JUVE Comment

The IP litigation team at this global, full-service law firm shows consistent strength in high-profile pharmaceutical litigation cases. Herbert Smith Freehills has picked up new clients such as biotech company CSL Behring while retaining key names Gilead and Unilever. Herbert Smith appeared in the UK patent courts for the latter several times over the past year. Indeed, Herbert Smith litigated for clients in all areas of the life sciences sector, including medical technology and diagnostics. It has also forayed into inventors’ rights, acting for defendant Unilever in a groundbraking judgment of the UK Supreme Court. As well as working in pharmaceutical litigation, Herbert Smith continues to participate in much advisory work. The firm has been retained by global pharmaceutical companies Hoffman-La Roche, Gilead and Biogen for advice, which includes specialist work such as arrow declarations and SPC-related disputes. This specialisation in life sciences continues to shape the firm’s practice, but there are signs of a more diverse approach emerging. For example, amid a raft of advisory work for pharmaceutical clients, the firm won new clients such as Weir in mining and construction, and Koopmann in a case over a water-balloon-filling apparatus. Herbert Smith is also acting in other fields of technology, for example for a television broadcaster regarding data collection and for an e-cigarette provider. There have been no partner hires, with the existing six partners spanning the broad range of patent work. However, Herbert Smith continues to expand its lower ranks with a consultant from in-house and an associate to boost its technology expertise. This is significant as the mature practice looks to make in-roads in emerging technologies and other areas still new to patent law.

Strengths

Litigating for originator companies in the pharmaceutical sector, including SPC regulation.

European strategy

From its London office Herbert Smith coordinates on cross-border disputes, especially for clients in the pharmaceutical sector. Outside London the firm has established IP capacities in Paris and opened an office in Milan in 2017, including an IP team. It is thus well positioned across several potential UPC jurisdictions, but Germany is still the missing piece of the puzzle in Herbert Smith’s European strategy. The firm has an office in Düsseldorf, the site of Germany’s most important court, but no patent team. This is critical for the firm if it seeks to compete with Hogan Lovells or Allen & Overy Europe-wide for large pharmaceutical cases and the corresponding coordination work.

Recommended individuals

Sebastian Moore (“excellent”, competitor), Jonathan Turnbull (“very technical lawyer”, competitor), Sophie Rich (“highly-qualified litigator, highly experienced in cross-border coordination”, competitor)

Team

6 partners, 2 counsel, 21 associates

Specialties

Historically strong in pharmaceutical litigation. Also involved in diagnostics technology and therapeutics litigation. Much rarer litigation regarding telecommunications, energy, mining and construction technologies. Frequent advice on inventors’ rights. Considerable amounts of transactional advisory work.

Clients

Litigation: Hoffman-La Roche/Genentech (defendant) against Pfizer in cross-border infringement dispute over anti-cancer biosimilar bevacizumab, including coordination in other European countries; Unilever (defendant) against Professor Shanks over inventor rights on diagnosis methods for diabetes before the UK Supreme Court; Gilead (defendant) against Teva and Accord in revocation case over SPCs for HIV treatments; Ariosa Diagnostics (defendant) against Illumina and Sequenom in infringement claim concerning diagnostic technology for genetic disorders; CSL Behring (claimant) in UK revocation case against Shire’s treatment for HAE symptoms; Koopman (defendant) against Tinnus Enterprises in infringement and revocation case over a water-balloon-filling apparatus.