Tel: 020 7405 1222 or email

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

  • 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)

  • 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)

  • 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)

  • Kennametal Inc v Pramet Tools SRO & Anor [2014] EWHC 565 (Pat)

    Kennametal Inc v Pramet Tools SRO & Anor [2014] EWHC 565 (Pat)

    This was a patent infringement and validity action concerning inserts for milling cutter tools. The Court held that there was no infringement and that, in any event, the patent was invalid in light of the prior art.

    The cutting inserts in question were very small: an exhaustive analysis of experimental data was required to determine infringement. The Judge held obiter dicta that had infringement been made out, the knowledge requirement of s.60(2) Patents Act 1977 would also have been satisfied as it was only concerned with the use to which the means supplied were to be put and not with knowledge of the features of the means themselves.

    Iain Purvis QC and Kathryn Pickard appeared for the Defendants. Henry Carr QC was sitting as the Deputy High Court Judge.

    [2014] EWHC 565 (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

  • IPCom v. HTC Europe & others [2013] EWCA Civ. 1496

    IPCom v. HTC Europe & others [2013] EWCA Civ. 1496

    Henry Carr QC, Brian Nicholson, and Kathryn Pickard acted for IPCom, successfully resisting HTC’s appeal against Mr Justice Roth’s refusal to stay infringement and validity proceedings on a European Patent (UK) until the conclusion of co-pending European Patent Office Opposition Proceedings.  In this important decision, the Court of Appeal undertook a careful review of the so-called Glaxo Guidance (following the observation of the Supreme Court in Virgin Atlantic Airways v. Zodiac Seats UK [2013] UKSC 46  that such a review was necessary in the light of the Supreme Court’s overturning of Unilin, Coflexip and Poulton).  The recast guidance will apply to the conduct of all future UK Patent cases where there are co-pending Opposition Proceedings before the EPO.

     

    [2013] EWCA Civ.1496

  • Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46

    Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46

    Henry Carr QC, Iain Purvis QC, and Brian Nicholson acted for Zodiac on its appeal to the Supreme Court on the so-called Unilin point (that damages remain payable after a UK infringement trial even if the patent is subsequently amended or revoked in the EPO).  Zodiac succeeded on its appeal, with the Supreme Court overturning Unilin, Coflexip and Poulton, holding that it was open to Zodiac to say on any inquiry as to damages that Virgin had suffered no damage.  As the Supreme Court noted in its Judgment, the decision calls for reconsideration of the existing practices (Glaxo etc.) where there are co-pending proceedings before the UK Patents Court and the EPO.

    Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46

  • Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors [2013] UKSC 18

    Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors [2013] UKSC 18

    Two members of chambers have been involved in this long running dispute concerning the licensing by the NLA of internet news aggregation services.  Henry Carr QC represented Meltwater and the PRCA in the Copyright Tribunal in a successful challenge to the NLA’s licensing scheme.  In parallel with this the NLA brought a claim in the High court against them to determine whether end users infringed the NLA’s copyrights and therefore required a licence.  Michael Silverleaf QC represented Meltwater and the PRCA in the High Court and Court of Appeal.  Henry Carr QC took up the cudgels in the Supreme Court.

    The Court was asked to determine the scope of the temporary copying exception to copyright infringement introduced by Article 5.1 of Directive 2001/29/EC. The question was whether the copies of a webpage made on a person’s hard-drive and screen during browsing the internet fell within the exception to infringement.

    The Court held that such use would not amount to copyright infringement. The court considered that this was an important issue not only to UK internet users and so made a reference to the European Court of Justice to ensure a uniform application of the law throughout the EU.

     [2013] UKSC 18

     

  • Interflora v Marks & Spencer [2013] EWHC 273 (Ch)

    Interflora v Marks & Spencer [2013] EWHC 273 (Ch)

    The trial of this long-running dispute about the use of Interflora as a Google Adword by Marks & Spencer took place in April and judgment was handed down by Arnold J on 21 May 2013.  Arnold J held that Marks & Spencer’s advertisements triggered in response to searches for Interflora did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the service referred to in the advertisements was offered as part of the Interflora network.  Consequently, a significant proportion of consumers who searched for Interflora and then clicked on Marks & Spencer’s advertisements were led incorrectly to believe that Marks & Spencer’s delivery service was part of the Interflora network.  As a result he held that Marks & Spencer had infringed Interflora’s trade marks.

     This is now the leading case in theUKon the subject of trade mark infringement by competitive brand bidding in Google Adwords.  There will be a further trial to determine the financial compensation to be paid by Marks & Spencer for their infringements which have continued since 2008.

    Michael Silverleaf QC appeared successfully for Interflora.

     [2013] EWHC 1291 (Ch)

News