Home / People / Caitlin Heard
Portrait of Caitlin Heard

Caitlin Heard

Partner

CMS Cameron McKenna Nabarro Olswang LLP
Cannon Place
78 Cannon Street
London
EC4N 6AF
United Kingdom
CMS Cameron McKenna Nabarro Olswang Pośniak i Bejm sp.k.
Warsaw Financial Centre
ul. Emilii Plater 53
00-113 Warsaw
Poland
Languages English

Caitlin is a highly experienced intellectual property litigator and solicitor advocate specialising in technology related disputes. She has acted on a number of ground-breaking cases across the full spectrum of IP rights, including one of the earliest cases in the UK dealing with infringement of Standard Essential Patents and FRAND licensing. Caitlin's particular area of expertise is multi-jurisdictional litigation, and she has considerable experience providing strategic counsel and coordination of international litigation strategy.

In the patent domain, Caitlin has acted on a number of high profile pharmaceutical and technology disputes across a range of technical areas including telecommunications, information security, mobile banking and ticketing, quantum computing, construction, medical devices, and biotech. Caitlin has represented clients in front of the General Court, Court of Appeal, High Court, IP Enterprise Court and UKIPO. She has led a number of patent disputes before the Courts including: Vringo v ZTE; Clearswift v Glasswall; Silence Therapeutics v Alnylam; Regen v Estar; Mobilize v Tesco; ML Accessories v Aurora; Mobile VPT v Monitise; Eco Coverage v UK Flood Barriers.
 
Caitlin has particular expertise advising clients on their IP strategy in respect of Standard Essential Patents and FRAND licensing disputes, and has acted on several standard essential patent disputes across a number of jurisdictions. Caitlin has co-authored a textbook chapter in “Intellectual Property in Electronics and Software” (published by Globe Law and Business in 2019), relating to standard setting, competition law and FRAND licensing in Europe.
 
She also has significant experience advising clients in the life sciences sector, where she has advised clients on product launch strategy and regulatory exclusivity, and has experience providing strategic advice to clients relating to decisions of, and complaints made to, regulatory bodies including the MHRA and EMA. 
 
On design and brand protection, Caitlin has acted for a number of household names. She has handled complex trade mark disputes in the High Court for Sky (Sky v Philex; Sky v Sky Insurance) and Nvidia (Nvidia v Hardware Labs), and design right disputes in the High Court and IP Enterprise Court for ML Accessories (GB Electrical v ML Accessories) and Decathlon (Berghaus v Decathlon). 

She also has significant expertise advising clients on rights in data, and acts for a number of clients in the betting and gaming industry on the enforcement and protection of database rights in betting data. 

Post-Brexit, Caitlin will continue to hold representation and audience rights before the EUIPO and the Court of Justice of the European Union. Caitlin is English and Irish qualified, and will operate her EU trade mark and design practice from our Polish office.

more less

Relevant experience

Patent litigation
  • Clearswift Limited in relation to the coordinated US/UK defence of patent.
  • Infringement proceedings brought by Glasswall IP in relation to technology underpinning electronic email security systems before the before the UK IPO, High Court and Court of Appeal.
  • A mobile handset manufacturer on various patent litigation and defensive strategies in Europe, including negotiating FRAND licences.
  • A standards development organisation in the field of cyber security on their FRAND policy and standard essential patent (SEP) strategy.
  • A distributor of tablet computers on its FRAND negotiation strategy in respect of SEPs.
  • ZTE in defending multi-jurisdictional proceedings for standard essential patent infringement brought by Vringo. Vringo sued ZTE on a total of 6 network infrastructure and mobile handset SEPs across two sets of proceedings in the UK. This matter involved conducting and coordinating patent litigation across 11 jurisdictions on complex issues relating to the technology, IP, FRAND terms and competition law relating to standards.
  • A leading supermarket on a patent infringement claim brought against it in the IP Enterprise Court in respect of technology relating to customer loyalty applications.
  • ML Accessories on a patent invalidity claim against Aurora Limited, relating to embedded light fittings. The claim formed part of a range of infringement, validity and entitlement disputes encompassing multiple parties, in jurisdictions in Europe and the Far East.
  • A company specialising in quantum computing on a patent ownership dispute.
  • An airline defending an allegation of patent infringement relating to its mobile ticketing technology.
  • A premier supplier of construction site welfare products on a patent infringement claim.
  • A broadcaster defending an allegation of patent infringement in respect of allegedly standard essential patents.
  • A mobile phone manufacturer maintain confidentiality of FRAND negotiations in an unrelated dispute settling FRAND licence terms.
  • A leading supplier of medical devices on patent litigation strategy in the UK and the Netherlands, including drafting pleadings for a claim in the IP Enterprise Court.
  • Estar Medical Limited responding to an Appeal of a patent infringement and revocation decision in respect of a patent for platelet enriched plasma. CMS is currently representing Estar before the Court of Appeal.
  • Silence Therapeutics on an infringement and SPC entitlement claim against Alnylam Inc and The Medicines Company in relation to an RNA interference product. This matter involved coordinated litigation in the UK, the Netherlands and Portugal.
  • A manufacturer and supplier of unlicensed medicines on its UK launch strategy and Greek injunction proceedings regarding a thyroid hormone product.
Regulatory litigation
  • A multinational pharmaceutical company on its General Court challenge to a regulatory exclusivity period as part of an early generic (hybrid) marketing authorisation application.
  • A pharmaceutical company in respect of a regulatory challenge to an MHRA decision regarding the supply of specials.
  • Defending a multinational pharmaceutical company on a challenge brought before the MHRA in respect of the marketing of certain products.
  • Several clients on compliance with the Tobacco Product Directive and regulatory requirements for e-cigarettes in the UK.
Trade mark litigation
  • A substantial High Court dispute, with 36 related EUIPO and UKIPO registry actions regarding use of the trade marks in respect of insurance services.
  • Nvidia Corporation on High Court and related EUIPO proceedings in respect of the validity and non-infringement of certain trade marks relevant to Nvidia’s core brands for graphics processing units.
  • Sky Plc on trade mark proceedings in the IP Enterprise Court in respect of the use of Sky’s trade marks on set top boxes.
Copyright, design right and database right litigation
  • A number of clients in the betting & gaming industry on the enforcement and protection of database rights in betting data.
  • A broadcaster on a long-running enforcement programme, including issued proceedings, to prevent products designed to circumvent conditional access technology.
  • Decathlon defending registered design right infringement proceedings brought in respect of walking boots.
  • ML Accessories on registered and unregistered design right infringement proceedings brought in respect of plug sockets and light switches.
  • Aleading supermarket chain on design right infringement risk, and providing clearance advice in respect of a number of potential new products.
  • Microsoft Corporation on a number of copyright infringement and anti-piracy claims.
more less

Memberships & Roles

  • AIPPI 
  • IPLA
  • ChIPs
  • EPLaw
more less

Publications

more less

Education

  • 2014 – Higher Courts (Civil Advocacy) Qualification, BPP Professional Education, London
  • 2012 – Postgraduate Diploma in Intellectual Property Law and Practice, Oxford University, Oxford
  • 2009 – Legal Practice Course (LPC), BPP Law School, London
  • 2007 – Bachelor of Laws (LLB), University of Essex, Colchester
more less

Feed

08/08/2022
Gov­ern­ment con­sulta­tion out­come re­veals di­vide in views on Stand­ard Es­sen­tial...
The In­tel­lec­tu­al Prop­erty Of­fice (IPO) has pub­lished its con­sulta­tion out­come on Stand­ard Es­sen­tial Pat­ents (SEPs) and In­nov­a­tion. The gov­ern­ment, be­liev­ing that SEPs and as­so­ci­ated stand­ards are of grow­ing...
26/07/2022
CMS Ex­pert Guide on Bolar Pro­vi­sions
In­tro­duc­tion Bolar pro­vi­sions, named after the US law en­acted to over­turn a court rul­ing which had held that the USA did not provide for a re­search ex­emp­tion (see Roche Products, Inc. v. Bolar Phar­ma­ceut­ic­al...
Comparable
18/03/2022
Post-Brexit: UK plaintiffs must provide cost se­cur­ity for pro­ceed­ings in...
Last year, long lorry jams made it clear to every­one what con­sequences Brexit will have for cross­ing the bor­der to main­land Europe. Far less known is the hurdle which UK com­pan­ies must over­come when they...
21/02/2022
Uni­fied Pat­ent Court: opt out – prac­tic­al is­sues to con­sider
The Unit­ary Pat­ent (“UP”) and Uni­fied Pat­ent Court (“UPC”) will soon enter force in Europe, re­volu­tion­ising the European pat­ent sys­tem and present­ing both op­por­tun­it­ies and risks. Now is the time...
09/02/2022
CMS 2021 SEP/FRAND Lit­ig­a­tion Round Up
In case you missed any of the key FRAND re­lated pat­ent de­cisions from last year, set out be­low is our case round-up. Do reach out for fur­ther de­tails. Jur­is­dic­tion­al Chal­lenges - Nokia V Oppo Nokia v...
01/11/2021
MHRA en­cour­ages e-ci­gar­ette man­u­fac­tur­ers to ob­tain UK mar­ket­ing au­thor­isa­tions
The MHRA has is­sued guid­ance en­cour­aging elec­tron­ic ci­gar­ettes and oth­er in­haled nicot­ine-con­tain­ing products to be li­censed as medi­cines and med­ic­al devices (in the case of re­fil­lable e-ci­gar­ettes) in...
28/10/2021
Arm­chair in­ven­tions: plaus­ib­il­ity at the EPO
Will it get harder to use post-filed data at the European Pat­ent Of­fice (EPO)? The is­sue of plaus­ib­il­ity has now been form­ally re­ferred to the highest ju­di­cial au­thor­ity at the EPO to cla­ri­fy the cir­cum­stances...
28/09/2021
Court of Ap­peal di­vided on pat­ent of­fice treat­ment of AI ap­plic­a­tions
The Court of Ap­peal has con­firmed that the class of in­ven­tions cre­ated by AI ma­chines is not pat­entable in a ma­jor­ity de­cision with a dis­sent­ing opin­ion provided by Birss LJ. All three Lord/Lady Justices...
27/08/2020
UK Su­preme Court up­holds UK Court's jur­is­dic­tion to settle FRAND li­cence...
The much an­ti­cip­ated de­cision from the UK Su­preme Court in the joined ap­peals Un­wired Plan­et v Hua­wei and Con­vers­ant v ZTE was handed down yes­ter­day. A case pre­view, which in­cludes a full back­ground of...
25/06/2020
Su­preme Court De­cision - Re­gen­er­on v Kymab [2020] UK­SC 27
Who knew a mouse could cause so much trouble? The Su­preme Court handed down its judg­ment in the case of Re­gen­er­on v Kymab this week, rul­ing that the as­ser­ted claims of Re­gen­er­on’s European pat­ent EP1360287...
28/05/2020
The im­pact of Brexit on In­tel­lec­tu­al Prop­erty Rights
Al­though the UK with­drew from the EU earli­er this year the im­pact will not be felt un­til the trans­ition­al peri­od ex­pires on 31 Decem­ber 2020. From that date the UK will no longer re­main sub­ject to EU...
20/03/2020
UPC fal­ters again - a boost for ar­bit­ra­tion
As many of you will know, this morn­ing the Ger­man Con­sti­tu­tion­al Court ruled against the pur­por­ted rat­i­fic­a­tion by Ger­many of the European Agree­ment on a Uni­fied Pat­ent Court. This after the in­dic­a­tion...