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

Chambers and Partners Bar Awards

“The summit of excellence for IP advice and advocacy”

Chambers and Partners 2015

“An IP powerhouse”

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 10 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

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

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

    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)

     

  • 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

  • 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...

  • Henry Carr QC appointed as a High Court Judge

    Chambers is proud to announce that Henry Carr QC has been appointed to the High Court Bench. He will be assigned to the Chancery Division and will take up his new position on 1st October 2015.  Henry joins fellow former members of Chambers  Lord Justice Floyd, Mr Justice Arnold and HHJ Hacon,...

  • New Tenant

    We are pleased to announce that David Ivison has accepted a tenancy following successful completion of his pupillage. Before coming to the Bar, David studied Chemistry at Oxford and later received his PhD from Bristol University investigating biosynthetic enzyme systems. During his pupillage he...

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