JUVE Comment

The German patent litigation team works in a globally integrated law firm with a focus on IP. The practice attracts clients of various sizes from Europe, the US and Asia. The team has a clear specialty in pharmaceuticals, biotech, and automotive suppliers, particularly e-mobility. The patent attorneys and lawyers are similarly well positioned and usually work on cases together. They regularly represent their core clients in the life sciences sector in important EPO oppositions.

The international cooperation within Jones Day, especially with the teams in France, Italy, the UK and the US, works very well in electronics and mechanics, for example for Lufthansa Technik. However, Jones Day is rarely involved in the most economically significant mobile communications and life sciences cases. Large, dynamic key clients such as Indian auto supplier Motherson Group trust the team extensively with their growing portfolio.

European set-up

Jones Day’s European practice has an especially strong footprint in life sciences disputes. The German IP practice’s mixed team puts it at an advantage at the UPC, with the patent attorneys already cooperating well with the lawyers in neighbouring countries such as France. However, measured against the potential of the large US and Asian client base, Jones Day has conducted comparatively few proceedings in the initial phase of the UPC. The practice around Christian Paul, for example, was only involved in the chemical proceedings for defendant Vibrantz against Heraeus Electronics. This may be because mechanical engineering companies are currently operating in a difficult economic environment and pharmaceutical clients are still hesitant to use the UPC. Competitors such as DLA Piper and Simmons & Simmons have been instructed for more UPC cases.

Strengths

Pharma proceedings for originators. Very strong US practice.

Recommended individuals

Gerd Jaekel, Christian Paul; patent attorneys: Dorothée Weber-Bruls

Team

8 lawyers, 8 patent attorneys, 2 dual qualified

Clients

Litigation: Lufthansa Technik against Astronics, Panasonic and others over aeroplane electronics; Tung Thih Electronic/Valeo against Chinese autosuppliers over distance warning for vehicles; Solid against CommScope over antenna systems including FRAND (public knowledge); SCHWIND eye-tech-solutions against Ivis Technologies over corneal lamellar grafting transplantation; Sunrise Medical against Invacare in infringement and nullity suits over wheelchairs. EPO oppositions: Akebia Therapeutics against FibroGen over hormone erythropoietin; BioMarin Pharmaceutical against Alfred E. Tiefenbacher, Dipharma, Teva and generics companies over orphan drug Kuvan; Hope Medical Enterprises against Dr. Franz Köhler Chemie and Naomi Shimamura over sodium thiosulfate product; Puma Biotechnology against generics over combination of lead compounds neratinib for the chemotherapeutic agent vinorelbine; regular oppositions for Motherson Group (all public knowledge).