JUVE Comment

This patent litigation practice positioned excellently across Europe is a market leader in Germany, too. Thanks to its well-rehearsed mixed approach, the firm has already built up numerous renowned litigators among both lawyers and patent attorneys – a team structure that sets it clearly apart from competitors Hogan Lovells and Hoyng ROKH Monegier. The different disciplines are now almost equally represented in the partnership. In pharma litigation, the team around Jüngst and Wolters-Höhne impressed the market with a large number of important cases for regular clients like Stada and Fresenius Kabi. One highlight was the successful defence of Teva’s blockbuster MS drug Copaxone against competitor Mylan. The technically broad practice also landed new clients, e.g. SAP – previously advised by the IT practice – for infringement proceedings and an employee-invention dispute. Other examples of working on the interface with other practices include Envipco returnable bottle readers (together with antitrust and public procurement). After a successful entitlement action, it also filed complaints with the Federal Cartel Office. Among the many patent attorneys with a strong name in litigation is Michael Alt, who, as part of an integrated team, represented regular client Nestlé against Jennewein regarding a patent for baby food, which has been used more frequently recently. On the downside, the firm did not feature heavily in the connected cars cases. Although it has strong relationships with industry giants like Nokia and Broadcom, these chose other advisors for these proceedings.

Strengths

Litigation provided by mixed teams and interoffice cooperation in one of the strongest European IP practices.

European strategy

The Bird & Bird patent team built up this pan-European presence many years ago and has acquired with it a reputation as a European market leader. It has not only one of the largest teams, but also very renowned partners in most jurisdictions. The teams in Düsseldorf and Munich in particular continue to operate at the top of the German market. The teams in Amsterdam, London and Paris are also strongly positioned. Unlike the patent teams in other large international firms like Allen & Overy or Freshfields, IP is deeply rooted in the overall Bird & Bird structure. The patent team has therefore plenty of time to develop young partners to ensure a smooth generational change. In Paris there is room for a third, young partner, who the firm has to appoint in good time. Bird & Bird has a large and fully integrated practice in London, though this is operating in an uncertain environment with Brexit looming. It must find a strategy to ensure that the shift of the power structures between its national teams does not hinder the development of the European practice. This is all the more important since Allen & Overy and Hogan Lovells are currently developing their teams specifically for pan-European litigation in cross-border cases. It is therefore a welcome development that German patent attorneys offer a useful interface for close cooperation with the other European practices.

Recommended individuals

Christian Harmsen (“outstanding reputation, which is fully justified”, client), Oliver Jüngst, Felix Rödiger, Matthias Meyer (“excellent coordinator of multijurisdictional litigation”, client), Boris Kreye, Anna Wolters-Höhne; patent attorneys: Daniela Kinkeldey, Michael Alt (“very experienced in biotech”, client); (“patent attorneys and litigators work excellently side by side”, client about whole team)

Team

13 partners, 4 counsel, 32 associates, incl. 19 patent attorneys

Specialties

Patent litigation conducted by lawyers and patent attorneys, mainly for the pharmaceuticals, biotech, chemicals, electronics and telecoms sectors. Advice concerning patent strategies and licences and on the interface with antitrust. Frequent patent filing for selected clients. Strong trademarks and unfair competition practice.

Clients

Litigation: B. Braun (claimant) against Becton Dickinson over safety intravenous catheters; Baxter/Gambro (claimant) against Fresenius over membrane technology in dialysis; Broadcom (claimant) against Netflix, CA, Palo Alto Networks over F5; Canon (claimant) against various toner manufacturers over toner cartridges; Edwards Lifesciences (claimant) against Meril over heart valve prostheses and catheters; Electrolux (claimant) against BSH Hausgeräte over vacuum cleaners; Envipco (claimant) against DPG, Gerolsteiner and Rako over German bottle deposit system; Fisher & Paykel (claimant) against Flexxicare/Medisize over medicinal products; Fresenius Kabi (defendant) against Eli Lilly over cancer drug pemetrexed; Honeywell (claimant) against Opticon over QR code devices and against Huanxin, Sino Resource over coolant for cars; Huawei against OptisCellular over broadband networks; Husqvarna (claimant) against GlobGro, Greenworks and Cramer over lawnmower robots; KCC (defendant) against Rogers over electronic circuits; Neomaterials (defendant) against Rhodia over auto catalysts; Nestlé (defendant) against Jennewein over baby food; Nokia (claimant) against Oyster Optics over software and against Lenovo over video signal coding; Sandoz against Roche/Genentech over autoimmune and cancer drug rituximab; SAP (defendant) against Data Scape over software; Stada ongoing, incl. as claimant against Eli Lilly over cancer drug pemetrexed and against (defendant) Novartis over cancer drug Everolimus; Teva (claimant) against Mylan over MS drug Copaxone; Teva (claimant) against Astra Zeneca over cancer drug fulvestrant; Teva and Stada (defendant) against MSD over cholesterol drug ezetimibe/simvastatin; WalkMe (defendant) against TTS over software; Zentiva (defendant) against Novartis over cancer drug everolimus; ongoing litigation for Thermo Fisher, Valeo. Prosecution: Airbus, American Axle & Manufacturing, B. Braun Melsungen, Emery Oleochemicals, Garmin, Hako, Merck Patent.