaTek and Giant.

The team around Jochen Herr follows a mixed approach and both founding partners are dual qualified as litigators and patent attorneys. Consequently, the firm often represents clients in both infringement proceedings and EPO oppositions. Unlike the London office, however, the German practice does not file any patents, as the patent attorneys focus on litigation.

Finnegan continues to focus on growth. Although it lost Alexandre Hoffmann, a patent attorney experienced in electronics and mobile communications, it has managed to cushion the blow with the appointment of two patent attorneys with similar technical experience – a counsel from Bird & Bird and an associate from Boehmert & Boehmert. At the same time, the recent partner appointment of Antje Brambrink illustrates the US firm is serious about building up its German practice. She is not only a litigator but also a qualified dentist, meaning the team now has the technical know-how for pharma cases as well.

European set-up

The development and expansion of the German practice at the UPC is paying off for Finnegan’s clients. The US law firm was one of the first to act at the new court for clients such as SES-imagotag and KraussMaffei Extrusion. The team filed a PI application for SES-imagotag at the local division Munich, but Heuking is now leading the revocation action at the central division in Paris. The fact that the team is now representing MediaTek at the UPC demonstrates that further potential also lies in the firm’s good network with US clients. However, the German team is still comparatively small for comprehensive disputes at the new court, even if it can also draw on the capacities of patent attorneys from the London Finnegan office in addition to its own patent attorneys for technical issues – which it already does successfully for various EPO appeals. Although this cooperation increases the capacity of the German team, the addition of further patent litigators would open up more avenues for expansion – particularly with regard to larger pan-European and UPC cases.

Strengths

Litigation with mixed approach and a focus on electronics, mechanics and chemical patents.

Team

2 lawyers, 4 patent attorneys, 2 dual qualified

Partner moves

Alexandre Hoffmann(to df-mp Dörries Frank-Molnia & Pohlman)

Clients

Litigation: Innoscience against Infineon over gallium nitride semiconductors; SES-imagotag against Hanshow group over electronic tags; Acer against Ningde Amperex over laptop batteries; Shark Ninja against Dyson over hair styling technology; MediaTek against NPE over mobile communications. Oppositions: Dentsply against Ivoclar Vivadent over the use of glass ceramic as dental material; REC Solar against various opponents over circuits in solar panels; regular litigation for Dentsply, Nestlé, RealD.