JUVE Comment

This strongly-positioned patent team enjoys a good reputation in pharma litigation. Numerous well-known generics manufacturers, including Accord, Sandoz and Teva, traditionally rely on the UK team of the full-service firm. But like competitor Pinsent Masons, Taylor Wessing has successfully added innovators and biotech companies in recent years.

The UK team also has a solid position in the medical devices sector. Lupin counted on the patent practice in the UK patent proceedings against the Italian company Chiesi Farmaceutici in connection with an asthma inhaler. The team was kept especially busy in a host of suits for Abbott before the London courts concerning various medical devices, among them a dispute against Dexcom over a monitoring device for glucose. Due to the global rise of diabetes, this technology is commercially very significant and could boost Taylor Wessing’s visibility further. The small Cambridge team also advises biotech start-ups stemming from the university on licensing and ownership of IP, often related to transactions and cooperations.

The team also pushed ahead with advice in the hard-fought mobile communications sector. In litigation for Ericsson and Oppo against NPEs, the team demonstrated that it does indeed have the expertise needed for high-profile FRAND litigation, even though Taylor Wessing has yet to reach the visibility of Hogan Lovells or Bird & Bird. The two competitors also work as integrated European teams to a much greater extent than has been seen so far at Taylor Wessing. However, with the developing reputation of the tech specialist James Marshall, the firm is in a good position to increase its footprint in this sector.

The firm is also driving forward advice on trade secret issues. The team defended Shenzhen Senior Technology Material against an accusation of a breach of trade secrets by Celgard in connection with lithium ion batteries for electric vehicles. There is potential here to widen the client base further.

Strengths

Pharmaceutical litigation for generics as well as originator companies.

European strategy

At Taylor Wessing, the UK and Germany teams remain particularly well-coordinated, with its patent practices in these countries benefitting from being in the important patent jurisdictions of London, Munich and Düsseldorf. The Amsterdam and Eindhoven offices also have strong ties with Benelux, using the firm’s small Belgium office to coordinate strategy between, especially, the Netherlands and Belgium.

Taylor Wessing’s European offices are not fully financially integrated, and its teams develop joint work between offices less frequently than some of the European market leaders, such as Hogan Lovells and Allen & Overy. Nevertheless, the patent team’s setup in all major jurisdictions is well presented for more cross-border work, an asset given an impending UPC. However, unlike some of the market leaders, Taylor Wessing has not yet built up its own patent attorney practice.

Recommended individuals

James Marshall (“pays attention to every detail and aligns the arguments with the international strategy”, competitor), Simon Cohen, Michael Washbrook, Matthew Royle (“strong litigation skills and involvement in technically complex proceedings”, competitor)

Team

18 lawyers

Specialties

Broad range of patent litigation activity, especially in the life sciences sector. Experienced in SEP and FRAND cases on the defendant side. Advisory work, for example SPC regulation and transactions.

Clients

Litigation: Abbott (claimant) against Edwards Lifesciences over repair equipment for heart valves; Abbott (claimant) against Dexcom over glucose monitoring devices; Lupin (defendant) against Chiesi over asthma inhalers; Mylan (defendant) against Neurim and Flynn over insomnia drug Circadin; Ericsson (co-litigant) against Unwired Planet and Huawei in Supreme Court case on FRAND and jurisdiction; Oppo (defendant) against Sisvel and Mitsubishi Electric in infringement and revocation case over SEP and FRAND including jurisdiction (settled 2021); Shenzhen Senior Technology Material (defendant) against Celgard over trade secrets relating to technology in lithium ion batteries.