JUVE Comment

This mixed IP boutique has carved out a strong position in litigation as well as prosecution. Few French competitors have mastered the cooperation between lawyers and patent attorneys as seamlessly as Casalonga, a pioneer of mixed teams in France. In this aspect, the boutique more closely resembles German firms such as Vossius & Partner or Hoffmann Eitle. Many of the patent attorneys from Casalonga boast years of experience in litigation. Companies from the life sciences sector trust in the vast legal and technical expertise of the team, which frequently litigates for these clients before national courts as well as in parallel EPO oppositions.

Casalonga is representing regular client Biogaran, for instance, in numerous cases, including the French part of the pan-European dispute with Novartis over fingolimod, as well as the lawsuit against MSD concerning an SPC. The litigation team also represents a wide spectrum of companies in sectors away from life sciences, including medical devices, automotive, defence and consumer goods. Thanks to its successful litigation for Sagemcom in the suit against Intellectual Ventures, Casalonga also boasts experience in SEP proceedings, which are still rare in France. Competitors August Debouzy and Allen & Overy, however, have a much stronger position in FRAND cases.

The patent attorney team covers an even broader range of technical fields. This team raised its headcount once more and, independently from the close cooperation with the lawyers in patent litigation, gained recognition in the market for filing and prosecution.

Strengths

Litigation for manufacturers of generic pharmaceuticals. Patent prosecution regarding pharma, biotechnology, digital communication, computer technology and electronics.

European set-up

Casalonga is present at the EPO headquarters in Munich with a small office of three patent attorneys, but does not have any other patent experts outside of France. Nevertheless, with cooperation between litigators and patent attorneys well established, Casalonga has a good basis for combined nullity and infringement proceedings at the UPC. The mixed team has a size that enables it to handle complex cases at the new court within the strict deadlines. It also has experience in pan-European infringement cases, especially in pharma. For Biogaran and Zentiva, for example, the IP firm regularly cooperates with law and patent attorney firms in other countries. However, like most French IP boutiques and patent litigation teams, Casalonga relies on a non-exclusive network rather than more exclusive cooperations such as those entered into by Amar Goussu Staub in the UK and Santarelli in Germany.

Recommended individuals

Arnaud Casalonga, Marianne Gabriel (“I would recommend her to clients”, competitor); patent attorney: Francis Zapalowicz (digital communication and technology, electronics)

Team

8 lawyers, 24 patent attorneys

Specialties

Full-service patent prosecution practice, including revocation cases and EPO proceedings with recommended expertise in pharma and biotechnology, digital communication and computer technology. Litigation mostly for pharma companies, as well as cases in electronics and mechanics.

Clients

Litigation: Sagemcom as co-defendant of Orange and Bouygues against Intellectual Ventures over SEPs for DSL (public knowledge); Biogaran (defendant) against MSD over cholesterol drug ezetimibe/Inegy (public knowledge); Biogaran (defendant) against Novartis over multiple-sclerosis drug fingolimod/Gilenya; Biogaran (defendant) against Daiichi Sankyo and Sanofi over SPC for prevastatine; Biogaran (opponent) against Amgen in EPO opposition over cinacalcet; Zentiva (defendant) against Eli Lilly over cancer drug Alimta (public knowledge); Ortho Partners (defendant) against Ormco over brackets; L’Oréal (defendant) against Henkel in EPO opposition over compositions for cosmetics; L’Oréal (defendant) against Unilever in EPO opposition over packaging; Total Energies (opponent) against Shell in EPO opposition over liquid-fuel composition. Prosecution: filing and oppositions for Biogaran, L’Oréal, Total, Vallourec. Filing for Arkema, AlgoTherapeutix, Chereau, Ethnodyne, Eurecat, Flowbird, General Electrics, Jacir, MCPP, Michelin, Renault, Safran, SKF, SPPM, STMicroelectronics, Terega, Terumo, University of Geneva (all public knowledge).