Katie McConnell

Practice Areas

Intellectual Property

Patents

IP Litigation, Arbitration, and Alternative Dispute Resolution

Complex IP Contracts & Transactions

Career

Please see https://www.hoganlovells.com/en/katherine-mcconnell for further information.

Professional Memberships

AIPPI

CIPA

ChIPs (London Chapter Committee Member)

Languages Spoken

English

Experience

Katie is a solicitor advocate with over 20 years’ experience representing clients in major patent disputes. Her cases almost always include a multi-jurisdictional element, and Katie is adept at establishing the commercial inter-relationship between jurisdictions in order to identify, prioritise and appropriately exploit differences in law and procedure to best effect. In the telecoms & technology sectors, this approach has led to favourable settlements following complex cross-border patent disputes. She co-led a UK team advising Amazon in defending patent infringement allegations and a related FRAND licence determination as part of a global dispute with Nokia relating to video-coding technology, and is also part of a team advising Amazon on a dispute with InterDigital. Katie also advised as part of the team advising OPPO on the UK aspects of a global patent dispute about the terms of a FRAND licence with Nokia (having led a team in 2022 defending a related patent infringement claim, and acted on the FRAND licensing dispute in 2023, with the result that OPPO remains on the UK market).

Katie advises clients on preparedness for the new Unified Patents Court, and in September 2023 she successfully defended client, Supponor, against infringement allegations at the first ever hearing before the Helsinki division of the Unified Patent Court (UPC), resisting applications for preliminary and permanent injunctions on the basis that the UPC did not have jurisdiction over the case. The win was hugely significant for Supponor, securing business continuity for their key product and European business. Even though the decision was overturned on appeal in late 2024, and remitted to the first instance for reconsideration of the technical issues, it led to the counterparty dropping its request for preliminary relief.

In the pharmaceutical sector, Katie led the team that obtained a significant and commercially important win for Astellas, both at first instance in 2022 and on appeal in 2023, defending all attacks against the validity of its method of treatment patent protecting Betmiga (INN mirabegron), a first-in-class B3 adrenoceptor agonist, which was a game-changer in treatment for an overactive bladder (a chronic illness suffered by around a fifth of the adult population). This decisive outcome effectively barred generic competitor products from entering the market until mid-2028. Her team also went to trial to defend an Astellas formulation patent, which was upheld as being valid in October 2023 – a very unusual outcome for a formulation patent in the UK.

Katie balances her litigation practice with a successful practice drafting and negotiating IP-related contracts where she is recognised for her practical and solution-oriented approach. She advised Rolls-Royce on IP aspects of its landmark contract (worth circa £9 billion) with the UK Ministry of Defence for the development and manufacture of nuclear reactors for next generation Royal Navy nuclear submarines, which is the largest contract in UK Ministry of Defence history. She also advised on IP aspects of Novartis AG’s sale of its molecular imaging business to Siemens Healthineers AG.

Work Highlights

- Acting for HTC its long-running dispute against IPCom, including obtaining 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.