England - London • TMT (technology, media and telecoms)

Bird & Bird LLP

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Bird & Bird LLP’s expertise lies in the tech-centric sectors, routinely representing the largest global pharma, biotech and medical devices companies. Its work increasingly entails advising on the IP aspects of acquisitions, as well as the investment in or sale of businesses. Robert Williams and Rebecca O’Kelly Gillard lead the practice alongside Tom Snaith, who is well-versed in complex IP-rich transactions, including M&A, equity capital market and spin-outs, to name a few. Morag Macdonald provides clients with all forms of IP litigation and strategic advice, notably within an international cross border context, while Richard Vary is noted for his wealth of experience in the valuation of portfolios and FRAND. Another name to note is Katharine Stephens, who has considerable expertise in coordinating multijurisdictional patent litigation, as well as designing and implementing pan-European protection and enforcement programs. Christopher De Mauny strengthen the practice with his capabilities in handling hi-tech, life sciences and sustainable technologies. Toby Bond’s strengths lies in managing multi-jurisdictional patent disputes and developing litigation project management platforms. Jane Mutimear is also recommended.

Legal 500 Editorial commentary

Testimonials

Collated independently by Legal 500 research team.

  • ‘They know the market, the key players and seem to have an insight into all the relevant matters in the TMT sector.’
  • ‘Trustworthy, calm and thorough: Christopher de Mauny is excellent.’

  • ‘Solution-focused and out-the-box thinking. They know how to add value and will provide additional services.’

  • ‘They are exceptionally well-placed and ahead of the market when it comes to data commercialisation, implications and regulation. They think innovatively around client problems and solutions, how they offer their services, value add and how they support you.’ 

  • ‘Impressive depth of industry knowledge.’

Key clients

  • Gilead Sciences
  • Interdigital
  • Nokia
  • Dexcom
  • CureVac SE
  • The Broad Institute (‘The Broad’)
  • NEO Performance Materials
  • Teva UK Limited

Work highlights

  • Acted for Gilead in patent revocation and infringement proceedings against NuCana PLC over patents concerning the drug sofosbuvir. NuCana’s patents were directed towards cancer treatment although were asserted to cover the Gilead new class of antivirals products. Judgment was handed down on 21 March 2023 and held that the two patents were invalid on practically all grounds.
  • Acting for Nokia in patent infringement actions against Oppo in the UK, alleging infringement of 1 implementation patent and 3 SEP patents relating to 3G, 4G/LTE and 5G. Nokia won the jurisdiction challenge in 2021 and the two technical cases in 2022.
  • Acting for companies in the Dexcom group in relation to multiple patent infringement and revocation claims brought against them by Abbott Laboratories. 13 patents were originally in suit (now reduced to 7 owing to revocations at the EPO), to be heard over 3 separate technical trials. The patents involve both companies’ continuous glucose monitoring (CGM) devices.

Lawyers

Hall of Fame

The lawyers at the very top of the profession, widely known and respected by peers and clients for their longstanding involvement in market-leading work.

Next Generation Partners

Practice head

The lawyer(s) leading their teams.

Robert Williams, Tom Snaith, Rebecca O’Kelly-Gillard

Other key lawyers

Morag Macdonald, Richard Vary, Katharine Stephens, Jae Park, Christopher de Mauny, Toby Bond, Jane Mutimear