JUVE Comment

This mixed IP firm combines a strong litigation team with one of Germany’s largest patent prosecution practices. However, this year has been marked by an unusually high number of team changes. In the second half of the year, Hoffmann Eitle lost two lawyers, Mike Gruber and Niels Hölder, to competitor Carpmaels & Ransford. Previously, both firms had collaborated on matters such as representing Sanofi and Regeneron against Amgen regarding cholesterol-lowering drugs Praluent and Repatha at the UPC, but competition between the two firms is now intensifying. With Hölder’s departure, the firm loses the most prominent member of its lawyer team.

However, Hoffmann Eitle will reinforce its team with litigation partner Thomas Gniadek from Simmons & Simmons. He brings many years of experience in FRAND negotiations, which is an asset for industries such as medical devices – an area in which Hoffmann Eitle has recently landed new work.

While traditionally focused on organic growth throughout its 130-year history, the firm surprisingly seized an opportunity to acquire a renowned team of patent attorneys from König Szynka. The Düsseldorf team around Gregor König, Dorothea von Renesse and Carla Roth has long been at the forefront of pharmaceutical and biotech litigation on the patent attorney side.

The smaller IP boutique had seen limited team growth in recent years, constraining its development in high-end litigation and prosecution work. Hoffmann Eitle has successfully integrated this highly specialised prosecution work into its substantial team. The litigation-experienced patent attorneys further strengthen the firm’s already market-leading position in pharmaceutical and biotech patents. Several clients, including Moderna and Sanofi, had previously worked with both practices.

Additionally, Hoffmann Eitle has reinforced its strong position in economically significant EPO oppositions and national nullity proceedings, maintaining high visibility across various technological fields, representing clients such as Japan Tobacco, Seiko Epson, Salzgitter Flachstahl and Astellas. Prosecution activities in biotech and AI-related patents continue to grow.

European set-up

The team has made an impressive start at the UPC alongside its clients and now handles more UPC than national litigation. Clients benefit from well-established cooperation between the mixed teams.

The firm’s patent attorneys and lawyers conduct major patent disputes, often in an international context. This experience proves valuable at the UPC, where Hoffmann Eitle (with Bird & Bird) represents Dexcom against Abbott. Sanofi also relies on Hoffmann Eitle for UPC cases concerning Praluent, supported by ZSP. UK firm Carpmaels leads the revocation claim against Amgen’s patent-in-suit, with König also involved. Former lawyer Hölder is also involved in this case.

Beyond its extensive experience in cross-border litigation, where it often coordinates for Japanese and US clients, Hoffmann Eitle brings considerable strength to the table. The mixed teams are well positioned to independently lead larger litigation series at the UPC, appealing particularly to its strong Asian client base, especially in Japan. Notably, clients involved in SEP and FRAND issues are increasingly entrusting their UPC lawsuits to Hoffmann Eitle, helping establish the mixed firm as a frontrunner in UPC litigation.

Strengths

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

Recommended individuals

Dirk Schüßler-Langeheine, Clemens Steins, Thomas Gniadek; patent attorneys: Thorsten Bausch, Mark Jones, Matthias Kindler, Peter Klusmann, Markus Müller (“good in litigation”, competitor), Leo Polz (“very experienced”, competitor), Joachim Renken, Peter Schweighart, Georg Siegert (“excellent and experienced”, competitor), Andreas Stefferl, Joseph Taormino, Lasse Weinmann (“really good”, competitor), Gregor König (“excellent, really gets into the details”, competitor), Dorothea von Renesse (“good, pragmatic”, competitor), Carla Roth (“extraordinarily good”, competitor)

Team

116 patent attorneys, 10 lawyers

Partner moves

Michaela Weigel-Krusemarck (to Maiwald), Gregor König, Dorothea von Renesse, Carla Roth (from König Szynka Tilmann von Renesse), Mike Gruber, Niels Hölder (both to Carpmaels & Ransford)

Clients

Litigation: AsusTek against Atlas Global over SEPs for wi-fi 6; Homag against Guangdong Super Machinery over coating of workpieces; Moderna against BioNTech over mRNA vaccines for COVID-19; Seiko Epson against Dolby over audio coding; Astellas in nullity suit against Ratiopharm over Mirabegron; Tongwei Solar against Maxeon Solar over solar modules; Zapp against Dai Nippon Printing over manufacturing process for metal plates; Sanofi and Regeneron against Amgen over cholesterol-lowering drug evolocumab/Rapatha/Praluent. EPO oppositions: Accord Healthcare against Amgen over apremilast/Otezla; Allergan against Merz over dermal filler syringe; Dexcom against Abbott over glucose monitoring; Ericsson against Lenovo/Motorola over mobile communication; Japan Tobacco International against Philip Morris over inhaler.