Tel: 020 7405 1222 or email

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

  • 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...

IP Inclusive Charter