JUVE Comment

The French team of this US firm is strongly positioned in the market thanks to its presence in a broad technical spectrum of patent litigation. Over the past twelve months, Jones Day was again able to increase its presence in many French proceedings with well-known Thomas Bouvet as the only partner in the team.

The broad range of technical specialties is demonstrated by clients such as Knauf, which it represented in a battle over building insulation, and Lufthansa, for which it litigated in a case over aeroplane seats. New client Wybotics is a further example, with the team representing the company in a battle over pool-cleaning robots.

Traditionally the team has strong roots in the life sciences and pharma sectors, where it boasts clients such as Daiichi Sankyo. Jones Day can also point to much activity for medical product manufacturers, for example defending Schwind against Carl Zeiss over laser-eye surgery, as well as in several cases for long-term client Amplitude over prostheses.

On the other hand, Jones Day is very rarely involved in mobile communication battles, which differentiates the patent team from competitors such as Hoyng ROKH Monegier and Allen & Overy. In this sector Infineon is currently the only client as a co-defendant of Orange in the epic battle with Intellectual Ventures over DSL technology.

The team is currently struggling to raise its headcount and lay a solid foundation to catch up to the firms positioned more strongly in France, such as Allen & Overy and Bird & Bird. The human resources for UPC cases are also quite slim. A second partner alongside Thomas Bouvet would be a good idea. When it comes to UPC cases, the good integration of the Paris team within the European practice somewhat eases the pressure to grow.

Strengths

Integrated patent litigation in Europe and the US. Litigation concerning SPCs and plant protection.

European set-up

Jones Day is a globally integrated firm with a strong IP practice. The European team has an especially strong footprint in life sciences disputes. Internationally, close cooperation with the strong US team is an asset, as is the integrated work with patent attorneys mainly located in the German offices. But cross-border proceedings like those for Lufthansa Technik and Schwind are the exceptions. More joint activity between the three national groups will be necessary, especially with the UPC about to launch, if Jones Day hopes to play a strong role like that aimed for by competitors Hogan Lovells and Bird & Bird.

The UPC offers much potential, and this well-rehearsed cooperation could be particularly advantageous for US clients.

The foundation for this has already been laid: The European patent practice at Jones Day is present at some of the key locations for patent disputes in Europe, including Munich, London and Paris. Another pillar of the European practice is the litigation-experienced patent attorney team in Germany, which gives Jones Day the opportunity to run UPC cases with mixed teams. On the other hand, although the firm also has an office in Düsseldorf, Jones Day is not visible here with any well-known partners.

Recommended individuals

Thomas Bouvet (“belongs to the crème de la crème of French patent litigators”, competitor)

Team

4 lawyers

Specialties

All-round IP activity. Licensing contracts, transactions and strategic advice.

Clients

Litigation: Lufthansa Technik (claimant) against Astronics, Panasonic and Thales Avionics over aeroplane seats; Infineon (defendant) against Intellectual Ventures over SEPs; Schwind (defendant) against Carl Zeiss over laser-eye surgery; Illinois Tool Works and Instron (claimant) against BIA over car-crash-test catapults; Knauf Insulation (defendant) against Saint Gobain over devices used for building insulation; Wybotics (defendant) against Zodiac over pool-cleaning robots; ProGeLife SAS (claimant) against Satt AST, Inserm and the University of Bordeaux on licence agreement concerning biotechnology for treating skin diseases; Eligo Bioscience (defendant) against SNIPR Biome over CRISPR/Cas patents; Amplitude (defendant) against SERF regarding infringement claims over prosthesis; Amplitude (claimant) against Dedienne Santé regarding entitlement action over prosthesis (settled 2022); Daiichi Sankyo (claimant) against six generic drug companies on SPC for anti-cholesterol medication; Star Fruits in complaint about revocation of community plant variety right at the Board of Appeal of the Community Plant Variety Office. Advice: Vestergaard Frandsen on trade secrets.