JUVE Comment

The IP litigation team at the London office of international firm Herbert Smith Freehills is excellently-positioned in the pharmaceutical sector. Indeed, the practice has recently consolidated its position as a clear challenger to the UK patent market leaders in this sector through consistency in high-profile life sciences cases and a partnership which gains large numbers of recommendations. Over the past year, the practice has retained core clients, including originator Gilead for which it is conducting several litigation proceedings, e.g. against ViiV Healthcare over HIV inhibitor bictegravir. Here, the Herbert Smith Freehills London team also advises and co-ordinates Gilead’s strategy in several other jurisdictions in and out of Europe.

Away from drug-based pharmaceuticals, the firm also demonstrated its expertise in biotechnology and diagnostics through several core clients. Its work for Ariosa Diagnostics against claimants Illumina and Sequenom, led by recommended partner Sebastian Moore, demonstrates the firm’s ability to effectively manage multiple parallel proceedings in a complex dispute with much at stake.

The team’s win for a US client, which focuses on diagnostic sequencing technology, highlights its aptitude for the policy and regulatory aspects of the sector. Herbert Smith Freehills also continues to work in litigation and advice around SPCs, currently being involved in four references concerning SPCs, such a for core client Gilead. This involvement is sure to support the firm well following Brexit and any potential amendments to existing SPC legislation.

On the other hand, Herbert Smith Freehills remains less visible on the technology side. Currently, the firm is not involved in any leading FRAND or SEP disputes before the UK courts, with no clients actively litigating in this field. But the firm is increasing its presence in some areas of technology, for example patent infringement and damages litigation for a high-profile media company. The firm also demonstrated the breadth of its expertise through its work for Unilever in a dispute on inventors rights against Professor Shanks, which culminated at the Supreme Court. On the advisory side, a client win in the auto industry provides a good balance with the life sciences-heavy client list. But still, the lack of mobile communications cases could be a disadvantage to such a highly-regarded firm.

There is no doubt that Herbert Smith Freehills has the potential to challenge the UK market leaders in its core areas of patent expertise – especially when the team increase the number of mobile communication cases. A lateral hire on the tech side would be a clear sign that it is serious in this regard.

Strengths

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

European strategy

From its London office, Herbert Smith Freehills coordinates cross-border disputes, especially for clients in the pharmaceutical sector. An example is its work for Genentech, Hoffmann-La Roche and Roche against Pfizer, which it is co-ordinating in the Netherlands, Belgium and Italy. Outside of London, in 2017 the firm opened an office in Milan, which includes an patent team. Highly-recommended partner Sebastian Moore dedicates much time to this practice, with such positioning important given the potential development of a UPC which might adopt Milan as its centre for pharmaceutical disputes, now that London is out of the running. The firm also has a Paris office, which has further scope for growth.

However, perhaps most importantly for the firm, this year it staffed its office in Düsseldorf with the hire of partner Ina vom Feld from Simmons & Simmons. As the site of Germany’s most important patent court, establishing a patent team is crucial for the continued development of Herbert Smith Freehills’ European patent capablities. It also puts the firm in a better position to compete with Hogan Lovells or Allen & Overy Europe-wide for large pharmaceutical cases and the corresponding coordination work.

Recommended individuals

Sebastian Moore (“fantastic in life sciences”, competitor), Jonathan Turnbull, Sophie Rich (“highly-qualified trial lawyer, especially impressive in co-ordinating cross-border litigation”, competitor)

Team

6 partners, 2 counsel, 21 associates

Specialties

Strong focus on pharmaceutical litigation. Also involved in diagnostics technology and therapeutics litigation. Frequent advice on inventors’ rights. Considerable amounts of transactional and advisory work.

Clients

Litigation: Gilead (defendant) against ViiV Healthcare over HIV inhibitor; Hoffman-La Roche/Genentech (defendant) against Pfizer in cross-border infringement dispute over anti-cancer biosimilar bevacizumab; Unilever (defendant) against Professor Shanks over inventor rights 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. Advice: Unilever over inventor rights; Genentech over bevacizumab; Bridgestone and ATMS Technology over business transfer and IP rights; Reaction Engines over strategic partnership; Genesis Care over oncology research partnership.