JUVE Comment

The patent litigation team of this international full-service firm has cemented its place among the market leaders with a sizeable number of high-end instructions. The team impresses the market in legally and technologically complex cases for pharma clients as well as high-tech companies from the telecoms and computer sectors. The practice drew attention with the suit for Moderna against BioNTech over mRNA patents.

Other high-profile examples include the litigation for Facebook parent Meta against Voxer and advice to Palantir in the dispute over the authorship of data protection patents. The team led by Hufnagel and Prinz zu Waldeck und Pyrmont works closely with the UK and US practice. The team also has strong ties to Apple, even though it had to leave the current major case against Ericsson to the company’s two other regular advisors, Hogan Lovells and Hoyng ROKH Monegier.

Freshfields is still active for regular client Continental. With the dispute between Nokia and Daimler coming to an end, Freshfields again represented the client as co-litigant of Ford in the connected cars dispute against IP Bridge. The firm brings the cooperation between its patent team and antitrust lawyers into play here.

Freshfields made a clear statement about the long-term development of its team by appointing the already well-known Nina Bayerl as the third partner. She made a very good name for herself on the side of Lenovo in the meanwhile settled battle against Nokia as well as in numerous pharma suits. She thus complements the practice in its two central technology specialties.

Although the team is still relatively small compared to international competitors, such as Hogan Lovells and Bird & Bird, the partner appointment gives the patent team scope to take on more high-volume instructions (especially at the UPC) and at the same time bolstered the Munich team. This is a wise move, as the patent court there and the city as a whole will gain in importance with the UPC’s arrival.

Strengths

Pharmaceuticals and telecoms litigation, advice on the interface with antitrust.

European set-up

The firm’s well-regarded cross-border links are worth noting; Freshfields provides a masterclass on how to ensure all European offices remain part of a well-organised machine. In particular, the Amsterdam-Düsseldorf-Munich axis is strong. This was demonstrated, for example, in the joint representation of Moderna against BioNTech over mRNA patents. Here, the Amsterdam team took the lead for Europe.

Slowly but surely Freshfields is integrating the London team on more cases. The European practice regularly acts in pan-European proceedings for Apple or Novartis, for example, and Meta now also relies on an international team from the firm.

With regard to the UPC, the patent practice of the full-service firm is particularly strong on the European continent. The teams in Amsterdam, Düsseldorf and Munich are the mainstays of this well-integrated patent practice. The London office still looks small in terms of litigator numbers compared to competitors such as Allen & Overy and Hogan Lovells. In Amsterdam the well-staffed office stands tall alongside such rivals. With its strong presence in high-profile cases in the pharma and mobile communications fields, the German team belongs to the group of market leaders.

On the other hand, Freshfields forgoes patent experts in Paris, preferring to cooperate with the general dispute resolution team instead. This strategy may limit the patent practice as regards cross-border disputes and the UPC. Moreover, because of the strong pharmaceutical focus, the weak presence in Milan as a potentially important UPC location could prove to be a disadvantage.

Recommended individuals

Nina Bayerl (“very canny”, “really good and agreeable”, competitors), Frank-Erich Hufnagel (“brings surprising new ideas into defence teams”, “outstanding analyst and litigator”, competitors), Wolrad Prinz zu Waldeck und Pyrmont (“first-class team leader and coordination of complex patent disputes”, “strong presence, precise to the smallest detail”, competitors)

Team

3 partners, 13 associates

Specialties

Patent litigation, licences, transactions. Close cooperation with teams in trademarks and unfair competition, antitrust, commercial litigation and liability.

Clients

Litigation: Moderna (claimant) against BioNTech over mRNA patents; Novartis (claimant) against Zentiva and Aliud over breast cancer drug everolimus; Ajinomoto (claimant) against CJ CheilJedang over method for production of amino acids; BMS/Ono Pharmaceutical/Prof. Honjo (defendant) against Dana-Farber over cancer immunotherapy; Meta/Facebook (defendant) against Voxer over live broadcast feature; Palantir (claimant) against Marc Abramowitz over inventorship of data protection software and trade secrets; regular litigation for Apple and Xiaomi (all public knowledge).