Dr. Ulrich Worm

Patent Litigation and Patent Advisory

• Defended an airline against allegations of patent infringement by a non-practicing entity in relation to a mobile boarding software solution.
• Advised European conglomerate of companies in the machinery sector on freedom-to-operate and design-around questions.
• Represented Japanese company in the telecommunication sector in several patent infringement and patent invalidation litigation cases concerning mobile communication devices against US based technology company.
• Represented Chinese producer of aerogel materials in several patent infringement and nullity/opposition proceedings against US competitor.
  Represented Chinese producers of artificial sweeteners in patent oppositions proceedings against US based competitor before the European Patent Office
• Represented US based producer of chip sets in several patent infringement and nullity proceedings against non-practicing entity. 
• Represented a pharma company in a patent dispute with a competitor in relation to the market entry of a new pharmaceutical product.
• Represented Japanese company in the telecommunication sector in several patent infringement and patent invalidation litigation cases concerning mobile communication devices against Chinese telecommunications giant.
• Represented US based producer of fitness equipment in several patent enforcement activities.
• Advised an international investment bank on the implications of pan-European patent litigation cases involving one of the companies the investment bank had previously invested in.
• Advised a US-based hedge fund on the implications of pan-European patent litigation cases involving two portfolio companies.
• Represented an airline in a patent litigation case related to a mobile boarding software solution. 
• Advised a German automotive supplier on a Joint Venture in the field of carbon and other composite fibers.
• Represented a China-based medical devices manufacturer in six patent litigation cases (three cases in proceedings on the merits and three cases in preliminary injunction proceedings). In addition to conducting patent infringement and invalidation litigation in Germany, the matter required coordination with parallel litigation cases in the US.
• Represented a Netherlands-based electronics conglomerate in a dispute with a Korean competitor concerning LED technology. In addition to conducting patent infringement and invalidation litigation in Germany, the matter required coordination with parallel litigation cases in the US and Korea.
• Represented a US-based medical devices manufacturer in a pan-European patent litigation case.
• Represented a UK-based manufacturer of electronics and electrical components in several German patent litigation cases and coordinated parallel court actions in Asia and other European countries.
• Advised a US-based automotive supplier in a technology dispute with major European car manufacturers and other automotive suppliers.
• Advised a Chinese car manufacturer on the acquisition of technology from a European competitor.
• Advised a German-based manufacturer of sanitary products on fighting Chinese copies of its patent protected products.
• Represented a US-based medical devices manufacturer in a patent litigation case which involved a preliminary injunction against the patent infringer.
• Advised a US-based specialty chemicals producer on fighting knock-offs of its process patent protected chemicals.
• Represented a German manufacturer of household appliances in a patent infringement action against an Eastern European infringer.
• Represented a US-based medical devices manufacturer in a patent litigation case against a Swedish competitor.
• Represented a Hong Kong-based household appliances manufacturer in a patent dispute with a German competitor.
• Represented a German plastics producer in a patent litigation case against one of its domestic competitors.
• Represented an international sports apparel producer in a patent litigation case which interfered with the contemplated closing of a corporate transaction.

Trademark Litigation and Trademark Advisory

•  Represented one of the largest global internet sales platforms in several court cases about Intellectual Property infringements committed by users of its platform.
• Advised US based producer of sports equipment on trademark dispute with German competitor.

Information Technology

• Advised major bank on the development and implementation of a digital asset management platform.
• Advised a German player in the fashion industry on a cloud computing project, on a project to restructure its IT infrastructure, and on an outsourcing project.
• Advised a US-based software provider on the licensing of accounting software to a leading car manufacturer.
• Advised a global supplier for the rail industry on a software related dispute with one of the leading European train operators, on an IT Co-Operation agreement with another supplier and a research organization, and on a dispute related to software and hardware with another supplier for the rail industry.
• Advised a Europe-based private equity house on the acquisition of an IT software provider for the debt collection industry.
• Advised a US-based player in the Chemical industry in relation to a “hate-posting” on Facebook against one of its managers.
• Advised one of the leading global accounting firms on an IT outsourcing project.

Data Privacy and Cybersecurity

• Advised German private equity house regarding data breach and data privacy issues.
• Advised US based producer of implantable medical devices about data privacy and cybersecurity in relation to health data transmitted by the medical devices.
• Advised US based producer of fitness equipment on data privacy aspects of fitness-apps.
• Advised Brazilian financial services company on a data breach incident under the GDPR.
• Advised Brazilian media company on its GDPR compliance project.
• Advised a US-based rating agency on data protection implications of a contemplated investment in the field of solutions for the rating of small and medium sized companies.

Doctor's Degree (PhD in Law), University of Frankfurt am Main

Second State Law Examination (bar exam), Frankfurt

Legal Clerkship (Referendariat), Higher Regional Court Frankfurt am Main

First State Law Examination, Mainz

University of Mainz

Kerschensteinerschule, Wiesbaden, Professional training diploma in chemistry

Bar

• Frankfurt am Main, Germany

• Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht (GRUR)