JUVE Comment

Over 2022, nothing changed regarding Powell Gilbert’s excellent position in the UK patent litigation market. With an impressive year in life sciences, the firm remains, together with Bristows, the undisputed market leader in UK patent litigation.

Penny Gilbert’s expertise in pharma and biotech cases paid dividends in the pandemic with advice to BioNTech on securing its patent strategy for the first COVID-19 vaccine. So, it was little surprise that Gilbert is running UK proceedings against the Moderna and CureVac suits, which have reached the High Court and other European patent courts in 2022.

Gilbert’s and Tim Powell’s expertise in this sector is outstanding, with both boasting years of experience. But the firm’s younger partners are also now visible in the market, including Bethan Hopewell for Illumina and Siddharth Kusumakar for Edwards Lifesciences and Cook Medical in the medical devices field. Recently appointed partner Tess Waldron also plays a central role in the work for BioNTech. Powell Gilbert’s excellent position in this sector has manifested itself in a multitude of other proceedings, including for Actavis, Biogen, Kymab, Nucana and Otsuca, among others.

On the other hand, Powell Gilbert’s partners enjoy an excellent reputation for mobile communications and FRAND cases, but for the second year in a row they were not seen in the central SEP battles at the UK High Court. While work for Lenovo is the firm’s only noteworthy activity at present, the team can easily cope with this gap. After all, apart from its dominance in life sciences, it is also visible in numerous cases within a broad technical spectrum. An example is the ongoing work for Philip Morris regarding e-cigarettes, and for Ocado in robot-assisted automation systems. The firm also litigates for Carku concerning lithium battery-powered jump starters and Aim Sport in electronic perimeter advertising in sports stadiums.

Competitors are yet to doubt the excellence of the partners for SEP and FRAND matters. But the UK patent market is dense and highly competitive. The high-tech team at the London office of Bird & Bird, for example, felt this two years ago, when Nokia did not file any new cases with the UK High Court for a long time and competitors saw it as on its way down. Therefore, it is unlikely that Powell Gilbert can afford another year without any notable SEP and FRAND litigation without competitors sensing a weakness.

Strengths

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

European set-up

The London-based boutique has made much out of its independent status and strong relationships to other leading patent firms across Europe. Strong connections to Asian, European and US clients allow Powell Gilbert to specialise in the pan-European coordination of cases, including running the UK branches. Work for BioNTech, Edwards Lifesciences, Ocado and Philip Morris are prime examples of its excellent position in pan-European patent battles.

Brexit has even strengthened this position further, as Powell Gilbert is the first choice for many leading litigation teams on the continent to team up with in cross-border cases and vice versa. Powell Gilbert certainly does not have to worry about having enough cooperation partners on the continent for the time being. With the launch of a continental UPC approaching, 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. It may even benefit from the UK’s withdrawal from the UPC system in the long term if many cases do indeed run simultaneously at the UK High Court and UPC.

But the partners will have to pay very close attention to how Powell Gilbert’s partner firms in Germany, France, Italy, the Netherlands and Scandinavia position themselves. Because they will only be able to offer their global lawsuit coordination product to clients in the best possible way if they can continue to work with leading practices in Europe. On the other hand, the UPC development shows that the firm does not operate in a vacuum. International firms as well as continental boutiques will seek to use their continental European practices in the UPC system as leverage to prise away US clients from the firm.

The fact that Powell Gilbert has no direct access to the UPC system is a significant disadvantage. 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 in the event that the UPC becomes the main venue for patent litigation in Europe. An office in Munich, Paris or elsewhere in the UPC sphere with outstanding local patent litigators could therefore be worth considering for the market-leading UK firm.

Recommended individuals

Zoë Butler, Peter Damerell (“a seasoned practitioner with an excellent ability to drive pan-European cases”, competitor), Penny Gilbert, Bethan Hopewell, Siddharth Kusumakar, Ari Laakkonen, Tim Powell (“excellent coordination of cross-border patent cases for pharma clients”, competitor), Tim Whitfield, Alex Wilson, Tess Waldron (“rock solid, the real mastermind behind important pharma cases”, competitor)

Team

34 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; Carku (defendant) against Noco regarding lithium battery-powered jump starters; BioNTech (claimant and defendant) against CureVac and Moderna over mRNA patents; Otsuka (claiment) againts GW Pharma & Jazz in licence and royalties dispute regarding epilepsy drug Epidiolex; Nucana (defendant) against Gilead over novel anti-cancer therapies; 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; Illumina (claimant) against MGI Group over DNA sequencing technology (settled in 2022); Edwards Lifesciences (claimant) against Meril Life Sciences patents on transcatheter heart valves (including pan-European coordination); MED EL (defendant) against Advanced Bionics over revocation and declaration of non-infringement of cochlear implant patent; Cook Medical (claimant) against Boston Scientific regarding revocation and anti-suit injunction regarding surgical clips; 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; AIM Sport Vision (claimant) against Supponor over electronic perimeter advertising in sports stadiums; Promptu (claimant) against Sky and Comcast regarding satellite and broadband TV systems.