J A Kemp boosts patent litigation team with experienced solicitor advocate

John Hornby (62) joined the London office of European patent attorney and trademark firm J A Kemp on 1 March as the firm’s seventh patent litigator and third solicitor. Hornby has a broad practice, with experience in cases involving pharmaceuticals, biotechnology, chemistry, semiconductor design and manufacture, satellite communications and mechanical/electromechanical aspects.

From science to law

Following a degree in natural sciences at the University of Cambridge, Hornby completed a second qualification in law before beginning his career as an IP barrister at esteemed chambers 8 New Square. From here, he moved to Clifford Turner – now Clifford Chance – where he qualified as a solicitor working predominantly in patent litigation. This made Hornby one of the UK’s first solicitor advocates.

During his time at Clifford Chance, John Hornby spent six years working on arbitration in a confidentiality case between Pilkington and PPG. This concerned technical information in hardware used for the production of float glass for windows. The firm elevated him to the partnership in 1992, a position in which Hornby remained until 2006.

Since then, he has worked variously as an intellectual property consultant, most recently for Lewis Silkin, as well as co-founding patent litigation boutique Lambert & Hornby. The latter firm was active between 2018 and 2023.

Developing leaner teams

During his career, Hornby has worked for clients including Byk Gulden vs. Astra in an infringement/revocation case over a proton pump inhibitor. He was also active for Dr Reddy’s in the UK part of the long-running dispute over MS drug fingolimod. The case, whose parties included Novartis and Teva, also involved an application for an interim injunction.

Since becoming a qualified solicitor advocate, John Hornby has been a vociferous proponent of the merits of ‘lean teams’ – namely, consolidating the skills required to run a case between as few people as necessary. Speaking exclusively to JUVE Patent, he says, “For many years, I’ve wanted to build a patent practice where the client can deploy a leaner team, as I feel it is part and parcel of doing what is best for the client.”

Hornby continues, “Of course, one has to be flexible in one’s approach – but what especially attracted me to J A Kemp is the firm’s wealth of resources. For example, its talented patent attorneys provide crucial technical and legal support throughout the litigation process.”

Future opportunities

Furthermore, since the Unified Patent Court opened for business on 1 June 2023, Hornby’s move to a mixed practice presents the opportunity for closer involvement in UPC cases. Indeed, the firm is already involved in two proceedings for clients Healios K.K, Riken and Osaka as defendants against Astellas over the revocation of EP 3 056 563 and EP 3 056 564. Mixed UK firm Potter Clarkson represents the claimant, which filed the cases on the first day of the court’s launch.

John Hornby says, “I am excited to get involved with what the UPC has to offer, for example putting the cases together for clients alongside the firm’s patent attorneys. My experience should dovetail nicely with the knowledge our clients require, which is especially important with the growing scope for UK and UPC litigation to run in parallel.”

Aside from three locations in the UK, J A Kemp also has capacities in Munich and Paris. Overall, the firm has 73 qualified patent attorneys, with 45 UPC representatives in the UK and two in Paris.