JUVE Comment

As one of the market leaders, this German patent litigation practice is a central pillar of the international firm, with an excellent setup across Europe. Unlike in other European countries, Bird & Bird stands out in Germany not only for the exceptional visibility of its lawyers in litigation, but also for its well-oiled mixed approach with its own patent attorneys. Of the seven recently appointed counsel, three are patent attorneys. Each discipline is now almost equally represented in the partnership. This team structure sets Bird & Bird well apart from competitors like Hogan Lovells and Hoyng ROKH Monegier.

The German patent team was very busy litigating for some of its most notable regular clients. Nokia recently fought against Daimler over connected cars patents with the help of Arnold Ruess, but then struck again with a Bird & Bird team in two major series of actions against Oppo and Lenovo over mobile communications patents. The Munich team led by Boris Kreye is fighting harder than ever for Edwards Lifesciences against Meril over heart catheters. For Fisher Paykel, a Düsseldorf team is battling very actively over other medical products.

The firm also demonstrated its vast technical breadth with major proceedings for Envipco involving returnable-bottle machines and for Nestlé over baby food.

But as at all leading litigation practices, pharma and mobile communications proceedings dominate at Bird & Bird. In the latter, the firm chiefly appears for SEP holders like Nokia and Sisvel. Despite much experience in SEP suits, Bird & Bird has yet to really step up to the plate in connected cars suits. This may change if members of the Avanci pool, which is so important for connected cars patents and includes some of Bird & Bird’s regular clients, sue other carmakers after Daimler.

In pharma proceedings, the German team impressed the market with a large number of proceedings of great business significance for generics companies, where Teva, Stada and Fresenius Kabi are on the list of regular clients. The firm’s clout suffered a blow when Anna Wolters-Höhne, its best-known pharma expert after Oliver-Jan Jüngst, left the partnership. The extra work will be easily absorbed by the large team, but a second pharma litigator will now need to be established as partner. The Munich team was bolstered with a third equity partner, who specialises in mechanics and electronics patents.

Strengths

Litigation mainly regarding pharmaceuticals and mobile communications provided by mixed teams. Interoffice cooperation in one of the strongest European IP practices.

European strategy

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 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 German team is an influential pillar of this European practice. It works especially closely with the teams in Italy and London, which are also well positioned, and to a lesser extent Amsterdam and Paris. The delay in the UPC launch means Bird & Bird will be able to cope with the Hamburg team no longer having any lawyers for litigation at partner level after Anna Wolters-Höhne’s departure.

Despite this excellent setup for cross-border cases, as well as the potential UPC, Bird & Bird has lost ground slightly to its main competitor Hogan Lovells. This is because the Hogan Lovells teams jointly develop cross-border cases across national borders to a greater extent than was recently the case at Bird & Bird. At the latter, a certain competitiveness has been seen between the two strongest practices, UK and Germany. In addition, the Allen & Overy and Simmons & Simmons teams, which are also very visible internationally, are applying pressure on Bird & Bird with their integrated setups. As such, the partners have realised that their leading position in Europe is not untouchable. One of the main tasks for the senior partners will therefore be to train up a homogenous team of young partners to develop new work together. The client base offers an almost perfect foundation for this.

It is therefore also a welcome development that German patent attorneys offer a useful interface for close cooperation with the other European practices. The main competitors have yet to set up such a patent attorney practice. Allen & Overy and Simmons & Simmons are just starting to build these up, whereas Bird & Bird started 15 years ago.

Recommended individuals

Christian Harmsen (“a safe bet in IP litigation”, client; “objective, convincing arguments”, competitor), Oliver Jüngst, Felix Rödiger, Matthias Meyer (“extremely good litigator”, client), Boris Kreye; patent attorneys: Daniela Kinkeldey, Michael Alt (“highly experienced biotech advisor”, client), Felix Landry

Partner moves

Anna Wolters-Höhne (to own firm)

Team

13 partners, 11 counsel, 24 associates (including 19 patent attorneys)

Specialties

Patent litigation conducted by lawyers and patent attorneys, mainly for the pharmaceutical, biotech, chemical, 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: Nokia (claimant) against Oppo/OnePlus over mobile communications; Nokia (claimant) against Lenovo over video signal coding (settled); Broadcom (claimant) against Netflix over F5; LG, BBC, RAI (claimants) against TCL over terrestrial TV DVB-T2; Sisvel (claimant) against TCL and Hisense over terrestrial TV DVB-T2 videocoding standards; Edwards Lifesciences (claimant) against Meril over heart valve prostheses and catheters; Baxter/Gambro (claimant) against Fresenius over membrane technology in dialysis; Fisher & Paykel (claimant) against Flexxicare/Medisize over medicinal products; Fresenius Kabi (defendant) against Eli Lilly over cancer drug pemetrexed; Stada (claimant) against Eli Lilly over cancer drug pemetrexed; Stada (defendant) against 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; Zentiva (defendant) against Novartis over cancer drug everolimus; Sandoz against Roche/Genentech over autoimmune and cancer drug rituximab; Canon (claimant) against various toner manufacturers over toner cartridges; Envipco (claimant) against DPG, Gerolsteiner and Rako over German bottle deposit system (settled in 2021); B. Braun (claimant) against Becton Dickinson over safety intravenous catheters (settled); Electrolux (claimant) against BSH Hausgeräte over vacuum cleaners; Honeywell (claimant) against Huanxin; Sino Resource over coolant for cars; Neomaterials (defendant) against Rhodia over auto catalysts; Jinko Solar (claimant) against Hanwha Q Cells in revocation case over solar technology (public knowledge); Husqvarna (claimant) against GlobGro, Greenworks and Cramer over lawnmower robots (settled); KCC (defendant) against Rogers over electronic circuits (settled); Nestlé (defendant) against Jennewein over baby food (settled); ongoing litigation for Knorr Bremse, Thermo Fisher, Valeo. Prosecution: filing and oppositions for Ablynx Airbus, American Axle, B. Braun Melsungen, EMD Serono, Emery Oleochemicals, Garmin, Hako, Merck, Microsoft.