JUVE Comment

The patent litigation practice of this German full-service firm is well positioned for advising SMEs before German courts. Litigation for automotive suppliers such as ZF Friedrichshafen plays just as strong a role as litigation for medical device manufacturers, such as Ziehm Imaging and Invacare in infringement actions and nullity proceedings before the Federal Patent Court.

Clients such as garage door manufacturer Hörmann, weapons manufacturer Umarex, and Voestalpine have relied for many years on the practice, which has two relatively independent teams in Düsseldorf and Munich. The firm’s profile largely focuses on the Munich team led by Sebastian Heim, who transformed the Munich office into a centre for litigation work. The Düsseldorf team also focuses on litigation but is not yet registered as strongly for this. Advisory work dominates in Frankfurt.

The telecoms and electronics sectors play a much smaller role for the patent team than at similar competitors such as Noerr. However, connectivity is playing an increasing role in the automotive and medical devices industries, which are important for the practice. The teams in Düsseldorf and Munich can utilise this to a greater extent to strengthen their profile in mobile communications through integrated work. But there is still a long way to go before the firm is at the forefront of SEP litigation.

European set-up

Two partners advise many Italian companies such as Limacorporate and Taco on patent disputes in Germany. Nevertheless, international series of proceedings are not part of the patent team’s standard repertoire. The litigation for Invacare against Sunrise Medical over wheelchair technology is the exception as it had strong cross-border aspects with parallel cases in the US until a recent settlement. The GvW patent team predominantly advises German SMEs in national proceedings. In the past year this has included UPC strategy advice.

Like most of its competitors such as Noerr or Gleiss Lutz, GvW is prepared to run cases at the new court and boasts experienced patent litigation teams at the UPC locations Düsseldorf and Munich, plus an office in Hamburg. However, the patent team has not yet actively appeared in UPC cases, unlike Noerr or Gleiss Lutz. One opportunity lies in the firm’s strong position among medical products manufacturers, because this industry uses the UPC intensively for Europe-wide proceedings.

Strengths

Patent litigation for SMEs, especially regarding automotive and medical devices.

Recommended individuals

Sebastian Heim (“we respect his competence, broad expertise and reliability”, client; “innovative and tough litigator”, competitor)

Team

14 lawyers

Clients

Litigation: ZF Friedrichshafen against Magna over gear technology for cars; Ziehm Imaging against Siemens Healthcare over X-ray technology; Invacare against Sunrise Medical over wheelchair technology, including connectivity (settled 2023); Hilti against Rhefor over battery-operated nail setters (settled 2024); frequent litigation for Allgeier IT Solutions, Alnatura, Cerafiltec, Eden Europe, Hörmann, Limacorporate, Rembe, Sartorius Stedim, Schlenk Metallic Pigments, Taco Italia, Umarex, Vertex, Voestalpine. Advice: Fehrmann Group on R&D projects and licences, Novartis on technology transfer; SCM Group on IP strategy and licences.