JUVE Comment

Bird & Bird has IP deep in its DNA and boasts renowned teams for patent litigation in key UPC countries such as Germany, France, Finland, Italy and the Netherlands as well as in the UK. In addition, it was one of the few international law firms to adopt a mixed approach at an early stage, with lawyers and patent attorneys regularly working hand in hand. This strategy of established cross-border cooperation is now paying off at the UPC, where its expertise impressed clients from the outset.

The team seamlessly translated established client relationships across its various offices, such as those with Celltrion, Dexcom, Valeo and Nokia, into proceedings before the new court. Often, Bird & Bird is already active in parallel national proceedings for these clients, for example for Edwards Lifesciences, which the firm is representing in Germany, the Netherlands and France against Meril. While Huawei relied on Clifford Chance at the UPC, the Bird & Bird team is acting as co-counsel in the company’s proceedings against Netgear.

One in-house counsel describes the firm as “the most experienced UPC representatives so far – they ran the very first pharma cases at the UPC and have the expertise in pharma my company requires when it comes to litigation”. The firm’s extensive experience is not only appreciated by existing clients but also appeals to new clients. NanoString, for example, entrusted its UPC cases to the team, which successfully averted a Europe-wide PI against a US biotech company over diagnostic devices.

In many proceedings, Bird & Bird deliberately deploys international teams. For example, lawyers from France, the Netherlands, Italy and the UK have joined forces for Dexcom in its dispute with Abbott, while offices in Germany and the Netherlands are cooperating for Celltrion. Only Taylor Wessing has so far managed to rival Bird & Bird in its ability to deploy international teams in multiple UPC cases at such a consistent level. Bird & Bird also banks on mixed teams, for example in representing NanoString, Nestlé and GlaxoSmithKline – another aspect favoured by clients. One client praised, “As a whole they work at such a high level and can initiate and structure several large projects simultaneously.” Many others highlight the in-depth technical knowledge of both the lawyers and patent attorneys.

Strengths

UPC litigation regarding medical technology, mobile communications and pharma. Interoffice cooperation across one of the strongest European IP practices.

Recommended individuals

Anne-Charlotte Le Bihan (“has done a very impressive job”, client), Christian Harmsen (“maintains an overview, sticks to the crucial aspects of a case and does not let himself be drawn into useless skirmishes by his opponents”, “highly experienced, seasoned and skilled in dealing with all manner of stakeholders”, clients), Boris Kreye (“top UP work, extremely good litigation strategist, the very model of a litigator”, client; “top strategist, highly renowned and recommendable IP litigator”, competitor), Matthias Meyer (“pragmatic litigator”, competitor), Oliver Jüngst, (“strong in presenting technical arguments and procedural questions”, client), Moritz Schroeder (“delivers good results in a short amount of time and can organise large projects quickly, very responsive”, client), Jonas Smeets (“very good in FRAND”, “he and his team did a fantastic job, extremly reactive team, really outstanding”, client)

Team

53 lawyers, 17 patent attorneys, 3 dual qualified

Partner moves

Michael Alt (retired, technical UPC judge)

Clients

NanoString against 10xGenomics over diagnostic devices; Dexcom against Abbott over glucose-monitoring technology; Edwards Lifescience against Meril Lifescience over heart valves; Celltrion against Novartis over omalizumab/Xolair; Mammut Sports against Ortovox over avalanche rescue devices; GSK against Pfizer over RSV vaccine; Valeo against Magna over automobile parts; Nokia against Mala over connectivity fault management in networks; KPN against Oppo over network technology; Canon against Katun and General Plastics over developer replenishing system.