Bardehle Pagenberg – Germany 2019

Rankings:

JUVE Comment

After another hugely successful year, it is clear that this mixed IP firm remains a market leader in both patent litigation and filing. Compared to many other German IP firms, BaPa has a clear international focus when it comes to litigation. And here it is probably only Hoyng ROKH Monegier that can be said to have the edge over Bardehle. The former is regarded as working more consistently between its international offices, whereas Bardehle’s German lawyers work less frequently with their counterparts in Paris or Verona, for example. Nevertheless, the firm has an excellent reputation in the US, with clients from the semiconductor and mobile phone industries using the firm for patent prosecution. Particularly in mobile communication cases, Bardehle’s mixed-team approach has allowed it to straddle the line between representing NPEs such as Intellectual Ventures (IV) and companies such as Microsoft. The firm was highly present in the major suits surrounding connected cars patents. It also represented Nintendo and Blackberry in an important case over computer chips. Some competitors have criticised the fact that the firm has yet to see a significant victory for NPE IV in Europe’s most extensive dispute of the past two years. This headline work for IV has obscured just how broadly the litigation team is active elsewhere, and in particular and how often it is on the industry side. This is partly down to the recruitment of former Freshfields partner Chrocziel, who brought good ties to Audi, Microsoft and Hewlett-Packard. That trend was confirmed by an mprovement in the firm’s activities in the healthcare sectore – with litigation for Amgen – when it has been more of a weak flank up unti now. It also represents numerous medical product manufacturers, including a Japanese pharmaceuticals manufacturer.

Strengths

Patent prosecution and mixed litigation practice primarily for mobile communications and software patents. Strong European presence and excellent US contacts.

European strategy

With its mixed litigation approach, internationally oriented lawyers and offices at the key UPC venues in Düsseldorf, Paris and Munich, BP Bardehle is still on the way to becoming a top European firm. It also has a small Italian office in Verona. Due to the uncertainty surrounding the UPC, it would not make sense for there seems to be no plans to boost its presence in London at the current time. If the court launches without the UK, however, an office in Amsterdam would be worth considering due to the firm’s focus on mobile communications.

Recommended individuals

Johannes Heselberger, Tilman Müller-Stoy (“very focused, is capable of pulling out all the stops of procedural law”, competitor), Peter Chrocziel. Patent attorneys: Christof Karl (“thoroughly recommendable”, client), Johannes Lang

Team

28 patent attorneys, 16 lawyers

Specialties

Extensive activity in trademarks and unfair competition and technical protection rights. Filing on a broad technical spectrum. Much litigation, litigation coordination and strategic advice on licences as well as antitrust.

Clients

Litigation: Intellectual Ventures against DTAG, Telefónica and Vodafone; Blackberry against Nokia; Microsoft against Philips (all over mobile communications); Nvidia and BMW against Broadcom (both over connected cars); Nintendo against Broadcom over chip technology; 10X Genomics against Bio-Read over microfluidic chips; Amgen against Regeneron/Sanofi over Praluent; SK Hynix and Hewlett-Packard against Netlist over JEDEC standard; Adidas over sneakers. Prosecution: filing and oppositions for Adidas, Apple, Dell, Jaguar Land Rover, JTI, Kuka, Nintendo, Qualcomm, Wago. Advice: Audi on R&D contracts and licences, VW on R&D contracts; Juno Therapeutics on licences.

Location:

Munich, Düsseldorf