Jin Ooi
Overview
Jin Ooi is an intellectual property litigator in the London office of Kirkland & Ellis International LLP. He is experienced in patent litigation and counselling (including on complex damages inquiries) mainly in the pharmaceutical and life sciences field (second medical use, biosimilars, small molecules, DNA sequencing, vaccines, transgenic animal platforms for antibody discovery), and in the consumer products sector (shaving razors, potentially reduced-risk products including tobacco heating and vapour products, dishwashing tablets, coffee pods and capsules).
He is also experienced in litigating and arbitrating trade secrets disputes in the medical devices (bone cements), tech (LNG carriers) and aviation sector (airplane components, airport businesses), in addition to handling antitrust claims (cathode ray tubes, lithium ion batteries, forklift gas).
His clients have included Pfizer, Viatris, Novartis, Regeneron, British American Tobacco, Samsung, Biomet and Procter & Gamble. Jin’s cases are often multi-jurisdictional requiring significant cross-border coordination across multiple forums.
Jin is recognised as a Next Generation Partner in both “Intellectual Property: Patents” and “Life Sciences and Healthcare” in the 2021–2023 editions of The Legal 500 UK. In the 2020 edition, he was a Rising Star in "Pharmaceuticals and Biotechnology." With a “keen intellect and considerable knowledge” and noted as a “powerhouse”, Jin “is renowned for his ability to master knotty issues and has famed round-the-clock responsiveness”, in addition to being “brilliant on detail and in plotting out the future stages of litigation”. A “sharp strategist”, he “has a nose for a good point” and "he is full of good ideas.” Juve Patent named him as “one to watch” in UK patent litigation 2022: an “all-rounder”, Jin “stands out for the technical diversity of his cases, from pharmaceuticals to mobile communications to e-cigarettes - as well as his hard work and tenacity.”
The 2022 edition of IAM Patent 1000 noted that “Ooi is equally strong in the pharmaceutical field but covers consumer products too - he has been credited with having ‘an attention to detail that is second-to-none’, ‘I always trust Jin to get to the heart of the technical aspects of a matter, and to do so without delay. This is the hallmark of excellent lawyers, and in Jin’s case this talent is coupled with an interest in understanding how the law varies in other jurisdictions. That is a talent which is imperative to overseeing and coordinating multi-jurisdiction patent litigation and one that clients value in Jin.'" He is also a Patent Star in the MIP IP Stars 2022 edition.
Prior to joining Kirkland, Jin worked at Allen & Overy LLP in London and before that Corrs Chambers Westgarth in Sydney. In recognition of his work in Australia, Jin was among a select few young lawyers awarded the 2014 Lawyers Weekly 30 Under 30 Awards, and a finalist in two categories in the 2015 Awards. His dual qualifications in law (1st class degree) and pharmacology give him a special insight into, and understanding of, his clients’ legal needs and commercial and regulatory imperatives.
Experience
Representative Matters
Since joining Kirkland, Jin has worked on the following reported cases:
- British American Tobacco to achieve a series of wins as part of global disputes
- Warner-Lambert Company LLC v Generics (UK) Ltd (t/a Mylan) [2018] UKSC 56 (pregabalin; second medical use; plausibility; infringement; Supreme Court)
- Warner-Lambert Company LLC v Dr Reddy’s Laboratories (UK) Ltd [2020] EWHC 628 (Pat) (pregabalin; pre-action conduct; commencing damages inquiry)
- Nicoventures Trading Ltd v Philip Morris Products, SA [2020] EWHC 1594 (Pat) (application for expedited trial)
- Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (transgenic mouse platform for antibody discovery; insufficiency; Supreme Court)
- Philip Morris Products, SA v RAI Strategic Holdings, Inc [2021] EWHC 537 (Pat) (tobacco heating product; added matter; inventive step; infringement)
- Nicoventures Trading Ltd v Philip Morris Products SA [2021] EWHC 1977 (Pat) (tobacco heating product; inventive step; collocation)
- Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Company LLC [2021] EWHC 2182 (Ch) (pregabalin; damages inquiry; preliminary issues trial re counterfactual assumptions)
- Philip Morris Products, SA v Nicoventures Trading Limited [2022] EWHC 47 (Pat) (trial listing application prior to CMC)
- Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Company LLC [2022] EWHC 189 (Pat) (pregabalin; damages inquiry; pleading amendments)
- Philip Morris Products, SA v Nicoventures Trading Ltd [2022] EWHC 1284 (Pat) (stay application pending EPO proceedings)
- Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Company LLC [2022] EWHC 1856 (Ch) (confidentiality club)
- Philip Morris Products, SA v Nicoventures Trading Ltd [2022] EWCA Civ 1638 (tobacco heating product; inventive step; Court of Appeal)
Prior to joining Kirkland, Jin worked on the following matters:
Patent Litigation
- Represented Pfizer group Warner-Lambert in enforcing its second medical use patent for blockbuster drug Lyrica (pregabalin) as a pain treatment against numerous generic companies in the UK and across Europe (W-L v Actavis; W-L v Sandoz). Heralded as the IP case of the decade in the UK, it was heard in the Supreme Court in 2018 (having previously been before the Court of Appeal twice) on the most difficult issues in English patent law namely plausibility and infringement of second medical use patents.
- Advised another global innovator pharma company in relation to enforcement issues surrounding its second medical use patent for a chemotherapy medication.
- Advised a life sciences company in navigating the patent landscape in the DNA sequencing space and preparing to clear the way for its human genomic sequencing technology.
- Advised a global healthcare company in anticipated court proceedings seeking declarations of non-infringement related to its influenza vaccines.
- Advised a global pharma company on loss of exclusivity and enforcement strategy in relation to its platelet inhibitor drug.
- Acted for Gillette (Procter & Gamble) in patent proceedings related to its Mach3 razor (Gillette v Edgewell)
- Advised a multinational tobacco company on the validity of patents related to next generation vaping products, and freedom to operate issues
Other IP / Pharma Litigation
- Represented the Australian Department of Health in unprecedented litigation claiming compensation arising from increased subsidies paid under the Pharmaceutical Benefits Scheme pursuant to cross-undertakings in damages given by pharma companies in patent proceedings concerning clopidogrel and venlafaxine (Commonwealth v Sanofi; Commonwealth v Wyeth).
- Defended the Department of Health and Therapeutic Goods Administration in merits and judicial reviews concerning pricing decisions and the de-registration and listing cancellation of prescription and complementary medicines from the Australian Register of Therapeutic Goods (Aspen v Minister; Sanofi v Minister; Cat Media v Minister).
- Advised the Department of Health on all aspects of the operation of the Australian Pharmaceutical Benefits Scheme, including on matters concerning pricing and supply, and implications of the Pharmaceutical Benefits Advisory Committee's recommendations.
- Assisted British American Tobacco Australasia on its high profile constitutional challenge against the Australian Tobacco Plain Packaging Act.
- Assisted Allergan in Australian trade mark opposition appeal proceedings on “No-Tox” (Allergan v Di Giacomo).
Trade Secrets Litigation
- Defended a global aerospace and defence company in an ICC arbitration claim on misappropriation of confidential information in breach of a non-disclosure agreement.
- Acted for an airport company in LCIA arbitration involving disclosures of confidential information.
- Defended Biomet in trade secrets litigation concerning bone cements (Heraeus v Biomet).
- Acted for a multinational heavy industries company in anticipated disputes concerning alleged breaches of confidence under a technical assistance and licence agreement, in particular in relation to the licensor's patent rights and non-patented practical technical information.
Antitrust Litigation
- Acted for Samsung SDI in jurisdiction challenges in respect of EU cartel damages claim relating to (i) cathode ray tubes (iiyama v Schott) and (ii) lithium-ion batteries (Microsoft Mobile v Sony). Both matters were nominated in 2017 and 2018 respectively for the "Litigation of the year - Cartel Defence" category in the Global Competition Review awards.
- Acted for the Australian Competition and Consumer Commission in a forklift gas cartel dispute (ACCC v Renegade Gas).
Prior Experience
Allen & Overy, London
- Senior Associate (2017–2018)
- Associate (2014–2017)
Corrs Chambers Westgarth, Sydney, Australia
- Associate (2012–2014)
- Law Graduate (2011)
More
Thought Leadership
Publications
“Patent Litigation 2019: Trends and Developments”, Chambers and Partners Practice Guides, 2019
“UK Patent Law: Hot Topics of 2018 and What’s Ahead”, Law360, 2019
“Actavis v Eli Lilly: outcomes”, IPPro, 2018
"Book review: Intellectual Property in Australia", The IPKat, 2017
"Applying Cartier v. BSkyB to UK life sciences patents", Law360, 2016
"Caught in the middle: ISPs face blocking orders after Cartier case", Intellectual Property Magazine, 2016
"The utility of the Cartier case in the life sciences context", Intellectual Property Magazine, 2016
"The International Arbitration Review (Chapter: Australia)" (3rd, 4th and 5th eds), Law Business Research, 2012-2014
Seminars
Speaker, “Hot topics in patent litigation - a practitioner’s view”, Intellectual Property Law Discussion Group, University of Oxford, 2019
Speaker, “Insufficiency and the many shades of plausibility”, Young EPLAW Congress, Brussels, 2018
Speaker, "Where are we now with plausibility?", Young EPLAW Congress, Brussels, 2017
Speaker, "What companies need to know about the Bolar exemption", C5 EU Pharmaceutical Regulatory Law conference, London, 2016
Speaker, "Implications of Brexit for IP and IT legal practice", LexisNexis webinar, London, 2016
Speaker, “Second medical use - the UK perspective”, Future of Innovation in Medicine: Incentives for New Medical Treatments and Global Health conference, Seattle, 2015
Moderator, “Drug development and approval process with its part in exclusivity”, Future of Innovation in Medicine: Incentives for New Medical Treatments and Global Health conference, Seattle, 2015
Recognition
The Legal 500 UK - 2020 (Rising Star - Pharmaceuticals and Biotechnology); 2021–2023 (Next Generation Partner - Intellectual Property: Patents & Life Sciences and Healthcare)
Chambers UK - 2023 (Up and Coming - Intellectual Property: Patent Litigation)
IAM Patent 1000 - 2021–2022
Juve Patent - 2022
Managing IP IP Stars - 2021 (Notable Practitioner), 2022 (Patent Star)
Managing IP EMEA Awards - 2022 (European Cross-border Patent Litigation Team of the Year for British American Tobacco; UK Impact Case of the Year for Dr Reddy’s Laboratories v Warner-Lambert Company)
Legal Media Group Expert Guides (Rising Stars) - 2021–2022 (Life Sciences)
WIPR Leaders - 2021–2022
Memberships & Affiliations
AIPPI: International Association for the Protection of Intellectual Property
EPLAW: European Patent Lawyers Association
The Law Society of England and Wales
The Law Society of New South Wales (Australia)
Credentials
Admissions & Qualifications
- 2017, Entitled to exercise Higher Rights of Audience (Civil Advocacy)
- 2016, Admitted to Practice as a Solicitor of England and Wales
- 2012, Admitted to Practice as a Solicitor in the Federal Courts of Australia
- 2011, Admitted to Practice as a Solicitor of New South Wales, Australia
Education
- University of OxfordPostgraduate Diploma in Intellectual Property Law and Practice2016
- College of Law, SydneyGraduate Diploma in Legal Practice2011
- University of SydneyLL.B.First Class Honours2010
- University of SydneyB.Sc., PharmacologyAdvanced2008