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IP/IT Set of the Year 2005, 2007, 2009, 2011 & 2013

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Chambers and Partners 2015

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Chambers and Partners 2015

Welcome to 11 South Square

11 South Square is a leading barristers chambers specialising in all areas of intellectual property law. The set is made up of 5 Queen’s Counsel and 11 juniors together with two leading Professors in the area of IP law. Many Members have extensive experience in science and industry enabling them to offer top quality advocacy and advice to their clients.

Our members frequently act in leading cases in the areas of intellectual property, information technology and media and have appeared in courts and tribunals of all levels in the UK and other jurisdictions throughout the world.

 

Notable Cases

  • Koninklijke Philips N.V. v Asustek Computer Incorporation, HTC Corporation & Ors [2016] EWHC 867 (Pat)

    Koninklijke Philips N.V. v Asustek Computer Incorporation, HTC Corporation & Ors [2016] EWHC 867 (Pat)

    This was an application for a preliminary issue in a three patent infringement action concerning high speed packet access (HSPA) technology in mobile telecommunication networks.  The preliminary issue sought by HTC was a determination of whether an agreement between Philips and a third party could provide a defence to some or all of the claim. Mr John Baldwin QC (sitting as a deputy Judge of the Patents Court) considered the relevant matters set out in Wagner International AG v Earlex [2011] EWHC 3897 (Pat).  He held that the preliminary issue is sufficiently discrete for an early decision on the point to be capable of resolution in a form which will have a significant impact on the litigation as a whole and ordered that it be heard in July 2016.

    Brian Nicholson and Adam Gamsa appeared for Philips.

    [2016] EWHC 867 (Pat)

  • American Science & Engineering Inc v Rapiscan Systems Ltd [2016] EWHC 756 (Pat)

    American Science & Engineering Inc v Rapiscan Systems Ltd [2016] EWHC 756 (Pat)

    Iain Purvis QC and Brian Nicholson appeared for the patentee, AS&E, in its claim that Rapiscan had infringed one of AS&E’s covert X-ray inspection patents.  Unusually, Rapiscan conceded infringement (subject to validity) whilst its managing director, Mr Baldwin, was being cross-examined as to his company’s activities.  Rapiscan nevertheless persisted with its attack on the validity of AS&E’s patent.  In a Judgment handed down on 11 April 2016, the Honourable Mr Justice Arnold dismissed Rapiscan’s attack, holding AS&E’s patent valid.  Rapiscan will require the Court’s permission to bring any appeal.

    [2016] EWHC 756 (Pat)

  • Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 576 (Pat) Trial C

    Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 576 (Pat) Trial C

    This was the third technical trial in the mobile telecommunications patent case between Unwired Planet and Huawei & Samsung, concerning Unwired Planet’s patent portfolio.

    The patent in issue was entitled “Method for improving handovers between mobile communication systems” and concerned handover between different radio access technologies including GSM (2G), UMTS (3G) and LTE (4G).

    Unwired Planet alleged that the patent was essential to two versions of the GSM standard. Huawei and Samsung counterclaimed that the patent was invalid for insufficiency, obviousness and added matter.

    Birss J held that the patent was valid and essential.

    Iain Purvis QC, jointly instructed by Powell Gilbert LLP and Bristows LLP, appeared for Huawei and Samsung. Kathryn Pickard, instructed by Powell Gilbert LLP, appeared for Huawei.

    [2016] EWHC 576 (Pat)

  • PMS International Group Plc v Magmatic Limited [2016] UKSC 12

    PMS International Group Plc v Magmatic Limited [2016] UKSC 12

    This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of its Community Registered Design against PMS, the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J interpreted the Community Registered Design was for shape of a suitcase alone and held that it had been infringed by the Kiddee Case.

    The Court of Appeal allowed PMS’s appeal, holding that the judge had made a number of errors in interpreting the Community Registered Design. Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case did not infringe the Community Registered Design.

    Magmatic appealed to the Supreme Court, arguing that the Court of Appeal’s interference with the decision of Arnold J was misplaced and requesting the restoration of the original finding of infringement. In the alternative, Magmatic contended that the case involved points of EU law which should be referred to the CJEU. The request for a reference was supported by the Comptroller General of Patents, Designs and Trademarks who was given permission to intervene.

    The Supreme Court dismissed the appeal and declined to make a reference to the CJEU. The Court of Appeal’s reconsideration was justified. In the leading judgment given by Lord Neuberger, the Court held that the overall impression created by the Community Registered Design is that of a horned animal and this was reinforced by the absence of decoration on the surfaces of the suitcase. Moreover, Arnold J had erred in failing to take into account the contrast in tone between its different parts. The Court of Appeal’s finding of infringement therefore stood. In addition whilst expressly stating that its decision on this aspect was obiter the Court expressed the very strong view that absence of decoration may as a matter of principle be a feature of a registered design and that feature may be depicted on a CAD image. Having decided the matter in this way, the Supreme Court considered that the appeal did not raise any issue which should be referred to the CJEU.

    Mark Vanhegan QC and Chris Aikens appeared for PMS. Brian Nicholson appeared for the Comptroller General of Patents, Designs and Trademarks.

    [2016] UKSC 12

  • Design & Display Ltd v Ooo Abbott & Anor [2016] EWCA Civ 95

    Design & Display Ltd v Ooo Abbott & Anor [2016] EWCA Civ 95

    This was an appeal of a decision in an account of profits following a successful claim for infringement of a patent for a display panel used in shops made up of ’slatted panel’ and ’snap-in’ aluminium inserts.  At the account HHJ Hacon sitting in the IPEC decided that (a) the scope of the profit derived from the defendant’s infringement extended to the profits made from sales of slatted panel in which infringing inserts were incorporated and (b) the defendants had not satisfied the evidential burden that it was entitled to make any of the deductions which it sought to make from gross profits.

    The Court of Appeal allowed the appeal, holding that the judge had made errors in reaching his decision on both issues.  On the issue of the scope of the account, the judge should have asked himself how much of the profit on the sale of the slatted panel was derived from the infringement.  On the issue of deductible costs, the judge was wrong to require that the defendant proved that it was running to maximum capacity.  Feeling unable to assess the profits on the basis of the facts found by the judge, the Court of Appeal remitted the case to the IPEC.  

    Hugo Cuddigan QC and Chris Aikens appeared for the respondents.

     [2016] EWCA Civ 95

  • Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 94 (Pat) Trial B

    Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2016] EWHC 94 (Pat) Trial B

    This was the second technical trial in the mobile telecommunications patent case between Unwired Planet and Huawei & Samsung, concerning Unwired Planet’s patent portfolio, most of which it had obtained from Ericsson.

    Unwired Planet alleged that two of its patents relating to the self-configuration and optimisation of cell neighbours in wireless telecoms networks had been infringed by the sale in the UK of every Huawei and Samsung 4G mobile device. Both the patents had been declared essential to the LTE 4G telecommunications system and Unwired Planet contended that the Automatic Neighbour Relations functionality provided by the LTE standard necessarily meant that each 4G device infringed both of their patents. Samsung and Huawei challenged the validity of the patents.

    The patents were also under opposition in the EPO, and Unwired Planet had filed 34 auxiliary requests in respect of both patents there. In light of that and following Samsung’s application in March 2015 the Court ordered Unwired Planet to identify by May 2015 any amendments which it would seek at this trial, ([2015] EWHC 1039 & [2015] EWHC 1198 (Pat)). As a result at the trial Unwired Planet sought to defend the patents on the basis of two unconditional amendments and three conditional amendments and asserted that some 19 claims were independently valid and infringed.

    Birss J held that each of the claims of both patents whether unconditionally or conditionally proposed to be amended by Unwired Planet was obvious in light of a technical proposal which had been submitted by Qualcomm to the relevant 3GPP working group prior to the priority date. Birss J also held that one of the subsidiary claims of the proposed amendments would have been refused for lack of clarity in any event.

    Mark Vanhegan QC instructed by Bristows LLP appeared for Samsung.

    [2016] EWHC 94 (Pat)

  • AP Racing Ltd v Alcon Components Ltd [2016] EWHC 116 (IPEC)

    AP Racing Ltd v Alcon Components Ltd [2016] EWHC 116 (IPEC)

    This was a damages inquiry following the successful infringement action relating to a patent for disk brake calipers used in high performance motor vehicles. Hugo Cuddigan acted for the patentee.  The defendant had sought to argue that, were it for its sales of infringing calipers, the patentee would not have realised those sales itself, for a host of reasons.  The judge disagreed, deciding that 100% of the defendant’s sales would have been achieved by the patentee.  He also awarded very significant convoyed sales, being sales of brake discs and associated hardware, in respect of 70% of those caliper sales.

    [2016] EWHC 116 (IPEC)

  • Accord Healthcare Ltd v Astellas Pharma GmbH [2015] EWHC 3676 (Ch)

    Accord Healthcare Ltd v Astellas Pharma GmbH [2015] EWHC 3676 (Ch)

    This case concerned the correct interpretation of Articles 6, 8 and 10 of Directive 2001/83/EC on medicinal products for human use (the “Directive”).

    Accord applied for marketing authorisations in a number of Member States for a generic version of bendamustine, an anti-tumour drug. It sought to take advantage of the Article 10 exemption from the requirement to file results of pre-clinical tests and clinical trials by relying upon an earlier marketing authorisation for bendamustine, the “Ribomustin MA”. Astellas was the holder of the Ribomustin MA, which had been granted in 2005. Astellas challenged Accord’s marketing authorisations on the basis that the Ribomustin MA was not an MA within the meaning of the Directive because it had been granted subject to post-authorisation conditions and pursuant to a German transitional procedure, designed to speed up the process with which East German products were granted marketing authorisations upon reunification.

    To avoid any challenge to its application for a UK marketing authorisation, Accord applied for a declaration from the Court that the Ribomustin MA had been granted in accordance with the Directive and that Ribmoustin could be relied upon as a reference product under Article 10.

    Morgan J granted the declaratory relief sought by Accord. He found that the competent authorities were able to grant marketing authorisations subject to post-authorisation conditions and that the Ribomustin MA had been granted in accordance with Article 8 Directive. He further held that, under German law, the effect of a settlement agreement reached between Astellas and the competent authority in 2011, was not such as to render the Ribomustin MA void ab initio.

    Iain Purvis QC and Kathryn Pickard appeared for Accord.

    [2015] EWHC 3676 (Ch)

     

  • Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Anor [2015] EWHC 2973 (Pat)

    Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Anor [2015] EWHC 2973 (Pat)

    In Merck Sharp & Dohme v Ono & BMS [2015] EWHC 2973 (Pat), Birss J held that Ono’s patent (under which BMS is the exclusive licensee), with claims to anti-PD-1 antibodies which inhibit the immunosuppressive signal of PD-1 for cancer treatment, is valid. Merck sought to challenge the validity of the patent, raising a wide variety of attacks on the patent, including added matter, insufficiency, loss of priority, anticipation and obviousness. The case raised a number of points of legal interest including the role of plausibility in priority, novelty and sufficiency.

    Merck had admitted that, if the patent were found valid, its proposed dealings in its product for treating melanoma would infringe. Unusually, Ono indicated that if it won its infringement case, it would not seek an injunction in the UK provided an appropriate royalty was paid by Merck, to be agreed or decided by the court.

    In concluding that the patent was valid, Birss J held that the mouse models for cancer in the priority document (and the patent) provided support for the claimed invention, such that the Patent was entitled to its priority date. Further, because the skilled person would appreciate that these results would have broad application in treating cancer (because the PD-1 blockade effects the immune system, rather than being directed to an attribute of any particular type of cancer) it was plausible that the invention would be effective for treating a wide variety of cancers and so the claims were sufficient. The Judge also held that the Patent was novel over the mouse models for autoimmune disease contained in the prior art as these did not amount to a ‘disclosure’ of the claimed invention.

    The judge applied the ‘obvious to try’ guidance set out by the Court of Appeal in its recent decision in Teva v Leo [2015] EWCA Civ 780, holding that although it would not have been inventive to the skilled person to carry out tests which would have led to the invention, the skilled person would not have had a sufficient expectation that the outcome would be successful to render the claimed invention obvious.

    [2015] EWHC 2973 (Pat)

     

  • Generics (UK) Limited t/a Mylan v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat)

    Generics (UK) Limited t/a Mylan v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat)

    Warner-Lambert’s patent was a second medical use patent, which covered the use of pregabalin for the treatment of pain. Pregabalin was known as a treatment for epilepsy and generalised anxiety disorder.

    Mylan sought revocation of the patent for insufficiency and lack of inventive step. In the meantime, Actavis launched a generic version of pregabalin under a “skinny label” (i.e. one which gives only the non-patented indications), which triggered an infringement action by Warner-Lambert. Although Warner-Lambert’s application for an interim injunction against Actavis was dismissed, the Court did make an order that the NHS issue guidance to its Clinical Commissioning Groups, with the aim of ensuring that only Warner-Lambert’s pregabalin product would be prescribed for neuropathic pain ([2015] EWHC 485 (Pat)).

    The validity and infringement trials were held back-to-back. The Secretary of State for Health intervened in the infringement trial.

    Arnold J held that the patent was partially invalid for insufficiency. In particular the claims covering the use of pregabalin for the treatment for pain (claim 1) and the treatment of neuropathic pain (claim 3) were invalid. Some of the subsidiary claims were upheld. Arnold J went on to hold that even if claims 1 and 3 had been valid, he would nevertheless have found that Actavis had not infringed. 

    Piers Acland QC and Kathryn Pickard appeared for Mylan on the validity issues. Michael Silverleaf QC appeared for the Secretary of State for Health on the infringement issues.

    Generics (UK) Limited t/a Mylan v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) 

     

  • Teva Pharmaceutical Industries Ltd v LEO Pharma [2015] EWCA Civ 779

    Teva Pharmaceutical Industries Ltd v LEO Pharma [2015] EWCA Civ 779

    A claim for revocation by TEVA of two patents covering LEO’s fixed combination of calcipotriol and betamethasone for the dermal treatment of psoriasis.

    The invention overcame differing pH sensitivities of the two actives by using a unusual solvent in a non-aqueous formulation.   Birss J found the patents obvious over a disclosure of that solvent in a mono-formulation of betamethasone.  He found that the solvent would be obvious to try in the co-formulation.  The Court of Appeal disagreed.  The evidence did not establish that such a trial would have a fair expectation of success.

    Henry Carr QC and Tom Alkin acted for Leo.

    First Instance [2014] EWHC 3096 (Pat)

    Court of Appeal [2015] EWCA Civ 779

  • Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607

    Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607

    Claim for a declaration of non-infringement of a patent which turned on the precision of a numerical limit.  The claim was to a process which used an agent in a concentration of ‘…between 1% and 25%…’.  The question was whether a process with an agent concentration of 0.77% infringed.  The Court of Appeal held that it did.  Consistent with the approach taken in a number of English and EPO authorities, it construed the term ‘1%’ as encompassing all concentrations which round to 1% when stated to zero decimal places i.e. all concentrations ≥ 0.5%.

    [2015] EWCA Civ 607

  • The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC)

    The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC)

    Trial of a claim for European Trade Mark infringement and passing off before IPEC.  The parties are both retail chains selling sofas and soft furnishings who traded under their respective names.   The case was a full action fought over 2 days under the IPEC procedure and demonstrates that such claims can, if properly organised, be litigated effectively using this procedure.  Validity and infringement of the mark “Sofa Workshop” were in issue on all grounds.  There was evidence of actual confusion between the parties arising from the similarity of their names.  The court held that the registrations were invalid on the ground that they had not been used in a sufficient part of the EU (only UK use was established) and because the mark is inherently descriptive (although it had acquired distinctiveness in the UK) but would have been infringed if valid.  The passing off claim succeeded.

    Michael Silverleaf QC and Anna Edwards-Stuart appeared for the successful claimants.

    [2015] EWHC 1773 (IPEC)

  • Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

    Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

    This was the account of profits following the Claimant’s successful appeal to the Court of Appeal, which held that the Defendants’ sale of nail care products under the name LUMOS amounted to passing off and ordered the Defendants to account for their profits.

    The Defendants (a US manufacturer and two UK distributors) had admitted participation in a common design under which the US manufacturer produced LUMOS products and supplied them to the UK distributors for onward sales.  On the account of profits, the US manufacturer argued that it need not account for its profits arising out of its sales to the UK distributor, because such sales did not themselves pass off. The judge rejected this argument, agreeing with the Claimant that the Court of Appeal’s order entitled the Claimant to recover the profits that each defendant had accrued from the common design.

    The Defendants also argued that they had not made any profit. Chris successfully argued to the contrary and the Claimant was awarded £57,000.

    Chris appeared as sole counsel on the account of profits.  He previously appeared as junior counsel with Richard Hacon (as he then was) in the Court of Appeal and at trial in the Patents County Court.

    Lumos Skincare Ltd v Sweet Squared (UK) Ltd & others [2015] EWHC 1313 (IPEC)

  • Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

    Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

    The Supreme Court has considered the difficult question as to when an overseas business can rely upon the goodwill in its name to restrain acts of passing off in the UK. 

    The Appellants ran a very successful TV subscription service under the name “NOW TV” in Hong Kong. That service enjoyed a reputation amongst members of the Chinese speaking community in the UK and was accessed and enjoyed for free in the UK via the internet. In 2012, the Respondents launched their “NOW TV” service in the UK. The Appellants sued for passing off. The key issue was whether the Appellants could establish goodwill in the jurisdiction.

    The Supreme Court reaffirmed the rule that to succeed in a passing off action it is necessary for a claimant to establish a goodwill in the jurisdiction and, to do so, it must demonstrate the presence of clients or customers in the jurisdiction for the goods and services concerned. It was held that the Appellants could not rely upon the reputation that they enjoyed in the UK. Whilst people in the UK accessed the Appellants’ services in the UK such people were not “customers” within the jurisdiction because they received the services for free. 

    Michael Silverleaf QC and Kathryn Pickard appeared for the Appellants. Iain Purvis QC appeared for the Respondents.

    Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

     

News

  • New Tenant

    We are pleased to announce that Adam Gamsa has accepted a tenancy following successful completion of his pupillage. Adam specialises in all areas of Intellectual Property, with particular expertise in the fields of telecoms and computing.  He has a doctorate in Quantum Physics and transferred...

  • Brian Nicholson awarded ‘IP/IT Junior of the Year’

    Brian Nicholson received the award for ‘IP/IT Junior of the Year’ at the 2015 Chambers and Partners Bar Awards. Piers Acland QC was also nominated for  ‘IP/IT Silk of the Year’ and 11 South Square was nominated for ‘IP/IT Set of the...

  • Benet Brandreth appointed to the Attorney-General’s panel of Counsel

    Benet was appointed to the Attorney-General’s panel of Counsel in September 2015.  Benet is on the A Panel, whose members deal with the most complex government cases in all kinds of courts and tribunals, often against QCs. From 2005- 2010 Benet was on the C panel, advising on disputes...

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