JUVE Patent

Rankings UK 2022

DLA Piper – UK 2022

JUVE Comment

This well-positioned UK litigation team is driving growth and this year widened its client base. This was largely thanks to last year’s new addition, litigation partner Deborah Bould, who rounds off the practice with her tech patents specialty and is taking the lead for a large manufacturer of electronic devices in cross-border litigation. This instruction could substantially raise the visibility of the practice in the London market and beyond, as up to now the London team has not been involved in high-profile cross-border cases as often as competitors like Freshfields Bruckhaus Deringer. The practice is active for a host of notable clients stemming from a wide array of sectors, including life sciences, telecoms, energy, transport and consumer goods, like GE Healthcare, or the US telecommunications software supplier Mavenir. This work, however, most often consists of advice on licencing, patent risk assessment and collaboration agreements. These have rarely translated into full-blown litigation so far, and a well-known US telecoms client, who retains DLA for advice, has instead relied on competitors for UK infringement proceedings.

DLA is also harnessing its good contacts in the industrial sector, for example on advice for green and sustainable technologies: a global consulting firm was advised on patentability for AI-based marine mammal detection systems. These promising developments, for example involving recycling or energy efficiency, are also fuelling DLA’s advice on patent management, licences and cooperations. What is more, they harbour great potential for patent litigation in the future.

Meanwhile, the expansion of staff capacities is making headway, including a boost from a lateral partner hire. Rebecca Lawrence brings experience from other London IP firms, especially in life sciences and the industrial sector. The fact that DLA has also built up expertise within its own ranks is shown by the recent appointment of a legal director, the equivalent to a counsel in other law firms. However, the firm has yet to capitalise on this talent to increase visibility in the UK courts and challenge those with similar practices which are ahead of them in the market, such as Freshfields Bruckhaus Deringer or Osborne Clarke.

Strengths

Technical patent litigation. Pharmaceuticals, especially on the licensing side, strategic advice regarding patent management and collaborations. Strong US practice.

European strategy

Although boasting a well-regarded German practice in Munich and Cologne, as well as a growing team in London, DLA Piper’s European practice is yet to expand its visibility as an integrated European team. Cross-border cooperation in litigation, like that seen in the case of Alpinestars, is still rare. Competitors like Hogan Lovells are much further ahead. But the European practice of DLA, and in particular the London team, would be the ideal port of call for the firm’s regular US clients. The German practice already has excellent connections to some Californian tech companies, but DLA Piper has so far been unable to transfer these to the other European offices.

The firm has recognised this and therefore continues to expand its continental practice. Paris has been the blank spot in DLA Piper’s continental offering, but with the acquisition of a larger IP team that also has patent expertise, the firm is now preparing to close this gap. DLA has also had smaller, but well-established offerings in Brussels and Milan for some time. This means that the firm now offers an equally broad range of services for cross-border cases and the UPC, like Simmons & Simmons and Allen & Overy. But DLA Piper is some way behind their pan-European market visibility. To achieve this, the firm would have to build on cross-border cooperation between the teams significantly.

Recommended individuals

Richard Taylor

Team

10 lawyers

Partner moves

Rebecca Lawrence (from own firm)

Specialties

Broad patent practice with a roster of legacy technical brands for industry clients from the energy, automotive, electronics, consumer products and life sciences sectors. Also licensing and transactional work.

Clients

Litigation: Knauf (defendant) against Rockwool on revocation case concerning insulation patents; Alpinestars (defendant) against Dainese over motorcycle clothing (settled); manufacturer of coffee capsules (claimant) in nullity suit against Dualit patent over sustainable cardboard closings; British electrical and telecommunications retailer (defendant) against several patent pools over SEPs for connected products. Advice: GE Healthcare on patent licensing; Mavenir on IP due diligence for acquisition for IP.access Limited; Polhem Infra on licence of telecommunications patents owned by Telia; engine manufacturer on potential patent risks in connection with Internet of Things, royalties, FTO analysis and licensing compliance.

Location

London, Birmingham