Katie McConnell
Partner Intellectual Property
Languages
English
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Overview
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Experience
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Credentials
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Insights and events
IAM 1000, 2021"Working … in the telecommunications sphere, while also capably handling pharmaceutical briefs is solicitor advocate Katie McConnell, who combines litigation prowess with an ability to tie up all manner of difficult deals"
Katie is a solicitor advocate with extensive experience representing clients in major multi-jurisdictional patent disputes in the telecoms and pharmaceutical sectors. Katie is also recognized - by both clients and counterparties - for her practical and solution oriented approach when drafting and negotiating licensing, settlement, and IP aspects of other commercial agreements.
In the telecoms sector, Katie advises on and coordinates cross-border patent disputes, patent arbitration (including in relation to disputes over the appropriate royalties and terms for licenses of standards essential patents (SEPs)), and issues relating to SEPs and non-essential patents. She has won cases confirming that an SEP could be worked around, striking out an application for ex-UK damages claimed for infringement of a UK SEP (clarifying the law in this hotly contested area), and clarifying the scope of the UK's Crown Use defence to patent infringement.
Katie has advised on a number of Life Sciences 'firsts', including acting for Merck in the first UK cases challenging the interpretation of European legislation regarding pediatric extensions, and in the first UK case on the interpretation of the Specific Mechanism (ultimately resulting in a favorable ruling from the CJEU). Katie has significant experience in the area of SPCs and pediatric extensions.
Key examples of Katie's transactional experience include acting for Novartis on IP aspects of its US$16bn portfolio transformation transactions with GSK, advising Novartis on IP aspects of its collaboration with Microsoft to leverage artificial intelligence (AI) to transform how medicines are discovered, developed and commercialized, and advising the Kraft and Mondelez Groups on the IP aspects of their demerger as it affected their global coffee business. Katie also advises on other non-contentious and pre-litigation IP matters including selection of suitable candidate patents for assertion in licensing negotiations and patent disputes.
Legal 500, 2023‘Katie McConnell – specialist in telecoms but moved into pharma/life sciences like a duck to water. Commercially and legally savvy – excellent in navigating multi-jurisdictional litigation with diverging interests and priorities between jurisdictions. Safe and charming pair of hands.'
Representative experience
Acting for HTC its long-running dispute against IPCom, including ontianing a declaration of non-infringement for a workaround to an SEP, and striking out IPCom's claim for damages for non-UK devices.
Acting for Merck Sharp and Dohme in first UK case dealing with the interpretation of European legislation regarding the Specific Mechanism for parallel imports.
Representing Vodafone in litigation against IPCom concerning the infringement and validity of alleged SEPs, including successfully invoking both a workaround and the rarely used Crown Use defence.
Acting for Eli Lilly in its dispute with Actavis over Lilly's Alimta cancer treatment in relation to dextrose remission issues.
Acting for HTC in litigation (i) against Philips in relation to alleged SEPs, and (ii) against Nokia in relation to a large number of both alleged SEPs and non essential patents.
Acting for Merck and Du Pont on first UK cases challenging European legislation regarding pediatric extensions to supplementary protection certificates; won extension for Du Pont.
Acting in arbitration proceedings for a major WCDMA infrastructure manufacturer relating to a dispute over licence fees for telecoms SEPs and the applicability of FRAND licence terms.
Advising NYSE-listed AmerisourceBergen Corporation on IP aspects of its US$6.47 billion acquisition of Walgreens Boots Alliance, Inc.’s Alliance Healthcare wholesale distribution business in Europe.
Acting for ZTE in its multi patent cross border litigation with Ericsson in relation to patents said to be essential to 2G/3G telecoms standards.
Advising Novartis on IP aspects of its strategic artificial intelligence and data science collaboration with Microsoft as it founded the Novartis AI Innovation Lab.
Acting for a leading manufacturer of innovative smartphones on a number of cross border patent licensing disputes against Ericsson and Nokia with respect to SEPs and NEP phone & computer patents.
Acting for Novartis on IP aspects of its acquisition of GSK's oncology products for an aggregate cash consideration of US$16bn.
Acting in arbitration proceedings for a major communications device manufacturer in relation to a number of potential SEPs and related licence terms.
Advising one of world's leading food and beverage companies on IP aspects of business separation; various joint development arrangements; drafting and negotiating related contractual provisions.
Acting for Qualcomm in its patent action against Nokia in relation to GPRS and EDGE mobile phone technology, and co-ordinating related patent actions across jurisdictions.
Credentials
- Diploma in Intellectual Property Law and Practice, University of Bristol, 2006
- Postgraduate Diploma in Law, Oxford Institute of Legal Practice, 2002
- B.A., University College, Oxford, Jurisprudence, 2001
- Solicitor - Advocate (Higher Rights - Civil), England and Wales
- Senior Courts of England and Wales
- AIPPI
- CIPA
- ChIPs (London Chapter Committee Member)