Anna Duffus

I am a former partner, now Of Counsel, in the Bird & Bird Intellectual Property Group, specialising in patent and technology-related litigation, arbitration and related advisory work.

Having a BSc degree in physics, my practice tends to focus on patents and technology issues in the high tech, electronics and telecommunications sectors. Many of my cases involve cross-border aspects, liaising with lawyers from other jurisdictions, and working with clients to develop and implement suitable litigation, arbitration or other dispute resolution strategies across multiple jurisdictions.

In recent years, much of my work has focused on the telecommunications field, including standardised technology relating to cellular communications (2G, 3G, 4G, 5G) and to video coding (H.264, H.265), and a variety of non-standardised technologies. Outside mobile telecommunications, I have enjoyed working in a wide range of technology areas including for example car park construction, aircraft navigation and cosmetic displays.

Examples of my cases before the English High Court include: Agilent v. Waters (HPLC pump patent), Intel v. VIA (chipset technology), Intel v. VIA (CPU technology), Storage Computer Corp v. Hitachi (RAID storage systems), Nokia v. InterDigital (actions relating to GSM and UMTS technology and the ETSI GSM and UMTS Standards), Nokia v. IPCom (GSM and UMTS technology), Nokia v. HTC (modulator structure) and Nokia v. Apple. Many of these cases involved parallel proceedings in other countries, and regular communication and co-ordination with colleagues (from Bird & Bird and also other firms) to implement the overall litigation strategy and adapt it as needed in light of developments in each jurisdiction.

In the arbitration arena, my arbitration work has included acting in two high-value arbitrations, both relating to the valuation of licences to large portfolios of standard essential patents.

Advisory work includes general advice on patenting and patent prosecution strategy, as well as more specific advice on particular inventions, patents and patent portfolios.

• Nokia v. HTC [2013] EWHC 3247 (Pat): This case arose as part of a multi-jurisdictional dispute between Nokia and HTC regarding the use of Nokia's implementation patent portfolio (i.e. patents that are not essential to practising the cellular standards). I led the team for the English High Court trial, and we were successful in obtaining a ruling that the patent in suit (relating to a modulator structure) was both valid and infringed. Nokia was then able to rely on the English Judgment, and its reasoning based on expert evidence given at the English trial, in parallel proceedings on the counterpart in Germany and in other jurisdictions in Europe.
• Nokia v. Apple 2016-2017: We provided strategic advice to Nokia in the context of its global patent licence dispute with Apple. The dispute gave rise to litigation in many countries including the UK where we filed patent infringement actions with the English High Court. We pursued the English High Court cases, in co-ordination with our colleagues and counterparts in other jurisdictions, until May 2017 when Nokia and Apple announced that they had signed a patent licence and business collaboration agreement and settled all litigation.
• I was part of the Bird & Bird team that acted in two high-value arbitrations, both relating to the valuation of licences to large portfolios of standard essential patents. In both arbitrations we worked as a joint team with US counsel to present the case for our client (both arbitrations went to a full hearing). I was involved particularly on the technical patent side, developing approaches to presenting the case so that non-patent-specialist arbitrators could understand the nature and value of the standard-essential patented technology.
• Nokia v. InterDigital [2004] EWHC 2920 (Pat); [2005] EWCA Civ 614: We obtained a groundbreaking ruling, on behalf of our client Nokia, that the English Courts had jurisdiction to grant a declaration of non-essentiality of patents claimed by InterDigital to be essential to the practice of the GSM standard. The ruling came in the context of a global licensing dispute between InterDigital and Nokia.