JUVE Comment

As Kirkland & Ellis continues to grow exponentially – the firm has, in the past twelve months, grown by four new partners, one of counsel and eight associates – it continues to impress competitors and clients alike. More importantly, it also offers a different model to the usual IP boutique or international firm set-up the UK market has come to expect. Among the most notable is the team’s involvement in the second-ever UK trial, for Lenovo against Interdigital, to consider setting rates for FRAND licences. But for the London team, such visibility in disputes involving FRAND is an asset to the practice; building up expertise in this area stands the partners in good stead for what is sure to be a steady stream of future instructions here. Indeed, this speciality is already bearing fruit, even away from London – Kirkland & Ellis recently instructed French company Thales against Kigen over eSim technology. Over the past tweleve months, however, Apple, has undoubtedly become the firm’s stand-out instruction in telecommunications, especially given the company’s strong ties to the other US practice with a strong London office, WilmerHale. Here, young but established partners Steven Baldwin and Daniel Lim are steering the ship in the dispute with Ericsson involving multiple SEPs, FRAND and antitrust issues.

Elsewhere, headline cases for the firm remain in the global disputes 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. Although naturally entirely separate, the two disputes are similar in that the case outcomes could impact two areas of consumer goods. Both cases are also taking place in mutiple jurisdictions, with Kirkland & Ellis coordinating, for example, the trans-Atlantic patent infringement case for AutoStore. In such cases, the younger partner bench continues to demonstrate its worth against the more experienced partnerships of firms such as Bristows and Powell Gilbert.

Similarly, medical devices continue to be a stand-out area for the firm, especially under the direction of Daniel Lim, who acts for Alcon against Johnson & Johnson in ongoing litigation over laser systems used in cataract surgery. Other work, such as for Meril Life Sciences against Edwards Lifesciences over transcatheter heart valves, demonstrates how the London office capitalised on important connections to well-positioned European firms, providing a well-rounded European strategy. This is also shown in the firm’s work for pharmaceutical clients such as Pfizer regarding patents concerning multiple myeloma. Other clients include Siemens Healthcare regarding the design of test cassettes used in COVID-19 self-testing kits, as well as a new instruction concerning cancer treatment.

Thus, the sheer visibility, especially among the younger partners, is rivalled only by that of Bristows and Powell Gilbert. And it is not without its problems – amid the hires, four associates have also departed for pastures new. But the uniqueness of the Kirkland & Ellis approach, with a large bench of young partners and an aggressive litigation strategy, sets the market talking – even its most ardent critics cannot deny that the practice, spearheaded by the indomitable Nicola Dagg, continues to make a strong impression in the UK.

Strengths

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

European set-up

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. For Apple’s pan-European litigation, the firm is coordinating with Hogan Lovells, demonstrating its willingness to work cross-border and fill the void when it comes to its own European offices.

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

Steven Baldwin, Nicola Dagg (“phenomenal; a leader in her field”, competitor), Katie Coltart (“great on FRAND”, competitor), Daniel Lim, Jin Ooi (“does a very good job”, competitor), Peter Pereira (“a rising star – he is young but very good”, competitor)

Team

27 lawyers

Specialties

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

Clients

Litigation: Apple (defendant) against Ericsson over implementation and standard essential patents; Lenovo (defendant) against InterDigital over mobile communication patents and FRAND; BBC Studios and Britbox against TiVo over electronic programme guide patents; Assia (claimant) against BT over patent licence dispute; Throughputer (claimant) against Microsoft over infringement of platform-as-service technology; Thales (defendant) against Kigen over rate dispute involving eSim technology; BAT (claimant) against Philip Morris regarding heat-not-burn cigarette technology; Autostore (claimant) against Ocado over retail automation systems; Advanced Bionics (claimant) against MED-EL over cochlear implant technology; Alcon (claimant) against Johnson & Johnson over laser systems for cataract surgery; Meril Life Sciences (defendant) against Edwards Lifesciences over heart valve technology; Pfizer including Warner-Lambert (defendants) against the Department of Health and the NHS in England, Wales, Northern Ireland, and Scotland, and Dr Reddy’s over pregabalin damages enquiry; Pfizer (claimant) against Amgen over cancer treatment antibody; Siemens Healthcare (defendant) against Cellex over COVID-19 test design. Advice: Apollo Global Management over majority stake purchase in Boots; Bain Capital over acquisition of ITP Aero; Platinum Equity over acquisition of Imerys SA’s High Temperature Solutions business; Patient Square Capital on majority investment in Apollo Therapeutics; TPG Rise Fund over investment into UBQ Materials, developer of climate-positive thermoplastic material.