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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 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

  • 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)

  • 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)

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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