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James Abrahams QC

 


Year of call: 1997
Year of silk: 2016

James Abrahams read Law at St Anne's College, Oxford where he obtained a BA and BCL. He was also a scholar of St Anne's and twice winner of the Law Prize. He was called to the Bar in 1997 as a scholar of Gray's Inn. James became a member of Chambers in 1999.

James specialises in all aspects of IP, including patents, copyright, design rights, moral rights, database and related rights, registered designs, trade marks, passing off and breach of confidence. He is particularly well-known for his work in high-technology, complex patent cases, having appeared in the large majority of the major electronics, telecommunications and smartphone patent cases of the last few years.

Major patent cases include:

• Rovi v Virgin Media and TiVo (EPG and set top box functionality)
• Microsoft v Motorola (email protocols)
• Ericsson v ZTE (mobile telecommunications)
• Xena v Cantideck (damages inquiry in respect of rolling loading platforms)
• Liversidge v Owen Mumford and Abbott (medical auto-injector devices)
• HTC v Apple (smartphone interfaces)
• HTC v IPCom (mobile telecommunications)
• Nokia v IPCom (mobile telecommunications)
• LG v Sony (Blu-ray players)
• Apple v Nokia (mobile telecommunications)
• Motorola v RIM (mobile telecommunications)
• Wake Forest v Smith & Nephew and Mölnlycke v Wake Forest (wound dressings)
• Phillips v Harvard (video coders/decoders)
• Halliburton v Smith (oil well drill bits)
• Nokia v InterDigital (mobile telecommunications)
• Ferag v Muller Martini (print finishing machines)
• Glaxo’s Patent (Seretide® inhalers)
• Intel v VIA (microprocessors and chipsets)

Other major cases include:

• IPC Media v Media 10 (trade marks)
• Total v You View (trade marks)
• Coward v Phaestos (automated hedge fund software copyright)
• PRS v B4U (copyright in Bollywood musical songs)
• The Da Vinci code copyright case, Baigent v Random House
• 19TV v Freemantle (copyright in the format of ‘Pop Idol’)
• IPC Media v Highbury (copyright in magazine covers)
• Honda v Neesam and others (parallel imports of Honda motorbikes)
• British Horseracing Board v William Hill (the first case in which the UK and European courts had to deal with the database right created by EC Directive 96/9).

 

Patents

James is particularly well-known for his work on major patent actions in the field of mobile telecommunications, acting for clients including Huawei, Nokia, HTC, Motorola, Ericsson and Microsoft. Other major patent matters on which he has acted include Wobben v Siemens (wind turbines) Rovi v Virgin Media and TiVo (EPG and set top box functionality) Microsoft v Motorola (email protocols), Liversidge v Owen Mumford and Abbott (medical auto-injector devices), LG v Sony (Blu-ray players), Phillips v Harvard (video coding/de-coding), Wake Forest v Smith and Nephew and Mölnlycke v Wake Forest (both concerning wound dressings), Ferag v Muller Martini (paper trimming machines), Halliburton v Smith (oil well drill bits), Intel v VIA Technologies (microchips).

Teva v Actavis [2015] EWHC 2604 (Pat)

Claim for an interim injunction in respect of Teva's patent for rasagiline tartrate (a treatment for Parkinson's disease).

Wobben v Siemens [2015] EWHC 2114 (Pat)

Claim for infringement of a patent for wind turbine technology. The case was unusual in that James succeeded in applying for an order for disclosure of the defendant's customer prior to establishing liability (see  [2014] EWHC 3173 (Pat)

Rovi v Virgin Media and TiVo; (judgements include  [2014] EWHC 828 (Pat), [2014] EWHC 2301 (Pat), [2015] EWCA Civ 781)

A multi-jurisdictional dispute involving several patents for EPG and set-top box functionality. A series of trials and appeals were heard throughout 2013 to 2015.

TCT v Ericsson (2013-2015)

Voice coding patents for mobile telecommunications

Teva v Amgen [2013] EWHC 3711 (Pat)

Claim concerning Amgen's patent for G-CSF analog. A novel issue arose as to who should be the parties to the proceedings; James successfully argued that the Amgen parent company should be a defendant to the revocation and non-infringement claims even though it did not own the patent in suit.

Microsoft v Motorola [2012] EWHC 3677 (Pat),[2013] EWCA Civ 1613  

A patent for two-way pagers which was said to be infringed by Microsoft's Exchange ActiveSync protocol, by which mobile devices sychronise with Microsoft Exchange Servers.


Nokia v IPCom and IPCom v HTC

These are related, long-running disputes in which IPCom has asserted numerous patents against HTC and Nokia. The case involves not only complex technical issues but also the right to, and terms of, a licence on FRAND terms to patents which are essential to a mobile telecommunications standard.
There have been numerous trials and appeals, including judgements of the Court of Appeal considering in detail the law on added matter [2012] EWCA Civ 567; and revising the guidance for courts considering applications to stay patent proceedings when there are related proceedings in the EPO: [2013] EWCA Civ 1496.  


Xena v Cantideck [2013] EWPCC 1

An inquiry as to damages for infringement of a patent relating to rolling loading platforms.

HTC v Apple [2012] EWHC 1879 (Pat)

Apple claimed infringement of 4 patents relating to the user interface of its iPhone, ranging from the “swipe to unlock” feature to the software implementation of the multi-touch event handler. James was part of team which successfully defended HTC in relation to all 4 patents.

Liversidge v Owen Mumford and Abbott [2012] EWPCC 33

Medical auto-injectors. The case raised issues of novelty, obviousness, added matter and infringement, requiring experiments on both sides.

LG v Sony (2011-2012)

Major, multi-jurisdictional dispute, involving numerous patents for Blu-ray players and advanced television functionality.

Apple v Nokia (2010-11)

A major dispute involving claims and counterclaims of infringement of patents related to smartphone technology.
 

Wake Forest v Smith & Nephew [2009] EWHC 1164 (High Court) [2009] EWCA Civ 848 (Court of Appeal) and Mölnlycke v Wake Forest [2009] EWHC 2204 (Pat)

Negative therapy wound dressings. Unusually, validity of the patent was tried twice (for
reasons explained by Kitchin J in his judgment [2009] EWHC 1798 (Pat)). The case raised issues concerning novelty, inventive step, added matter and extension of scope by amendment.

Crystal Fibres v Fianium (2009)

Optical fibre technology. The judgment on the defendant’s application to strike out the action [2009] EWHC 2149 (Pat) explores the level of knowledge which a patentee requires before he can legitimately commence infringement proceedings.

Philips and others v Harvard (formerly Alba)

Action for infringement of 16 patents relating to MPEG2 video encoding technology, commenced by the members of a patent pool. The case raised issues of licensing and competition law/FRAND royalties (as well as infringement and validity). The judgment of Lewison J [2009] EWHC 1600 (Pat) addressed the case management issues arising in such a complex case.

Armour v Leisuretech [2008] EWHC 2797 (Pat)

Distributed audio systems. 

Samsung v Ericsson (2007)

Mobile telecommunications. As well as infringement and validity of both side’s patents, the right
of each side to a FRAND licence to the other’s patent portfolio was in issue.

Halliburton v Smith International [2006] RPC 25

Two patents relating to the design of roller cone drill bits, which are used for drilling oil wells and the like. Issues included insufficiency, obviousness, lack of novelty and lack of patentable subject
matter.

Nokia v InterDigital (2005-2008)

A complex dispute concerning whether a large number of patents, owned by each side, were essential to the European standards for third generation (‘3G’) mobile telecommunications. Interlocutory battles included a hearing in the Court of Appeal concerning extent of the court’s jurisdiction to grant declaratory remedies ([2007] FSR 570). Pumfrey J gave judgment on the first trial in December 2007 [2007] EWHC 3077 (Pat). The proceedings settled in June 2008.

Ferag v Muller Martini [2006] EWHC 225 (Pat); [2007] EWCA Civ 15

Machines for trimming books and magazines. As well as issues of infringement, obviousness and novelty, the case involved an application for amendment, which raised issues of added matter and lack of clarity.

Glaxo’s Patent [2004] RPC 843

An action for revocation of the patent protecting Glaxo’s most successful product, Seretide®, a
combination inhaler for the treatment of asthma. The thrust of Glaxo’s case was that the patent’s inventiveness lay in overcoming a prejudice held by those in the art.

Telsonic AG’s Patent [2004] RPC 744

Ultrasonic industrial sieving devices.

Intel v VIA Technologies and others

Two patent actions in which Intel sued on patents relating to microchips used in personal computers, in particular microprocessors and chipsets. The defendants raised competition law defences in both actions; Intel obtained summary judgment on these issues from LawrenceCollins J ([2003] FSR 175) but the Court of Appeal held that some of these issues should go to trial ([2003] FSR 574, [2003] EuLR 85). The issues of infringement and validity of the microprocessor patents were tried before Pumfrey J in February 2003, but the case settled after judgment was reserved.

Taylor v Ishida [2000] FSR 224

Bagging machines for snacks.

  • What the Directories Say
  • He is incredibly intelligent. He is a street fighter advocate who gets down to the nitty gritty and rolls his sleeves up. He always puts in the effort and is unafraid of the difficult cases- he gets the best out of them." "He is fantastic on paper and a very logical thinker. He is extremely hard working, has never let me down and makes it an easy working relationship"
    Chambers & Partners (Intellectual Property) 2017

    "A very clever barrister and a sharp opponent."
    Legal 500 (Intellectual Property) 2017

    "A tenancioius advocate and someone you want on your side"
    Legal 500 (Intellectual Property) 2016

    "A very astute and commercail senior junior, he's someone with excellent written and oral skills"
    Chambers & Partners (Intellectual Property) 2016

    "A very able and commercial barrister who produces quality pleadings"
    Legal 500 (Intellectual Property) 2015

    "He's astute and tactically excellent, and has great drafting skills" 
    Chambers & Partners (Intellectual Property) 2015

    "Confident, clear, tenacious and pragmatic, he has excellent written and oral skills."
    Chambers & Partners (Intellectual Property) 2014

    "Produces quality pleadings"
    Legal 500 (Intellectual Property) 2014