JUVE Comment

This mixed German IP firm ranks among the market leaders in patent litigation. Whilst other firms suffer from declining case numbers in German courts, Bardehle Pagenberg boasts an impressive track record with numerous new cases of varying scale. Moreover, the team is involved in three economically significant proceedings for long-standing client Amgen concerning blockbuster drugs and biosimilars.

The team continues to play in the top league of tech litigation as well, participating in the recently increasing number of cases involving video streaming patents for both new client Adeia and regular clients Dolby and Access Advance.

The practice has also achieved notable successes at the EPO. The victory for 10x Genomics was a key factor in settling a major case. Overall, the prosecution practice is developing steadily, offsetting cautious prosecution strategies and shrinking client budgets with new client relationships.

The practice is on a consistent growth trajectory and, despite some departures at associate level, has recently expanded by four lawyers and three patent attorneys. It has also attracted experienced associates from competitors. The firm promoted two additional partners to equity partnership and appointed the same number of fee-earners to salary partner and counsel positions. Few competitors have strengthened their partnership to a comparable degree this year, with only Bird & Bird standing out more.

Overall, the practice is ideally equipped for the combination of UPC and national cases, given its experience and team size.

European set-up

From the outset, Bardehle Pagenberg has been one of the most visible representatives at the UPC. The firm’s success is rooted in its broad, litigation-experienced mixed partnership. The team is among those whose predominantly national setup has been embraced by clients, allowing it to compete on a par with international firms like Bird & Bird using this compact approach.

Following early successes such as for 10x Genomics, the firm has now gained considerable experience at the UPC across various divisions and for diverse clients. This could prove particularly advantageous as the market undergoes consolidation amid declining national patent cases and a shift towards the UPC.

The firm has gained international visibility through its track record in UPC proceedings. Highlights include representing Amgen against Alexion in a biosimilar dispute. Clients are rewarding the experience accumulated in the first two years with numerous new cases. Overall, Bardehle demonstrates that successful UPC positioning does not necessarily require international teams.

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 (“reliable and competent”, competitor), Johannes Heselberger (“very experienced and trusted advisor”, client), Tilman Müller, Tilman Müller-Stoy (“creative and flexible”, competitor), Tobias Wuttke (“pragmatic, strategic, creative”, competitor); patent attorneys: Axel Berger, Christof Karl, Johannes Lang 

Team

36 lawyers, 40 patent attorneys

Clients

Litigation: Oppo against Nokia over 5G patents; Access Advance against HP, Asus, TCL over video coding; Adeia against Disney over video streaming; Dolby against TCL/TCT Optoma Arcelik/BekoVestel over video coding; Aiko Solar against Maxeon over solar cells; Amgen against Sanofi/Regeneron over cholesterol-lowering drug Repatha; Amgen against Alexion, Regeneron, Bayer, Janssen-Cilag over biosimilars eculizumab/Soliris/Stelara/Eylea; BMW against Kiekert over car locks; Cisco Systems against Centripetal Networks over computer technology; Duesenfeld against Ekato over battery recycling; Extreme Networks against Mala over networks; Microsoft against Zoe Life over software; Philips against Via Licensing Patent Pool and Access Advance Patent Pool over audio codes; Xiaomi against Koninklijke KPN over SEP. EPO oppositions: Biotronik against Boston Scientific over stents; Aylo against Dish over adjusted currents; BMW against IoT IP over remote control; Heidelberg Materials against Aalborg Portland over reduce- emission cement manufacture; Robert Bosch against TE Connectivity Solutions over electric plug-in system.