JUVE Comment

After several years of growth, the Dutch offering of this integrated international firm is in an ideal position to begin challenging the patent market leaders for the top spot. Last year, Bird & Bird concentrated on expanding its presence from The Hague into the Dutch capital, and now several leading patent partners are poised to provide support for an expanding client base of generic drug companies and telecommunication technology clients. As ever, Bird & Bird’s relationship with Nokia remains hugely important for the practice’s overall development, with multiple ongoing cases demonstrating the partners’ experience in litigation for standard essential patents as well as implementation patents. The latter is demonstrated by the firm’s ongoing work for Nokia and KPN (with Allen & Overy) against Assia, where the firm handles the technical aspects, and its work for Nokia against Oppo in a separate case spanning multiple jurisdictions.

This multitude of cases means that leading technology partner Armand Killan especially continues to be very visible in the Dutch market, a boon to the practice given the increased proliferation of FRAND licensing cases in the Netherlands. The firm’s support for client Broadcom in a dispute with Netflix over encoding technologies also demonstrates a more commercial side of the Dutch patent practice, a speciality further enhanced through its work for Bound2B regarding resealable beverage cans.

But despite deep connections to major technology manufacturers, the firm’s partners also continually demonstrate their readiness to work with patent owners on similar cases. For example, since joining the practice from Dentons in 2020, Tjibbe Douma has worked alongside Armand Killan to conclude various suits for NPE Sisvel – a relationship the Dutch team has developed via its strong cooperation to Bird & Bird’s other European offices.

On the life sciences side, Tjibbe Douma also remains engaged for client Ferring, including a strong involvement in the US actions. The Bird & Bird team is also adept in the area of medical devices, with long-term client Edwards Lifesciences providing ongoing work via its dispute against Meril Life Sciences in a cross-border case concering heart valves. This involves an impressive litigation strategy which is coordinated throughout the Netherlands and in various other European countries, demonstrating the firm’s development as the Dutch office raises its visibility on a par to that of its UK and German colleagues.

With almost as many partners as associates, Bird & Bird’s size is clearly directed towards securing more client relationships and raising the partners’ visibility in the market. Interestingly, although the firm’s network integrates patent attorneys into some of its offices in places such as Germany, the Dutch office retains purely litigation capabilities. This is not necessarily to the firm’s disadvantage, however, as the team has recently added two associates specialised in telecommuncations technology. While both are patent attorneys by training, they have joined to support the litigation team; their technical expertise should prove invaluable as the patent partners continue to draw instructions from clients on the tech side. With yet more cases on the horizon for Nokia – for example, in a multi-jurisidictional dispute against mobile phone manufacturer Oppo – the firm is taking measures to ensure it can commit to its regular clients while cementing its future strategy for the UPC.

Strengths

Interoffice cooperation, particularly between the Dutch, UK and German offices. Pharmaceutical cases, telecommunications litigation.

European set-up

The Bird & Bird team in the Netherlands is integral to the success of the firm’s close interoffice cooperation, with its new office in Amsterdam creating additional opportunities to attract clients in continental Europe. Bolstered by its strong offices in Germany – Düsseldorf, Hamburg and Munich – as well as in London and Paris, the practice continues to engage its respected and recommended partners in cross-border litigation. While it has traditionally worked cross-border in high-profile life sciences litigation for generic drug companies, its work on SEP and telecommunications disputes is no longer confined to one jurisdiction. This can be seen in the firm’s work for Sisvel, which also encompasses the London and Italy offices, as well as its work for Nokia against Oppo, which it handles in Germany, the UK and the Netherlands among other jurisdictions. On the medical devices side, Bird & Bird continues to act for Edwards Lifesciences across Europe, with the Dutch office in an especially strategic role given its proximity to several import hubs. For Broadcom, the Dutch and German practices work closely together.

The rounded nature of Bird & Bird’s European practice is further bolstered through the German offices’ inclusion of patent attorneys alongside its traditional litigation practice. While the Dutch offering retains only patent litigators, the ability to tap into this in-house pool of patent attorneys gives the firm an edge over some of its competitors in the Netherlands, offering a steady supply of technical expertise.

Most importantly, however, the firm is very well prepared for the upcoming UPC. Its partnership including the indomitable Wouter Pors, who has become one of Europe’s go-to experts on the development and running of the court system, is a boon for the firm which is already turning its attention to preparing actions for clients. With this ingrained expertise, the firm can hit the ground running. However, despite Brexit and the lack of UK presence in the UPC, the London office also continues to be a central point through which the firm’s European partners derive a notable amount of high-stakes patent work. With overseas clients likely looking to litigate in both London and Europe, the links between the offices remain invaluable.

Bird & Bird’s US presence, however, remains rather small, whereas competitor Allen & Overy has recently made significant investments in its US IP practice. Therefore, the firm needs to intensify its US presence and to strengthen its contacts with US clients in the long term, with regard to pan-European litigation activities and the UPC.

Recommended individuals

Armand Killan (“he is an excellent case manager; he knows what is important and what is not”, “very experienced in cross-border patent infringement proceedings”, both competitors), Tjibbe Douma, (“great young lawyer”, competitor), Wouter Pors

Team

11 lawyers

Specialties

Strong focus on patent disputes. Pan-European pharmaceutical litigation specialising in generics and mobile communications, pan-European cooperation generally.

Clients

Litigation: Nokia (claimant) against Oppo regarding mobile communication patents including 5G; Nokia (co-defendant of KPN) against ASSIA regarding SEP and implementation patents for DSL technology; DTS International (claimant) against Samsung over data transfer and pay systems; Broadcom (claimant) against Netflix over encoding technologies for video files; Ablynx (claimant) against QVQ over camelid antibodies; Edwards Lifesciences (claimant) against Angiocare/Meril Life Sciences over heart valve technology; Ferring Pharmaceuticals (claimant, co-counsel with De Brauw) against Fein, Reprise and Serenity over desmopressin drug; Ferring Pharmaceuticals (claimant, co-counsel with De Brauw) against Serenity over nasal spray products; Scoutcam/Medigus (defendant) against EPO oppositions over endosurgical tools; Bound2B (claimant) against Ardagh over beverage can technology; Neo Materials Group (defendant) against Rhodia IP owner rights (settled). Advice: Nokia over portfolio assessments; Qualcomm over portfolio assessments; Nestlé for EU litigation coordination and portfolio assessment; Edwards Lifesciences over portfolio assessments; Netherlands Organisation for Applied Scientific Research (TNO) over patent assessment and licensing.