Bird & Bird

Firm overview:

The patent practice of litigation heavyweight Bird & Bird is renowned for the strength and depth of its specialists, and is called upon by some of the world’s biggest tech and life sciences companies to represent them in critical patent matters. The firm takes an integrated approach to its patent services, with lawyers and patent attorneys collaborating to ensure issues are addressed from both a legal and technical perspective.

Bird & Bird’s in-house patent intelligence and valuation business, Pattern, provides advice on patent portfolio analytics, valuation, and strategy. Clients rely on the team’s expertise in areas including microbiology, gene therapy, robotics, physics, and mathematics and various fields of engineering such as mechanical, chemical and software.

The firm has a formidable reputation for patent litigation and an impressive High Court win rate, particularly given the number of trials it has been involved in over the last two decades. The team represented a party in more High Court patent cases that came to judgment in 2024 than any other firm, with a 75% success rate. “They deserve their good reputation,” acknowledges an industry peer.

Bird & Bird has handled some of the most significant standard-essential patents (SEP) disputes worldwide; in the last year it has been involved in InterDigital v Oppo, Lenovo v InterDigital, Nokia v Amazon and Mediatek v Huawei. Also well regarded is the contentious life sciences team; recent matters have included acting for Dexcom in litigation with Abbott, and achieving success at the European Patent Office (EPO) for The Broad Institute regarding CRISPR technology.

Team overview:

Rated highly by his peers, Richard Vary is co-head of the global patents group, as well as being a part-time district judge in the London and South East circuit and Intellectual Property Enterprise Court. Formerly head of litigation at Nokia, Vary is recognised for his highly successful track record in global patent litigation strategy, and specialises in patent disputes in the technology and communications industry.

Of counsel Trevor Cook is ‘outstanding at everything’, according to a peer in the industry. Specialising in global patent litigation, Cook has over 45 years’ experience in IP and has acted in many of the leading English patent infringement cases. A thought leader in IP law, Cook has authored many books and articles on the topic, and is also chair of the British Copyright Council.

Head of patent intelligence Matthew Noble runs the firm’s patent intelligence and valuation consultancy Pattern, and acts as a testifying patent intelligence expert in patent litigation matters.

Also part of the team responsible for the firm’s Pattern product, partner Jane Mutimear focuses her practice on telecoms patent litigation and arbitration alongside trademark dispute work. Described by a peer as “very good”, Mutimear has handled many multi-jurisdictional patent cases, in addition to a number of patent-related arbitrations.

The team welcomed Mario Subramaniam in February 2024 as part of the firm’s strategic efforts to grow the Life Sciences team and IP transactional team.

Key matters:

• Nokia v Oppo

In a series of trials over two and a half years, Bird & Bird has represented Nokia in patent litigation with Oppo. The team won every trial and appeal and obtained two injunctions against Oppo’s infringement. The case established the principle that parties could proceed directly to a FRAND trial without first needing to assess the validity and infringement of the asserted standard-essential patents.

Oppo settled with Nokia in February 2024, taking a royalty bearing licence to Nokia’s patents. Partners involved in the matter included Richard Vary, Toby Bond, Matthew Noble, Tom Darvill, Jane Mutimear, and William Warne.

• Abbott Laboratories v Dexcom

Bird & Bird acted for companies in the Dexcom group in relation to multiple patent infringement and revocation claims. The proceedings were part of a major dispute between the parties on both sides of the Atlantic concerning continuous glucose monitoring devices. For the first time outside mobile phone patent litigation, countless patents were deployed by both sides covering all sorts of technical areas including mechanical engineering, materials science, chemistry and communications.

The parties settled globally in December 2024. Morag Macdonald and Jae Park were the key London partners involved, with the team also including IP specialists in the Paris, Amsterdam and Madrid offices.

• Patent revocation and infringement proceedings—CureVac

The team acts for CureVac in patent revocation and infringement proceedings in the UK against BioNTech and Pfizer, and in parallel German infringement proceedings against BioNTech. There is also ongoing parallel litigation in the US, nullity actions in Germany and EPO oppositions against CureVac’s patents.

CureVac holds three European patents relating to mRNA vaccines. In the UK actions, BioNTech and Pfizer are seeking to revoke the patents and obtain declarations of non-infringement in respect of their Comirnaty COVID-19 vaccines. In October 2024, two CureVac patents were found to be invalid; CureVac is seeking permission to appeal.

Further hearings are expected in 2025. Key team members include Mark Hilton and Morag Macdonald.

• EPO victories regarding CRISPR—The Broad Institute

Bird & Bird client The Broad Institute has achieved two significant victories at the EPO regarding gene-editing technology CRISPR. Seven years ago, the team was the first to argue that the 50-year-old patent law concerning formal priority was incorrect and needed to be revised. In early March, we successfully maintained three CRISPR patents because of the change in this law.

The team also maintained the validity of CRISPR patents that claim Cpf1. Cpf1 is a second-generation CRISPR system that has distinct advantages over the first generation CRISPR system: it is simpler, smaller, and cuts in a way that increases insertion precision and reduces off-targets. Members of the team included Jennifer Jones and Mark Day, who both have an intimate understanding of molecular biology.

Clients:

The Broad Institute, Celltrion, CureVac, Dexcom, InterDigital, Martin-Baker Aircraft Company, Nokia, ZTE