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Wolrad Prinz zu Waldeck und Pyrmont

Partner

Artificial intelligence | Industrials | Intellectual property | Life sciences | Technology | Telecommunications |

first-class team leader and coordination of complex patent disputes

Competitor quotations, JUVE 2021/2022

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About Wolrad Prinz zu Waldeck und Pyrmont

Wolrad is patent litigator specialising in the intersection of competition and patent law.

He helps clients defend against patent assertions to maintain business continuity as well as defending their intellectual property against infringement, thereby safeguarding their market position. Since the inception of the Unified Patent Court, Wolrad is representing several clients in complex proceedings before various divisions as well as the Court of Appeal.

With over 20 years’ experience in the field, Wolrad has built an extensive track record in patent litigation proceedings, acting and advising on a wide range of proceedings before the specialised patent courts in Germany and on cross-border proceedings, including evidence gathering measures such as § 1782 proceedings. Known for his precision and tactical ingenuity, Wolrad seeks to protect his clients’ market position in every matter, coordinating multijurisdictional teams to develop creative strategies that deliver favourable results.

Wolrad’s practice spans several sectors, from technology and telecommunication to biotech and pharma, where he represents national and international clients in court proceedings, both before German courts and the UPC. This experience enables him to anticipate and manage risk effectively with an eye to maintaining business continuity for his clients throughout.

Prior to joining the firm, Wolrad worked at the Max Planck Institute for Intellectual Property, Competition and Tax Law in Munich, with a focus on patent law, in particular on biotech and genetic inventions. From 2004 to 2008, he additionally was program director at the Munich Intellectual Property Law Center, where he was responsible for its LLM IP program. During his LLM studies in Washington DC, Wolrad worked as judicial intern to the Hon Randall R Rader at the US Court of Appeals for the Federal Circuit.

Wolrad speaks German, English, French and Russian.

Recent work

  • Representing Xiaomi in its litigations against and against Panasonic and Nera in UPC and German proceedings.
  • Representing Alexion in UPC provisional measures proceedings against Amgen and Samsung Bioepis relating to eculizumab biosimilar product.
  • Representing Sharkninja in litigation against Dyson in the UPC relating to vacuum cleaner technology, including overturning a provisional injunction on appeal.
  • Representing Kodak against Fuji patent assertions in UPC and German proceedings
  • Representing Palantir Inc., inter alia in patent proceedings relating to data analysis and cyber security technologies
  • Defending Lenovo and Motorola against IDC and Nokia relating to video coding technologies,
  • Representing Lenovo and Motorola against ASUS in UPC and German proceedings relating to 4G and 5G telecommunication technology
  • Advising and representing Novartis during patent-enforcement proceedings relating to different active ingredients.
  • Advising and representing BMS during enforcement proceedings against MSD relating to its patent-protected anti-PD-1 antibody for cancer treatment.
  • Defending BMS, Ono Pharmaceuticals and Prof. Honjo against entitlement proceedings regarding patents protecting PD-L1 antibodies and treatments with them
  • Advising and representing a global technology company in a number of patent litigations, including defending it against standard-essential patent assertions and against the largest ever damages claim brought in patent infringement proceedings in Germany.
  • Representing Ajinomoto in complex biotech patent litigation.

Qualifications

Education

  • Universities of Heidelberg and Munich, Germany
  • George Washington University Law School, Washington DC, US (LLM IP)

Professional qualifications

  • Rechtsanwalt, Germany

Professional memberships

  • AIPPI - Association Internationale pour la Protection de la Propriété Intellectuelle (International Association for the Protection of Intellectual Property)
  • European Patent Lawyers Association (EPLAW)
  • GRUR - Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht (German Association for the Protection of Intellectual Property)
  • Working Group on Patent Judicature e.V. 

Publications

  • "International Arbitration of Intellectual Property Disputes – A Practicioner's Guide", Peter Chrocziel, Boris Kasolowski, Robert Whitener and Wolrad Prinz zu Waldeck und Pyrmont (eds), C.H. Beck Hart Nomos (2017)

  • "Intellectual Property and Competition Law", Peter Chrocziel, Moritz Lorentz and Wolrad Prinz zu Waldeck und Pyrmont (eds), Kluwer Law International, 2016

  • "Security Interests over Intellectual Property – AIPPI Study Question (General) 2016", Clemens-August Heusch, Björn Joachim, Christof Karl, Robin Keulertz, Anja Lunze, Mary-Rose McGuire and Wolrad Prinz zu Waldeck und Pyrmont in GRUR Int. 2016, pp.776-782

  • "Wars on wheels – are patents the new revenue stream for car-makers?" , Wolrad Prinz zu Waldeck und Pyrmont and Justin Watts, reprinted in The Licensing Journal, November/December 2015, pp.8-13

  • "Trade Secrets: Overlap with restraint of trade, aspects of enforcement (Q247)", Clemens Heusch, Karsten Königer, Jens Künzel, Mary-Rose McGuire, Florian Winzer and Wolrad Prinz zu Waldeck und Pyrmont in GRUR Int. 2015, pp.932-941

  • "Patents Meet Antitrust Law – the State of Play of the FRAND Defense in Germany" in Competition and Communications Law: Key Issues in the Telecoms, Media and Technology Sectors, Kluwer Law, 2014, pp.215-229

  • "Second medical use or indication claims (Q238) - Bericht der deutschen Landesgruppe der AIPPI", Andrea Schüssler, Anja Lunze, Hans-Michael Kompter, Holger Ludwig, Karsten Königer, Peter Wiegeleben and Wolrad Prinz zu Waldeck und Pyrmont in GRUR Int. 2014, pp.906-913

  • "Der U.S. Court of Appeals for the Federal Circuit und seine Bedeutung im U.S.-Gerichtssystem unter besonderer Berücksichtigung des U.S. Supreme Court", Wolrad Prinz zu Waldeck und Pyrmont and Peter Ruess in GRUR Int. 2011, pp.1-10

  • "Special Legislation for Genetic Inventions – A Violation of Art. 27 (1) TRIPS?" in Patents and Technological Progress in a Globalized World – Liber Amicorum Joseph Straus, Prinz zu Waldeck und Pyrmont, Martin Adelman, Robert Brauneis, Josef Drexl and Ralph Nack (eds), Springer Verlag 2009, pp.289-304