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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

  • 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)

  • Scopema Sarl v Scot Seat Direct Ltd [2014] EWCA Civ 187

    Scopema Sarl v Scot Seat Direct Ltd [2014] EWCA Civ 187

    Court of Appeal.  Construction and infringement in relation to a patent for seat brackets.  

    [2014] EWCA Civ 187

  • 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

  • Jarden Consumer Solutions (Europe) Ltd v Seb SA & Anor [2014] EWHC 445 (Pat)

    Jarden Consumer Solutions (Europe) Ltd v Seb SA & Anor [2014] EWHC 445 (Pat)

    A patent dispute concerning a device capable of a novel method of frying.  Validity challenged on the basis of anticipation and obviousness.  Infringement denied on the basis that, properly construed, the alleged infringing fryer did not have certain features of the claims.  Held, partially valid and infringed.  Benet Brandreth acted for the successful Claimant, SEB SA and its UK subsidiary, who manufacture and sell devices made to the invention of the patent in the UK under the brand Tefal Actifry.

    [2014] EWHC 445 (Pat)

  • Collingwood Lighting Ltd v Aurora Ltd [2014] EWHC 228 (Pat)

    Collingwood Lighting Ltd v Aurora Ltd [2014] EWHC 228 (Pat)

    Action for infringement of patent by the sale of fire-rated LED downlighters.  The judge held that the invention was simple but not obvious and that the defendant’s products infringed.  The defendant’s ‘innocence defence’ was rejected.

    [2014] EWHC 228 (Pat)

  • Boxing Brands Ltd v Sports Direct International Plc & Ors [2014] EWHC 91 (Ch)

    Boxing Brands Ltd v Sports Direct International Plc & Ors [2014] EWHC 91 (Ch)

    This was the latest instalment in a long running dispute between Boxing Brands Ltd (BBL) and the Sports Direct group of companies (Sports Direct) as to the ownership of and entitlement to use the mark QUEENSBERRY. In November 2012 Sports Direct began offering various QUEENSBERRY branded clothing from their websites and selected stored. BBL, the proprietor of various trade marks for the words QUEENSBERRY and QUEENSBERRY RULES, obtained an interim injunction against Sports Direct restraining the use of the marks  QUEENSBERRY and QUEENSBERRY RULES in relation to clothing and sporting equipment until trial. Equivalent undertakings were given by BBL so as to preserve the status quo pending the trial. At the trial it was held that BBL’s QUEENSBERRY marks for clothing were valid and had been infringed by the QUEENSBERRY branded clothing sold by Sports Direct. Following the trial it emerged that Sports Direct had intended to sell other QUEENSBERRY branded products which it claimed were covered by the cross-undertaking but which had not been dealt with at trial. A further hearing was ordered to resolve the dispute in respect of these products. Birss J held that most of the products that Sports Direct had intended to sell did infringe BBL’s trade marks, however a few did not. Of these items only two (corner pads and punch bags) had actually been ordered in advance of the injunction. Although these products were covered by the cross-undertaking Birss J. declined to exercise his discretion an order an enquiry as he was not convinced that Sports Direct had ever intended to launch a free-standing equipment range, let alone one limited to the products held not to infringe.

     

    [2014] EWHC 91 (Ch)

  • AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40

    AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40

    This was a case about a patent for disk brake calipers used in high performance motor vehicles.  Hugo Cuddigan acted for the successful appellant and patentee, AP Racing.  The patent had been held invalid at first instance on the grounds of added matter, but otherwise novel, not obvious and infringed by Alcon.  The Court of Appeal overturned the decision on added matter, the trial judge having taken too narrow a view of the disclosure of the application for the patent, and too broad a view of the disclosure of the granted claims.

    AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40

     

  • Eugen Seitz AG v KHS Corpoplast GmbH & Anor [2014] EWHC 14

    Eugen Seitz AG v KHS Corpoplast GmbH & Anor [2014] EWHC 14

    Revocation and declaration of non-infringement in relation to a patent for valves used in rotary stretch blow moulding machines. 

    [2014] EWHC 14

  • Smith & Nephew Plc v Convatec Technologies Inc & Anor [2013] EWHC 3955 (Pat)

    Smith & Nephew Plc v Convatec Technologies Inc & Anor [2013] EWHC 3955 (Pat)

    Claim for infringement of patent by the manufacture of wound dressings.  The issues included construction of a numerical range and the availability of springboard relief to restrain use of marketing authorisation obtained by infringement. 

     

    [2013] EWHC 3955 (Pat)

  • 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)

  • 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

  • Force India Formula One team Ltd v Aerolab SRL & ors [2013] EWCA Civ 780

    Force India Formula One team Ltd v Aerolab SRL & ors [2013] EWCA Civ 780

    Appeal from an order of Arnold J awarding €25,000 in damages for misuse of confidential information in the aerodynamic design of a Formula 1 car.  Force India argued that the Judge had underestimated the scale of the misuse and its value to the respondents.  The Court rejected these arguments and dismissed the appeal.  The judgment of Lewison LJ contains a useful summary of the authorities on user principle damages.

     Force India Formula One team Ltd v Aerolab SRL & ors [2013] EWCA Civ 780

  • British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826

    British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826

    Iain Purvis QC and Brian Nicholson acted for Sky, in its successful claim against Microsoft over the use of SkyDrive for Microsoft’s cloud storage solution.  The claim was founded on infringement of UK and Community trade marks (similar mark/identical goods; similar mark/similar goods and dilution) and for passing off.  The Court found that there had been actual confusion and Sky succeeded on all grounds.

    [2013] EWHC 1826

     

     

     

  • 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)

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