Bird & Bird – Germany 2018

Rankings:

JUVE Comment

This mixed patents team is still among Germany’s undisputed market leaders for patent litigation. The lawyers are better positioned than the up-and-coming patent attorney team. Clients from a wide array of industries trust in B&B, although the integrated, mixed team has seen stronger years (regular client Nokia has been somewhat restrained with active suits). The team is especially active in major proceedings for medical product manufacturers like Fisher & Paykel and Edwards Lifescience. Envipco’s lawsuit against the German bottle deposit system is attracting much attention. Even without class actions for Nokia, the firm underscored its strong position in mobile communications suits with the Technicolor/Thomson litigation. One fly in the ointment is that B&B is that conflicts of interest have prevented B&B from getting involved in the first wave of suits against auto manufacturers concerning connected cars. Constant staff development in this huge litigation team contributed to the practice’s successful development, as did the further expansion of a dedicated prosecution practice. Although the patent attorneys specialize in litigation, they are constantly building on prosecution – provided that this does not create conflicts of interest for litigation. While the Hamburg team managed patents for Airbus, the Munich office handled the portfolio of chemicals company Emery and medical product manufacturer B. Braun Melsungen. In view of the conflict-ridden work in the pharmaceuticals and mobile communications sectors, this is a clever – albeit limited – opportunity to expand the field. Competitors like Hogan Lovells are increasingly imitating this successful strategy, but unlike B&B they do not dare to tackle prosecution just yet.

Strengths

Litigation provided by mixed teams and interoffice cooperation in one of the strongest European IP practices.

European strategy

B&B stands out from competitors in that it has one of the largest litigation teams in Europe and follows a mixed approach in Germany. The team is a European market leader, partly because it has patent litigation specialists in all the important UPC member states. It is true that competitors are discussing controversially whether turf wars will arise in such a large team with the UPC. But B&B itself feels there is space for additional partners, especially in the Paris office. It could be disadvantageous in the medium term that the national practices have a high degree of decision-making leeway and the overall team is perhaps not geared as stringently towards the UPC as is the case at Hogan Lovells or Allen & Overy.

Recommended individuals

Christian Harmsen, Oliver Jüngst (“both very experienced in FRAND proceedings”, client), Felix Rödiger, Dr. Matthias Meyer (“highly recommendable”, client), Boris Kreye, Dr. Anna Wolters-Höhne; patent attorneys: Dr. Daniela Kinkeldey, Dr. Michael Alt

Team

11 partners, 5 counsel, 28 associates, 1 of counsel, incl. 16 patent attorneys

Practice

Patent litigation conducted by lawyers and patent attorneys, mainly for the pharmaceuticals, biotech, chemicals, electronics and telecoms sectors. Advice concerning patent strategies and licences and on the interface

with antitrust. Frequent patent filing for selected clients. Strong trademarks and unfair competition practice.

Clients

Litigation: Envipco against DPG, Gerolsteiner and Rako regarding German deposit system; Technicolor/Thomson against Samsung regarding mobile communications; Fisher & Paykel against ResMed regarding respiratory masks; Edwards Lifescience against Boston Scientific concerning cardiac valves; Nektar regarding blood coagulation; Nespresso/Nestlé against ECC regarding coffee capsules; Canon regarding printer technology; Honeywell concerning smart home; Nvidia against Polaris concerning graphic cards. Prosecution: Airbus, B. Braun Melsungen, Emery.

Location:

Munich, Hamburg, Düsseldorf