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

Chambers and Partners Bar Awards

IP, IT and Media Set of the Year 2013

Legal 500 Awards

“Famed for their skill at handling heavyweight patent litigation”

Chambers and Partners 2013

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

  • Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

    A test case concerning the ability of Trade Mark proprietors to seek orders against ISPs requiring them to block counterfeiter’s websites.  The Court gave consideration to whether it had jurisdiction to make such orders under Section 37 of the Senior Courts Act and Article 11 of the Enforcement Directive and held that it did.  The Court then considered the factors applicable to the grant of such orders as a question of discretion.  The Court held it would make orders against the ISPs in respect of a number of counterfeiters’ websites.  The orders would be subject to a “sunset” clause.

    [2014] EWHC 3354 (Ch)

  • Lambretta T-132/12 and T-51/12

    Lambretta T-132/12 and T-51/12

    In case T-132/12 the General Court upheld an appeal from the Board of Appeal of OHIM in an application for revocation for non-use.  The GCEU considered the scope of the examination that the Board of Appeal was required to perform.  It held that the Board of Appeal was obliged to consider even matters not raised by the party bringing the appeal as a specific ground of appeal.

     

    In case T-51/12 the General Court upheld an appeal from the Board of Appeal of OHIM in an application for revocation for non-use.  It held that OHIM had created a legitimate expectation that registrations made before 21 June 2012 by reference to the class heading were registered for all goods or services in that class.  Accordingly, in the particular case the Board of Appeal had failed to considered whether partial revocation was appropriate for a subset of goods within Class 12.

  • Compact GTL Ltd v Velocys PLC & ors [2014] EWHC 2951 (Pat)

    Compact GTL Ltd v Velocys PLC & ors [2014] EWHC 2951 (Pat)

    Velocys brought an action in the High Court for infringement of two patents relating to structured catalysts for use in the ‘Fischer-Tropsch’ gas-to-liquid conversion process in the petrochemical industry. Compactgtl denied infringement and counterclaimed for revocation.

    The patents were held valid and infringed. An amendment to both patents was permitted which corrected an ‘obvious error’ in the claims.

    Iain Purvis QC acted for Velocys.

    [2014] EWHC 2951 (Pat)

     

  • Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

    Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

    A breach of contract claim brought by Weatherford in respect of electronic fluid conditioners for use in the oil and gas industry against the supplier of the devices, Hydropath.  Weatherford alleged that the devices breached the warranties supplied because they created sparks in conditions of foreseeable misuse.  The claim was denied both as to the allegations that the devices were not safe and as to the extent of the contractual obligations.

    The claim was also met by a counterclaim from Hydropath for breach of confidence and contract.  As part of that counterclaim Hydropath sought to make additional allegations against its former directors who were now working with Weatherford.  These directors were alleged to have induced the breaches of confidence and contract and to have acted in breach of their fiduciary duty.

    After a ten day trial involving six expert witnesses and extensive cross-examination the claim was upheld and the counterclaim dismissed.  Indemnity costs were awarded in respect of the counterclaim; reflecting the Court’s view that those allegations should not have been made or maintained. 

    Hugo Cuddigan and Mark Vanhegan QC acted for Weatherford.

    Benet Brandreth acted for the directors.

    [2014] EWHC 2725 (TCC)

    Following the trial, the parties sought and obtained a Non-Party Costs Order against the Principal of the Defendant and Third Party in respect of the costs of their unsuccessful counterclaim.

    [2014] EWHC 3243 (TCC)

     

  • Generics (UK) Ltd (t/a Mylan) v Richter Gedeon Vegyeszeti Gyar RT [2014] EWHC 1666 (Pat)

    Generics (UK) Ltd (t/a Mylan) v Richter Gedeon Vegyeszeti Gyar RT [2014] EWHC 1666 (Pat)

    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). The Court 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. Furthermore it was obvious from the interim data that the claimed dosing regimen could be investigated with a reasonable or fair expectation of success. The patent in suit was therefore invalid.

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

    [2014] EWHC 1666 (Pat)

  • Philips v Nintendo [2014] EWHC 1959 (Pat)

    Philips v Nintendo [2014] EWHC 1959 (Pat)

    Brian acts for Nintendo in this multi-patent dispute about virtual reality, user interfaces and Nintendo’s Wii and Wii U game systems. Of particular interest is the Court’s consideration of the proper approach to skilled team: accepting Nintendo’s submissions that the skilled person was different for the patent in suit and the prior art. The Court’s judgment on the proper approach to the construction of “for” in computer apparatus claims is also of note.

    [2014] EWHC 1959 (Pat)

  • Cayman Music (Bob Marley) v Blue Mountain [2014] EWHC 1690 (Ch)

    Cayman Music (Bob Marley) v Blue Mountain [2014] EWHC 1690 (Ch)

    High Court trial in relation to the Copyright in Bob Marley’s song ”No Woman No Cry” as well as other musical works. There was also a claim for an account of sums mistakenly had and received by the Defendant from copyright collecting societies in respect of the works.

    [2014] EWHC 1690 (Ch)

     

  • Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2013] EWHC 3768 (Pat)

    Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2013] EWHC 3768 (Pat)

    Assia (a US corporation founded by the ‘father of DSL’ Professor John Cioffi) alleged that BT was infringing two of its patents for the management of DSL broadband. At trial, Birss J held that BT’s ‘Next Generation Access’ management system, which controls its ‘Infinity’ service in the UK, infringed one of those patents. Two older management systems, which control BT’s ADSL and ADSL2 lines, were held not to infringe either patent. Both patents were found to be valid. Members of Chambers appeared on both sides at the trial of this technically complex case. Assia was represented by Iain Purvis QC (leading Joe Delaney of 3 New Square). Hugo Cuddigan (led by Roger Wyand QC of Hogarth Chambers) represented BT.

    [2013] EWHC 3768 (Pat)

  • Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

    Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

    The maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of Community Registered Design, UK unregistered design right and copyright against the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J held that the claim succeeded in relation to the Community Registered Design, four of the six pleaded UK unregistered designs and the copyright in the safety notice on the Trunki packaging.  PMS appealed the finding of Community Registered Design infringement.

    PMS’s appeal was allowed.  The Court of Appeal held that the judge had made two errors in interpreting the Community Registered Design in issue.  The judge also erred in failing to take into account the surface decoration on the designs alleged to infringe.  Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case does not infringe the Community Registered Design.

    Mark Vanhegan QC and Chris Aikens appeared for PMS.

    Magmatic Ltd v PMS International Ltd [2014] EWCA Civ

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