Cross-border litigation characterises patent practices in European law firms, with international firms increasingly positioning their teams for such work. Allen & Overy, Bird & Bird, Hogan Lovells and Hoyng ROKH Monegier emerge as the clear front-runners in terms of international, cross-border expertise. But Europe's leading national boutiques are countering this with their own strategies. JUVE Patent is investigating which law firms in Europe are best positioned for such lucrative, cross-border litigation.
19 June 2020 by Mathieu Klos
When a competitor takes a cross-border best-selling product and imitates it across multiple lucrative markets, a cross-border patent battle is inevitable. Such cases are the stuff of dreams for the European patent teams at international law firms such as Allen & Overy, Hogan Lovells and Hoyng ROKH Monegier. Recently, however, other players are beginning to flex their cross-border capabilities.
Companies wage disputes wherever products infringe patents in multiple lucrative markets, and especially for consumer goods. In April, British American Tobacco launched an interesting wave of litigation against its competitor, Philip Morris. Initially, BAT sued over new e-cigarette technology in Japan. However, further lawsuits in the US, Germany and the UK quickly followed.
With e-cigarettes regarded as a future market for the cigarette industry, the dispute is likely to be bitter. Observers expect further proceedings between the two opponents to flare up in other European countries.
The European proceedings are coordinated by London patent teams. BAT has selected the London team of Kirkland & Ellis. However, since the firm has no patent teams on the continent, Vossius & Partner leads the German cases. London IP boutique Powell Gilbert coordinates the defence for Philip Morris, while Hoyng ROKH Monegier leads the German proceedings.
The dispute between BAT and Philip Morris is interesting for myriad reasons. But it is especially intriguing due to its importance in the consumer sphere. The outcome of the litigation proceedings will have a tangible impact on consumer choices. And the e-cigarette battle, much like patent litigation around the blockbuster products of pharmaceutical companies, is being fought in several countries.
But the similarities between the e-cigarette patents and pharma patents are few. In pharma, when patent protection expires, the originator drug manufacturers want to keep generic drug manufacturers out of the market for as long as possible. Each country has its own regulatory requirements for pharmaceuticals. As a result, originator manufacturers and generic drug companies have to fight separately in each country. This is despite the patents usually being identical.
For some years now, Europe has seen cross-border disputes over biologics. As patent protection for biological pharmaceuticals expires, manufacturers of so-called biosimilars are pushing into the market. Additionally, originator manufacturers and generics manufacturers are increasingly fighting over the extension of patent protection. In recent years, the European Court of Justice (CJEU) has been inundated with SPC submissions from national courts.
Various law firms are currently helping companies such as Abbvie, Amgen, Biogen/Samsung Bioepis and Fresenius Kabi fight throughout Europe over biosimilars of the rheumatism drug Humira.
With the help of Hogan Lovells, Eli Lilly is conducting proceedings against generics manufacturers in various courts over cancer drug pemetrexed. Meanwhile, Gilead is locked in a fierce dispute over extending protection for its cancer drug Truvada. The company has retained Herbert Smith Freehills and Hoyng ROKH Monegier to help keep the generics manufacturers out of the market.
Such huge cases require pan-European coordination. This is a lucrative business for law firms. For example, companies usually conduct disputes over mobile phone patents across several countries. This allows the firms to take advantage of national courts and jurisdictions.
It is especially true when NPEs take action against mobile phone and tablet manufacturers over SEPs. In such cases, NPEs usually sue in the UK and Germany simultaneously due to their differing interpretations of the European Court of Justice’s FRAND rules.
The London patent courts, as well as those in Düsseldorf, Mannheim and Munich, are generally considered plaintiff-friendly. SEP owners gain different advantages, which are used strategically to persuade patent infringers to reach a settlement.
Recently, NPE IPCom began filing more lawsuits in London. Previously, it had concentrated its suits in the German patent courts. Sisvel is also suing in both countries against a number of Chinese mobile phone companies. However, Sisvel has also filed suits in the Netherlands.
Another example is Philips, which is pursuing litigation against various mobile phone manufacturers in the three most important jurisdictions of Germany, the UK and the Netherlands. The patent court in Paris has also recently played a role in SEP lawsuits. Here, Philips is in a dispute with mobile phone company TCL.
Currently, the German patent courts are the focus of lawsuits concerning connected cars patents. After all, the German car market is the strongest in Europe. In Düsseldorf, Mannheim and Munich, SEP owners such as Broadcom, Nokia, Sharp and Conversant are suing car manufacturers BMW and Daimler and their suppliers. But behind the scenes, SEP owners are slowly targeting French car makers. Connected cars lawsuits could soon come to the patent court in Paris.
For now, connected cars lawsuits remain a German phenomenon. But in terms of scope, coordination effort and profitability, these disputes are not inferior to other major cross-border cases.
Quinn Emanuel, one of the German market leaders, represents Daimler in numerous lawsuits. It is precisely because of such cases that the firm is considered one of the most profitable German law firms.
In 2015, Hoyng ROKH Monegier formed through the merger of Amsterdam-Paris law firm Hoyng Monegier and German IP outfit ROKH. In 2018, Véron & Associés joined the firm in Paris. Thus, Hoyng ROKH Monegier became the only IP specialist firm with a comprehensive range of services on the European continent. The HRM teams are among the leaders in the French, German and Dutch patent markets.
HRM is strong competition for Hogan Lovells and Bird & Bird in Europe. The latter two international law firms are long regarded as the market leaders for European patent litigation. Currently, the only difference is that HRM lacks a London office. But London is far from being an issue for the boutique. Find JUVE Patent’s analysis of the market-leading firms at the bottom of this article.
Over a decade ago, Bird & Bird and Hogan Lovells began building strong teams in the major European patent jurisdictions. According to JUVE Patent’s latest ranking research, the top position of each firm is based on a very strong presence in the German and UK patent markets. This is as well as very good teams in Amsterdam and Paris.
Consequently, Bird & Bird and Hogan Lovells have the most balanced position in the four main European patent jurisdictions. Both law firms also have very large teams. Furthermore, the firms are building up their own patent attorney teams in Germany. The firm brings the teams into cross-border cases, generating additional revenue.
For example, Hogan Lovells represents Apple, HTC, ZTE and Vodafone against NPEs in several countries. The firm is also frequently active in such lawsuits for life sciences clients Eli Lilly and MSD.
Bird & Bird is known for its excellent connections to Nestlé, Nokia, Teva, Edwards Lifesciences and AB InBev.
Allen & Overy is also investing heavily in the expansion of its European team. This is partly due to the Unified Patent Court, although its launch is currently uncertain. Strong teams in London and Paris see Allen & Overy pushing into the lucrative cross-border business. The firm now competes considerably with the two established market leaders, especially in pharmaceutical cases. Like Hogan Lovells, Allen & Overy specialises in representing originator drugs manufacturers.
Allen & Overy’s litigation on behalf of German pharmaceutical giant Bayer against Ceva Santé Animale over medication for pigs is testament to the firm’s success.
Allen & Overy is defending Bayer in Germany, France, and the Netherlands, as well as co-ordinating or leading parallel proceedings in eight other jurisdictions.
HRM represents plaintiff Ceva in the key jurisdictions. Ceva is a regular client of the law firm in Paris. The offices in Amsterdam, Düsseldorf and Madrid are also active in this unique case.
If the large international teams have their way, cross-border disputes could be the norm. But in terms of choosing legal counsel, what the clients say matters. Many prefer individually-composed teams from different law firms. As a result, specialist firms continue to compete with international firms in cross-border cases.
When AB InBev filed a suit against competitor Heineken over novel beer dispensers, the company went with a European team from Bird & Bird. The firm involved its offices in Amsterdam, Brussels, London and Munich. However, for Heineken, Brinkhof led the defence with a mixed team of lawyers from Bristows (UK), Altius (Belgium) and Vossius & Partner (Germany).
Large, international teams are by no means safe. National boutiques are still in the running. When boutiques foster close ties, like Bristows, Brinkhof and Vossius & Partner, they are ideally placed for this type of work.
With the UPC in mind, many leading national boutiques have honed their close cooperation. But following Brexit, and the uncertainty surrounding the UPC, firms are refocusing on their independence.
In the race for lucrative cross-border work, this could put the internationally integrated teams in a more favourable position in the medium term.
This is not only the case for the four market leaders. Around two dozen law firms are currently cultivating a European profile for their patent teams. According to JUVE Patent’s research, Freshfields Bruckhaus Deringer, Jones Day, Simmons & Simmons and Taylor Wessing stand out from the crowd. Similar to the market leaders, the firms are present in all important jurisdictions. The firms have renowned teams and are frequently active in cross-border disputes. Therefore, the most important challengers to the top quartet are these international firms.
The advantage of international teams over boutiques is that they can market themselves much more aggressively as one-stop-shops. Especially if, like Bird & Bird, Hogan Lovells and Simmons & Simmons, the firms also have patent attorneys to support the litigators with their technical know-how. (Co-authors: Christina Schulze, Amy Sandys, Konstanze Richter and Aled Griffiths)
The main challengers to Europe’s patent market leaders
Europe’s leading national IP boutiques, and the JUVE Patent research method
Four law firms take the lead when it comes to patent disputes in Europe. JUVE Patent’s recent ranking research placed the teams of Allen & Overy, Bird & Bird, Hogan Lovells and Hoyng ROKH Monegier at the top of the market.
European presence and strategy: Allen & Overy has made significant progress in coordinating and developing its European practice over the past few years. The firm also advises clients such as Bayer and Warner Lambert in cross-border disputes. With offices in most of the key European jurisdictions and excellent positions in the French and UK markets, it has become a serious rival to Hogan Lovells and Bird & Bird as a European market leader. Allen & Overy also has well-positioned teams in the Dutch and German markets.
The European patent teams collaborate on many high-profile cases, for example for Bayer and Warner Lambert/Pfizer in major European jurisdictions. The firm’s European practice is a market leader on the side of originator manufacturers, especially in pharma disputes.
Over the past year, the European Patent Group has made considerable progress on pan-European representation in large pharmaceutical and biosimilar cases: The London team handles many cases together with the team in Amsterdam and Munich.
For mobile communication cases, some of the firm’s teams are visible in their markets, for example in Paris and London. There are some gaps in Germany, although the Munich team has recently celebrated some successes in representing international clients in electronic or mobile phone cases. In Amsterdam, the team’s presence remains understated. The increasing connectivity in the car industry harbours potential for the whole practice.
European patent team size: 43 lawyers
Patent attorney practice: None
Leading individuals: Neville Cordell, Marc Döring, Mark Heaney, Marjan Noor, Mark Ridgway (London); Joachim Feldges (Munich); Laëtitia Bénard, David Por (Paris)
Important cross-border clients: Frequent litigation for Eli Lilly, Hoffmann-La Roche and Pfizer
Significant clients in recent cross-border disputes: Bayer (claimant) against Ceva over veterinary drug for farm animals Baycox Iron; Warner Lambert/Pfizer against generics manufacturer on second medical use of Lyrica; Gillette (claimant) against Wilkinson Sword/Edgewell for razor patents; Archos (defendant) against Philips over mobile communications; Samsung (defendant) against Technicolor over SEPs; Huawei (defendant) against Conversant over mobile communications; Nokia and Alcatel-Lucent (defendants) against Intellectual Ventures over mobile communications.
European presence and strategy: Traditionally, the Bird & Bird patent team is active in all major European patent jurisdictions. It has offices in Brussels, Düsseldorf, The Hague, London, Munich, Milan and Paris. The firm built up this pan-European presence many years ago, acquiring with it a reputation as a European market leader. Bird & Bird has traditionally been active in several jurisdictions for important clients such as Nokia, Edwards Lifesciences and Nestlé. The team in Düsseldorf and Munich in particular continues to operate at the top of the German market. The teams in Amsterdam, London and Paris are also very strongly positioned.
The interplay between Bird & Bird’s European teams remains as strong as ever. This is evident in the cross-referral between offices, for example the close cooperation between the Netherlands, the UK, Belgium and Germany in the now-settled case for AB InBev against Heineken.
As well as in the Netherlands, other parallel proceedings are currently active across the UK, Germany, Italy and Belgium. The firm has no reliance on cooperation with other firms. In addition, the teams outside Germany have access to the Munich-based patent attorney practice. The practice is highly experienced in infringement and EPO proceedings.
European patent team size: 92 lawyers, 16 patent attorneys
Patent attorney practice: Hamburg, Munich
Leading individuals: Armand Killan, Marc van Wijngaarden (The Hague); Christian Harmsen, Oliver Jüngst, Matthias Meyer, Felix Rödiger (Düsseldorf); Boris Kreye (Munich); Anna Wolters-Höhne (Hamburg); Morag Macdonald, Jane Mutimear, Richard Vary (London); Anne-Charlotte Le Bihan, Yves Bizollon (Paris). Patent attorneys: Daniela Kinkeldey, Michael Alt (Munich)
Important cross-border clients: Frequent litigation for Nokia, B. Braun Melsungen, Honeywell, Huawei, Nestlé, Teva
Significant clients in recent cross-border disputes: Edwards Lifesciences (defendant) against Boston Scientific regarding heart valves; Nespresso (defendant) against ECC over coffee capsules; Alstom against Bombardier over Jakobs bogies; Broadcom against Asus over mobile telecommunications; Canon against various toner manufacturers over toner cartridges; Allergan (claimant) against Aspire for ophthalmic solutions; Actavis (defendant) against ICOS and Eli Lilly over tadalafil; Swiss Pharma (claimant) against Biogen over natalizumab; Ablynx and Vrije Universiteit Brussel (claimants) against VHSquared and Unilever on immunoglobulin antibodies; Amgen (defendant) against Fresenius over a biosimilar of Humira; Fresenius (defendant) against Eli Lilly over pemetrexed; AB InBev (claimant) against Heineken regarding bottle-in-bottle keg technology (settled 2020).
European presence and strategy: Hogan Lovells has a truly cross-border litigation team. Between London, Düsseldorf, Munich and Amsterdam, the team is homogeneous. This is reflected in its international presence in important pharmaceutical, mobile phone and electronics cases.
The team is present at all relevant potential UPC locations. In Germany, Hogan Lovells belongs to the leading teams in the market. In France, the Netherlands and the UK, the firm is a fierce challenger of the market-leading firms. In Paris, Hogan Lovells has made significant progress in establishing the young partner Stanislas Roux-Vaillard.
The practice also has smaller teams in Milan and Madrid. Its office distribution helps to support Hogan Lovells as a European market leader. However, when it comes to building up a patent attorney practice across Europe, main competitor Bird & Bird is ahead. Hogan Lovells only began expanding its patent attorney arm in Germany two years ago.
European patent team size: 73 lawyers, 5 patent attorneys
Patent attorney practice: Düsseldorf, Munich
Leading individuals: Klaas Bisschop, Bert Oosting (Amsterdam); Martin Fähndrich, Andreas von Falck, Miriam Gundt, Clemens Plassmann (Düsseldorf); Steffen Steininger (Munich); Christian Stoll (Hamburg), Stephen Bennett, Daniel Brook, Paul Brown (London); Stanislas Roux-Vaillard (Paris)
Important cross-border clients: Frequent litigation for Apple, HTC, Vodafone, Eli Lilly, Hoffmann-LaRoche
Significant clients in recent cross-border disputes: Vodafone, Google, LG and ZTE (defendants) against Intellectual Ventures; HTC (defendant) against Philips; Vodafone and HTC (defendants) against IPCom (all over mobile communications); Eli Lilly (claimant) concerning Alimta, pemetrexed and tadalafil; MSD (defendant) against Wyeth/Pfizer relating pneumococcal vaccines; Hoffman-La Roche/Genentech (claimant) against competitors over biosimilar of Herceptin; Hollister (defendant) against Coloplast over medical device; Dainese (defendant) against Alpinestars over motorcycle vests; Nikon against Carl Zeiss SMT over semiconductor technology (co-counsel with Fresfields; settled 2019).
European presence and strategy: In recent years, this IP firm has a firm foothold at the top of the Dutch, German and French markets. It established a broad geographical position in Europe through an intelligent merger strategy. HRM managed this earlier, and to a greater extent, than other IP boutiques. Additionally, the firm has small offices in Brussels and Madrid. So far, HRM shows no interest in London, despite its importance as a location for pharmaceutical cases. However, circumstances have deteriorated for UK firms due to Brexit. Many UK firms are now seeking new European cooperation partners.
Moreover, the firm is driving cross-border cooperation among the individual offices. It is increasingly using multinational teams. This makes it currently the only IP boutique that can hold a candle to the large international practices of Allen & Overy, Bird & Bird and Hogan Lovells when it comes to cross-border work.
European patent team size: 56 lawyers, 16 patent attorneys
Patent attorney practice: Amsterdam, Paris
Leading individuals: Theo Blomme, Bart van den Broek, Simon Dack, Willem Hoyng, Peter van Schijndel (Amsterdam); Klaus Haft (Düsseldorf/Munich); Tobias Hahn, Christine Kanz, Kay Kasper, Martin Köhler, Stefan Richter, Mirko Weinert (Düsseldorf); Sabine Agé, Amandine Métier, Denis Monégier du Sorbier, Benoît Strowel (Paris)
Important cross-border clients: Frequent litigation for ASML, Gilead, Intel, Philips.
Significant clients in recent cross-border disputes: Philips (claimant) against Asus and Wiko regarding patents for UMTS and LTE standards; Ceva Santé Animale (defendant) against Bayer over animal health drug Forceris (both public knowledge), Gilead (defendant) against Teva over SPC for Truvada; AstraZeneca (claimant) against Ratiopharm over Fulvestrant; Philip Morris (defendant) against British American Tobacco over heat-not-burn technology for e-cigarettes (public knowledge); ASML/Carl Zeiss (both defendant and claimant) against Nikon concerning semiconductor manufacturing technology; Apple (defendant) against Qualcomm over mobile communication patents (both settled in 2019).
The main challengers to Europe’s patent market leaders
Europe’s leading national IP boutiques, and the JUVE Patent research method