Deborah Bould MAPartner
Deborah Bould's focus is patent dispute resolution. She has over 20 years of experience of standards essential patent assertions in a wide range of technologies including the Internet of Things (IoT).
Key sectors for Deborah are Technology, Industrials, Energy & Natural Resources and Consumer Goods, Food & Retail. Her experience includes freedom to operate reviews, licensing compliance programmes, mediation, arbitration and litigation.
Most of Deborah’s work is multi-jurisdictional and she has extensive experience of developing winning enforcement and defence strategies with colleagues in key jurisdictions such as the USA, China, Germany, France, Italy and the Netherlands.
- Defending ZyXEL (a global manufacturer of WiFi routers and telecommunications networking equipment) in a high profile precedent setting UK SEP infringement case. This included working closely with ZyXEL’s US legal team defending parallel proceedings. The UK Court of Appeal permitted ZyXEL to avoid an expensive global RAND licensing trial by waiving its right to enforce claimant TQ Delta’s RAND commitments.
- Defending Safran Seats in a UK patent litigation concerning safety systems for electrical power sockets in commercial aircraft seats. This included coordinating defence work in Germany and France (including a saisie contrafaçon in France).
- Acting for claimant Siemens Schweiz in UK patent infringement proceedings concerning protective coatings for printed circuit boards used in smoke alarms; the case went to the UK Court of Appeal and set legal precedent regarding the right to damages following corporate restructuring.
- Acting for claimant Magnesium Elektron in UK patent infringement proceedings concerning mixed metal oxides used in vehicle catalytic converters. It was necessary to serve the defendants' Chinese subsidiary and to undertake a process inspection at their Chinese manufacturing facility including taking samples for testing. Before settling, the case generated two precedential judgments concerning the evidence of infringement required for a novel process patent and the scope of the process inspection and testing.
- Acting for a major European electronics retailer regarding their own brand products and accessories, including TVs, mobile phones and tablets. Deborah works with the client’s sourcing team at the development stage of the product pipeline to manage and minimise IP risk together with defending claims and negotiating licences as needed.
- Advising a global aerospace manufacturer on minimising "Machine to Machine" and "Internet of Things" patent risk through intelligent procurement, RAND compliant patent assertion response procedures and proactive licensing compliance.
- Representing a global oil services company in an arbitration before the London Court of International Arbitration with a former joint venture partner concerning ownership of IP, including a fundamental patent family, in subsea compressors.
- Defending a UK patent infringement claim concerning the storage and transportation of drill cuttings, including coordination with Norwegian counsel defending parallel proceedings.
- Acting for a UK utility company to defend a patent assertion concerning hydrogen storage of renewable energy generated from wind turbines. This was a major power utility network connected and integrated wind electrolysis/fuel cell hydrogen storage system, with associated offtake into the transport chain.
- Bristol University, Diploma in Intellectual Property Law and Practice, 2002
- Cambridge University, Jesus College, Master of Arts, 1996
- College of Law, Postgraduate Diploma in Legal Practice, 1994
Cambridge University, Jesus College, Natural Science and Law, Bachelor of Arts, 1993
- “Deborah listens to and cares about what her clients want to achieve, and is great at networking with the right people from across (or even outside of) her firm.” Combining “a great eye for detail with admirable brevity and practicality”, she puts in winning performances in SEP actions, especially within the Internet of Things field – IAM Patent 1000 United Kingdom: England.
- “We have found Deborah to be an excellent lawyer. Her advice is clear, concise and prompt. She is calm, organised and straight forward. A pleasure to deal with.” Chris Holloway, Contracts Manager, Safran Seats UK.
- “…we were able to stop the English Court imposing a licence on us that would have had an impact on our business worldwide. The developing status of RAND licensing meant that throughout the case many complexities arose, but Deborah and her team worked with agility and applied their deep industry knowledge to overcome those challenges.” Dr Shun-I Chu, President of ZyXEL Communications.
- Patent Star 2020 in IPStars (ManagingIP).
- Best Lawyers 2020 edition – recognised for Intellectual Property Law in the UK.
- UK Female Lawyer of the Year (IP Litigation), ACQ5 Global Awards 2019.
Prior to joining DLA Piper in May 2020, Deborah worked at a London based international law firm (2001 – 2020) and was a partner since 2006. Prior to that, Deborah was an Associate at a UK headquartered law firm within a global accountancy practice (1998 – 2000). Deborah trained and qualified as a Solicitor with a London based international law firm (1994 – 1998).
Memberships And Affiliations
- The Intellectual Property Lawyers Organisation
- The International Association for the Protection of Intellectual Property (AIPPI)
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