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GAR 100 - 11th Edition

Bird & Bird

04 April 2018

Secured another win for Nokia in a patent licensing dispute and took on a new ICSID mandate

People in Who’s Who Legal 1
People in Future Leaders 1
Pending cases as counsel 60
Value of pending counsel work
US$4.5 billion
Treaty cases 2
Current arbitrator appointments 10 (of which 6 are as sole or chair)
Lawyers sitting as arbitrator 4

Bird & Bird’s arbitration group has distinguished itself primarily in the fields of intellectual property and sport.

The practice has grown steadily in the past few years, steered by Annet van Hooft in Paris, a former ICC counsel who joined from Jones Day in 2011, and London-based Steven Baker, former head of commercial disputes at Olswang, who arrived a year later.

Through their efforts, the practice has been attracting more mainstream commercial and investment treaty work, particularly relating to energy.

Asia is increasingly an area of focus. Partner Richard Keady heads the Asia-Pacific dispute resolution practice from the Hong Kong office, where partner Robert Rhoda joined in 2016. Another former Olswang partner, Jonathan Choo, joined the Singapore office in the same year.

Network

Bird & Bird spans 28 offices in 19 countries across Europe, the Middle East and the Asia-Pacific region. For arbitration, its main centres are London, Paris, Madrid, Stockholm, Warsaw, Hong Kong and Singapore, but it also has boots on the ground in Helsinki, Düsseldorf, Munich, Milan and Sydney.

Who uses it?

A lot of the practice’s clients still come from the IP-rich technology sector – Nokia is a high-profile example. It has also advised Accenture, Airbus, Hyundai, French pharmaceuticals group Sanofi and Russian cybersecurity company Kaspersky Lab.

Poland and the Czech Republic are among the states that have used the firm on treaty matters. It has acted for renewable energy investors in a pair of treaty claims against Spain.

Meanwhile the sports practice has acted for the World Anti-Doping Agency (WADA), the International Tennis Federation, the International Paralympics Commission, the head of Jordan’s football association and many of the UK’s more important sporting bodies.

Track record

Around 2013, the firm helped a Sanofi affiliate win a series of ICC awards worth US$170 million in a patent licensing dispute with Genentech, a US affiliate of Switzerland’s Roche Group. Three years later, the firm won a ruling from the European Court of Justice confirming that the awards did not breach EU competition law. A challenge to the award is pending before the French courts.

In 2012, it had a good result for Nokia in an SCC arbitration against RIM, the maker of BlackBerry, over patent rights. The size of the award wasn’t made public but is believed to be nine figures.

Another victory for Nokia was in a multibillion-dollar ICC arbitration against Samsung over a patent licence.

In investment treaty work, the Prague office helped the Czech government see off a US$9 million claim by a UK investor in a rooftop carrier production facility. A Warsaw team helped Poland reduce an €82 million claim over airport duty-free stores to an award against the state worth €18 million.

The firm helped a global transportation company settle a US$61 million treaty claim against a South American country at the ICC in 2015.

One highlight for the sports practice includes representing the German Football Association against the club SG Dynamo Dresden, obtaining a landmark decision on the strict liability of football clubs for the improper conduct of their supporters. It also won for WADA in a sensitive dispute in the run-up to the London Olympics about whether the organisers could permanently ban drug cheats. The answer? No.

Recent events

Bird & Bird teamed up with US firm Alston & Bird to represent Nokia again in an ICC case against South Korea’s LG Electronics concerning royalties owed under a smartphone patent licence. A final award was issued in September 2017 and Nokia later disclosed that settlement of the dispute was the main cause of a 73% increase in its year-on-year operating profits for that quarter.

British investor Raymond Eyre and his company Montrose Development instructed the firm for an ICSID claim against Sri Lanka. The case concerns the state’s alleged failure to prevent flooding that scuppered a lakeside hotel development.

It successfully acted for a European energy supplier in a €100 million DIS arbitration against a major German energy producer relating to a pumped storage plant in Luxembourg.

The firm is acting for a European investor in a US$500 million LCIA case in the African oil and gas sector and is helping another client bring an US$80 million SCC claim against a Chinese chemicals company over misuse of confidential information.

In the courts, an Eastern European oil company is using it to enforce a US$145 million ICC award obtained in Stockholm. The firm has also enforced an arbitration award against an East African government that was issued under the arbitration rules of the European Development Fund.

It is acting for a Thai regional low-cost airline carrier in a US$400 million SIAC arbitration with a maintenance service provider. German law applies to the dispute, which has given rise to two emergency arbitrations.

The firm represents a major premier league football club in a pair of LCIA arbitrations: one against a US provider of an online sports game and another against a Chinese sports agency over an alleged breach of a partnership agreement.

In a £250 million dispute being heard in Kuala Lumpur, it also represents a sports media rights agency bringing a claim against the Football Association of Malaysia.

Annet van Hooft was appointed co-chair of the Paris Bar’s international arbitration commission, in addition to her role as acting vice president of the ICC commission on arbitration and ADR. Garreth Wong in London was added to the arbitrator lists of the LCIA and the World Intellectual Property Organization.

Client comment

Clemens Heusch, head of European litigation at Nokia, describes Garreth Wong as a “highly effective advocate”. He is “strategic, commercial, energetic and responsive” and “goes the extra mile” when fighting for his client.

Kyle Park, an in-house counsel at Hyundai, says Bird & Bird’s team feel like “family members” rather than lawyers. He describes Zachary Song as a “model lawyer” and praises his command of the Korean language.

An in-house counsel at a major telecoms client says he had an “outstanding” experience with Bird & Bird after he brought in Hong Kong-based partner Richard Keady at short notice to take a limited role in a dispute. It soon became apparent that Keady should take the lead outside counsel role. “With Richard’s insight we were able to turn the matter around, ultimately winning over the entire panel.” In London, Garreth Wong performed “remarkably well” and Jane Mutimear provided fresh insight at short notice.

Insight

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