JUVE Comment

The London office of Herbert Smith Freehills continues to capitalise on excellent links to originator pharmaceutical companies, with a strong client list for work involving patent litigation and advice. What sets the highly-recommended firm apart from competitors which focus largely on drug-based pharmaceuticals is the variety of cases under the life sciences umbrella in which its partners are involved. Diagnostics are a particular strength of the firm, for example with partner Sebastian Moore leading client Ariosa Diagnostics to a settlement with opponents Illumina and Sequenom. In 2021, the team also won a new Europe-wide client in the diagnostics area. But perhaps this year’s headline is the pan-European work for long-standing client, Millennium Pharmaceuticals, which covers patents for drugs to treat cancer such as myeloma. The work, being run in parallel by the firm’s Milan outfit, showcases how the firm’s interoffice cooperation is deepening. This case also involved regulatory issues surrounding SPCs – the ability of the firm to provide advice on both UK and European regulations means Herbert Smith Freehills is perhaps one of London’s best-placed practices to advise clients in such matters.

Historically, the firm has been less visible on the telecommunications side, with partners such as Jonathan Turnbull instead specialising in consumer products and transactions alongside core life sciences patent work. However, there are signs that this imbalance in the tech side is changing. The firm has won a new client on a case concerning potential future litgiation over LED technology, and is working for a major mobile communications company in pre-litigation advice involving FRAND issues. A move into this area, which is a hot topic at the UK courts, could see the firm’s patent practice compete with firms also strong in pharmaceuticals, such as Powell Gilbert.

The patent team also secured a settlement with DRS for long-term client Sky, which has retained the firm for work outside of patent law, for example, in matters concerning cyber technology. The latter is a speciality of tech partner Andrew Moir and an asset to Herbert Smith’s patent practice if it wants to attract future clients in pharma/tech crossover areas such as medical devices. The life sciences team’s deep experience in diagnostics will help in this regard, but increased visibility in tech, as well as developing strong interoffice cooperation, could give it the edge over similar competitors, such as Allen & Overy.

Strengths

Litigating for originator companies in the pharmaceutical sector. Advising clients on 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 coordinating in the Netherlands, Belgium and Italy. Outside of London, the firm has a dedicated patent team in Milan staffed by partner Sebastian Moore, which is increasingly visible in the European market. This positioning is increasingly important given an imminent UPC which might adopt Milan as its centre for pharmaceutical disputes now that London is out of the running.

Coupled with the improving visibility of the firm’s still-young Düsseldorf patent team, Herbert Smith Freehills’ Italian and German axis provides an excellent connection for the London team into Europe. 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, which may come with the now-likely UPC. However, the firm’s Paris office still lacks the visibility and clout of its colleagues in other European jurisdictions.

Recommended individuals

Sebastian Moore, Jonathan Turnbull, Sophie Rich (“a highly skilled litigator, highly experienced in the coordination of cross-border litigation”, “simply an excellent patent litigator”, both competitors)

Team

29 lawyers

Specialties

Strong focus on pharmaceutical litigation, including diagnostics technology and therapeutics litigation. Considerable amounts of transactional and advisory work.

Clients

Litigation: Ariosa Diagnostics (defendant) against Illumina and Sequenom in infringement claim concerning in-utero diagnostic technology (settled); Gilead (defendant) against ViiV Healthcare over HIV inhibitor bictegravir; Millennium Pharmaceuticals (defendant) against multiple generics over myeloma and mantle cell lymphoma treatment drug bortezomib; Sky (defendant) against DRS over advertising data collection system (settled). Advice: British American Tobacco over IP advice for Organigram acquisition.