JUVE Comment

Kirkland & Ellis has continued to impress the London patent market. Due to its impressive presence in major UK cases, the firm’s young and ever-growing patent team – it recently made up its sixth partner in Peter Pereira – is knocking on the door of London’s leading practices. And, although many of the firm’s patent partners are much younger than might typically be found at competitor firms, their expertise nevertheless spans a raft of industries, including telecommunications, medical devices, innovator pharmaceuticals and mechanical consumer goods.

As such, the firm is enjoying high visibility in the UK patent courts, with young partners such as Daniel Lim, Katie Coltart and Jin Ooi leading the strategy on some of the UK’s most important patent cases. On the pharmaceutical side, which is a historic strength of Nicola Dagg’s practice, Kirkland retains important connections to Warner-Lambert and Pfizer in a damages enquiry following a 2020 Supreme Court decision over Pfizer blockbuster drug pregabalin. No doubt Nicola Dagg’s connections to innovator companies will continue to supply the team with such ample work.

But it is in medical devices litigation where the young partners come into their own. For example, the team led by Daniel Lim acts for Alcon against Johnson & Johnson in ongoing litigation over surgical laser systems used in cataract surgery, while coordinating the parallel proceedings in the Netherlands and Germany. Similarly, the firm’s representation of Meril Life Sciences against Edwards Lifesciences over transcatheter heart valves demonstrates how the London office capitalises on important connections to well-positioned European firms provide a well-rounded European strategy – despite a lack of offices on the continent. Ongoing visibility in such cases, along with referred work from the US practice, for example the London team’s instruction for Advanced Bionics, mean the firm is well-positioned to attract future instructions in the medical devices sector – especially as the line between life sciences and telecommunications becomes increasingly blurred.

On the telecommunications side, the team is acting for implementer Lenovo in the global case against Interdigital regarding SEPs. The litigation is also taking place in the US and China, although here Lenovo instructs different firms. But for the London team, such visibility in disputes involving FRAND are an asset to the practice given that this is the first major piece of litigation in this area in the UK since the Supreme Court’s Unwired Planet vs. Huawei decision of 2020. Regardless of the outcome, it puts the firm in a good position to continue retaining Chinese clients such as Lenovo and Xiaomi for perhaps inevitable future FRAND litigation, as global courts continue to battle to determine licences. On the patent licensing side, the firm also works for ASSIA in a dispute against BT.

However, over the past 12 months, the firm’s headline litigation is two-fold: the global dispute between AutoStore and Ocado concerning robotic technology used in grocery warehouses, and the case between British American Tobacco and Philip Morris over heat-not-burn cigarettes. The AutoStore case involves several patents and reached the Court of Appeal, with parallel litigation also in the US and Germany. The BAT and Philip Morris case also extends to Germany and Italy, with the parties engaged in a feud which will have a long-term impact on the tobacco market.

But the fact remains that, through the London office, Kirkland is operating a solo practice in Europe. Furthermore, its partner model could be described as top heavy, with the firm needing to ensure ample manpower at associate level so as not to overwhelm the practice. Nevertheless, as the UK Kirkland & Ellis team continues to assert its strength at the UK courts, it is no doubt shaping the patent market for good.

Strengths

High-profile pharmaceutical cases, particularly cutting-edge technology such as gene editing (CRISPR). Litigating SEPs/FRAND and technical patent issues.

European strategy

Kirkland is still refining its European cross-border coordination, relying on existing client-firm links to secure patent litigation work. It has no patent experts in continental Europe, with its patent resources concentrated largely on the US and London. This could be a detriment to the firm given its involvement in pharma and FRAND matters, which necessitate a coordinated European strategy as far as litigation is concerned. However, Kirkland is acting as coordinating counsel for advice and litigation in several European jurisdictions, in the battle over heat-not-burn cigarette technology for BAT against Philip Morris. To expand this business further and to have a foot in the door when the UPC launches from the continent, most observers think Kirkland will need to quickly establish a patent team on the continent.

Now that the UPC is back on the agenda, Kirkland can no longer rely on continental IP boutiques such as Brinkhof or Vossius & Partner, with whom the London team recently worked on important cases, to remain fully available. It may have its own plans for a broader presence in the UPC.

Especially in Germany, where Kirkland & Ellis already has offices in Munich but no patent capacities, lateral hires would be an appropriate move. As such, many competitors are certain that expansion on the continent under the leadership of Nicola Dagg is only a question of time.

Recommended individuals

Nicola Dagg (“very active; excellent at maintaining strong client relationships”, competitor), Steven Baldwin (“a very confident litigator amid a strong group of young partners”, competitor), Katie Coltart (“definitely one to watch for the future”, competitor), Jin Ooi (“we consider him the best in the Kirkland practice”, competitor)

Team

14 lawyers

Specialties

Patent litigation in pharmaceuticals for medicine manufacturers, emerging technology and telecommunications. Advice on patent portfolio transactions and value issues. Strategic advice on licensing projects.

Clients

Litigation: Advanced Bionics (claimant) against Med-El Elektromedizinische over cochlear implant technology; Alcon (claimant) against Johnson & Johnson over surgical laser systems; Meril Life Sciences (defendant) against Edwards Lifesciences over heart valve technology; Meril Life Sciences against JnJ over antimicrobial surgical suture technology; Regeneron (respondent, Supreme Court) against Kymab over costs relating to transgenic mouse technology litigation; AutoStore (claimant) against Ocado over retail automation systems; AutoStore (respondent) against Ocado over retail automation systems (Court of Appeal); BBC Studios and Britbox against TiVo over electronic programme guide patents; British American Tobacco (claimant) against Philip Morris regarding heat-not-burn cigarette technology; ASSIA (claimant) against BT over patent licence dispute; Lenovo (defendant) against Interdigital in SEP/FRAND licensing dispute; Xiaomi against IPCom over FRAND; TCL (defendant) against Philips on SEP and FRAND (settled); Xiaomi (defendant) against Sisvel and Mitsubishi Electric over SEP and FRAND (settled). Advice: Samsung on global patent licence strategy with Ericsson; Bain Capital over paper supply.