JUVE Comment

For many years now, the patent litigation practice at Carpmaels & Ransford has enjoyed a strong position in the London market, which extends Europe-wide when it comes to both patent prosecution and litigation in the pharma and biotech fields. Patent attorneys, such as Cameron Marshall, Harvey Adams, Hugh Goodfellow and Edward Oates have an outstanding reputation. And according to one competitor, Daniel Wise could be “the new rising star of the firm”.

Carpmaels plays a prominent role in EPO oppositions for core clients, such as Novartis and Regeneron regarding Praluent. In the past year, the firm’s litigators and patent attorneys were also heavily involved in several infringement and revocation proceedings for various Johnson & Johnson subsidiaries. One example is the work for AMO in its pan-European battle against Alcon over eye surgery technologies. For years, the practice has also fought an intensive battle at the UK High Court and EPO for Fibrogen against Akebia and others, over an HIF stabiliser for the treatment of anaemia.

The small litigation team around Ian Kirby and David Wilson focuses primarily on life sciences disputes. Only few other London litigation practices have a presence in pharma proceedings on the side of originator companies to rival that of Carpmaels. What is more, the teams at Powell Gilbert, Allen & Overy and Hogan Lovells have not been able to shine with a mixed approach of litigators and patent attorneys. When it comes to EPO oppositions and appeals, Carpmaels plays in the top European league with Hoffmann Eitle and Vossius & Partner.

Mobile communications suits do not, however, play any major role, as the firm has largely chosen not to position itself more prominently in FRAND cases.  On the other hand, Carpmaels’ patent attorneys are involved in some cases related to electronics and telecoms patents. The prosecution practice has some notable clients in these fields, including Intellectual Ventures and semiconductor giant Micron.

European competitors like Vossius & Partner have recently invested in building up litigation teams in the telecommunications sector. But Carpmaels is deliberately following a different path and thus accepts that it will remain limited compared to the much broader UK market leaders, which enjoy a strong position in life sciences and mobile communications cases in equal measure.

There was much talk in the market this year about BASF pursuing an action for damages against Carpmaels from an incident in 2012 where an appeal deadline at the EPO was missed. It was thought that other large European patent prosecution firms might benefit from this dent in Carpmaels’ reputation. However, not least because BASF were awarded remarkably low damages (pending appeal), there is as yet no sign that there is any long-term damage to the firm.

Strengths

Pharma disputes for originator drug manufacturers, including a strong practice for EPO oppositions and appeals. Integrated approach of patent attorneys and lawyers.

European strategy

Despite having offices in Dublin and Munich, Carpmaels bundles the majority of its patent attorneys and litigation practice in London. This sets it apart from most of its direct competitors expanding in the UK, such as Marks & Clerk, or those which pursue a clear European strategy such as Hoffmann Eitle.

But now that a 2022 start of the UPC is on the horizon, Carpmaels has several aces up its sleeve. The highly litigation-experienced European patent attorneys, although mostly UK nationals, can represent cases before the UPC. The firm also has several solicitors who are admitted to practice in Ireland. This opens up opportunities for the firm with regard to the Unified Patent Court, especially if there is a local division in Dublin. In addition, Carpmaels’ integrated mixed team of lawyers and patent attorneys is fully in line with the current trend. It is one step ahead of the Dutch and French patent attorney firms.

Furthermore, Carpmaels has an office in Munich – one of the central UPC venues – although it is more of a representative office and does not focus on German work. Should this not prove helpful for the firm in continuing to play a leading role in major pharmaceutical cases involving the UPC, it may be necessary to add local trial lawyers in Munich. Its outstanding relations to the European and US life sciences industries should make Carpmaels attractive for lateral hires.

The Carpmaels partners will keep a close eye on the role of the UPC in pan-European life sciences disputes in the coming years. Other London litigation practices with a strong focus on life sciences disputes, such as the internationally-integrated teams of Allen & Overy and Hogan Lovells, will be better able to prove their merit. These could be at an advantage when it comes to procuring coordination work for European litigation.

Recommended individuals

Ian Kirby, David Wilson, Camilla Balleny (“strong litigation skills and involvement in technically complex proceedings”, competitor); patent attorneys: Harvey Adams (pharma and biotechnology, chemistry), Stephen Duffield (pharma and biotechnology), Hugh Goodfellow (pharma and biotechnology), Simon Llewellyn (pharma and biotechnology), Cameron Marshall (pharma and biotechnology), Edward Oates (pharma and biotechnology), Gary Small (digital communication and computer technology, electronics), James Warner (“trusted by a number of well-known pharmaceutical companies”, competitor; pharma and biotechnology), Daniel Wise (“the rising star of the firm”, competitor; pharma and biotechnology)

Team

11 lawyers, 88 patent attorneys

Specialties

Full-service patent prosecution practice in a broad field of technologies, including revocation cases and EPO proceedings. Litigation mostly for life sciences companies, as well as some cases in electronics and mechanics. Own practice for transaction-related IP advice.

Clients

Litigation: Ceva Santé (defendant) against Bayer over veterinary medicine; Fibrogen (defendant) against Akebia in revocation cases and EPO oppositions over HIF stabiliser for treatment of anaemia; Johnson & Johnson/AMO (defendant) against Alcon in revocation and infringement proceedings over eye surgery technology; Johnson & Johnson/Ethicon (claimant) against Meril Life Sciences over anti-wound-infection material Vecryl; Johnson & Johnson (defendant) against Teva in SPC invalidity case over anti-schizophrenia drug Xeplion; BMS (defendant) against different generic drug companies in revocation case over cancer drug Revlimid; Lycra (defendant) against Hyosung in revocation case regarding polymer patent; Olympus (claimant) against Cantel in infringement and revocation dispute over endoscopic device Endocuff; Bissell (defendant) against Philips over vacuum cleaners (settled in 2021); frequent litigation for Novartis; Regeneron over cholesterol-lowering drug Praluent; Teva over multiple sclerosis drug Clift; Highview Power over energy storage technology; Regeneron against Amgen over chronic eczema drug dupilumab. Patent prosecution: frequent EPO oppositions for Eli Lilly, Roche, Takeda; patent filing and oppositions for Align Technology, Amgen, AMO, Barclays Bank, Biogen, BMS/Celgene, CSL, Ethicon, Incyte, Gilead, Leo Pharma, Mars, Micron, Regeneron, Raytheon, Stanford University, Sun Chemical as well as various Johnson & Johnson subsidiaries. Patent filing: DePuy, Quantum, Vertex. Advice: Johnson & Johnson and Gilead on IP transactions; Harbour Biomed on IP transactions and know-how licence.