Simon Dack

Partner

One of the founding partners of HOYNG ROKH MONEGIER, Simon is an English-qualified barrister and Dutch-qualified advocaat who is entitled to practice before all Dutch Courts. He has a technical background, having originally trained as a chemist and then worked for a while at the European Patent Office. Simon’s practice is primarily focused on international patent litigation, though he also has extensive experience in other areas of IP law, including pharmaceutical regulatory and advertising law, agricultural biotechnology, and anti-piracy and anti-counterfeiting.

Whilst most of his work is in the healthcare, biotech, medical device and pharmaceuticals area, he has handled patent cases in a wide variety of other technical fields, including mechanical and electronics-related inventions. Much of the work Simon is involved with is cross-border in nature and he has extensive experience of coordinating multi-jurisdictional IP matters. Representative clients in the pharmaceutical / biotechnology field include Johnson & Johnson, Abbott, Sanofi, Pfizer, UCB, Research Corporation Technologies, and Regeneron.

  • REPRESENTATIVE MATTERS
    • Ceva v Bayer (Forceris). 2019-date. Successfully defended Ceva against an attempt by Bayer to obtain a preliminary injunction on a patent which had just been upheld by the opposition division of the EPO. The case related to a drug used to treat young piglets in the first days of life. In the days following the EPO decision, Mr. Dack’s team uncovered fresh prior art in the form of marketing brochures from Bayer itself which had not been considered by the EPO, and which threw new light on the alleged invention. This, coupled with new technical evidence from a leading professor of veterinary medicine. led the Dutch Court to reject Bayer’s application for a preliminary injunction against Ceva, on the basis that the patent would likely be invalidated on appeal in the light of the new art (as indeed it ultimately was). The case ran in many different European jurisdictions.
    • Sanofi v Teva (irbesartan / HCTZ combination SPC). Successfully obtained, in 2012, a preliminary injunction and recall order against a manufacturer of a generic version of Sanofi’s CoAprovel product, used for the treatment of hypertension. This was the first case in The Netherlands involving the infringement of a combination Supplementary Protection Certificate following the decision of the Court of Justice in the Medeva case.
    • LifeScan (Johnson & Johnson) v CHI Pharma et al. Successfully obtained ex parte search and seizure orders and an ex parte injunction in a counterfeiting case against the Dutch-based kingpin of a global ring of dealers in counterfeit re-packaged LifeScan OneTouch® test strips for diabetics (2008 to 2013).
    • Representing the patent holders in infringement proceedings relating to the use of antibody phage display for the manufacture and selection of antibody DNA (2010 – 2014).
    • Obtained the first ever Dutch judgment successfully raising a de minimis defence to patent infringement.
    • Research Corporation Technologies Inc v Accord (Vimpat®). Successfully defended RCT’s patent on the anti-epileptic drug lacosamide. The case was notable because the Dutch Court followed RCT’s submission that the skilled person would not regard a certain prior art publication as a suitable point of departure for the problem and solution approach to inventive step, despite the invention differing from it in only one very minor respect. The judgment marked a move away from a purely abstract and mechanical approach to inventive step analysis.
    • Cordis (Johnson & Johnson) v Boston Scientific and Medinol. Successfully acted for Johnson & Johnson in the “stent wars” against both Boston Scientific and Medinol. This spate of cases included the first ever Dutch anti-suit injunction, obtained by J&J in order to prevent Medinol from relying on its family of almost identical medical device patents, until the validity of the patents was no longer at issue in proceedings before the EPO.
    • LifeScan v Roche (2011). Successfully acted for LifeScan in a technical comparative advertising case brought by Roche in respect of medical devices (OneTouch® blood glucose meters).
    • Centocor (Johnson & Johnson) v Bayer. Successfully defended Centocor against allegations of patent infringement in respect of a patent directed to monoclonal antibodies to human TNF-alpha. The case related to dealings in Simponi® (2009 to 2012).
    • Janssen (Johnson & Johnson) v AIMM. Successfully resisted an attempt by the claimant, a contract manufacturing organisation, to have sight of documents seized in an ex parte seizure at the premises of Janssen in The Netherlands. Went on to successfully resist an attempt by the contract manufacturing organisation to claim entitlement to IP rights and damages in respect of an influenza antibodies developed by Janssen. The unsuccessful claimant company ultimately went bankrupt.
    • DSM Foods v Novozymes. Successfully defended Dutch industrial giant DSM in a multi-jurisdictional patent infringement action brought by Novozymes relating to the use of lipolytic enzymes in baking. DSM’s counterclaim for revocation was allowed. The case was notable since it was the first time the Dutch Court had ever invalidated a patent for lack of sufficiency of disclosure (2009 to 2012). Mr Dack’s team took care of the European coordination of the case.
    • Warner-Lambert (Pfizer) v Ranbaxy. Successfully represented Warner-Lambert in its patent infringement action against Indian generics manufacturer Ranbaxy in respect of Pfizer’s blockbuster Lipitor®, the best-selling drug in the world at the time.
    • Warner-Lambert (Pfizer) v The Dutch State (2017-2019). Successfully opposed the Dutch Ministry of Health’s policy of publishing full-label marketing authorisations of generic versions of Pfizer’s Lyrica® blockbuster in cases where certain indications were still covered by patents, and the generic company had applied for a “carve-out”. The case went all the way up to the Court of Justice of the European Union and raised issues of both patent and regulatory law. The CJEU ruled in Warner-Lambert’s favour and the Dutch Ministry of Health was forced to change its policy.
    • Abbott v Medinol (2009-2014). Successfully defended Abbott against a patent infringement suit brought by Medinol concerning patents on medical devices (coronary stents). The case concerned Abbott’s Multi-Link® family of stents. The Supreme Court decision in this matter was the first Dutch case to hold that a product (a coronary stent) might, on a literal reading, fulfil all the elements of a claim, but still not infringe the patent.
    • Abbott v Holland Trading Group (2018 to date). Successfully mounted search and seize actions against a Dutch wholesaler implicated in the worldwide trade in counterfeit repackaged Abbott FreeStyle test strips for diabetics and obtained an order for delivery up of documents and an injunction preventing further dealings. Also obtained an interim judgment in which the defendant companies were found to have committed abuse of process in their procedural attempts to delay proceedings.
  • PROFESSIONAL AFFILIATIONS
    • Member of the AIPPI, LES, the European Patent Lawyers Association and the Intellectual Property Bar Association
    • Member of the Patent Law Advisory Committee of the Dutch Bar (2010-2020)
    • Member of the Dutch Parliamentary Advisory Committee on Patents (the “Eight Wise Men”) (2010-2020)
  • PUBLICATIONS
    • Kroniek van de Intellectuele Eigendom, Het Nederlands Juristenblad 2019, 2020 and 2021, a yearly overview of developments in the field of intellectual property law, co-authored with Prof. Dirk Visser.
    • Het claimen van medische indicaties (The Claiming of Medical Indications), BIE (March 2010).
    • Co-author of the leading commentary on the Dutch Patents Act (Intellectuele Eigendomsrecht – Tekst & Commentaar) (2016 to date).
  • EXTRACURRICULAR ACTIVITIES
    • Member of the IP Standing Advisory Committee of the Dutch Bar Council (served from 2010 to 2020).
    • Lecturer in intellectual property law at the Faculty of Law of Leiden University (part time, 2016-2019).
    • Appointed one of the “Eight Wise Men”, a standing advisory committee comprising members of the Bar and the Bench and civil servants from the Dutch Ministry of Economic affairs Dutch government on legislative proposals in the IP field (served from 2010 to 2020).
  • SPEAKING ENGAGEMENTS
    • regular speaker on patent litigation related matters
  • WHAT OTHERS SAY
    • Named by Who’s Who Legal 2021 as one of just eight European “Thought Leaders” in the Life Sciences
    • “A very sharp lawyer. Someone who is very well prepared.” Chambers & Partners 2021
    • “Very knowledgeable and very thorough.” Chambers & Partners 2020
    • “Very good choice. Outstanding in life science cases.” JUVE Patent 2020
    • “Fair and intelligent litigator who doesn’t play games.” IAM Patent 1000 2020
    • “Pragmatic, result oriented, responsive. Simon Dack is very well respected and knowledgeable.” Legal 500 2020
    • “Five-star litigator with a tremendous ability to see a case from all sides and develop a strategy which can weave through all difficult issues. He is extremely dedicated and has excellent court vision.” IAM Patent 1000 2019
    • “Very experienced patent litigator.” Chambers & Partners 2019
    • “Sensible, pragmatic and plays straight and hard.” IAM Patent 1000 2017
    • “Very diligent lawyer” who is “very pleasant to work with.” Chambers & Partners 2017
    • “Very experienced.” Legal 500 2017
    • “Incredible in pharmaceutical litigation. He has the energy and dedication to really get into the tiny details of his matters.” IAM Patent 1000 2016
    • “Thorough on technical details.” Chambers & Partners 2016
    • “Dack is incredibly thorough in his approach and has a gift for translating complicated technical concepts into language that laymen can understand. The market’s best lawyer by a mile.” IAM Patent 1000 2015
    • Simon Dack “is a brilliant litigator and particularly excellent on pharmaceutical patent matters,” report interviewees. He represented Abbott Vascular in a patent dispute with Medinol. Chambers & Partners 2015
    • “The top-notch Simon Dack“ is of the highest calibre – he is very prominent and active in the Netherlands.” One peer confides: “I would go to him if I were in-house and had an important pharmaceutical case.” IAM Patent 1000 2014
    • Sources comment on his “profound knowledge and very strong reputation”. Chambers & Partners 2014
    • “The versatile Simon Dack is an English-qualified barrister and is admitted to practise before both the English and Dutch courts; he originally trained as a chemist and has also worked for the EPO. His experience of multi-jurisdictional briefs is virtually second to none.” IAM Patent 1000 2013
    • “Very good” Legal 500 2013
    • “Simon Dack is held in high esteem for his patent litigation practice” Chambers & Partners 2013
    • “Simon Dack has a diverse practice, with the emphasis falling on life sciences issues. His arrival to Hoyng Monégier is predicted to ‘seal the establishment of a very strong team’.” IAM 250 – The World’s Leading Patent Litigators 2012
    • “A clever and talented lawyer who understands even the most complicated cases quickly.” IAM Patent 1000 2012
    • “Simon Dack is recommended for his ‘incredible depth of knowledge’.” Who’s Who Legal 2012
    • “Simon Dack has a flourishing litigation practice, and can draw on his background as a chemist.” Chambers & Partners 2011
    • “Simon Dack is an adroit patent lawyer who is regularly seen acting in pharmaceutical patent disputes. His technical background as a chemist gives him a rare advantage over his peers.” Chambers & Partners 2010

Assistant details

Visit us

Visiting address:

Rembrandt Tower, 30th Floor
Amstelplein 1
1096 HA Amsterdam
The Netherlands

Postal address:

P.O. Box 94361
1090 GJ Amsterdam
The Netherlands

The facts

Languages

English, Dutch, French, German

Education

Post-graduate Diploma in Legal Studies (Bar certificate), Inns of Court School of Law, Grays Inn, (2000).

Post-Graduate Diploma in Law, Middesex University (1998)

European Qualifying Examination for European Patent Attorneys, Munich (1995)

University of London, Queen Mary College (BSc Hons, Chemistry, 1987)

Admission

2000