JUVE Comment

Under the careful guidance of patent partner David Rose, the well-positioned team at full-service firm Mishcon de Reya is slowly developing its patent expertise offering, while gaining visibility at the UK patent courts in some high-profile cases. A strong connection between David Rose and generic pharmaceutical companies is apparent in the firm’s client list, for example in litigation for Dr Reddy’s against Warner-Lambert and Pfizer over damages, following a 2018 Supreme Court decision. The case, which includes multiple parties, highlights the intergrated approach between Mishcon de Reya’s patent, regulatory and competition teams. Furthermore, the firm also acted for Lupin against Gilead to invalidate the latter’s SPC for HIV drug, Truvada.

However, alongside a new associate with tech experience who also joined in 2021, the headline news for Mishcon de Reya is its hire of former Bird & Bird tech-specialist partner Helen Conlan, who had acted for Nokia at her previous firm. This will further strengthen the firm’s work in telecommunications, which already has a solid basis in its handling of the case for TOT against Vodafone over alleged patent infringement and jurisdictional issues. Interestingly, this puts the emerging Mishcon patent team in a strong position in the UK market, given the potential rise in patent holders and implementers litigating to find licence agreements in the UK courts. On the tech side, David Rose has also kept hold of both Sky and Nintendo as key clients, although the firm is currently less visible in disputes in other areas of technology such as hardware. On the other hand, its acquisition of two new clients in the medical devices and medical data sector puts it in a good position for future litigation proceedings.

A lateral hire in the patent team’s small but growing offering would help further establish Mishcon de Reya as a serious contender to the patent teams of other full-service law firms. The latter, and other competitors on the generics side, such as Taylor Wessing, also have the advantage of a strong European network. In terms of patent work, this asset is something that Mishcon de Reya currently lacks.

Strengths

Generic pharmaceutical company work.

European strategy

Currently, Mishcon de Reya has no European offices, with the firm’s corporate approach reflected through its focus on offices in Hong Kong and Singapore. Since the firm’s patent practice currently lacks the clout of other London-centric IP firms, such as Bristows or Powell Gilbert, developing strategic relationships to other European firms might enhance Mishcon de Reya’s standing when it comes to a potential competition for clients once the UPC arrives.

On the other hand, the firm’s case for TOT against Vodafone included jurisdictional issues in Spain. The firm coordinated this case from London, working alongside in-house lawyers for TOT. Clearly, the firm’s partners are prepared to develop their cross-border expertise to tackle the ever-increasing number of jurisdictional questions posed in telecommunications cases.

Recommended individuals

David Rose (“impressive client list for a small practice”, competitor)

Team

9 lawyers

Partner moves

Helen Conlan (from Bird & Bird)

Specialties

Litigation for generics companies. Work in the regulatory field for pharmaceutical companies including in cases over SPCs. FRAND and SEP litigation.

Clients

Litigation: Dr Reddy’s (claimant) against Warner-Lambert/Pfizer regarding damages over a second medical use patent for pregabalin; Lupin (claimant) against Gilead over SPC invalidity for Truvada; Top Optimized Technologies (claimant) against Vodafone over breach of confidentality and alleged patent infringement; frequently litigation for Sky (public knowledge).