JUVE Comment

The patent team at international firm Bird & Bird is continually recognised for its strong base of international clients, and the close cooperation between its European offices – in this respect, the French team is no exception. Under the guidance of partner Anne-Charlotte Le Bihan, whom the market considers “a tough opponent” in patent proceedings, the firm’s Paris office is hot on the heels of the market leaders, with the team acting for several high-profile clients in the pharmaceutical sector, including Allergan concerning glaucoma treatment Bimatoprost.

However, the team is demonstrating that its work for generic drug companies is not confined to just life sciences, with the team also engaged for companies in plant protection. For example, the Paris office is working for Life Scientific concerning an ingredient used in plant fungicides, demonstrating the team’s flexibility in tackling more niche aspects of the patent market. In medical devices litigation, too, the team is among the market leaders, with its cross-border work for Edwards Lifesciences securing several victories.

Despite the Paris team sharing several such clients with its other European offices, it does not represent Nokia. Although, like Edwards Lifesciences, this is a strong client for the firm’s London, Munich and Amsterdam offices, Nokia has chosen Allen & Overy in France. With other Bird & Bird offices in Europe maintaining a roughly even balance between life sciences and telecommunication clients, the Paris office remains less visible for the latter, although it is representing Broadcom in the wide-ranging case against NPE Intellectual Ventures. Given increased competition with respect to the impending UPC, this instruction puts the firm in a good position for future SEP litigation.

While its partners are undoubtedly well regarded, Bird & Bird may need to assess its next generation of patent partners. With Yves Bizollon edging towards retirement age, the firm must promote the talents of its younger litigators in order to continue winning new instructions. This is especially true with Anne-Charlotte Le Bihan leading the bulk of the firm’s patent work – despite its high head-count, only a few of its lawyers are visible and active in patent litigation. With the UPC set to begin in the coming months, greater emphasis on the firm’s younger assets could provide the perfect impetus for Bird & Bird’s less senior bench to make a name for itself.

Strengths

Well-oiled pan-European patent litigation in all technical fields.

European set-up

Unlike other large international firms like Allen & Overy, IP is deeply rooted in the overall Bird & Bird structure. The patent team built up this pan-European presence many years ago and has acquired with it a reputation as a European market leader in jurisdictions such as Germany. This is evidenced by numerous campaigns for such clients as Nokia or Sisvel, which offices in various jurisdictions jointly manage, with the UK and German teams frequently working together. On the other hand, the French practice does not represent either client.

For life sciences clients, such as Gilead, Teva and Edwards Lifesciences, it is not unusual for the teams from France, Italy, and the Netherlands to come into play. For CureVac, the UK and Germany offices are closely integrated; for Nestlé, which Bird & Bird advises across Europe, the Dutch practice plays the lead role. Thanks to such instructions, Bird & Bird is considered the market leader for pan-European series of proceedings alongside Hogan Lovells and Hoyng ROKH Monegier.

The chances of this remaining the case when the UPC arrives are good, as the firm advises SEP holders which are sure to use the court from the very beginning. The many generic drug manufacturers on Bird & Bird’s client list could also launch central attacks on patents for original products. Bird & Bird’s European practice is positioned extremely broadly for the UPC: it has established teams at all key UPC locations, including Paris and Munich. It can draw on patent attorneys with litigation experience from the German practice. As one of the largest teams in Europe, Bird & Bird has the manpower necessary to handle multiple complex UPC cases at the same time. One of the main tasks for the senior partners will therefore be to train up a homogeneous team of young partners to develop new work together. The client base offers an almost perfect foundation for this.

Nevertheless, Bird & Bird has one further task left: to raise its US visibility so as to strengthen its US client contacts for pan-European litigation. Bird & Bird’s US presence is small, especially since competitor Allen & Overy has recently invested considerably in its US IP practice.

Recommended individuals

Anne-Charlotte Le Bihan, Yves Bizollon

Team

14 lawyers, 2 patent attorneys

Specialties

Focus on patent litigation. Advice concerning patent strategies and licences and on the interface with antitrust.

Clients

Litigation: Edwards Lifesciences (claimant) against Meril over transcatheter heart valves; Life Scientific (defendant) against Syngenta over second application of azoxystrobin; Allergan (claimant) against Mylan over Bimatoprost; SERF (claimant) against Adler and Amplitude over hip and knee protheses; SATT AST (Inserm, University of Bordeaux, CHU de Bordeaux, defendant) against ProGeLife over licence agreement on patented invention related to skin cancer; Honeywell (defendant) against Manulatex over safety products, incl. product seizures; Nexans (defendant) against Prysmian over fibre optic cables; Microsoft (defendant) against Ferid Allani over icon displays; Broadcom (defendant) against Intellectual Ventures over SEPs for DSL; Minakem (claimant) against Melchior over method for producing cyclopropane; Lesaffre (defendant) against Jouffray Drillaud and Danstar Ferment over fermentation plant products; Nespresso (defendant) against ECC over coffee capsules (Court of Appeal); Rescaset Concept (defendant) against Cellulopack, Proplast over biodegradable and compostable packaging; ABB (claimant) against GE Grid Solutions (GE) over high-voltage direct current converter stations; Petzl (defendant) against Tractel over safety harness; Novares (defendant) against Mann & Hummel over oil separator for motor engines (Court of Appeal); Baxter (defendant) against former employee (Court of Appeal and Cour de cassation) over employee invention rights; HEF (claimant) against SIBO over surface engineering.