JUVE Comment

The many uncertainties caused by Brexit and the turbulent first 20 months of the COVID-19 pandemic have done nothing to harm Powell Gilbert’s excellent position in the UK patent litigation market. The firm remains, together with Bristows, the undisputed market leader in UK patent litigation. Penny Gilbert and Tim Powell were especially present once again in pharma and biotech cases. Penny Gilbert’s expertise here paid dividends in the pandemic with advice to BioNtech on securing its patent strategy for the first COVID vaccine. This work is likely to extend far into the future, should disputes over mRNA technology arise between the various patent holders. Being hired by BioNtech for the most important project in the company’s history underscores the firm’s excellent position for litigation involving traditional drugs and biosimilars, where clients also included Biogen, Kymab and Royalty Pharma.

Powell Gilbert put in a strong performance in the life sciences industry as a whole, with highlights including work for Illumina concerning DNA sequencing, and for Edwards Lifesciences in the pan-European battle over transcatheter heart valves. Unfazed by the changing conditions brought about by Brexit, Powell Gilbert coordinated an impressive number of pan-European series of lawsuits in cooperation with partner firms in other European countries, for example for Philip Morris against BAT over heat-not-burn cigarettes, as well as for Ocado against AutoStore over robot-assisted automation systems. Here, the partners also conduct the UK proceedings.

The firm’s excellent network connections to market-leading firms in other countries remain functioning better than ever. But they could come under pressure as it looks more likely than ever that the UPC, without the UK, will soon begin. The Powell Gilbert partners cannot be sure that their close friends will not now enter into other strategic alliances. There is ongoing speculation about how boutiques will fare in Europe after Brexit and in light of the UPC, and most competitors are looking towards Powell Gilbert as a test case of the viability of independent London practices.

With solid growth, the firm is planning ahead, bringing in three experienced associates from competitors. Over the past few years, the firm has grown young partners from its many associates and established them as visible litigators, for example Bethan Hopewell, Tim Whitfield and Peter Damerell. Siddharth Kusumakar is raising his profile through his work for Edwards Lifesciences. There is still more than enough quality in the younger partner ranks to ensure the firm’s market-leading position over the coming years.

The Powell Gilbert partners also enjoy an excellent reputation for mobile communications cases, including SEP and FRAND. But with the UK lead case between Unwired Planet and Huawei, where the firm worked for the latter, coming to an end, the last few months have been quieter for the team in this segment. Like other London firms, Powell Gilbert is dependent on the appeal of the London courts and several large SEP suits were recently settled here in the early stages. Powell Gilbert did, however, litigate for the Access Advance Pool and Philips against a FRAND determination brought by Vestel before the High Court.

For the time being, Powell Gilbert will have to leave the lead role in European SEP and FRAND law to the German firms in the connected cars cases. It compensates for this, however, with its strong position in pan-European disputes for clients such as Philip Morris and Ocado involving other technologies.

Strengths

Outstanding international reputation for litigation with deep bench of lawyers. Lawyers are at the forefront of developments in pharmaceuticals and telecommunications.

European strategy

The London-based boutique has made much out of its independent status and its strong relationships to other leading patent firms across Europe. Strong relations to US and Chinese companies have allowed Powell Gilbert to specialise in the pan-European coordination of cases, including running the UK cases. The initial months since Brexit have shown that this role is not changing any time soon.

But now the launch of a continental UPC is getting ever closer, and with the outstanding expertise of its partners and the excellent connections to clients, Powell Gilbert will remain one of the few boutiques who can afford a stand-alone strategy in Europe and the UK. What is certain is that the role of independent boutiques will no longer be regarded as self-evident. It will therefore take considerably more time and attention from the partners to strengthen ties with continental boutiques. They will have to pay very close attention to how Powell Gilbert’s partner firms in Germany, France, Italy and the Netherlands position themselves. Because they will only be able to offer their product, global lawsuit coordination, to clients in the best possible way if they can continue to work with leading practices in Europe. The firm does not operate in a vacuum, and international firms as well as continental boutiques will seek to use their continental European practices as leverage to prise away US clients from the firm.

Once the UPC launches, Powell Gilbert has no direct access to the court. This is a significant disadvantage, even if the partners have shown in the past that they are excellently acquainted with the court and its rules of procedure. With the current setup, it will be difficult for the partners to demonstrate practical experience in UPC cases to clients. This could well make the difference for clients when it comes to the coordination of large pan-European cases. An office in Dublin, a very likely candidate for a UPC local division, or an office in Munich or Paris with outstanding local patent litigators, could therefore be worth considering for the market-leading UK firm, especially as its partners are increasingly seen in EPO proceedings anyway.

Recommended individuals

Zoë Butler (“a strong partner with a high profile for life sciences”, competitor), Peter Damerell, Penny Gilbert (“unquestionably a leading litigator in the UK”, competitor), Bethan Hopewell, Siddharth Kusumakar (“he is an exceptionally good litigator”, competitor), Ari Laakkonen (“very experienced solicitor for telecommunication patents”, competitor), Tim Powell, Tim Whitfield, Alex Wilson (“a brilliant strategist who thinks outside the box”, competitor)

Team

31 lawyers

Specialties

Broad range in patent law. Particularly strong in litigation, including revocation cases and EPO proceedings (both in the UK and pan-European coordination of cases). Strong client base in pharmaceuticals, mobile technology and engineering.

Clients

Litigation: Philip Morris (defendant) against British American Tobacco over heat-not-burn cigarette technology (including pan-European coordination); Ocado (both defendant and claimant) against AutoStore over robot-assisted automation systems (including pan-European coordination); Lenovo and Motorola (defendants) against IPCom in preliminary injunction and infringement proceedings over SEP and FRAND including anti-suit injunction; CommScope (claimant) against Solid over antenna systems; Access Advance (defendant) against Vestel on trial over abuse of dominant position including FRAND issues; Kymab (defendant) against Regeneron in infringement dispute before the UK Supreme Court and EPO proceedings over therapeutic antibody development; Biogen (claimant) against AbbVie, Fresenius Kabi and Gedeon Richter over biosimilar of Humira; Biogen (claimant) against Sandoz and Polpharma over biosimilar of Biogen’s Tysabri (including pan-European litigation strategy); Actavis (claimant) against Warner-Lambert over damages following enforcement of Pfizer’s invalid second medical use patent of pregabalin; Royalty Pharma (defendant) against Boehringer Ingelheim on royalty payments due under a patent licence agreement regarding DP-IV inhibitor linagliptin; Edwards Lifesciences (claimant) against Meril Life Sciences patents on transcatheter heart valves (including pan-European coordination); Coloplast (claimant) against Salts Healthcare on infringement and revocation of patent for ostomy bag; Illumina (claimant) against MGI Group over DNA sequencing technology; Oxford University (claimant) against Oxford Nanoimaging regarding entitlement action over microscopy technology; Saint Gobain (claimant) against 3M in UK patent revocation claim regarding patent for abrasive particles; Promptu (claimant) against Sky and Comcast regarding satellite and broadband TV systems. Advice: BioNtech regarding Covid vaccine program.