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IP/IT Set of the Year 2005, 2007, 2009, 2011, 2013 & 2016

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

  • Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC)

    Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC)

    IPEC trial concerning the validity of a patent claiming a range of glass compositions for use in the making of glass fibre. The claimant alleged that the patent was anticipated by and/or obvious over an earlier US patent describing an overlapping range of glass compositions and example compositions falling within that range.  The Court rejected the attacks, holding that that skilled person would not seriously contemplate working within the area of overlap and would not consider it obvious to modify the example compositions so as to bring them within the area of overlap.

    [2017] EWHC 171

  • Teva (UK) Ltd v Gilead Sciences Inc [2017] EWHC 13 (Pat)

    Teva (UK) Ltd v Gilead Sciences Inc [2017] EWHC 13 (Pat)

    This was a challenge to the validity of Gilead’s SPC for an HIV-medication – Truvada – which comprised a combination of two active ingredients (Tenofovir and Emtricitabine). A number of pharmaceutical companies, including Accord Healthcare Ltd, argued that the SPC was invalid as the combination product was not protected by the basic patent in force within the meaning of Article 3(a) SPC Regulation. Arnold J held that the inventive advance of the basic patent was Tenofovir and not the combination product. However, Arnold J was of the view that the question of whether the product was protected by the basic patent in force was not clear and referred questions on the proper interpretation of Article 3(a) to the CJEU.

    Kathryn Pickard appeared for Accord Healthcare Ltd.

    [2017] EWHC 13 (Pat) 

  • The National Guild of Removers and Storers v Bee Moved et al [2016] EWHC 3192 (IPEC)

    The National Guild of Removers and Storers v Bee Moved et al [2016] EWHC 3192 (IPEC)

    The claimant, NGRS, is a trade association representing its members in the removals and storage industry.  This was a claim for passing off in respect of statements published on two websites.  The first defendant’s, Bee Moved’s, own website included the statement “use a removal company who is a member of the National Guild of Removers and Storers” as part of its moving checklist.  An independent third party advertised on behalf of Bee Moved on its website, www.reallymoving.com, and stated that Bee Moved was a “Member of NGRS” in its directory listing.

    The court held that the statement on Bee Moved’s website implied that it was a member of NGRS and constituted an actionable misrepresentation, but that Bee Moved was not liable for passing off in respect of the statement on reallymoving.com because it did not know about the advertisement and did not intend its publication.  The second and third defendants were shareholding directors of Bee Moved and admitted joint tortfeasance in respect of the misrepresentation on the Bee Moved website.  The court held that they would also have been jointly liable for the reallymoving.com advertisement had it constituted passing off by Bee Moved.  Injunctive relief was granted.

    Adam Gamsa appeared as sole counsel for the claimant.

    [2016] EWHC 3192 (IPEC)

     

  • Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel) [2016] EWHC 3103 (Ch)

    Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel) [2016] EWHC 3103 (Ch)

    This was a trade mark and passing off case concerning the right to use the name “Titanic”. Titanic Spa commenced proceedings against the Titanic Hotel for trade mark infringement and passing off, relying upon its “Titanic Spa” trade mark. The Titanic Hotel was linked to the famous Titanic Quarter development in Belfast. The companies behind Titanic Quarter had trade marks that pre-dated Titanic Spa’s mark and counter-sued Titanic Spa for trade mark infringement. In separate proceedings before the Registrar, Titanic Spa had obtained an order that one of the Titanic Quarter trade marks be revoked for non-use.

    The infringement trials and Titanic Quarter’s appeal against the Hearing-Officer’s decision were heard at the same time by Carr J. Carr J found that Titanic Spa’s claimed succeeded in part against the Titanic Hotel. However, he held that the various steps Titanic Hotel had taken to reduce confusion entitled them to take advantage of the own name defence in the future. Carr J further overturned the Hearing Officer’s decision on non-use, finding that the Hearing Officer erred in refusing to accept additional evidence of use of the marks.

    Hugo Cuddigan QC and Kathryn Pickard appeared for the Titanic Hotel and Titanic Quarter companies.

    [2016] EWHC 3103 (Ch) 

  • Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2016] EWCA Civ 1006

    Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2016] EWCA Civ 1006

    Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2016] EWCA Civ 1006

    This was the hearing of three appeals arising from the “pregabalin” litigation, which concerned validity and infringement of a second medical use patent. The three questions for the CA were: (i) had the Judge correctly applied the law of insufficiency in finding some, but not all, of the claims invalid; (ii) was the Judge right to hold that the patentee’s post-trial amendment application constituted an abuse of process; and (iii) if there were any valid claims, was the Judge right to find that they were not infringed?

    The Court of Appeal upheld the Judge’s findings on validity: the insufficiency attack was one of plausibility and the test of plausibility imposed a very low threshold. The Judge had not erred in finding that the teaching was plausible for peripheral neuropathic pain but not for central neuropathic pain. The Court of Appeal also upheld the Judge’s conclusion on abuse of process. In the premises, it was not necessary to determine the infringement appeal. Nevertheless the Court of Appeal reaffirmed that the test of direct infringement of a second-medical use patent was one of objective intention; such intention could be negatived where the manufacturer had taken all steps in its power to prevent the medication being used for the patented indication.

    Michael Silverleaf QC appeared for the Secretary of State for Health, intervener on the infringement appeal. Kathryn Pickard appeared for Mylan on the validity and abuse appeals.

    [2016] EWCA Civ 1006

  • AMS Neve Ltd v Heritage Audio [2016] EWHC 2563 (IPEC)

    AMS Neve Ltd v Heritage Audio [2016] EWHC 2563 (IPEC)

    Jurisdiction challenge for the defendants in a trade mark and passing off dispute. The Court declined jurisdiction in relation to the claim of EU trade mark infringement, following Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] ETMR 49, on the basis that the decisions about the content of the First Defendant’s website were made in Spain and therefore the alleged acts of infringement were carried out there, not in the UK where the website could be viewed.

    [2016] EWHC 2563 (IPEC)

     

     

  • Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch)

    Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch)

    This was a claim for misuse of confidential information relating to the manufacturing techniques and recipe used to make edible infused oils such as basil oil.  The court held that in developing their own process for manufacturing edible infused oils, the defendants had misused information confidential to the claimant and that injunctive relief should be granted.

    The court also held that the information relied on had limited confidentiality in the sense that the defendants were able to replicate the claimant’s production techniques using information in the public domain.  The springboard doctrine was therefore in point.  The court granted an injunction of limited duration to reflect the court’s finding that the defendants had gained a headstart of a year as a result of their misuse of the claimant’s confidential information.

    Chris Aikens appeared as sole counsel for the defendants.

    Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch)

  • Nicocigs Limited v Fontem Holdings Limited [2016] EWHC 2161

    Nicocigs Limited v Fontem Holdings Limited [2016] EWHC 2161

    A Patents Court claim by Nicocigs for revocation/declaration of non-infringement concerning Fontem’s Patent for e-cigarettes. The Patent was held invalid on the grounds of obviousness over two pieces of prior art, anticipation under s2(3) by a ‘poisonous’ co-pending application (the Patent not being entitled to priority from their common priority document), and added subject matter.

    Iain Purvis QC acted for the successful Claimant.

    Nicocigs Limited v Fontem Holdings Limited [2016] EWHC 2161

  • 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)

  • 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)

     

News

  • Awarded ‘IP/IT Set of the Year 2016′

    11 South Square is thrilled to have received the award for 'IP/IT Set of the Year' at the 2016 Chambers and Partners Bar Awards. This is the sixth time 11 South Square has been given this award in the last 11 years. Mark Vanhegan QC was also nominated for 'IP/IT Silk of the...

  • New Head of Chambers – Iain Purvis QC

    Chambers is delighted to announce that Iain Purvis QC has been elected Head of Chambers in succession to Michael Silverleaf QC.  Michael has been head of chambers for the past 9 years and is stepping back from management to concentrate on his professional practice.  Iain has been a member of...

  • 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...

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