We recently asked for input from Unified Patent (UPC) litigation firms whose attorneys have appeared in a wide variety of UPC venues (November 25, 2024 ip fray article). From our conversations with the firms that responded and a couple who elected not to, we got a better understanding of different strategies.
As we always knew, in the end it is the results that matter, and if a firm achieves great results by focusing on only a few venues, that may be the best it can do for its clients. . There always will be parties who in certain situations, such as for a multi-patent multi-defendant campaign, see value in retaining a firm whose attorneys have actually built some experience in a variety of UPC venues.
Please note that the input we received from the different firms was not consistent. Some focused on where they have cases pending, others on where they physically appeared, and some on where they had had at least one hearing. But again, this is not a ranking. It is just a set of observations.
Taylor Wessing: physically appeared in 9 UPC venues
Taylor Wessing has 33 registered UPC representatives across various offices. Its lawyers have physically participated in hearings in
- the Court of Appeal (CoA),
- the Munich Local Division (LD),
- the Dusseldorf LD,
- the Lisbon LD,
- the Hague LD,
- the Vienna LD,
- the Nordic-Baltic Regional Division (RD),
- the Paris LD, and
- the Paris seat of the CD.
Dr. Wim Maas alone has physically appeared in five divisions, and it won’t take long before he can add a nother one, such as the CoA (which is missing from his personal list, though the firm has been there already).
It appears that this firm benefits from its multi-country presence and experience in Europe.
Bird & Bird: cases in 9 venues, seasoned patent litigators in multiple European cities
Bird & Bird also has cases pending in nine UPC venues:
- the CoA,
- three German LDs (Munich, Dusseldorf and Hamburg),
- The Hague LD,
- the Nordic-Baltic RD,
- the Milan LD,
- the Paris LD and
- the Paris seat of the CD.
The geographic reach is impressive as the firm has experienced patent litigators not only in Germany (where most cases are obviously filed and Christian Harmsen leads the practice group), but also in Paris (particularly Anne-Charlotte Le Bihan) and Milan (particularly Giovanni Galimberti).
Powell Gilbert: based outside UPCland but already appeared in 9 UPC venues (physically in 7 of them)
The biggest surprise in this regard is the UPC venue diversity of London-based Powell Gilbert. Many of its lawyers are now also registered in Ireland, where the firm has an office, allowing them to practice in the UPC.
PG lawyers have appeared in
- the CoA on behalf of three different lcients,
- the Paris seat of the CD on behalf of Edwards,
- the Munich LD on behalf of Edwards,
- the Dusseldorf LD on behalf of Ocado,
- The Hague LD on behalf of City Glass,
- the Helsinki LD on behalf of AIM Sport,
- the Lisbon LD on behalf of ASUS,
- the Milan LD on behalf of Bhagat and ASUS, and
- the Nordic Baltic RD on behalf of Edwards.
That means they still have some “groundhopping” destinations left: the Munich and Milan seats of the CD, and the Brussels, Hamburg, mannheim, Paris, Copenhagen, Vienna and Ljubljana LDs.
To be precise, their Dusseldorf case settled before trial, and in their Hague case they are awaiting the interim conference, so the number of venues in which they have physically appeared by now is “only” 7, not 9.
The firm is in a strong position to run combined UPC-UK campaigns. For example, product-process disclosures obtained in UK proceedings can enable stronger UPC complaints, an important factor in light of the UPC’s frontloaded system. Other UPC firms also have a London presence, but PG is particularly strong in UK patent litigation, at a level with Kirkland & Ellis, which does not have an active UPC practice yet.
Bardehle Pagenberg: cases in 9 venues, among them all 3 seats of the CD
Bardehle Pagenberg has (or has had) cases pending in
- the CoA,
- all four German LDs (Munich, Dusseldorf, Mannheim, Hamburg),
- The Hague LD, and
- all three seats (Munich, Paris, Milan) of the CD. They are defending Microsoft in the Paris CD in what is one of a few infringement proceedings (if not the only one) in the CD.
By some measure it is the busiest UPC litigation firm, which also makes it one a few to have practiced before both panels of the CoA. And it may not take long before they are seen in additional LDs.
Hogan Lovells: 7 venues, Dr. Andreas von Falck in 5 of them
Hogan Lovells lawyers have appeared in
- the CoA,
- the Paris seat of the CD,
- the Nordic-Baltic RD,
- the Helsinki LD, and
- three German LDs (Munich, Dusseldorf, Hamburg).
Dr. Andreas von Falck has already been active in five of those venues (CoA, Munich LD, Dusseldorf LD, Nordic-Baltic RD and CD Paris).
Simmons & Simmons: physically appeared in 6 venues, Dr. Thomas Gniadek in 4 of them; at least 2 more without hearings
Simmons & Simmons lawyers have physically appeared in
- the CoA,
- The Hague LD (local head: Oscar Lamme) ,
- the Dusseldorf LD,
- the Mannheim LD,
- the Hamburg LD, and
- the Milan LD.
Munich-based Dr. Thomas Gniadek has physically appeared in four venues (CoA, The Hague, Dusseldorf and Mannheim), and, as he alerted us via a LinkedIn comment, he has (had) cases pending before the Paris seat of the CD and the Munich LD, but the related hearings there were remote, or the cases were settled or have not gone to trial yet.
The firm has 30 registered UPC representatives spread out over six cities.
Vossius & Brinkhof: 6 venues (in its two countries and the CoA)
Germany’s Vossius & Partner and Dutch firm Brinkhof are operating under the joint label of Vossius & Brinkhof UPC Litigators, with a total of approximately 35 litigators and 50 patent attorneys (two are dual-qualified). They focus on the countries in which they are based, with physical appearances so far in
- the CoA on behalf of OPPO,
- The Hague LD on behalf of Amycel,
- the Hamburg LD on behalf of Ballinno (and soon Agfa),
- the Mannheim LD on behalf of OPPO,
- the Dusseldorf LD on behalf of Kodak and
- the Munich seat of the CD on behalf of Amgen/Sanofi and Regeneron.
This is another list from which the Munich LD is surprisingly missing so far, but probably won’t for too long.
Hoyng Rokh Monegier: physically appeared in 4 venues by now, with 5 to be added in early 2025
Hoyng Rokh Monegier is an example of how some firms are quickly gaining experience in more and more venues. For now, HRM lawyers have physically appeared in the Munich, Dusseldorf and Milan LDs, and the Milan seat of the CD. But appearances in five more venues are already scheduled for early 2025: CoA, Mannheim LD, Paris seat of CD, Paris LD and the Hague LD. That will catapult the firm to the top of the list at a level with a few other venue diversity leaders.
We will update this venue diversity overview, in the form of a new article, in 2025. Almost certainly, one of the firms that currently have (or have had) cases pending in nine different UPC venues will go double digits then.