JUVE Comment

For some time, Bird & Bird’s UK patent litigation practice appeared to have fallen behind the market leaders. Competitors speculated heavily for two years as to why the telecoms practice is no longer present at the High Court for Nokia. But thanks to a spectacular comeback on the side of its regular client in a pan-European battle against Oppo/OnePlus over several mobile communications patents, Bird & Bird underpinned its ambitions to take on the two market leaders Bristows and Powell Gilbert.

The past year also saw the telecoms team led by Richard Vary run another large SEP campaign against Xiaomi for Sisvel and Mitsubishi. Various proceedings kept the UK High Court very busy, until they were ultimately settled this year. In both campaigns for Nokia and Sisvel, the UK practice works closely with the German team. Several Bird & Bird offices from other countries are also involved. Time and again, the pan-European patent practice underscores its ability to handle such major proceedings with multiple offices – and in other technologies as well. For example, various offices including the UK run a major series of proceedings for New Zealand company Fisher & Paykel over medical devices, including ventilators. For life sciences clients like Takeda and Teva, Bird & Bird partners across Europe are permanently busy. Although chiefly active on the side of generics manufacturers, the practice often manages the balancing act of working for originator drug companies as well. The renowned life sciences team was active for Gilead for the first time.

Bird & Bird is extending its strong position in medical devices through another major series of proceedings in the UK, namely for Dexcom against Abbott regarding glucose monitoring devices. This is likely to heat up in 2022, showcasing how the practice unites the expertise of its two strong groups, since the technology also covers mobile communications aspects. On the other hand, Edwards Lifesciences relies on Powell Gilbert in the UK, despite entrusting several continental European Bird & Bird offices with major proceedings against Meril over a transcatheter heart valve.

In past years, one problem for the practice has been a strong focus on its senior partners Richard Vary, Morag Macdonald and Jane Mutimear, despite having 14 UK partners and a much broader setup. For too long, the younger partners were not visible in the market. In contrast, market leaders Bristows and Powell Gilbert have better succeeded in developing new partners from their own ranks and visibly positioning them in the market. On the other hand, Bird & Bird has made some effort in this regard in recent years, and this is slowly paying off. For example, it recently appointed another new partner, who is heavily involved in the Dexcom case. Younger partners are also more often taking the helm beside Bird & Bird senior partners in large proceedings. Jennifer Jones is making a name for herself, for example, with her work for the Broad Institute involving CRISPR/Cas technology. But if Bird & Bird seriously wants to challenge the two market leaders, the change from Morag Macdonald to the next generation of partners will have to speed up. In terms of its numerous top-level cases, there is hardly anything still separating the challenger from the market leaders.

Strengths

Strong interoffice cooperation. High-profile pharmaceutical cases, especially for generic drug manufacturers. Acting in and coordinating pan-European telecommunications litigation, including competition law.

European strategy

Bird & Bird is one of the top European players when it comes to international, cross-border expertise. Bolstered by its strong offices in Germany – Düsseldorf, Hamburg and Munich – and in London and Paris, the practice continues to engage its respected and recommended partners in cross-border litigation, especially for high-profile life sciences litigation, but increasingly for SEP and telecommunications disputes. The offices in the Netherlands and Germany have recently impressed with their joint appearances for Edwards Lifesciences over heart valves and a German-UK team is advising Dexcom in its battle with Abbott. In addition, teams in the UK, the Netherlands and Germany work frequently for Nokia and Sisvel over SEPs.

Bird & Bird’s patent practice not only has one of the largest teams in Europe, but also highly-renowned partners in most jurisdictions. In addition to its offerings in France, Germany, the UK and the Netherlands, the practice has a strong offering in Madrid. Thanks to its strong Milan team, Bird & Bird would also be in pole position if the UPC Central Division that was previously planned for London moves to Italy.

Regarding UPC proceedings, it is an advantage that Bird & Bird’s German patent attorneys offer a useful interface for close cooperation in litigation with the other European teams.

The Brexit-related exit of the UK from the UPC project could even play into the hands of the European practice, because it will be able to advise its important clients in both important jurisdictions, instead of the two strong teams in Germany and the UK envying each other’s leading role in the UPC proceedings. In the future, this will probably lie with the German partners. However, the coexistence of the UK and UPC means that there will now be several attractive roles for the partners to fill.

Unlike other large international firms such as Allen & Overy or Freshfields Bruckhaus Deringer, IP is deeply rooted in the overall Bird & Bird structure. The patent team has therefore plenty of time to develop young partners to ensure a smooth generational change. In Paris there is still room for a third young partner, whom the firm must appoint in good time.

Recommended individuals

Richard Vary (“very satisfied”, client; “very present in SEP and FRAND cases”, competitor), Jane Mutimear (“our go-to lawyer in FRAND cases”, client), Neil Jenkins, Morag Macdonald, Jennifer Jones

Team

39 lawyers

Specialties

Strong focus on patent disputes. Pan-European litigation specialising in life sciences and mobile communications. Also mechanics patents. Advice on technology transfer and licensing in FRAND. Some transactional work.

Clients

Litigation: Fisher & Paykel (claimant) against Flexicare over medical devices; Broad Institute (defendant) against eight opponents in EPO opposition over CRISPR/Cas patent; Dexcom (defendant) against Abbott regarding glucose monitoring devices; Teva (claimant) against Janssen Oncology in revocation case over prostate cancer drug Erleada; Centrix (defendant) against Kwikbolt over aircraft assembly fasteners; Nokia (claimant) against Oppo/OnePlus over mobile communications; Sisvel and Mitsubishi Electric (claimants) against Xiaomi over mobile communications and on FRAND determinations (settled 2021); Molycorp Chemicals & Oxides (defendant) against Anan Kasei and Rhodia concerning automotive catalysts; Ablynx and Vrije Universiteit Brussel (claimants) against VHsquared and Unilever on immunoglobulin antibodies (settled 2021); litigation for Gilead. Advice: Nokia regarding a complaint by various auto suppliers to the EU Commission relating to connected cars claims.