JUVE Comment

Over the past few years, the well-positioned patent practice of global firm Osborne Clarke has successfully broken through in London, helped in no small part by its involvement in the landmark Unwired Planet case against Huawei. Although this concluded in 2020, continual work for the NPE’s parent company Optis as co-counsel with EIP against Apple continues to be the main case driving the tech practice’s visibility. A team led by Arty Rajendra is mostly present in the FRAND and competition aspects of the case, which ensures multiple court appearances for the firm at both the High Court and the Court of Appeal. “She is very collaborative and leads a strong practice,” says a competitor. Osborne Clarke also retains another client for advice on FRAND, as well as for another company seeking advice on rates with regards to a licensing agreement. While having these clients shows the firm’s expertise in FRAND is making an impact, the challenge for its tech practice is to transfer such connections into litigation – especially once the work for Optis is concluded. With several ongoing cases at the UK court potentially clarifying case law, the coming months are crucial in the firm attracting new clients wishing to litigate against implementers.

On the life sciences side, the practice was dealt a blow when it lost medical devices client MED-EL to Powell Gilbert. However, Will James keeps the firm busy with work for his core client Amgen, including on a case against Sanofi and Regeneron over cholesterol-lowering antibodies alongside several other ongoing matters. The practice is also working in the pre-litigation stage for several other pharmaceutical clients, in many cases demonstrating a wide breadth of knowledge regarding complex legal issues such as IP ownership. One such client, on the medical devices side, came via a referral from the firm’s German colleagues. As the London practice grows, so too do the links between its European offices.

Indeed, Osborne Clarke has been on a growth mission after hiring Tim Harris in late 2020. His twin approach to life sciences and technology bridges the respective clear specialities of the two main partners. Another recent hire from Marks & Clerk brings its partner number up to six as it strengthens its biotechnology and life sciences practice, as well another associate hire. Osborne Clarke will be hoping its stronger headcount will translate into more concrete instructions in its areas of expertise.

Strengths

Telecommunications cases, especially regarding FRAND and competition law.

European set-up

The firm’s London patent team is ahead of its European colleagues, both in eminence and team size. However, unlike the team in London, neither the German nor the Paris patent team has yet to make a lasting impression on its market. As such, the team is seen less frequently than its competitors, such as Allen & Overy, in the UK market.

However, the competition in FRAND cases on the interface with competition law is fierce, especially in Germany. An experienced lateral would make it much easier for Osborne Clarke to take on the competition on the continent. Such an investment could also be worthwhile given that that UPC will open its doors next year. This firm’s presence at two central venues, Paris and Munich, provides a basis for the UPC. A focus on consolidating the cross-border aspects of the practice would enhance the firm’s standing in Europe.

Recommended individuals

Tim Harris, Will James (“a seasoned practitioner with excellent ability to drive pan-European cases”, competitor), Arty Rajendra (“very collaborative, she leads a strong practice”, competitor)

Team

13 lawyers

Partner moves

Trevor Crosse (from Marks & Clerk)

Specialties

Strong in mobile communications cases, especially in competition law in FRAND disputes. Biotechnology advice in licensing projects. Work for innovator pharmaceutical companies.

Clients

Litigation: Amgen (claimant) against Sanofi and Regeneron over cholesterol-lowering drug Praluent; PanOptis (claimant; co-counsel with EIP) against Apple regarding mobile phone handover standards including SEP and FRAND.