JUVE Patent

Noerr – Germany 2019

Rankings:

JUVE Comment

The small Munich patent team is very active in infringement cases and clients increasingly call in the firm for licensing negotiations. The team’s advice to the auto industry on connected cars patents and potential disputes is developing positively. On the one hand this is not surprising, since Noerr has long standing good ties to German car makers. On the other hand, such work is remarkable given that the patent team’s experience of mobile communications has been gleaned mainly through litigation for NPEs. Noerr has attempted to walk this tightrope by increasingly working more for industry and gradually reducing its work for NPEs. Noerr’s activity for NPEs has prevented it from being involved in the current suits surrounding connected cars. However, the expertise the firm has gained through representing players such as Wilan, Paker Vision and Rembrandt IP is likely to prove valuable in the long term when it comes to connected cars and consumer goods. The firm’s reorientation away from NPEs has put pressure on the once-close cooperation with patent attorneys from Bosch Jehle. Both outfits were not seen working together as often as they used to. Noerr will have to adjust its strategy at some point with regard to mixed teams, as the market leading litigation teams at Hogan Lovells and Bird & Bird already offer technical expertise.

Strengths

Mobile communications litigation for NPEs.

European strategy

As part of a nationally independent firm, the patent team has struggled to forge a pan-European alliance for cross-border disputes as well as for the UPC. The Lex Mundi network only offers limited opportunities. But the team still is preparing for the new requirements with strategic foresight: Noerr wants to develop close ties to small but well-regarded patent firms in Amsterdam, London and Paris. But tangible success has yet to materialise.

Recommended individuals

Ralph Nack (“good experiences”, client), Thomas Gniadek (“very pragmatic and solution-oriented litigation”, competitor)

Team

1 equity partner, 2 salary partners, 4 associates

Specialties

Besides trademarks and unfair competition, IP activity has a clear focus on patent litigation. Contract drafting, licences, strategic advice and transactions.

Clients

Litigation: Sisvel against IRT over calls for a licence for MP3 technology; Thomson Licensing against Pioneer over licence fees; Wilan against Sony over LTE patents; Parker Vision over mobile communications and RFID chips; Rembrandt IP against Apple over mobile communications; Sound Unit against Philips over audio coding; Tinder against Hoccer over messaging service; Formlaps against DWS over 3D printing; TAD Pharma against Gilead over Truvada; Popsockets over mobile phone holder. Advice: patent pool on connected cars licencing program, two German car makers on patent licensing programs.

Location:

Munich