JUVE Comment

This mixed IP law firm has a strong litigation practice, particularly for pharmaceutical proceedings. Both the patent attorneys and the lawyers have recently been involved in high-stakes cases, for example for Sanofi/Regeneron regarding the cholesterol-lowering drug Praluent. At the same time, the firm’s patent attorneys are regularly consulted by external lawyers on technical issues, for example by Freshfields for Moderna.

In addition to its strong focus on pharmaceutical disputes, the team is also active in disputes across a wide range of technologies, as demonstrated by its work for Tinder provider Match, sporting goods manufacturer Burton and solar technology company Tongwei. This variety has its roots in the established prosecution practice, which advises across a broad range of sectors and provides a steady stream of litigation work.

Hoffmann Eitle is continuously investing in new talent. The firm appointed a lawyer and a patent attorney as partners and added a young professional to the legal team. An experienced patent attorney left the team and moved to Maiwald, but with one of the largest patent attorney teams on the market, Hoffmann Eitle can easily close this gap.

European set-up

Even though the firm has offices in Amsterdam, Barcelona, Düsseldorf, Hamburg, London, Madrid, and Milan, the heart of Hoffmann Eitle’s patent litigation practice beats in Munich. From there, patent attorneys and lawyers conduct some major patent disputes – often in an international context. This experience also pays off at the UPC, where Hoffmann Eitle (with Bird & Bird) is acting for Dexcom against Abbott, for example. Sanofi also relies on Hoffmann Eitle for the UPC cases concerning Praluent, with support from ZSP. UK firm Carpmaels has the lead for the revocation claim against Amgen’s patent-in-suit.

In addition to its extensive experience in cross-border litigation, where it often plays a coordinating role for Japanese and US clients, Hoffmann Eitle is also bringing its considerable strength to the table. The mixed teams are thus in a good position to lead larger litigation series at the UPC on their own. This would appeal to the strong client base in Asia, especially in Japan. As far as the appearance of mixed teams in international proceedings is concerned, market leaders such as Vossius and Bardehle Pagenberg are further ahead.

Strengths

Pharma litigation for originators. Mobile communication suits, mostly on the patent holder side.

Recommended individuals

Niels Hölder, Dirk Schüßler-Langeheine, Clemens Steins; patent attorneys: Thorsten Bausch, Mark Jones, Matthias Kindler, Peter Klusmann, Markus Müller (“good patent attorney for litigation”, competitor), Leo Polz (“highly experienced and it shows”, “very good”, competitors), Joachim Renken, Peter Schweighart, Georg Siegert (“good in litigation”, competitor), Andreas Stefferl, Joseph Taormino, Lasse Weinmann (“really good”, competitor),

Team

103 patent attorneys, 10 lawyers

Partner moves

Michaela Weigel-Krusemarck (to Maiwald)

Clients

Litigation: Moderna against BioNTech over mRNA vaccines for COVID-19; Sanofi and Regeneron against Amgen over cholesterol-lowering drug evolocumab/Rapatha/Praluent; Tongwei against Maxeon over solar modules; AsusTek against Atlas Global over SEPs for wi-fi 6 standard; Match (Tinder) against Hoccer over messaging and social media technology; BGI against Illumina over genome sequencing; Burton against Koroyd over ski and snowboard helmets. Oppositions for Allergan against Merz in EPO opposition over dermal filler syringe; Dexcom against Abbott over glucose monitoring; Japan Tobacco International against Philip Morris, Nicoventures and straw man opponents over e-cigarettes.