JUVE Comment

As one of the market leaders, the German patent practice is a cornerstone of this international firm, which enjoys a superb position in patents across Europe, too. Unlike in other European countries, the patent team in Germany is not only characterised by the extraordinary visibility of its lawyers in the courtrooms, but also by the well-oiled teamwork with the Bird & Bird patent attorneys.

With such heavyweights as Daniela Kinkeldey and Michael Alt in its ranks, the patent attorney team will be able to cope with the loss of partner and patent attorney experienced in pharma proceedings Sebastian Höpfner. Not only are the patent attorneys busy with EPO oppositions and nullity suits – for B.Braun Melsungen over medical products or Broadcom over chip technology, for example – they are also brought in intensively by regular clients like Nokia, Fisher & Paykel and Nestlé for the technical aspects of infringement proceedings. In extensive series of lawsuits, such as Nokia against Oppo, the litigators are still seen alongside external patent attorneys. The Bird & Bird team’s mixed approach has been well established for many years and other law firms like Simmons & Simmons see it as a trendsetter in terms of higher end work in international disputes and the UPC.

The patent litigation team was again very busy litigating for some of its most notable regular clients. For regular client Nokia, practice head Christian Harmsen’s team is very visible in one of the largest patent battles in the world right now against Oppo. The Munich team led by Boris Kreye is still fighting for Edwards Lifesciences against Meril over heart catheters. A Düsseldorf- and Hamburg-based team around Oliver Jüngst is currently battling intensively for Ratiopharm and Hexal against Bayer over cancer drug Nexavar. The life sciences team is also very active in numerous lawsuits for generic drug companies Stada and Teva. Often these battles have international ties involving teams from other Bird & Bird offices. Bird & Bird is one of the few teams in the German market to master the balancing act between generics and originators such as Gilead. It is notable in this regard that CureVac is relying on Jüngst’s team against BioNTech for the first suit in Europe over the Covid-19 vaccine.

Despite a partner departure in 2021, the life sciences team maintained an impressive track record. But this did tear a hole in the Hamburg team. To fill this again, Annika Lückemann, a counsel experienced in pharma proceedings, will move from Düsseldorf to Hamburg as the latter will host one of the four German local divisions. The Munich team suffered a setback when young partner Marc Grunwald moved to a Munich IP boutique. But the German practice has a high enough headcount to conduct several major lawsuits of the calibre of Nokia against Oppo and Edwards Lifesciences against Meril before the UPC. In the meantime, clients are calling for the senior partners to give the young partners and counsel more freedom to carve out their own positions in the market. This will also be necessary if they hope to achieve a smooth generational change in the long term.

Strengths

Litigation mainly regarding pharmaceuticals (for both originators and generics) and mobile communications (including SEP and FRAND issues) provided by mixed teams. Interoffice cooperation in one of the strongest European IP practices.

European set-up

Unlike the patent teams in other large international firms like Allen & Overy or Freshfields, IP is deeply rooted in the overall Bird & Bird structure. The patent team built up this pan-European presence many years ago and has acquired with it a reputation as a European market leader. This is evidenced by numerous campaigns for such clients as Nokia, Qualcomm or Sisvel, which teams from various jurisdictions manage together. The teams in the UK and Germany work together especially often. The same goes for life sciences clients, such as Gilead, Teva, Edwards Lifesciences and Fisher & Paykel. It is not unusual for the teams from France, Italy and the Netherlands to come into play here, too. For Nestlé, which Bird & Bird advises across Europe, the Dutch practice plays the lead role. Thanks to instructions such as these, Bird & Bird is considered the market leader for pan-European series of proceedings alongside Hogan Lovells and Hoyng ROKH Monegier.

The chances of this staying the same when the UPC arrives are good, as the firm advises SEP holders (e.g. Nokia and Sisvel) who are sure to use the court from the very beginning. The many generic drug manufacturers on Bird & Bird’s client list could also launch central attacks on patents for original products. Bird & Bird’s European practice is positioned extremely broadly for the UPC: it has established teams at all key UPC locations. It can draw on patent attorneys with litigation experience in the German practice. As one of the largest teams in Europe, Bird & Bird has the manpower necessary to handle multiple complex UPC cases at the same time. One of the main tasks for the senior partners will therefore be to train up a homogeneous team of young partners to develop new work together. The client base offers an almost perfect foundation for this.

Nevertheless, Bird & Bird has one task left: to raise its US visibility in order to strengthen its US client contacts for pan-European litigation. Bird & Bird’s US presence is rather small, especially since competitor Allen & Overy has recently invested considerably in its US IP practice.

Recommended individuals

Christian Harmsen (“clear, objective style and convincing arguments”, competitor), Oliver Jüngst (“excellent pharma litigator”, client), Boris Kreye (“absolute expert for infringement and nullity proceedings”, competitor), Annika Lückemann (“very present young lawyer”, competitor), Matthias Meyer (“smooth teamwork in coordination of cross-border cases”, competitor), Felix Rödiger;patent attorneys: Daniela Kinkeldey, Michael Alt, Felix Landry

Partner moves

Sebastian Höpfner (to Zwicker Schnappauf & Partner), Marc Grunwald (to Peterreins Schley),

Team

21 lawyers, 17 patent attorneys

Specialties

Patent litigation conducted by lawyers and patent attorneys, mainly for the life sciences, chemical, electronics and telecoms sectors. Advice concerning patent strategies and licences and on the interface with antitrust. Frequent patent filing for selected clients.

Clients

Litigation: Nokia (claimant) against Oppo/OnePlus over mobile communications; Broadcom (claimant) against Netflix over streaming technology; Broadcom (claimant) against Harman Becker in nullity suit over connected cars; Fraunhofer Gesellschaft (claimant) against SX Radio on securing evidence for US case regarding satellite radio technology; Edwards Lifesciences (claimant) against Meril over heart-valve prostheses and catheters; Fisher & Paykel (claimant) against Flexicare/Medisize over medicinal products; CureVac (claimant) against BioNTech over mRNA patent; Ratiopharm and Hexal (defendants) against Bayer Healthcare over cancer drug Nexavar; Sandoz against Roche/Genentech over autoimmune and cancer drug rituximab; Stada and Zentiva (both defendants) against Novartis over cancer drug everolimus; Teva and Stada (defendant) against MSD over cholesterol drug ezetimibe/simvastatin; Teva (claimant) against Mylan over MS drug Copaxone; Teva/ratiopharm (defendant) against Novartis over MS drug fingolimod; Teva/ratiopharm (defendant) against Acorda/Biogen over MS drug fampridin; Gilead (defendant) against ViiV over HIV drug Biktarvy (public knowledge); Canon (claimant) against various toner manufacturers over toner cartridges; Electrolux (claimant) against BSH Hausgeräte over vacuum cleaners; Neomaterials (defendant) against Rhodia over auto catalysts; Honeywell (claimant) against Huanxin over coolant for air-conditioning units; Sino Resource (claimant) over coolant for cars; Gates Corporation (defendant or claimant) against Continental over drive belts; Formax/Provisur (claimant) against Weber over cutting machines for foodstuffs; Jinko Solar (claimant) against Hanwha Q Cells in revocation case over solar technology (public knowledge); frequently for B. Braun, Merck, Nestlé, Valeo. Prosecution: filing and oppositions for A.p.f. Aqua System, Airbus, American Axle, B. Braun Melsungen, Emery Oleochemicals, Fisher & Paykel, Garmin, Hako. Advice: frequently for Knorr Bremse; Deutsche Telekom on portfolio assessment.