BRIchardson

William Richardson

Partner
Baker & McKenzie LLP

Biography

In a career spanning over three decades, William (Bill) Richardson has been recognized as a leader in IP litigation by his peers and numerous experts' guides and ranking services, including Chambers Global's The World's Leading Lawyers for Business and The World's Leading IP Strategists, IAM Patent 1000 - The World's Leading Patent Professionals, IAM Life Sciences 250 - World's Leading Life Sciences Patent Litigators, Global Law Experts' Patent Litigation Lawyer of the Year in Canada, Who's Who Legal: Canada 2020 for Life Sciences and Patents, and The Best Lawyers in Canada. He has been awarded Who's Who of Professionals as Patent Advisor of the Year, and has been featured in the annual editions of Who's Who Legal: Canada and Euromoney's Experts Guide to the World's Leading Patent Law Practitioners. He is a Fellow of the Chartered Institute of Arbitrators (London), and a frequent speaker, lecturer and writer on intellectual property and litigation.

Practice Focus

Bill is lead counsel in high-stakes IP litigation, and serves as a trusted adviser and legal strategist to multinational IP rights holders. While his cases have spanned a wide variety of industries and technologies, he regularly assists clients in the pharmaceuticals and biotechnology fields. Bill is the recent past chair of the Firm's North America Life Science Group and North America representative to the Firm's Global Healthcare Industry Group.

Representative Legal Matters

Patent Litigation

  • Acted on behalf of a biotech start-up as a claimant against a private equity investor who breached an investment agreement to fund a Phase 2 clinical trial for a novel compound. Arbitrated before a single arbitrator under domestic arbitration legislation. Successful in obtaining an award equal to the PE investor's committed investment.

  • Acted for a Norwegian based clinical stage biotech, as claimant, in an International Commercial Arbitration before a three person panel against the licensor of a key compound, seeking a declaration confirming our client's interpretation of the License Agreement. Successful. Value of claim USD 1 billion.

Patent Litigation - three "Case of the Year"

  • Defended the world's largest oil and gas company in two significant patent infringement actions in Canada involving automotive lubricants, resulting in a successful resolution of the patentee's claim for $1B in damages.

  • Successfully represented the patent holder, one of the world's largest multinational consumer goods companies, against its most significant global competitor, involving patented break-through technology, resulting in a finding of infringement for 17 years and upholding the validity of the patent.

  • Represented a multinational brand pharmaceutical company in a landmark patent infringement action against Canada’s largest generic drug manufacturer, successfully upholding the patent’s validity after a 16-week trial and resulting in one of the largest damages awards in Canadian patent litigation history.

Other Patent Litigation Matters

  • Defeated a generic manufacturer's claim for damages under Section 8 of the Patented Medicines (Notice of Compliance) Regulations.

  • Represented a multinational brand pharmaceutical company in defense of a claim for damages allegedly caused by mis-labelling of an OTC product. Claim dismissed.

  • Counsel to a multinational brand pharmaceutical company in proceedings under the Patented Medicines (Notice of Compliance) Regulations against multiple Canadian generic drug manufacturers involving patents covering a leading antibiotic. Obtained an order prohibiting market entry until patent expiry.

  • Successfully represented a multinational brand pharmaceutical company in patent infringement proceedings involving a 'block buster' anti-hypertensive medication against Canada's largest generic drug manufacturer. Successful in having Health Canada repeal the generic's market authorization.

Representative Trademark litigation matters

  • Represented several major multinational consumer brand companies in trademark cases before the Federal Court, the Ontario Superior Court, as well as the Trademarks Office involving consumer goods, food and beverages, personal goods (e.g., mouthwash), apparel, etc.

Professional Associations and Memberships

  • The Sedona Conference - Patent Damages and Remedies (WG 9) and Patent Litigation Best Practices (WG 10)
  • Canadian Bar Association - Member - IP Branch
  • Intellectual Property Institute of Canada - Member
  • The Advocates' Society - Member
  • Chartered Institute of Arbitrators (CIArb) - International Arbitration - Fellow
  • American Bar Association - Member, Patent Litigation Comm.
  • Law Society of Ontario - Member

Corporate Responsibility

  • Director, The Princess Margaret Cancer Foundation - One of the World's 'Top 5" Cancer Research Centers. (Vice-Chair Granting Comm. and Member, Governance Comm.)
  • Member - Dalhousie University's $250 million capital campaign

Admissions

  • Ontario~Canada (1986)

Education

  • Dalhousie University (LL.B. Class President) (1984)
  • Dalhousie University (Bachelor of Commerce - Honors, Recipient Killam Trust Scholarship and other academic awards) (1981)

Languages

  • English
  • Co-editor and author, Canada chapter, Global Patent Litigation Handbook Second Edition, Baker McKenzie

  • Lecturer, "Patent Law," University of Toronto, Faculty of Law, 2010 to present

  • Author, Chapter 8 - "Patent Validity - Latent Defects," Judicial Institute and Federal Court of Canada Handbook, 2020