Kather Augenstein Rechtsanwälte PartGmbB
What was it that made you first get involved in patent law?
As a child, I was always interested in understanding how things work so I knew that I either wanted to become a lawyer or an engineer. My family regularly spent the summer holidays sailing on a ship, with my father as the captain. One of the inventions that I still remember was a new suspension on the jib sail, which made the ship travel a little faster.
Later in high school, I enjoyed discussing and exchanging different opinions. I also liked to play with language, so I thought that becoming a lawyer would be a good choice.
At the end of high school, our class was selected for a research programme which evaluated your personal skills by comparing them with those of certain professions. My personal skills resembled that of an engineer. This reinforced my feeling that I should combine the two roles, the solution to which was patent law.
You established your own firm with some colleagues in 2016 – what led you to do this?
I had worked with all of the founding partners of Kather Augenstein for several years and knew that they were some of the best IP lawyers in Europe. Therefore, I was convinced that we could become one of the leading IP boutiques in Germany and Europe.
We have a clear focus on IP litigation, which is easy to sell and explain to clients. We have all of the relevant expertise at hand, as IP litigation is a completely different ball game to prosecution or corporate work. From the beginning, we liked the idea of being a fully integrated team, joining forces with all of the partners and associates to handle the largest cases in the market evenly, which is something that I believe differentiates Kather Augenstein from other boutique firms. The fact that Volkswagen/Audi hired us to defend them against Broadcom in the first connected car dispute proves that this strategy is successful and honoured by clients.
What are the challenges facing a relatively small firm competing with larger rivals and how do you overcome these?
The main challenge is visibility. Patent litigation is becoming increasingly international. As a boutique, you must make sure that clients know your skills in foreign countries as well. This is more difficult for a team of 13 lawyers than it is for an international organisation with several thousand employees. However, our smaller team means that all of our partners are actively involved in international organisations, such as the International Association for the Protection of Intellectual Property, the Union of European Practitioners in Intellectual Property, the Licensing Executives Society and the International Trademark Association.
At the end of the day, your existing clients are the best marketing tool. I am fully convinced that after we retain a case, no client will think that we are disadvantaged compared with our larger international rivals. Moreover, our 13 specialised IP attorneys mean that our team is actually larger than many IP teams at international law firms. In addition, international firms are increasingly establishing a merit-based system for the distribution of profits. Due to our strict lockstep compensation system, it is not important which partner has retained a particular case. Thus, we can flexibly add further lawyers (partners and associates) to a team and – if necessary – work with all of our lawyers on a single case, as we did in the Volkswagen/Audi dispute against Broadcom. At the same time, we have smaller overheads and less conflicts, so we can fully focus on our clients’ needs.
Therefore, we are more flexible than larger firms but nonetheless able to handle the most complex and high-stakes cases in the market.
What is the key skill set that top-quality patent lawyers in Germany need to possess?
Passion is key – passion about learning things, about technology and passion about the solutions that patents can provide. As a patent litigator, you have to really dig into a case. This means being able to not only understand the technology, but also translate the technical key points to the judges, who are not technically trained. The courts are highly reluctant to appoint an expert to clarify facts and technical questions. Therefore, lawyers must have the necessary comprehensive insight into the technical details. Thus, you need to be passionate and curious to learn and understand how things work.
Strategy is another key skill. There are often alternative ways in which to plead a case by strengthening or softening particular issues. Litigators must overlook all of the consequences that their point might have for all of the other relevant issues of their case. That is sometimes difficult for newly qualified lawyers as German law students are exclusively trained to work from the judges’ perspective.
Finally, litigators must be quick. Oral hearings normally start with the presiding judge’s introduction, in which they give the panel’s preliminary view. Good litigators must be able to react spontaneously to the introduction, adapt their strategy or arguments and respond directly to new arguments or views that the court raises. This is very challenging, but at the same time the most exciting part of our profession.
Can you describe the arbitration work that you do?
My arbitration work has changed over the three decades I have been a lawyer. Years ago, I worked more as a party representative (which is now increasingly becoming the role of my partners), whereas now I am regularly appointed as an arbitrator. The arbitration proceedings I have been involved in mostly relate to global patent disputes, especially in SEP cases.
As an arbitrator, you have a different view on a case and must be more open to all opinions and arguments. This helps a lot in other cases in which I work as a lawyer because it is always beneficial to look at issues from different angles. From my work as an arbitrator, I have learned to change perspective and ask myself how I would see issues on the other side of the bench.
What advice would you give to clients considering arbitration as a dispute resolution option for patent cases?
I think that arbitration is the only valid option for a true worldwide dispute solution as only arbitration awards can be enforced at the international level. This is apparent from the recent SEP cases in the United States and the United Kingdom. Although judges calculate worldwide royalties, sometimes differentiating between countries, the only consequence is a national injunction if a defendant does not accept the decision. Again, the decision is limited to the territory of the judge’s country. As more business is shifted to Asia (particularly China), the US and UK courts can no longer force parties to accept their rulings. Moreover, confidentiality is ensured in arbitration, which makes it more attractive for business-sensitive subjects.
If you could make one change to the current patent regime in Germany, what would it be and why?
I would introduce effective confidentiality rules into German civil proceedings to harmonise them with existing foreign civil law proceedings.
Sometimes parties must present confidential business information in proceedings (eg, in SEP cases, where a patent owner must submit active licence agreements to justify its FRAND offer). Defendants may also want to introduce confidential information to prove non-infringement of a product or process. This confidential information is generally not protected and can be freely circulated, at least by the opposing party.
Traditionally, the German Procedural Code provides no means to protect confidential information that is presented in writing. According to the traditional concept, court files are private, so protection is foreseen only for discussions at oral hearings. For oral hearings, it is possible to limit the number of people who have access to the information. Therefore, even within the opponent’s organisation, the information cannot be shared.
Unfortunately, the courts are reluctant to develop the law to allow written submissions to stay confidential. I think that the German legislature should amend the existing rules, particularly as the European Union has reinforced the importance of confidential information with the EU Business Secrets Directive (2016/943/EU).
From your experience, what does a well-run corporate IP group look like?
From my experience, it is always beneficial to have clear structured competences in a corporate IP group. There is a need for legal and technical experts to work closely together. In some cases, we receive the necessary technical input directly from in-house. It is always beneficial for the IP group to be appreciated within a company; litigators often need information from other departments, but if these departments do not recognise the importance of intellectual property, you may not be able to obtain the necessary information or may receive it at very short notice, which can impair its quality.
If you were to give one piece of advice to someone beginning a career in patent law, what would it be?
Get involved. I think it is important to work in cases from the very beginning until the end. That means getting insight into every specific legal and technical aspect of a patent infringement case (ie, infringement analysis, written pleadings, work with the client, oral hearing and enforcement) and not only working on single legal issues. Being an IP boutique, this is what we offer to our young colleagues. We involve them from the very beginning of their career in all aspects of the case in order to provide the best education.
Moreover, I feel that it is important to get different perspectives and learn from different people with different approaches. Again, we do not work in static teams. We also ask our associates to work with different partners.
Moreover, different perspectives do not stop there. As a young lawyer, you should also analyse what other experienced litigators at other firms do – how they react in front of the judges, how they get around a difficult problem and how they have been successful. Doing so will enable you to improve – and not only in your professional life.
How do you expect the patent litigation market in Europe to develop over the next five years?
I expect that the patent litigation market in Europe will begin to develop once the UPC is up and running. Although problems remain, I am convinced that the system will start soon – my best guess would be mid-2020. After that time, the patent litigation market in Europe will likely become more important from a global perspective, as it will be even more interesting for large companies to litigate their cases in Europe. Under the UPC system, I expect that national law boutiques will become more relevant, as they are in a position to represent clients all over Europe. Therefore, the advantage of international law firms with offices in every country will become less important. A national boutique could provide the same degree of services but with more flexibility for clients.
Senior Partner [email protected]
Peter Kather is the founding partner of Kather Augenstein, an IP boutique that specialises in patent litigation. He has more than 30 years’ experience in IP law consulting and litigation, with a particular focus on technical IP rights. Dr Kather has handled hundreds of patent infringement cases before the German courts, as well as international cross-border proceedings. He regularly cooperates in validity proceedings. His expertise ranges from engineering and telecoms to chemistry and biotechnology.
Click here to see his IAM Patent 1000 2019 profile.