JUVE Comment

This mixed patent practice is one of the undisputed market leaders with its presence in numerous high-calibre patent proceedings in a wide range of technologies. Lawyers such as Christian Harmsen, Oliver Jüngst and Boris Kreye as well as patent attorneys such as Daniela Kinkeldey enjoy an equally good reputation, which sets Bird & Bird apart from most other mixed teams at major international law firms. While the German patent attorneys are well integrated internally, the team works just as smoothly with external patent attorneys, for example with Graf von Stosch in the high-profile litigation for CureVac against BioNTech.

Well-known clients from a wide range of industries entrust the practice with their commercially important cases, such as Teva and Betapharm in the pharmaceutical sector. Nokia and Huawei traditionally rely on the firm’s expertise in mobile communications, as do car manufacturers Nissan and Stellantis. Medical device manufacturer Edwards Lifesciences is also a long-standing client. In addition to their involvement in infringement and nullity proceedings, the patent attorneys also regularly appear in opposition proceedings, for example for Nissan at the EPO against Neo Wireless. With this broad advisory approach, Bird & Bird has recently won over new clients such as solar company Maxeon and cloud computing solutions provider Salesforce.

Bird & Bird is also successfully expanding its patent team with young partners. It recently appointed Katharina Pehle as partner, who is praised by competitors as “really good”. Bird & Bird also appointed three new counsel – one of whom is a patent attorney. This accelerated team expansion will ensure the practice’s future success, also given that renowned partner and patent attorney Michael Alt has now left the firm. He continues to work as a technical judge at the UPC.

European set-up

Bird & Bird’s patent practice has also been a leading outfit at European level for years, with renowned teams for patent litigation in key countries such as Germany, France, the Netherlands, and the UK. The firm has IP deep in its DNA and favoured an internationally integrated approach early on. As a result, cross-border teams have been seen in numerous pan-European proceedings in life sciences and mobile communications, for example for regular clients Teva and Nokia.

This strategy is now also working for clients at the UPC, where Bird & Bird is already one of the most active law firms. Under the strong influence of the German and French partners, Bird & Bird is involved in various high-calibre UPC proceedings, with a solid presence in the medical technology sector for clients such as Dexcom, Edwards Lifesciences and NanoString. In addition, Bird & Bird has filed a nullity action against Mala on behalf of Nokia and is representing Celltrion against Novartis. The team is skilfully utilising its international network, for example for Dexcom in the dispute against Abbott, where lawyers from France, the UK and Italy are cooperating. Only Hogan Lovells and Hoyng ROKH Monegier are similarly well positioned internationally.

As one of the largest teams in Europe, Bird & Bird has the manpower to handle several complex UPC cases simultaneously. The large client base offers scope for expansion outside Europe. Bird & Bird already has good contacts with Japanese clients such as Canon. Now the firm needs to increase its profile in the US if it is to strengthen its contacts with US clients for pan-European litigation.

Strengths

Litigation in a broad range of technical fields, with a strong focus on pharmaceuticals (for both originators and generics companies) and mobile communications (including SEP and FRAND issues) provided by mixed teams. Interoffice cooperation in one of the strongest European IP practices.

Recommended individuals

Christian Harmsen (“extraordinary experience and knowledge of SEPs”, competitor), Oliver Jüngst (“excellent experience”, client), Boris Kreye (“we always hire him, no ifs or buts”, client), Annika Lückemann (“top”, competitor), Matthias Meyer (“super”, competitor), Felix Rödiger; patent attorneys: Daniela Kinkeldey (“always stands out”, competitor), Felix Landry (“very productive cooperation”, competitor)

Team

26 lawyers, 17 patent attorneys

Clients

Litigation: Betapharm against Millenial Pharma over Velcade/bortezomib; CureVac against BioNTech over mRNA patent; Stada and Zentiva against Novartis over cancer drug Afinitor/everolimus; Teva/Ratiopharm against Novartis over MS drug Gilenya/fingolimod; Edwards Lifesciences against Meril over heart-valve prostheses and catheters; Sandoz against Roche/Genentech over autoimmune and cancer drug rituximab; Broadcom against Netflix over streaming technology; Broadcom against Harman Becker in nullity suit over connected cars; Huawei against AVM (settled 2024) and Amazon over wi-fi technology; Nokia against Oppo/OnePlus over mobile communications (settled 2024).