JUVE Comment

The well-positioned London patent litigation team of Herbert Smith Freehills boasts multiple impressive life sciences instructions, especially for diagnostics and pharmaceutical clients, which continue to underpin the majority of the patent team’s work. This year, the firm achieved a settlement for core client Gilead against Viiv in a case over a blockbuster HIV drug. It is no secret that Roche retains the firm on a long-term basis, while the life sciences team continues to litigate for innovator Millennium Pharmaceuticals in the defence of a multiple myeloma and mantle-cell lymphoma drug. The life sciences team also remains visible in diagnostics, such as through work for clients such as Foundation Medicine and Ariosa Diagnostics. However, the firm has recently been less visible in the courts than competitors such as Taylor Wessing or Pinsent Masons – for example, it is not involved in any major litigation around COVID-19 vaccines.

Despite efforts to the contrary, mobile communication technology continues to remain somewhat in the background for the Herbert Smith Freehills patent practice. It retains just one major implementer for advice on FRAND, although winning client Seoul Semiconductor has provided the tech practice a chance to litigate against General Electric over white light LEDs. The practice has also won R2 Semicondcutor for litigation against Intel over processor designs. Another potential source of work in this area is the firm’s links to diagnostics companies, which by their nature necessitate expertise from life sciences and tech-specialist partners.

Despite a slight dip in market visibility over the past couple of years, however, the team has its eye on the future. It is preparing its wider IP capacities to face challenges and develop advisory strategies for clients in emerging areas such as energy transition and battery technology. Furthermore, the patent team has also won two instructions in the biotechnology litigation space, in addition to conducting advice for new clients in areas such as aerospace and food. But the firm must first focus on its stability. Since 2021, the practice has lost senior partner Mark Shillito to CMS Cameron McKenna and another senior partner to Hogan Lovells. Furthermore, highly recommended regulatory specialist and former partner Sophie Rich has changed roles to become a consultant. On the other hand, the firm did promote Andrew Wells to partner: “He is a talent, and one to watch for the future,” says a competitor.

Strengths

Litigating for originator companies in the pharmaceutical sector. Advising clients on SPC regulation.

European set-up

From its London office, Herbert Smith Freehills coordinates cross-border disputes, especially for clients in the pharmaceutical sector. The work for Roche and Millennium Pharmaceuticals, involving the firm’s German and Italian offices, are stand-out instructions for recommended partner Sebastian Moore,who is the head of IP in London. This connection remains important for the firm’s pan-European ambitions, with the strength of the interplay between its London and Milan offices providing a solid basis for clients wishing to litigate cross-border. This positioning is also increasingly important given an imminent UPC which might adopt Milan as its centre for pharmaceutical disputes now that London is out of the running. Furthermore, the firm’s still-young Düsseldorf patent team is also focusing on growth under the direction of Ina vom Feld, who has won clients such as Foundation Medicine and SD Biosensor.

Thus, while the growing strength of Herbert Smith Freehills’ Italian and German axis provides an excellent connection for the London team into Europe, the firm must strengthen its individual offerings to provide a fully stabilised team. This would put 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 start of the UPC. Elsewhere, the firm’s Paris office still lacks the visibility and clout of its colleagues in other European jurisdictions.

Recommended individuals

Sebastian Moore (“leads a great life sciences patent litigation team”, competitor), Sophie Rich (“highly skilled litigator, especially in EPO opposition proceedings. She is very experienced in cross-border litigation”, competitor), Jonathan Turnbull (“great for client advice”, competitor), Andrew Wells (“he is a talent, and one to watch for the future”, competitor)

Team

18 lawyers

Partner moves

Mark Shillito (to CMS Cameron McKenna)

Specialties

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

Clients

Litigation: Gilead (defendant) against ViiV Healthcare over HIV inhibitor bictegravir (settled in February 2022); Foundation Medicine (claimant) against Guardant over sequencing biopsy test; Millennium Pharmaceuticals (defendant) against multiple generic drug companies over myeloma and mantle-cell lymphoma treatment drug bortezomib; Seoul Semiconductor (claimant) against General Electric over LED technology (public knowledge); R2 Semiconductor (claimant) against Intel over processor designs. Advice: General Mills in relation to IP aspects of European dough business sale to Cérélia.