CMS strengthens team with two UPC and SEP litigators from Klaka and Freshfields

Despite established teams in Germany and the UK, CMS’ pan-European patent practice has so far lacked visibility in UPC litigation. CMS does not act as a merged practice, but through the respective patent teams of its network law firms, such as CMS Hasche Sigle. These cooperate closely in patent law, but neither the German nor UK practices have yet appeared before the new court. This is now set to change.

Stephan Dorn will join as partner in the Düsseldorf office on 1 July. The 46-year-old was previously counsel in Freshfields’ patent team. He began his career as a trainee lawyer at Hogan Lovells in 2012 before becoming an associate in the patent team.

In summer 2017, Dorn joined the Freshfields patent team led by Frank-Erich Hufnagel. Dorn has focused on SEP and FRAND litigation since the beginning of his career.

Experience in UPC cases

Dorn was part of the Freshfields team that advised Continental and Lenovo in lawsuits filed by Nokia over mobile phone patents. With the launch of the UPC, he became increasingly prominent.

During his time at Freshfields, he was involved in three UPC proceedings. According to the UPC register he acted as main representative in some of these cases, including the extensive battle for Netgear against Huawei over wi-fi patents and for HP against Nokia over video-coding patents. More recently, Dorn has represented Hisense in a case against Corning over silicate glass for mobile handsets. In 2023 Dorn was one of JUVE Patent’s Ones to Watch in European patent litigation.

Dorn also maintains ties to German patent attorney firms such as Maikowski & Ninnemann and Samson & Partner, with whom Freshfields has regularly worked on SEP cases.

Established China practice

Recently, Dorn has worked to establish contacts to Chinese companies such as Hisense. The CMS network also has good contacts with clients here thanks to its Chinese offices.

Constantin Kurtz also frequently represents mobile phone manufacturers from China. For example, he is representing Oppo in a dispute with KPN. Xiaomi was also one of his clients.

The 50-year-old has also represented European companies in this sector, such as AVM in a dispute with Huawei over wi-fi patents. Both Kurtz and Dorn therefore have extensive experience with SEPs and FRAND.

At his current firm Klaka, Kurtz maintains good contacts to German patent attorney firms, including Weickmann & Weickmann and Gulde & Partner. His work extends far beyond the SEP sector. For example, he advised fixing-plug manufacturer Fischerwerke and technical adhesive tape manufacturer Certoplast.

At the UPC, Kurtz is responsible for Klaka’s only case to date, representing Coenergia, Memodo, PowerDeal, Libra Energy, and VDH Solar in a dispute with Maxeon over solar technology. Here he is registered as main representative.

Kurtz and Klaka are still in discussions as to when he will move to CMS’ Munich office, as well as which clients he will take with him. However, the move should be finalised by the end of the year at the latest. Both Klaka and CMS have confirmed the move.

CMS focuses more firmly on UPC

The two additions follow the departure of several long-standing German IP partners from CMS Hasche Sigle, some of whom have retired. Recently, Cologne partner Markus Deck has mainly been responsible for patent litigation. Two other partners also conduct patent litigation for a clientele characterised by SMEs. However, they are also active in other practice areas.

In recent years, the CMS network has lost ground to other international competitors such as Taylor Wessing, Bird & Bird, Freshfields, and Hogan Lovells, particularly in the important SEP space and UPC proceedings. With the two new partners and a team of eight proven patent litigators, CMS aims to catch up again.

“Our patent litigation practice has always been an important part of our intellectual property division. The special technical character, the often fundamental importance of patent law disputes for the parties involved and the new structure of the Unified Patent Court with four locations in Germany predestine this business area for further expansion,” explains Martin Vorsmann, managing partner of CMS in Germany.

“With Stephan Dorn and Constantin Kurtz, we are gaining two figures whose experience and market position will sharpen our profile in the field of patent litigation in the long term,” says Deck, who heads the IP practice at CMS. “Both have exactly the skills that our clients are looking for — particularly in relation to UPC proceedings, SEPs and the coordination of complex patent disputes.”

Dorn and Kurtz cite the internationality of the network, access to CMS’s China practice and securing their UPC business as the main reasons for the move.

Setback for Klaka

Freshfields‘ patent team has suffered the departure of associates and counsel for years due to the team’s limited partner prospects. However, it also produces young talent at regular intervals. Dorn’s move to CMS does not significantly weaken the team, which is strongly positioned with three partners — Wolrad Prinz zu Waldeck and Nina Bayerl as well as Frank-Erich Hufnagel.

For Klaka, on the other hand, Kurtz’s departure is another setback. At the beginning of the week it was announced that another patent partner, Stefan Eck, would be leaving the renowned IP boutique. He is moving to Ampersand with an associate. This means that two of the three partners in the patent team are leaving within a short space of time. Wolfgang Götz will remain as the only partner in the patent team, completed by Olaf Giebe as of counsel.

The departure of Kurtz and Eck does not significantly impact Klaka’s much larger, renowned soft IP practice. Although both also worked in soft IP, their focus lies clearly on patent litigation.

Nevertheless, if Klaka wants to compete for UPC proceedings in the future, it will have to grow significantly. The firm has therefore announced its intention to strengthen its team at partner level.