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Tom is a patent litigator and partner within the litigation team, and joined EIP from a UK Magic Circle law firm in 2018.
During 11 years in private practice, Tom has experience of proceedings in the English High Court, Court of Appeal and Supreme Court. Tom acted in two of the most important patent cases in the last decade: for Warner-Lambert, a Pfizer group company, against Actavis and Mylan in relation to second medical use patent litigation in respect of its pain drug, Lyrica® (pregabalin), and for Unwired Planet and Conversant in proceedings against Huawei and ZTE on the issue of FRAND in the context of Standard- Essential Patents (SEPs) in the field of telecommunications.
Tom has extensive life sciences experience, having also represented Warner-Lambert against Sandoz in securing injunctive relief to prevent the launch of a full label generic version of Lyrica®, Biomet against Heraeus in trade secrets litigation concerning bone cements and acting for a leading pharmaceutical company on its global patent enforcement strategy in relation to one of its blockbuster drugs.
In the telecommunications sector, Tom acted for Optis in its successful enforcement of EP (UK) 2,229,744 against Apple. Tom also acted for IP Bridge in FRAND proceedings against Huawei. Most recently, Tom acted for Optis in FRAND proceedings against Apple. In his telecoms patent litigation practice, Tom has a particular interest and expertise in FRAND-related issues, including issues of jurisdiction and anti-suit relief.
Tom studied Modern Languages at the University of Oxford before starting his law career. He holds a Graduate Diploma in Law from BPP Law School, completed the Legal Practice Course at the College of Law, and has a Postgraduate Diploma in Intellectual Property Law from the University of Oxford.
Tom is well placed to advise clients on the new Unified Patent Court (UPC) - see further details at EIP News Flashes, our alliance created to support clients in any litigation before the UPC.
Experience
- Acting for Optis in FRAND proceedings against Apple.
- Acting for IP Bridge in FRAND proceedings against Huawei.
- Acting for Optis in its successful enforcement of EP (UK) 2,229,744 against Apple. (link)
- Acting for Unwired Planet and Conversant Wireless in successful Supreme Court proceedings against Huawei (and ZTE for Conversant) on the issue of FRAND in the context of Standard Essential Patents (SEPs) in the field of telecommunication. (link)
- Acting for Warner-Lambert, a Pfizer group company, against Actavis and Mylan in relation to second medical use patent litigation in respect of its pain drug, Lyrica® (pregabalin).
- Acting for Warner-Lambert against Sandoz in securing injunctive relief to prevent the launch of a full label generic version of Lyrica® (pregabalin).
- Acting for Biomet against Heraeus in trade secrets litigation concerning bone cements.
- Acting for a leading pharmaceutical company on its global patent enforcement strategy in relation to one of its blockbuster drugs.
Published articles
- August 2024
IAM, A closer look at the new UKIPO SEP resource hub (link) - March 2024
Law360, Ocado Appeal Outcome Will Gauge UPC Transparency (link) - January 2024
EIP News Flashes, C-KORE v Novawell: Paris local division grants evidence preservation order in subsea testing apparatus dispute (link) - December 2023
Law360 Expert Analysis, UPC Decision Highlights Key Security Costs Questions (link) - November 2023
EIP News Flashes, Lessons from Harvard: UK-based Nanostring ordered to pay EUR 300,000 as security for legal costs in revocation action (link) - November 2023
IAM , UK court fast-tracks FRAND determination of Panasonic’s 4G portfolio (link) - November 2023
Global Competition Review, UK court fast-tracks FRAND determination of Panasonic’s 4G portfolio (link) - October 2023
IAM, United Kingdom: SEPs and FRAND – litigation, policy and latest developments (link) - October 2023
Global Competition Review, United Kingdom: SEPs and FRAND – litigation, policy and latest developments (link) - August 2022
IAM, Anti-suit relief may be about to get a second wind in UK FRAND cases (link) - April 2021
IAM, Why comparable licences are key in the biggest SEP battles (link) - 2017
European Intellectual Property Review, Antrax It Srl v EUIPO (T-828/14): The General Court Tackles the Notion of a Saturated Field of Prior Designs in the Assessment of Individual Character, European Intellectual Property Review no.6, Vol 39 2017 (link)
Education
-
2012 — 2013
Postgraduate Diploma in Intellectual Property Law, University of Oxford -
2009 — 2010
Legal Practice Course, College of Law -
2008 — 2009
Graduate Diploma in Law, BPP Law School -
2004 — 2008
MA Modern Languages (Russian and Spanish), University of Oxford
Career history
- 2022 — present
Partner, EIP - 2018 — 2022
Managing Associate, EIP - 2012 — 2018
Associate, Allen & Overy LLP - 2010 — 2012
Trainee Solicitor, Allen & Overy LLP
Awards and recognition
- Ranked as 'Patent Star 2024' IP Stars (link)
- Ranked as "Patent Star", IP Stars 2023 (link)
- Ranked as 'Notable practitioner', IP Stars 2022 (link)
- Ranked as "Rising Star", IP Stars 2021 (link)
- Ranked as "Rising Star", IP Stars 2020
- Ranked as "Rising star", Legal 500 2020
Languages spoken
- French (Fluent)
- Spanish (Proficient)
- Russian (Proficient)
Speaking engagements
- January 2022
American Bar Association Webinar, Anti-Suit Injunctions, Anti-Anti-Suit Injunctions, etc, in Extraterritorial Litigation