The UPC strategies of the top 5 most active claimant firms

Sometimes, investments secure a firm’s pole position. Bardehle Pagenberg is among those firms that invested heavily in their lawyer teams before the UPC opened its doors. The IP firm with headquarters in Munich added three lateral hires including Tobias Wuttke and Tilman Müller to its litigation team around Tilman Müller-Stoy. One year on from the launch, this firm has filed the most active suits at the Unified Patent Court. Bardehle is handling a total of 21 infringement suits, PIs and isolated revocation actions on the claimant side.

For these statistics, JUVE Patent analysed the data publicly available in the UPC’s case search exclusively (as at: 31 May  2024, see detailed methodology at the end of the article).

According to an announcement by the UPC, it currently has a case load of 373 actions, of which 165 are counterclaims for revocation from existing infringement claims. This means that currently 134 infringement actions, 32 applications for provisional measures and 29 revocation actions have been filed at the UPC. But not all of them are already published in the UPC case search.

It is no surprise that Bardehle is one of the most active firms for claimants before the UPC. It was one of the first law firms to immediately file actions at the UPC on the day of the official launch. Bardehle has also stepped up its media work in connection with the new court.

German local divisions attractive for claimants

Hot on the heels of Bardehle is another German IP boutique with 19 actions which, although it did not open any offices abroad or take on any new partners, nevertheless prepared for the UPC very early on. The Düsseldorf-based firm also tried hard to draw attention to its UPC expertise through publications and in social media – and was successful. Kather Augenstein partners Miriam Kiefer, Christoph Augenstein and Christopher Weber are running twelve infringement proceedings in the dispute between Panasonic and Oppo and Xiaomi. The Düsseldorf boutique is also conducting medical device suits for Advanced Bionics against Med EL as well as two actions for Roche and Hoffmann-LaRoche.

The PI and infringement claims for Ortovox against Mammut over avalanche rescue devices received some attention because the PI case was the first public hearing at the Düsseldorf local division. On the defendant side, Kather Augenstein is currently active in five cases for long-time client Ericsson as well as for Advanced Bionics and Roche Diagnostics.

Bardehle Pagenberg, on the other hand, is hired in a greater number of technical fields. It is running the highest profile series of proceedings comprising a total of seven suits for 10X Genomics against NanoSting, Vizgen and Curio over spatial molecular imager instruments. On top of this, the Bardehle partners from Munich, Hamburg and Paris are acting for Amgen against Sanofi in one of the UPC’s few pharma battles. But Bardehle also enjoys the trust of clients in other tech fields, and is running mobile communications proceedings for Dolby, NEC and Philips.

Bardehle is not only very busy on the claimant side but also for companies with UPC suits filed against them by competitors. The firm is representing 26 defendants, among them such well-known names as Apple, Microsoft and Qualcomm in mobile communications suits. Working alongside Thum IP, a Bardehle partner is also representing Juul Labs and VRM Products in a series of ten lawsuits over e-cigarette technology from NJOY.

Whereas Bardehle usually opts for mixed teams, the lawyers at Kather Augenstein work hand in hand with external patent attorneys, as in the two Ortovox cases. For the first and largest dispute involving mobile communications patents to date – Panasonic against Oppo and Xiaomi – the firm brought RCD Patent and Kutzenberger & Wolff on board for the technical elements. The two patent attorney firms have therefore racked up twelve UPC suits each.

The fact that Bardehle and Kather Augenstein top the list of most active claimant representatives is unlikely to surprise any expert. After all, most of the lawsuits were filed at German local divisions. The local division in Munich currently has 54 infringement and 13 PI proceedings, followed by Düsseldorf with 27 infringement and five PI proceedings. The Mannheim local division has a case load of 16 infringement cases. The Paris local division counts 10 infringement cases, making it the strongest of the non-German UPC divisions.

Challengers from international law firms

Bardehle and Kather Augenstein are followed by internationally positioned firms Taylor Wessing with 13 lawsuits, Simmons & Simmons with twelve and Hoyng ROKH Monegier and McDermott Will & Emery with ten each.

Taylor Wessing and Simmons & Simmons have both assembled large cross-border UPC teams. The latter has lawyer teams at its offices in Amsterdam, Munich, Milan, Paris and London. It also set up a team of patent attorneys with litigation experience before the UPC started operations. Simmons & Simmons is now acting in twelve lawsuits with mixed teams, with one example the work led by Oscar Lamme for Plant-e over a biotech patent at the local division in The Hague.

Its two biggest campaigns are for Oerlikon over textile technology at the Milan local division, where Stefania Bergia has the lead. At the Munich local division, Simmons & Simmons led by Thomas Gniadek filed three suits for Networks Technology Systems against Qualcom and Samsung and three further actions against Texas Instruments, Audi and VW over semiconductors.

In contrast, Simmons & Simmons is only involved in four cases on the defendant side, which is relatively few compared to the other busiest UPC firms. Taylor Wessing has racked up eleven cases for defendants, but with 13 active suits is slightly better positioned than Simmons & Simmons. Various Taylor Wessing partners, among them Dutch Eelco Bergsma and Wim Maas, are especially visible in the medical devices sector. The enormous battle between Abbott and Dexcom and Sibio Technology over glucose monitoring devices comprising seven lawsuits plays a significant role in this. The remaining suits are not part of a series and are pending in Munich, Paris, Stockholm and Vienna.

Hoyng ROKH Monegier is active across a much broader range of technologies. Long before the UPC launch, the firm got set for UPC litigation work by merging with market-leading boutiques in Germany, Belgium, France and the Netherlands. HRM is currently running three lawsuits for FujiFilm over printing technology, three further cases for Hurom concerning household technology and two mobile communications suits for Motorola and Lenovo against Ericsson. In June 2023, HRM partner Klaus Haft won the first trade fair injunction from the new court for bicycle technology manufacturer myStromer. HRM is currently working on ten cases on the defendant side, where clients include such well-known companies as Texas Instruments, Samsung and Verifon.

Into the top 5 with ten revocation actions

From the very first day, large series of suits have played a major role at the UPC. Most of these had been prepared by the law firms weeks prior to the launch. They include the campaigns by Amgen, 10X Genomics and Panasonic as well as the ten revocation actions brought by NJOY against Juul Labs and VRM Products at the UPC. The latter was filed by McDermott lawyer Henrik Holzapfel in September 2023. With only one campaign but ten lawsuits at present, the US firm also made it into the top 5 firms on the claimant side. McDermott is receiving technical support from Cohausz & Florack. On the opposing side is Thum IP as the main representative of Juul Labs and VRM Products.

This makes patent attorney firm Thum IP and Cohausz & Florack two of the most visible firms at the UPC. The same can be said of RCD Patent and Kutzenberger & Wolff on the side of Panasonic. Thum IP is also heavily involved in the technical support for Edwards Lifescience in various disputes with Meril Life Science over heart valves. The main representatives here are Bird & Bird and UK firm Powell Gilbert.

Cohausz & Florack is also defending Nokia and Neo Wireless against revocation action involving two of their patents. Maikowski & Ninnemann is another one of the most visible patent attorney firms on both the claimant and defendant side.

The German patent attorney firm has frequently represented implementers in mobile communications proceedings before national patent courts for many years and is now doing the same at the UPC, where it is defending Oppo with Clifford Chance as well as Xiaomi with Freshfields Bruckhaus Deringer against Panasonic. In cooperation with the latter firm, Maikowski & Ninnemann is also representing HP against claims brought by Dolby and Nokia. On the other hand, it has filed an active revocation action for HP against Nokia’s patent at the central division in Paris. Patent attorney firms from other countries are not currently as active at the UPC.

Strong, but not overwhelming dominance

The dominance of the German firms and lawyers is strong, but not overwhelming. Alongside Scandinavian firms like Gulliksson, Sandert & Partner, Schjodt and Roschier, the representatives on the claimant side include names from all major European patent jurisdictions. From Belgium, Altius filed a suit for Jozef Nelissen with the local division in Brussels over medical devices. Italian firm BonelliErede was active at an early stage at the Milan local division, with work for Ocado over warehouse robots – a dispute that has now been settled.

With activity for ICPillar and Hewlett-Packard at the Paris local division, August Debouzy is one of the busiest French firms on the claimant side, as is Gide Loyrette Nouel for Meril Life Sciences against Edwards Lifescience, also at the Paris local division. Paris IP boutique Schertenlieb is engaged by C-Kore Systems for two claims over measurement technology at this local division.

What’s more, French lawyers like Pauline Debré, Anne-Charlotte Le Bihan and Sabine Agé from Allen & Overy, Bird & Bird and Hoyng ROKH Monegier respectivily are involved in numerous proceedings. It is by no means only the German lawyers from these international law firms who are running the cases.

Austrian power

Purely in terms of UPC case numbers, however, these firms are currently outshone by an Austrian patent attorney firm. Torggler & Hofmann is taking action for Progress Maschinen & Automation AG against two competitors over engineering patents in two PI applications and one infringement claim at the Milan local division. For Steindl Krantechnik and Tiroler Rohre, the patent firm is active at the Munich local division.

The Vienna local division has just one infringement case from Swarco Futurit over optical technology used in traffic and advertising technology. The second case is a PI application from CUP&Cino against Alpina Coffee Systems. The latter was represented by Torggler & Hofmann.

The small patent team at Nomos in Vienna filed for an infringment action on behalf of Swarco Futurit at the city’s local division and acted for the same client in a PI proceedings at the Munich local division. Thomas Adocker rounds off the strong visibility of Austrian lawyers on the side of claimants. The Vienna-based patent litigator moved from boutique Schwarz Schönherr to Taylor Wessing in 2023, where he hit the ground running with a suit for TEXPORT regarding protective clothing at the Nordic Baltic regional division. Adocker also filed for a PI in Vienna for CUP&Cino and is playing a part in numerous cases for Abbott on behalf of his firm.

Surprise candidates from the UK

Following Brexit and the UK’s withdrawal from the UPC project, it was long thought that UK firms would be cut off from UPC work – but this has not been the case. London litigation boutique Powell Gilbert put in a surprisingly strong appearance in the first year of the UPC with seven suits on the claimant side for Edwards Lifescience, Ocado and AIM Sport.

The firm is coordinating all three Europe-wide disputes and is involved in the UPC proceedings alongside local advisors. It partnered with Roschier as local lead counsel in the hearings for AIM Sport against Supponor over modern stadium advertising technology at the Helsinki local division. German firms Noerr and Rospatt Osten Pross were also part of the action.

A Powell Gilbert team has also been seen recently alongside Trevisan & Cuonzo on the defendant side in the two suits concerning textile technology for the Indian Bhagat Group against Oerlikon before the local division in Milan.

Carpmaels & Ransford, also from London and firmly focussed on the UPC, is active hand in hand with Hoffmann Eitle at the central division in Munich for Sanofi in a revocation action against an Amgen patent. Together, the two firms are handling an infringement claim against Amgen at the Düsseldorf local division. On the passive side, the mixed UK firm is defending the same client against a lawsuit brought by Amgen in cooperation with Hoffmann Eitle and ZSP Patentanwälte.

The pharma dispute between Astellas and Healios and Osaka University is in fact a purely British battle, at least in terms of the legal teams. Potter Clarkson is acting for the claimant, while JA Kemp represents the two defendants.

Strong on defendant side

Unlike Taylor Wessing and Simmons & Simmons, some other large, pan-European patent litigation practices did not make it into the top 5 firms on the claimant side. But Hogan Lovells, Freshfields, Bird & Bird and Allen & Overy Shearman still have a strong presence at the UPC thanks to numerous instructions for defendants.

Hogan Lovells, for example, has so far only filed one active suit – Alexander Klicznik runs the case for Soda Stream at the Düsseldorf local division – but the firm boasts one of Europe’s largest patent litigation teams and is present on the defendant side in 14 proceedings. The defence of Meril Life Science against Edwards and Xiaomi against Panasonic as well as two cases for Amazon account for a large portion of these. Its strong visibility on the defendant side illustrates how consistently the firm transfers its strategy into practice, as it is mostly active for implementers in the mobile communications and tech sectors and not on the patent holder side.

Likewise, Freshfields’ pan-European team is solidly positioned on the side of the pharma research industry and implementers. The firm is defending Hewlett-Packard, Lenovo and Xiaomi, for example. In addition to the eleven cases on the defendant side, it is running two active PI suits for Novartis against Celtrion and two for Alexion against Amgen over pharma patents.

Allen & Overy probably has the most evenly balanced record, with four cases on the claimant and defendant side. On the defence side, it acts exclusively for regular client Samsung. As the claimant, the German team with Denise Benz is representing Nokia concerning FRAND aspects, for example, while Arnold Ruess drafted the infringement claims for Nokia against Verifon and the CCV Group. For Dish Technologies and Seoul Viosys, Allen & Overy filed two further actions in Paris and Mannheim.

The pan-European team at Bird & Bird is less committed to a particular field. Under the strong influence of the German and French partners, it is involved in eight UPC actions, with a pronounced visibility in the medical technology sector thanks to clients like Dexcom, Edwards and NanoString. Bird & Bird filed a revocation action against Mala on behalf of regular client Nokia.

On the defendant side, Bird & Bird counts 13 proceedings, where clients include Celtrion, Dexcom and NanoString. With the Court of Appeal overturning the PI previously issued in favour of 10XGenomics, the Düsseldorf Bird & Bird team led by Oliver Jüngst accomplished what is quite possibly the biggest litigation win yet in the short history of the UPC.

An unusual approach

Vossius Brinkhof UPC Litigators has possibly the most unusual setup of all UPC representatives. The mixed German firm Vossius & Partner and Dutch firm Brinkhof are looking to appear at the UPC under the umbrella brand Vossius Brinkhof UPC Litigators. Together, they have two active lawsuits: for Agfa against Gucci over a printing technology for the production of handbags and for Ballinno against UEFA over a technology for detecting offsides in football. On the defendant side, it is representing CCV Group against Nokia and Oppo in three Panasonic actions.

But the joint strategy is not being put into practice as stringently as the two partner firms had planned. The patent attorneys from Vossius can be seen working alongside Freshfields for Kodak in three suits brought by FujiFilm, while Brinkhof took over the lead role from df-mp in one revocation action brought by Sanofi and Regeneron against an Amgen blockbuster patent. It is also representing Amgen as co-counsel to Bardehle in two infringement claims with Sanofi. Conflicts might be the reasons why the firm was hired alone here and not under the joint brand with Vossius. Nevertheless, the two firms have come very close to achieving their goal of playing a major role at the UPC with a total of 13 cases.

The JUVE Patent methodology

According to the official information available from the UPC, it currently has a case load of 134 infringement actions, 32 applications for provisional measures and 39 revocation actions. JUVE Patent only used cases from these three categories as the basis for analysing the most active firms on the claimant side in year one of the UPC.

The figures also include proceedings that have since been settled, such as those filed by Ocado against Autorstore. For the numerical evaluation, the relevant factor is which law firm is registered by the UPC as running the proceedings. JUVE Patent only took into account proceedings for which there was information publicly available on 31 May 2024, for example via the case search feature on the UPC website.

Suits that have already been filed and are only available to registered representatives via the court’s CMS system are not taken into account. JUVE Patent has counted each case individually, regardless of whether it was filed in isolation or is part of a large campaign.

JUVE Patent also considered information from patent firms in its analysis, for example where patent attorney firms are involved in addition to the law firm running the proceedings or if more than one firm was acting in the courtroom in cases that have already been heard in year one.