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

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“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 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

  • Meter-Tech Llc & Anor v British Gas Trading Ltd [2016] EWHC 2278

    Meter-Tech Llc & Anor v British Gas Trading Ltd [2016] EWHC 2278

    Meter-Tech was the exclusive licensee of a patent for a prepayment utility metering system.  The patent concerned the method by which a remote, electronic, energy prepayment, can be routed to a particular prepayment utility meter in the home.  Infringement was alleged against three existing British Gas ‘smart-metering’ systems (as to each of which, a defence of experimental use was raised) and against British Gas’s proposed implementation of the UK government’s smart-metering programme.  Validity was challenged over five pieces of prior art and for added matter.

    The court found infringement of all four prepayment systems, and each of the defences of experimental use failed. Whilst the added matter attack was unsuccessful, the patent was held to be invalid over the prior art.

    Hugo Cuddigan QC and Christopher Hall appeared on behalf of the licensee, Meter-Tech, and the patentee, Vanclare.

    [2016] EWHC 2278 (Pat)

     

  • Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2016] EWHC 2220

    Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2016] EWHC 2220

    This was the trial of a preliminary issue in a three standard essential patent infringement action concerning high speed packet access (HSPA) technology in mobile telecommunications networks.  The  issue was  whether a covenant not to assert patents in an agreement between Philips and Qualcomm Inc. provided a defence for HTC.  The Qualcomm agreement was governed by the law of the State of California. Accordingly  Arnold J considered expert evidence of foreign law, factual evidence relating to the circumstances in which the Qualcomm agreement was made and performed as well as technical expert evidence which addressed the relevant telecommunications technologies.

    Arnold J held that Philips’ covenant not to assert its “CDMA Technically Necessary Patents” against nominated customers of Qualcomm did not extend to HSPA patents on the grounds that HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, properly construed according to California Law, having regard to the admissible extrinsic evidence. Arnold J further held  that the proviso to the covenant carved out hybrid CDMA/TDMA technologies, including HSPA, in any event.  Finally Arnold J. held that the covenant did not extend to HTC’s products that incorporated third-party (i.e. non-Qualcomm) chipsets.

    Mark Vanhegan QC and Adam Gamsa appeared for Philips.

    [2016] EWHC 2220 (Pat)

  • Global Flood Defence Systems Ltd & Anor v Johan Van Den Noort Beheer BV & Ors [2016] EWHC 1851 (Pat)

    Global Flood Defence Systems Ltd & Anor v Johan Van Den Noort Beheer BV & Ors [2016] EWHC 1851 (Pat)

    Appeal considering the scope of the defence of justification to a claim for threats of proceedings for patent infringement. The Court held that the threatener is not required to demonstrate infringement of the particular patent right identified in the threat.  Rather, he must demonstrate that the acts identified in the threat infringe a patent, which includes rights arising from a published patent application.  Where the threatener relies on rights arising from a pending application, the Court may stay or adjourn the trial until grant to enable a defence of justification to be run.

    [2016] EWHC 1851 (Pat)

     

  • Newbran Entertainments Limited & Marlon Anthony Brown v Ashley Charles

    Newbran Entertainments Limited & Marlon Anthony Brown v Ashley Charles

    David appeared for the Claimants in a one-day trial at the Central London County Court.  The trial concerned a dispute between a recording artist, her record label and her former manager.  The Claimants relied upon a recording agreement, which the Defendant denied having signed or otherwise being bound by, as entitling them to a portion of an advance paid to the Defendant by a major record label.   

    Following David’s cross examination of the Defendant the Court found that the Claimant had signed the recording agreement and was subsequently in repudiatory breach of it, and that the Defendants were accordingly entitled to recover damages to compensate them for this breach.  Additionally, the Court found that the Claimants were entitled to a declaration regarding ownership of copyright in certain recordings created by the Defendant prior to the breach of the recording agreement.

    David Ivison acted for the Claimant.

    Claim No. B10CL623/HC13B05399

  • Appeal to ECJ Nissan Jodosha Kabushiki Kaisha C-207/15 P

    Appeal to ECJ Nissan Jodosha Kabushiki Kaisha C-207/15 P

    An appeal from the General Court of the EU in respect of a decision by the Board of Appeal that treated sequential partial renewal as equivalent to surrender of the parts of the registration not mentioned in the initial renewal document.  The Court of Justice upheld the arguments made on behalf of Nissan that the General Court’s decision was wrong and the original decision infringed Articles 47 and 50 of the CTMR.

    Benet Brandreth represented the successful appellant, Nissan Jidosha KK, in the CJEU

    C-207/15 P

  • Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658

    Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658

    This was an appeal from the decision of Arnold J.  It concerned the jurisdiction to grant Internet Blocking Orders and the applicable threshold requirements.  The Court held that the jurisdiction was available under section 37 of the Supreme Court Act and could give effect to the provisions of Art 11 of the Enforcement Directive.  Mr Justice Arnold had correctly identified the threshold requirements from the provisions of related European legislation.  On the question of where the costs of implementation should lie, the Court was split.  By a majority the Court held that the costs lay with the ISPs as an aspect of their business and as a consequence of the protections given to them in that business by other, related European legislation.

    Benet Brandreth, led by Adrian Speck QC, appeared for the successful Claimants both at First Instance and in the Court of Appeal.

    [2016] EWCA Civ 658

  • Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd and Sandoz Ltd [2016] EWHC 1517 (Pat)

    Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd and Sandoz Ltd [2016] EWHC 1517 (Pat)

    This was a patent infringement action brought against two generic manufacturers seeking to launch buprenorphine pain relief dermal patches.  Napp claimed that the generic products fell within the claims of two of their patents for such patches.  The patents’ claims specified the percentage ranges of particular materials (active and excipients).  The defendants said that their products fell outside the claimed ranges or that, if they did not, the claims were insufficiently precise.  The issues included whether the percentages required were those used as ingredients in the manufacturing process or those measured in the final product and whether the numerical ranges should be interpreted as covering amounts outside the identified limits.  There was also a dispute about how to determine infringement using statistical analysis of the results of sample testing (assaying being destructive).

    The action was expedited and came to trial in early June, little more than 4 months after the claim was issued.  After a three day trial with both technical and statistical evidence, Arnold J held that neither defendant’s product infringed the claims.

    Napp has been given limited permission to appeal and the parties are seeking expedition of the appeal.

    Michael Silverleaf QC and Benet Brandreth appeared for Dr Reddy’s and Anna Edwards-Stuart represented Sandoz

    [2016] EWHC 1517 (Pat)

     

  • Comic Enterprise Limited v Twentieth Century Fox Corporation [2016] EWCA Civ 41 and [2016] EWCA Civ 455

    Comic Enterprise Limited v Twentieth Century Fox Corporation [2016] EWCA Civ 41 and [2016] EWCA Civ 455

    20th Century Fox appealed against a finding that its well-known GLEE television series infringed a registered series of device marks incorporating the word GLEE owned by a comedy club business on the basis of a likelihood of so-called ‘wrong way round confusion’. The Court of Appeal held that the Judgment below was vitiated by a number of errors, but, having reviewed the evidence for itself, considered on balance that there was a likelihood of confusion sufficient to establish infringement, even though the claim in passing off failed. They rejected the submission that ‘wrong-way round confusion’ evidence was inadmissible in a trade mark case. The Supreme Court has been asked for permission to appeal. Iain Purvis QC appeared for the Appellant, 20th Century Fox.

    [2016] EWCA Civ 41

    In the second part of this Appeal, 20th Century Fox asked for a reference to the CJEU on the question of whether the home-grown UK provisions on ‘series marks’ under s41 of the Trade Marks Act 1994 were compatible with the Trade Marks Directive. The Court of Appeal held that the ‘single point of comparison’ approach to series marks taken by Richard Arnold QC (as he then was) in Sony Ericsson Mobile Communications AB’s Trade Mark Applications (O-138–06) and followed subsequently by Birss J in Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 could not be reconciled with the requirements for certainty of scope under European trade mark law. However, they accepted the contentions of the IPO that this was not the correct interpretation of series marks under the 1994 Act. Such marks should be treated as ‘bundles of individual registrations’. On this basis, they held that there was no arguable conflict between s41 and the Trade Marks Directive and refused a reference. Iain Purvis QC appeared for the Appellant, 20th Century Fox.

    [2016] EWCA Civ 455

  • Saertex France SAS v Hexcel Reinforcements UK Ltd [2016] EWHC 966 (IPEC)

    Saertex France SAS v Hexcel Reinforcements UK Ltd [2016] EWHC 966 (IPEC)

    This was a patent case about materials used in dry moulding processes to make composite products such as boat hulls. Saertex claimed that Hexcel had infringed its patent for a method of manufacture of fibre-based reinforcements to which a repositionable adhesive had been applied.  Hexcel counterclaimed for a declaration that the patent lacked novelty and inventive step over three pieces of prior art.  In response, Saertex applied to amend the patent’s claims.  

    Following a 2-day trial in the IPEC at which the court heard expert evidence on both sides, HHJ Hacon held that the patent was invalid both as granted and as proposed to be amended.  Had it been valid, the judge held that all four claims in issue would have been infringed.   

    The judgment makes clear that the skilled addressee of a patent is someone who has an interest in directly performing the invention as claimed, not someone who uses the product made according to the invention to make something else. It also contains helpful directions to patent litigants in the IPEC regarding expert evidence and product and process descriptions.   

    Chris Aikens appeared as sole counsel for Saertex.  

    [2016] EWHC 966 (IPEC)

  • Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 410

    Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 410

    The patent in suit was for a dosing regimen for use in emergency contraception, comprising 1.5 mg levonorgestrel taken as a single dose. The prior art disclosed the interim results of a clinical trial in which such a regimen was used but mistakenly referred to the dose as 1.5 g (not mg). Sales J held that it would have been immediately apparent to the skilled person that there was a mistake and it would have been obvious to consult the author of the prior art or one of the presenters of the interim data to find out the correct dose. The patent in suit was therefore invalid. [2014] EWHC 1666 (Pat)

    The judgment was upheld on appeal. Sir Robin Jacob held that there was no logical distinction between a case where it was obvious to look something up and one where it was obvious to ask someone and clear that the answer would be given and would be clear. However the facts of the case were unusual – a clearly obvious error, a clear source to ask what the correct figure was and a clear finding not only that an answer would be given but that it would be unambiguous. It did not follow that the “skilled man would ask” route to obviousness would follow for cases where the facts were not so precise or sure. [2016] EWCA Civ 410

    Piers Acland QC appeared for the Claimant. Michael Silverleaf QC appeared for the Defendant.

  • 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, instructed by Tim Bamford of Collyer Bristow, 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)

  • Cadbury UK Limited v Comptroller-General of Patents, Designs and Trade Marks [2016] EWHC 796 (Ch)

    Cadbury UK Limited v Comptroller-General of Patents, Designs and Trade Marks [2016] EWHC 796 (Ch)

    Cadbury appealed against the decision of the IPO to refuse them permission to delete part of a registration for the Cadbury purple house colour. The application was made to remove wording in the registration which covered the use of the purple colour as the ‘predominant colour’ applied to the visible surface of the packaging of chocolate, the Court of Appeal having held in Societe des Produits Nestle v Cadbury UK Limited [2014] RPC 7 that such wording was too vague and uncertain to amount to a registrable trade mark. Cadbury contended that the wording of the registration which covered the use of the colour applied either to the whole visible surface, or as the predominant colour applied to the visible surface, amounted to a series of marks, and they should therefore be permitted to delete the invalid element under rule 28(5) of the Trade Mark Rules. Deputy Judge John Baldwin QC rejected this argument, holding that the registration did not consist of a series of marks. Iain Purvis QC appeared for Cadbury.

    [2016] EWHC 796 (Ch)

  • 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

News

  • Professor David Vaver appointed as a member of the Order of Canada

    Chambers is pleased to announce that in the 2016 Canada Day Honours List it was announced that Professor David Vaver was appointed a member of the Order of Canada for "leadership in intellectual property law as a scholar and mentor". The Order of Canada is one of the country's highest civilian...

  • 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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