JUVE Comment

The patent litigation team at this international firm has historically been one of the UK’s most active, but it is seen as recently having lost some ground to the market leaders. It is still exceptionally strong in life sciences, and Bird & Bird continues to litigate for a raft of globally high-profile pharmaceutical clients such as Allergan and Actavis. Indeed, the firm recently represented Actavis in the Supreme Court against Eli Lilly over Tadalafil. But this year the firm has also won two new tech clients in Qualcomm and Mitsubishi (licensor to Sisvel’s patent pool). The firm is well known for its long track record in litigation for Nokia at UK patent courts, which has given it outstanding experience on FRAND cases. As such, even if Nokia is currently only involved in some FRAND cases in the UK as co-defendant, Bird & Bird might be in a good position for more involvement in future FRAND cases. These have become a key feature of the UK courts. The firm’s representation of clients across all major European jurisdictions in major proceedings puts it ahead of competitors such as Taylor Wessing. However, despite retaining top-name clients, the perceived downturn in the amount of litigation for generics manufacturers needs careful attention by the firm. An uptake of work for innovator companies could be necessary to sustain its visibility in court and the market at large. The reputation of the patent team has also suffered over the past few years since Bird & Bird’s former leading patent litigator Trevor Cook moved to WilmerHale in 2014. Apart from Morag MacDonald, none of the partners has been able to match Cook’s market presence to the extent that the firm can catch up with the market leaders. The generation after MacDonald is thus faced with real challenges. Compared to the teams at Allen & Overy or Hogan Lovells, for example, the younger partners are not as visible in the market. On the other hand, it is clear the firm is looking to diversify from its traditional litigation-heavy structure. In Europe, for example, Bird & Bird has spent the past few years consolidating its patent attorney arm. The UK litigation team works frequently together with the litigation-experienced patent attorneys in Munich. Bird & Bird was the first firm to build this mixed litigation approach and set a benchmark for its main competitors (such as Hogan Lovells and Simmons & Simmons) to follow. Bird & Bird is also looking to expand its involvement in transactions, suggesting room for expansion in its client list.

Strengths

Strong interoffice cooperation. High-profile pharmaceutical cases, especially for generic drug manufacturers. Acting in and coordinating pan-European telcommunications litigation.

European strategy

The interplay between the UK and European teams – above all with the outstanding German practice – remains as strong as ever, evidenced in the cross-referral between offices. Parallel proceedings are currently active across the UK, Germany, Italy and Belgium, with no reliance on cooperation with other firms. It is also coordinating litigation strategies across Europe from its London office, for example in Belgium for Ablynx and Vrije Universiteit Brussel on immunoglobulin antibodies. The firm remains active in all major potential UPC jurisdictions, with multiple offices in places such as Amsterdam, Düsseldorf, Munich, Milan and Paris. In addition, the teams outside Germany have access to the Munich-based patent attorney practice. It is well positioned in the German market and highly experienced in disputes such as infringement and EPO proceedings. But even a market-leading team such as Bird & Bird sees space for additional partners, especially in the Paris office. It could be disadvantageous in the medium term that the national practices have a high degree of autonomy in decision-making, and the overall team is perhaps not geared as stringently towards the UPC as is the case at Hogan Lovells and Allen & Overy.

Recommended individuals

Morag MacDonald, Richard Vary, Jane Mutimear

Team

16 partners, 23 associates, 1 of counsel

Specialties

Strong focus on patent disputes. Pan-European pharmaceutical litigation specialising in generics as well as mobile communications. Also mechanics patents. Advice on technology transfer and licensing in FRAND. Some transactional work. Own patent filing practice in its Munich office.

Clients

Litigation: Allergan (claimant) against Aspire for ophthalmic solutions; Actavis (defendant) against ICOS and Eli Lilly over tadalafil; Swiss Pharma (claimant) against Biogen on natalizumab; litigation for a pharmaceutical device company; Molycorp Chemicals & Oxides (defendant) against Anan Kasei and Rhodia concerning automotive catalysts; Tracerco (defendant) against Resman on hydrocarbon reservoirs; Ablynx and Vrije Universiteit Brussel (claimants) against VHSquared and Unilever on immunoglobulin antibodies; Sisvel and Mitsubishi Electronics (claimants) against Xiaomi over mobile communications and on FRAND determinations; litigation support work for Qualcomm; frequent litigation for Nokia (both public knowledge).