Simmons & Simmons

Firm overview:

Simmons & Simmons, an international firm offering a full suite of IP services, has strong trade secrets credentials that are recognised by its international peers. The firm’s trade secrets practice operates from offices in the UK, Germany, France, Italy, the Netherlands, and China.

Simmons advises on all aspects of trade secrets work, both contentious and non-contentious, and represents clients in tough, ground-breaking trade secrets cases and in complex transactions and collaborations.

The firm’s complex trade secret cases include id-Technik v DutchClamp, three parallel trade secrets infringement cases before three different German Courts regarding the misuse of confidential supplier information (one of the first trade secret cases under the new German Trade Secret Act (GeschGehG)).

Simmons’ international licensing team provides advice on licensing, collaboration and commercial transactions, including the management of confidential know-how and trade secrets.

The trade secrets team works closely with Simmons’ market-leading employment group on claims against ex-employees; and with an integrated team of patent and trademark attorneys when assessing patentability and trade secrets protection for emerging technologies.

The firm opened a representative office in San Francisco to support clients in the Silicon Valley and Bay area and across the US as they build their businesses internationally.

Simmons advises clients in the TMT and healthcare and life sciences sectors, and financial services and investment companies on the misappropriation of trading know-how and investment algorithms by ex-employees.

The firm’s lawyers deliver client workshops and webinars, regularly speak at trade secrets industry conferences, and are actively involved in industry committees.

Team overview:

Simmons’ international trade secrets team, which comprises at least 26 lawyers and up to 70 lawyers across six offices, is a key part of the firm’s wider cross-border IP team.

Almost half of the trade secrets team is based in the UK, including 11 partners, one of counsel and four managing associates.

Priya Nagpal, a partner and barrister, is head of trade secrets in the UK. She is an IP litigator with 20 years of experience focusing on multi-jurisdictional, technology-related IP disputes, covering both patents and trade secrets. Her disputes often consider the tension between patent and trade secret protection. 

She has represented clients in high-value trade secret cases for DXC Technology (a multinational information technology services and consulting company), Boston Scientific (a medical devices company), and Qube Research & Technologies (a global quantitative and systematic investment manager).

In Germany, Daniel Kendzuir has been involved in one of the first trade secret cases under the new German Trade Secret Act (GeschGehG) and has successfully navigated the complexity of parallel claims in the German civil and labour courts. He advised other clients on the complex interplay between trade secrets and copyright protection for software.

In Paris, there is English- trained and qualified partner Sarah Bailey. In Italy, Stefania Bergia and Giulio Enrico Sironi are respected IP lawyers with a focus on trade secrets. They have acted on significant cases for Roxtec and Flextech.

In the Netherlands, Oscar Lamme has defended Zimmer Biomet in claims made by Heraeus, which said that Zimmer Biomet misappropriated Heraeus’ trade secrets relating to the recipe of a bone cement, a nearly 20-year dispute that went to the Dutch Supreme Court.

George Chan is a partner in the dispute resolution group in China and is head of the Simmons & Simmons (Beijing) Intellectual Property Agency. Chan leads a team that specialises in securing and enforcing IP rights on bet the company and precedent creating matters, as well as advising on commercial IP and regulatory IP matters.

Key matters:

• Nevro v Boston Scientific Corporation, et al, 16-cv-06830-VC

An international Simmons & Simmons team advised Boston Scientific on a worldwide dispute over spinal-stimulation technology with California medical device company Nevro Corporation. In the US, Boston Scientific alleged that Nevro had stolen its trade secrets when Nevro hired more than 50 of Boston Scientific’s former employees and had also infringed its patents. Simmons & Simmons is Boston Scientific’s preferred IP litigation counsel in the UK.

Boston Scientific and Nevro announced a global settlement of their dispute in August 2022, including the granting of cross licences between the parties and a payment to Nevro of $85 million.

The Simmons team comprised partner Priya Nagpal and managing associate Benjamin Thomas in London; partner François Jonquères and managing associate Estelle Thiebaut in Paris; with managing associate Andrea Brennan in Dublin. Nevro Corporation was represented by Bird & Bird’s Düsseldorf patent litigator Oliver Jan Jüngst and London pharma and biotech litigator Patrick Kelleher.

Simmons & Simmons partners Priya Nagpal and Marisa Broughton advise DXC Technology, a US multinational information technology services and consulting company. DXC is a long-standing and established TMT client of the firm.

Clients:

Boston Scientific, DXC Technology, Flextech Roxtec, Qube Research & Technologies.