JUVE Comment

After several years of being less visible in the UK courts and experiencing a slight downturn in reputation as a result, it is fair to say that Bird & Bird is once again at the top of its game. The firm is, while not quite on the same level as market leaders Bristows and Powell Gilbert, certainly forging ahead of other competitors such as Allen & Overy or Hogan Lovells. The large team of partners handle a diverse array of cases for clients in many different industries, but on the telecommunications side its stand-out instruction continues to be partner Richard Vary’s skilful handling of multiple cases for Nokia. This includes notable pan-European suits against competitor Oppo.

Instructions for BT involving a licensing issue indicate that the firm’s telecommunications practice is not just confined to one client. Furthermore, a coup also came as the firm won a new instruction for InterDigital, to the detriment of the company’s previous go-to firm, Gowling WLG. While the latter still leads the ongoing case against Lenovo, the client is instructing Bird & Bird on another case against Oppo.

The firm continues to increase its visibility in life sciences, historically an area of strength for Bird & Bird. However, where the practice was mainly known for acting for generic drug companies, again the partners are expanding their expertise to fit around client demands. Its latest stand-out instruction is undoubtedly for CureVac, led by Morag Macdonald, in the emerging battle over COVID-19 vaccine patents against BioNTech and Pfizer at the UK courts – the firm’s German office is also currently running proceedings in Düsseldorf. On the medical devices side, ongoing litigation for Dexcom against Abbott over glucose-monitoring devices for those with diabetes is a highlight. With the trial split into three to accommodate its wide-ranging legal and technical aspects, including infringement and revocation proceedings over multiple patents, the Bird & Bird patent team coordinated by young partner Christopher de Mauny is relying on partners with a wide variety of technical fields. Elsewhere, notable life sciences cases include for the Broad Institute at the European Patent Office against oppositions to CRISPR/Cas patents, and Eleanor Root’s continued involvement for Teva. “She always goes the extra mile,” says one client. While Bird & Bird has tended to let its senior partners steer the ship, there is some development at personnel level. After 18 years, Katharine Stephens is no longer co-head of IP – Robert Williams is now joined by two younger partners with patent and copyright specialisms. After several years of Bird & Bird’s younger partners being less visible in the market, this is a welcome step in the firm’s journey to lending visibility to its diverse array of talent at all ages. On the other hand, despite the much-improved market presence of the younger generation, there is still some way to go before Bird & Bird has caught up with Powell Gilbert or Kirkland & Ellis in this regard.

Furthermore, while market-renowned Trevor Cook’s return to the firm as of counsel no doubt turned heads, he is not expected to have a major impact on client work. However, the promotion of two more senior associates to the partnership does point to Bird & Bird covering a wide range of ages in the practice, which allows it to match the age diversity – and assorted talent – of competitors.

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 set-up

Unlike the patent teams in other large international firms like Allen & Overy or Freshfields Bruckhaus Deringer, IP is deeply rooted in the overall Bird & Bird structure. The patent team built up this pan-European presence many years ago and has acquired with it a reputation as a European market leader in jurisdictions such as Germany. This is evidenced by numerous campaigns for such clients as Nokia or Sisvel, which teams from various jurisdictions manage together, with teams in the UK and Germany working together frequently. The same goes for life sciences clients, such as Gilead, Teva and Edwards Lifesciences – here, it is not unusual for the teams from France, Italy, and the Netherlands to come into play. For CureVac, the UK and Germany offices are closely integrated; for Nestlé, which Bird & Bird advises across Europe, the Dutch practice plays the lead role. Thanks to instructions such as these, Bird & Bird is considered the market leader for pan-European series of proceedings alongside Hogan Lovells and Hoyng ROKH Monegier.

The chances of this remaining the case when the UPC arrives are good, as the firm advises SEP holders such as Nokia and Sisvel, which are sure to use the court from the very beginning. The many generic drug manufacturers on Bird & Bird’s client list could also launch central attacks on patents for original products. Bird & Bird’s European practice is positioned extremely broadly for the UPC: it has established teams at all key UPC locations. It can draw on patent attorneys with litigation experience in the German practice. As one of the largest teams in Europe, Bird & Bird has the manpower necessary to handle multiple complex UPC cases at the same time. One of the main tasks for the senior partners will therefore be to train up a homogeneous team of young partners to develop new work together. The client base offers an almost perfect foundation for this.

Nevertheless, Bird & Bird has one further task left: to raise its US visibility in order to strengthen its US client contacts for pan-European litigation. Bird & Bird’s US presence is rather small, especially since competitor Allen & Overy has recently invested considerably in its US IP practice.

Recommended individuals

Patrick Kelleher (“absolute expert in both infringement proceedings and issues of validity and invalidity; smooth cooperation and coordination in cross-border litigation”, competitor), Neil Jenkins, Morag Macdonald (“commercially focused, technically astute and responsive”, competitor), Christopher de Mauny, Eleanor Root (“good responsivness, she always goes the extra mile”, client), Richard Vary (“he plays a central role in all current proceedings, he knows all cases currently underway and works on the interface with antitrust law”, client)

Team

42 lawyers, 3 patent attorneys

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: Dexcom (defendant) against Abbott over medical devices for diabetes management; CureVac (defendant) against BioNTech and Pfizer over COVID-19 vaccine patent; Teva (claimant) against Neurim and Flynn over insomnia medication; Teva (claimant) against Janssen over pharmaceutical patent; the Broad Institute (defendant) against seven opponents at the EPO over CRISPR/Cas technology; InterDigital (claimant) against Lenovo over mobile communications and FRAND; InterDigital (claimant) against OnePlus over mobile communications and FRAND; Nokia (claimant) against OnePlus and Unuplus over mobile communications and FRAND; Mitsubishi and Sisvel (claimant) against Oppo, OnePlus and Xiaomi over mobile telecommunications and FRAND (settled); Velos Media (defendant) against Unified Patents over video codec; Centrix (claimant) against Kwikbolt over mechanical patent; JLG Industries (claimant) against Niftylift over mechanical patent; Revolution Beauty (claimant) against Envases Europe and Scanavo over packaging patent.