Tel: 020 7405 1222 or email

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

Chambers and Partners Bar Awards

“The first port of call for IP cases due to the expertise and efficient service on offer”

Legal 500 2017

“Very impressive set of fantastic barristers”

Chambers and Partners 2018

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

  • Generics (UK) Ltd v Yeda Research and Development Co [2017] EWHC 2629 (Pat)

    Generics (UK) Ltd v Yeda Research and Development Co [2017] EWHC 2629 (Pat)

     

    Generics (UK) Ltd v Yeda Research and Development Co[2017] EWHC 2629 (Pat): these patent proceedings concerned a dosage regimen for glatiramer acetate (“GA”) a treatment for Multiple Sclerosis, sold by Teva under the brand name “Copaxone”.

    The Claimants sought revocation of EP (UK) No 2,949,335, which covered a thrice weekly dosage regimen of 40mg GA . As divisional patent applications were in the pipeline, they  also sought a declaration that use of their 40mg GA product would have been obvious as at the priority date. Yeda, the patentee proprietor, and Teva, its exclusive licensee, counterclaimed for infringement.

    One of the pieces of prior art relied upon, Pinchasi, taught use of 40mg GA in an every other day regimen. Arnold J held that the patent was invalid for obviousness over Pinchasi and, in addition, that one of its claims lacked plausibility and was therefore invalid for lack of inventive step and insufficiency. Whilst Arnold J found that the dosage regimen taught by Pinchasi was technically equivalent to that of the patent, he held that, as a matter of law, it was not possible to anticipate by equivalents. Whilst he found that use of the Claimants’ 40mg GA product in a thrice weekly regimen was obvious at the priority date, he declined to grant Arrow relief.

    Mark Vanhegan QC and Kathryn Pickard appeared for the Claimants.

  • Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC)

    Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC)

    Hanway (an additional counterclaimant) agreed with Scomadi (the claimants) to manufacture Lambretta-style scooters.  Hanway’s involvement in the design of those scooters turned out to be greater than had been anticipated, which was reflected in a variation to the agreement.  After the relationship broke down, Scomadi sued for registered and unregistered design right infringement seeking to prevent the continued manufacture and sale of the Defendants’ Lambretta-style “Royal Alloy” scooters.  Hanway and its UK distributor, Moto GB, counterclaimed for declarations of non-infringement alternatively invalidity of the designs relied upon.

    An expedited trial was ordered at which the principal issues concerning interpretation of the agreement and the matters relating to the registered designs were determined.  The court found that the agreement as varied provided Hanway with a licence over Scomadi’s designs and held accordingly that Moto GB and Hanway were permitted to manufacture and sell the Royal Alloy scooters.  The newer ‘GP’ models of the Royal Alloy range were held not to infringe the registered designs in any event, and one of the three registered designs relied upon was further found to be invalid.

    Hugo Cuddigan QC and Christopher Hall appeared for the defendants and Hanway.

    [2017] EWHC 2658 (IPEC)

  • Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526

    Koninklijke Philips NV v Asustek Computer Incorporation & Ors [2017] EWCA Civ 1526

    This was an appeal from the decision of Arnold J [2016] EWHC 2220 (Pat) in respect of a preliminary issue in a three standard-essential patent infringement action.  Philips alleges that ASUS and HTC infringe the patents by implementing high speed packet access (HSPA) technology in mobile telecommunications networks.  The preliminary issue decided by Arnold J was whether a covenant not to assert patents in an agreement between Philips and Qualcomm Inc. provided a defence for HTC.

    Arnold J had 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: (1) HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, properly construed according to the governing law, California Law; (2) the proviso to the covenant carved out hybrid CDMA/TDMA technologies, including HSPA, in any event; and (3) the covenant did not extend to HTC’s products that incorporated third-party (i.e. non-Qualcomm) chipsets.

    HTC appealed, contending that the judge had misconstrued the Qualcomm agreement by wrongly applying California law, including in respect of the admissible extrinsic evidence under California law.  HTC argued inter alia that HSPA, being a subsequent release of the proposed ETSI UMTS standard, was included within the scope of the covenant.

    Arden, Kitchin and Floyd LLJ dismissed HTC’s appeal.  They held that California law takes a holistic attitude to interpretation of a contract and that the relevant extrinsic evidence includes the strength of the parties’ patent positions with regard to CDMA and TDMA.  Philips had a much stronger position in TDMA than Qualcomm and they agreed with the Judge that HSPA is not within the scope of the definition of “CDMA Wireless Industry Standards” in the Qualcomm agreement, including because the absence of a royalty is a powerful indicator in favour of Philips’ construction.  They also agreed with the Judge that equipment implementing HSPA is TDMA equipment, so the proviso carved out HSPA from the scope of the covenant.  Finally, they dismissed HTC’s appeal in respect of HTC’s products that include third-party chipsets because the result contended for by HTC would be contrary to the interests of both Qualcomm and Philips, as the Judge had held.

    Mark Vanhegan QC and Adam Gamsa appeared for Philips.

    [2017] EWCA Civ 1526
     

  • OOO Abbott v Design & Display [2017] EWHC 932 (IPEC)

    OOO Abbott v Design & Display [2017] EWHC 932 (IPEC)

    This was the retrial of an account of profits in a patent infringement case.  The account had been remitted to the IPEC by the Court of Appeal who had allowed an appeal from the judgment in the first account ([2016] EWCA Civ 95).  On the first remitted issue, the court held that a losing defendant in a patent action should also account for profits from sales of goods other than those which precisely embody the invention where the invention relates to an essential feature of those goods.  A feature is essential in this sense if it is functionally and/or commercially the most significant part of the whole.  This is not a binary test: in certain cases the views of purchasers as to whether the relevant feature is essential may vary, in which case the infringer must account for the profit on a proportion of the entire articles.

    On the second remitted issue, the court clarified that in an account of profits a proportion of the infringer’s general overheads may be deducted from gross relevant profits unless (a) the overheads would have been incurred anyway even if the infringement had not occurred, and (b) the sale of infringing products would not have been replaced by the sale of non-infringing products.  On the facts, the court held that the defendant was entitled to deduct general overheads from its profit on the infringing business, although all payments to its directors were excluded from such deduction.

    Chris Aikens appeared as sole counsel for the Claimants

    [2017] EWHC 932 (IPEC)

  • Edwards Lifesciences LLC v Boston Scientific Scimed Inc, [2017] EWHC 405 (Pat); [2017] EWHC 755 (Pat)

    Edwards Lifesciences LLC v Boston Scientific Scimed Inc, [2017] EWHC 405 (Pat); [2017] EWHC 755 (Pat)

    This was a patent action about transcatheter heart valves i.e. artificial heart valves that can be implanted in patients without the need for surgery. It concerned two of Boston’s patents for “repositionable heart valves”.

    Edwards applied to revoke the Boston patents for lack of novelty and inventive step in light of four pieces of prior art; insufficiency and added matter.

    Boston counterclaimed that Edwards’ own transcathether heart valve – the “Sapien 3” – infringed both of the patents.

    HHJ Hacon, sitting as a High Court Judge, held that one of Boston’s patents was invalid for lack of inventive step. However, he held that the other Boston patent was valid and that the Sapien 3 infringed. Having heard arguments on whether a final injunction should be refused on public health grounds, he ordered that there be a final injunction but that it be stayed pending appeal.

    Piers Acland QC appeared for Edwards and Kathryn Pickard was junior counsel for Boston.

    [2017] EWHC 405 (Pat)

  • 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.

    Hugo Cuddigan QC acted for the Claimant and Tom Alkin for the Defendant.

    [2017] EWHC 171

  • Wobben Properties GmbH v Siemens Public Ltd Company & Ors [2017] EWCA Civ 5

    Wobben Properties GmbH v Siemens Public Ltd Company & Ors [2017] EWCA Civ 5

    Wobben is the proprietor of a patent (EP’496) relating to a method of operating pitch-controlled, variable rotor speed wind turbines in high wind speed conditions.  At first instance, Birss J held that EP’496 was invalid for obviousness in light of an article by Dr Ervin Bossanyi published in 1982 entitled “Probabilities of sudden drop in power from a wind turbine cluster”.   The Judge also held that Siemens’ High Wind Ride-Through system would not have infringed EP’496, had it been valid.

    Wobben appealed against the findings of Birss J, contending that the judge had wrongly directed himself as to the legal test for obviousness and had made a series of fundamental errors in assessing the evidence.  Wobben also appealed the Judge’s construction of claim 1 of EP’496, which required that the reduction in the rotor speed of the turbines be caused by the increasing average wind speed across the swept area.

    Longmore, Kitchin and Floyd LLJ dismissed Wobben’s appeal.  They held that (i) Birss J could not be criticised for the way he had approached the question of obviousness and (ii) although the correct construction of causation did not require a causal relationship, the “high wind ride-through” function of Siemens’ turbines was not using filtered rotor acceleration as a surrogate for wind speed and so could not fairly be said to infringe EP’496.

    Michael Silverleaf QC and Adam Gamsa appeared for Wobben.

    [2017] EWCA Civ 5

  • 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) 

News

IP Inclusive Charter