Powell Gilbert LLP

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Gold - Firms: litigation

The plaudits come thick and fast for patent litigation powerhouse Powell Gilbert: one client calls it “the top set of solicitors in the UK”, while another reports: “It is a well-regarded firm with excellent partners and excellent associates, all with scientific expertise.” No stranger to landmark lawsuits, it valiantly fought the corner of Huawei in its headline-grabbing battle with Unwired Planet – a case which came interlaced with hotly debated FRAND licensing implications. Leading on this were Simon Ayrton, Zoë Butler and Peter Damerell. Ayrton and Butler recently put their advanced FRAND know-how to further use in representing patent licensor Access Advance in the first UK FRAND suit without an associated patent infringement claim. “Simon and Zoe are creative thinkers with a strong understanding of a complicated and fluid area of law. The combination of their business mindset, legal fundamentals and creative thinking results in high-quality, focused counsel.” Like Damerell, Butler also moves the needle for life sciences players: she has been acting for Biogen for the last five years, while cellular physiology PhD Damerell regularly features in high-value SPC disputes. Similarly dividing his time and attention between FRAND/SEP battles and complex healthcare device disputes is Tom Oliver, whose academic background in biochemistry proves invaluable on the latter side of his practice. He has lately gone out to bat for Actavis in a high-value damages claim against Pfizer, alongside colleague Bethan Hopewell. “Extremely bright and a big-picture thinker, Bethan is sharp on the science as well as the law and stays on top of all the detail. She is exceptional in every aspect – experience, strategy, execution and responsiveness.” Also active in the life sciences are Timothy Powell and Siddharth Kusumakar. Powell recently teamed up with Hopewell on a commercially significant second medical use and vaccine-related matter for GlaxoSmithKline; and with Kusumakar in multi-jurisdictional proceedings on behalf of Edwards Lifesciences. “Tim has a huge amount of experience and just ‘gets it’. He is a calm and knowledgeable presence who can immediately get to the nub of any tricky issue.” Academically qualified in microbiology and immunology, Kusumakar “thinks strategically and knows the important points to push and those to keep in reserve”. “He is unflappable, dependable and gives sound legal advice that helps to advance our business needs.” He recently defended Kymab in a major Supreme Court dispute against Regeneron alongside founding partner and solicitor-advocate Penny Gilbert, whose practice – which regularly sees her visit the Supreme Court and the CJEU – is informed by a doctorate in molecular biology. Chemist Tim Whitfield combines his patent work with a focus on pharmaceutical regulatory and SPC issues. “Incredibly calm and collected under pressure, he never loses sight of clients’ commercial objectives. Tim looks 10 steps ahead and manages large teams effectively while keeping on top of the details and regularly making insightful observations.” For electronics, IT and telecommunications matters, strategist and FRAND licensing ace Ari Laakkonen is “simply brilliant at developing winning strategies, and thorough and detail oriented when preparing a case for trial”. His fellow global strategist is Alex Wilson; fluency in French and German, a spell spent practising in Australia and experience as a former examiner at the EPO all give him a uniquely cosmopolitan perspective.

Firm Profile

Powell Gilbert LLP is a specialist, London-based IP law firm dedicated to serving clients across the full spectrum of knowledge-driven industries, from cutting-edge tech and life sciences companies to creative and brand-driven businesses. The firm is one of the largest, most innovative and most highly regarded IP teams in the United Kingdom, with unrivalled patent litigation experience and a blue-chip brands practice.

The firm advises clients across all technologies and all IP rights, including advising on IP licence disputes and providing freedom-to-operate assessments.

Powell Gilbert’s IP litigation team includes 11 partners, 20 associates and a highly experienced litigation support team.

The firm includes some of Europe’s leading patent litigators and the technical expertise at Powell Gilbert is second to none. Almost all lawyers have technical backgrounds, including many with PhDs or master’s degrees in relevant scientific disciplines.

The team routinely represents clients before the UK patents courts at all levels, including on appeal before the UK Supreme Court, where it has appeared in a number of precedent-setting cases in recent years.

With a wealth of experience gained from acting in multinational disputes, Powell Gilbert is frequently involved in devising European patent litigation strategies, acting as coordinating counsel and working with local teams to ensure consistency.

Practice areas

The firm advises across the full spectrum of IP rights, including brands, design rights, copyright, passing off, confidential information and plant variety rights. Its experience in patent litigation ranges across all technical fields, from acting in the earliest biotechnology patent cases to involvement in the smartphone wars and leading cases on FRAND licensing disputes. It has appeared in many of the most technically complex and legally challenging cases in the UK patent courts and has also represented clients in referrals to the European Court of Justice and the European Free Trade Area Court in relation the requirements for the grant of supplementary protection certificates (SPC). The firm also represents clients in smaller claims before the UK IP Enterprise Court.

Although focused on litigation, the firm is also experienced in alternative dispute resolution, including mediation and arbitration, particularly in relation to patent and technology licences.

International experience

A distinguishing feature of Powell Gilbert is the expertise and experience of its lawyers in coordinating complex cases and successfully guiding clients through multinational patent litigation, and devising and coordinating pan-European strategies.

The firm has played a central role in cases before many overseas courts, including in continental Europe, Scandinavia, the United States (district court and International Trade Commission proceedings), Australia, China, Korea and Japan.

The firm also frequently represents clients in European Patent Office opposition proceedings and in other registry proceedings, including representing clients before the UK Intellectual Property Office.

With an eye for coordination strategies, Powell Gilbert’s lawyers are familiar with the opportunities, and the potential threats for the unwary, that litigation in the Unified Patents Court (UPC) may offer, should it come into effect. Members of the firm were actively involved in commenting on the rules of procedure of the UPC and have contributed to training materials for UPC judges, including participation in mock trials.

Languages

English, Finnish, French, German, Cantonese and Mandarin.

Key cases

  • Warner Lambert v Actavis (pregabalin)
  • Regeneron v Kymab (antibodies/transgenic mice)
  • Unwired Planet v Huawei (smartphones/FRAND)
  • Eli Lilly v Human Genome Sciences (neutrokine alpha/SPC)
  • lllumina v MGI (gene sequencing technology)
  • Edwards Lifesciences v Meril / Abbott v Edwards (transcatheter heart valves)
  • Philip Morris v Nicoventures (heat-not-burn tobacco)
  • Garmin v Philips; PulseOn Oy v Garmin (wearable tech)
  • IPCom v Xiaomi (telecoms/FRAND)
  • Biogen v AbbVie (adalimumab)
  • GSK v Fibrogen (anti-anaemia drugs)
  • Merck v GSK (pneumococcal vaccines)
  • Chugai v UCB (patent licence dispute, antibody technology)
  • Illumina v Ariosa (non-invasive pre-natal testing)
  • Vestel v HEVC Advance (HEVC codec/FRAND)
  • Boston v Edwards (heart valves)
  • Coloplast v Salts (ostomy devices)
  • Rovi v Virgin Media (cable television)
  • Apple v Nokia; HTC v Apple (smartphones)
  • LG v Sony (Blu-ray disc technology)
  • Nuance v Vlingo (voice recognition)
  • Mölnlycke v BSN medical (wound dressings)
  • Philips v Alba (MPEG-2 digital compression)
  • Nichia v SSCL (LEDs)
  • Monsanto v Cargill (genetically modified soy beans)
  • Aerotel v Wavecrest (computer programs)
  • Dr Reddy’s v Eli Lilly (olanzapine)
  • Yeda v ImClone (Erbitux – entitlement; SPCs)

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