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James St.Ville

 


Year of call: 1995

James St Ville was called to the Bar in 1995. At Gray's Inn, he was awarded the Bird & Bird Award for Intellectual Property, the Moot Society Prize and the Prince of Wales Award. At St. John's College Cambridge he was a Morton Scholar and awarded 1st Class Honours in Engineering, Sir Joseph Larmor's Plate, the St.John's College Prize and the University IEE Institution Prize.

He is recommended as a Leading Junior in Intellectual Property by Chambers UK and Information Technology by the Legal 500 and is a chartered engineer with substantial commercial experience of electronics, optical communications and engineering.

James appears in patent, registered design, design right, copyright, database right, confidential information, computer contract and IT disputes many of which deal with complex engineering, electronics and software and is an author of Russell-Clarke and Howe on Industrial Designs (9th Edition, 2016) with Martin Howe QC and Ashton Chantrielle. He is regularly instructed in trade mark, passing off, data protection and threats actions, including domain name and internet disputes and appears in the High Court, Patents Court, Technology and Construction Court, Court of Appeal, Intellectual Property Enterprise Court (IPEC), UK IPO, EU IPO (formerly OHIM) and General Court of the EU. He is regularly instructed to appear against leading counsel and with juniors.

He  has expertise in areas of practice such as search orders, Norwich Pharmacal orders, disk imaging orders, delivery up of source code, ex-parte injunctions to identify and deal with computer hackers and other interim injunctions which need to be kept confidential,  third party disclosure, UK Border Agency seizures and disputes over letters of request and the examination of witnesses for the purpose of foreign proceedings.

James represents clients at mediations, advises in relation to IP disputes in other common law jurisdictions such as Singapore and Jersey, and has sat as an examiner in response to overseas letters of request.

His reported cases include Spin Master v. PMS [2017] WLR (principles applied by High Court to achieve proportionate management of registered design cases), Marks & Spencer v. Asda Stores [2017] FSR 11 (principles on which court applies costs management controls in patent and unregistered design right cases), Positec v. Husqvarna [2016] Bus LR 714, [2016] FSR 29 (disclosure on obviousness in patent actions under new CPR 31.5), Procter and Gamble v. Star Global [2016] RPC 19 (community trade mark dispute concerning parallel imports of branded fragrances products with tracking codes removed), VPG Systems v. Air-Weigh Europe [2016] FSR 4 (invalidity of patent for on-board vehicle weighing system), Alfa Laval v. Separator Spares [2013] 1 WLR 1110 (CA) (the leading case on the test for determining whether breach of confidence and copyright claims against former employees are ‘matters relating to individual contracts of employment’ under the Brussels I Regulation), Virgin v. Casey [2011] ETMR 35 (maintaining registration of “Carbon Virgin” for advertising services in the face of Virgin’s appeal), Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA) (patent action and appeal about high strength channels and bolts), M Systems v. Trek [2008] RPC 18 (validity and amendment of the patent for the USB memory stick), Meridian v. IP Enterprises [2008] Info TLR 139 (CA) (implied terms concerning ownership of copyright in source code), Nichia v. Argos [2007] Bus LR 1753 (CA) (principles upon which disclosure should be ordered in patent actions), BSW v. Balltec [2007] FSR 1 (successfully resisting pre-action disclosure regarding equipment used in the offshore oil and gas industry), Quads4kids v. Campbell [2006] Info TLR 338 (illegitimate complaints about products sold on eBay and threats of design right infringement proceedings), IDA v. University of Southampton [2006] RPC 21 (CA) (substantial patent entitlement dispute), Premier League v. Panini [2004] 1 WLR 1147 (CA) (copyright in football club crests), CDW's Trade Mark Application [2003] RPC 30 (trade mark www.standupifyouhatemanu.com contrary to public policy), Collag v. Merck [2003] FSR 263 (confidential information and patent entitlement dispute regarding agrochemical formulations), Rohm & Haas v. Collag [2002] FSR 28 (CA) (agrochemical process patent) and Safari Trade Mark [2002] RPC 23 (alleged non-use negative by use under bare licence).

 

Information Technology, Confidential Information, Data Protection and Commercial Litigation

As you might expect from his technical background, information technology is a core area for James’ practice including those cases in the Technology and Construction Court. Significant examples of this the latter include First Subsea v. Balltec (constructive trust over an international patent application as a result of alleged breaches of fiduciary duty in relation to deep-sea mooring equipment and pipeline recovery tools), Metso Minerals v. Ashton Bulk (drawing system data for very large scale bulk handing equipment), Zodiac v. Third Eye (complex TCC case concerning alleged fraudulent misrepresentation in the licensing of ‘surround vision’ virtually reality systems), Innovate v. Manhattan (wireless networking and computer system for a chilled and frozen warehouse facility), Gatton Volt v. FMX (computer aided facilities management software), Mulrooney v. Wright (computer software for the rostering of anaesthetists in the NHS) and Real Solutions v Saga (computer contract for holiday sales).

He James has also acted in numerous cases which are not in the public domain including in the banking sector.

He has acted and advised in a number of data protection actions (and in disputes which have not come to trial, including allegations of criminal wrongs working along- side criminal counsel) and acts in complex commercial litigation in otther areas such as systems development, pharmaceutical development and licensing.
 

First Subsea v. Balltec (2013-2015).
Claim for a constructive trust over an international patent application as a result of alleged breaches of fiduciary duty and for alleged infringement of copyright, breach of confidence and fraud upon the court in relation to 3D CAD and 2D drawings for deep-sea mooring equipment and pipeline recovery tools.

Vibrafloor v Shepherd Construction (2014).
Action for breach of confidence and breach of contract, wrongful interference with goods, conversion, patent entitlement and patent infringement concerning vibrating floor technology for large scale storage silos.

Allied Pressroom Products v. Printchem (2013).
Claim for breach of confidence in chemical formulations for products used in the pressroom and car care industries.


Metso Minerals v. Ashton Bulk (2013).
Alleged breach of confidence and infringement of copyright in relation to CAD drawing system data and drawings of very large scale bulk handing equipment including railway tipplers and stacker-reclaimers. Case involved preservation and analysis of very substantial amounts of data from imaged hard disks.

Web Services Integration v. Watertrace (2012).
Data management, enrichment and validation systems. Alleged breach of software licencing and system hosting agreement accompanied by failure to allow inspection of computer systems in accordance with the contract. Appeared against James Ayliffe QC in successful application for summary judgment to compel inspection of the defendant’s computer system.

University of Salford v. KPI Zone (2012).
Claim for breach of confidence and infringement of copyright and database right by forwarding emails and copying client contact databases. Ex-parte order for imaging computer systems and analysis of very substantial amounts of information from imaged hard disks.

Sat-Insure v. Big Warranties and Nationwide Satellite Services (2012).
Claim for passing off and breach of confidence in customer databases committed in the course of sales calls made by the defendants in order to sell extended warranties for satellite television equipment.

Zodiac v. Third Eye (2011).
Technology and Construction Court action concerning alleged fraudulent misrepresentation in the licensing of ‘surround vision’ virtually reality systems. Preparing for trial in November 2011.

Matrix v. LB Hounslow (Comensura intervening) (2010). 
Successful third party application on behalf of Comensura to restrain disclosure of confidential pricing information in public procurement litigation in the Technology and Construction Court.

Modi Measurement Systems v. CP Engineering (2008-2010). 
High Court action concerning breach of contract and copyright in software for engine emissions testing systems.

Kuros v. Baxter (2009-10).
Major commercial litigation over pharmaceutical development programme, application for speedy trial and dispute over whether access to the courts was precluded by a contractual dispute resolution mechanism.

ITAB v. Gray (No.2) (2009)
Breach of technology disclosure obligations in licence of infra-red supermarket trolley retention system.

Proteus Sports Cars v. Matker (2007). 
Trial concerning confidential information in 3D CAD models of replica sports cars and breach of agent’s fiduciary duties.

Innovate v. Manhattan (2006-2007).
Substantial IT dispute concerning wireless networking and computer system for chilled and frozen warehouse facility.

Intelligent Solutions v. Envision (2004-2007).
Copyright and confidential information in firmware and copyright and design right in electronic hardware for wireless building management systems.

Gatton Volt v. FMC (2005).
Substantial IT dispute concerning software system.

Jordan Grand Prix v. Tiger Telematics (2005).
Sponsorship of Formula One Grand Prix - specific disclosure - third party disclosure - negligent and fraudulent misrepresentation.

Mulrooney v. Wright (2004).
Computer software supply contract - fitness for purpose - reasonable skill - breach of contract - software for rostering anaesthetists in NHS hospitals.

Bar Pro Bono Unit (2003).
Substantial advice on Bar Pro Bono Unit’s data protection systems.

Calvert v. Yorkshire Bank (2003).
Subject access request - relevant filing system - correct interpretation - whether paper files sufficiently structured.

Sariyiah v. Peters Fraser & Dunlop (2003).
Subject access request - confidential information relating to third parties - whether non-disclosure justified.

Real Solutions v. Saga (2002).
Computer contract dispute.

Intranetics v. Cookson (2002).
Website - copyright infringement – confidential information - passing off - employee’s duty of fidelity.

Capita v. Consort (2002).
Substantial computer contract dispute.

Total Corporate Technology v. Prudential Assurance (2002).
Computer contract dispute.

BBC Worldwide v. Robot Wars (2001).
Format rights - licensing contract.

Moore v. Akin (2001).
Delivery up of source code - alleged software “time bomb” - last minute attempt to vacate trial - no real intention to bring the action to trial - action struck out.

Mason Pinder v. Parametric Technology (2001).
Computer contract dispute.

Dawn v. Midas (2001).
Licensing of computer game - publishing and distribution agreement.

AFD Software v. The Post Office (2000).
Licensing dispute - disclosure - proper search.

Marrioff v. The Channel Tunnel Group (2000).
Fire suppression systems - design right - copyright - confidential information.

Umbra Software v. Spencer (2000).
Computer software - commercial information - copyright - confidential information - employee’s duty of fidelity.

Demite v. Protec (2000).
Conspiracy - negligence - patent portfolio held under voidable contract - alleged deliberate mismanagement - costs consequences of Part 36 offer.

Millbrook Proving Ground v. Entran (2000).
Accelerometers for vehicle crash testing - faults in accelerometers - contract - express terms - fitness for purpose - contributory negligence.
 

  • What the Directories Say
  • "He is an absolute perfectionist with a real eye for detail, which is really useful for trade mark infringement cases." "He is extremely thorough and leaves no stone unturned. His preparation on every case is superb and detailed, and he has first-class drafting"
    Chambers & Partners (Intellectual Property) 2017

    "Especially noted for his skill in handling cases with dominant mathematical and technical elements" 
    Chambers & Partners (Information technology) 2017

    "He has excellent knowledge of technology and a keen eye for detail."
    Legal 500 (IT and Telecoms) 2017

    "His calm, forensic approach is absolutely invaluable"
    Legal 500 (IT and Telecoms) 2016

    "He has a keen eye for detail and is very thorough"  
    Chambers & Partners (Intellectual Property) 2016

    "A user-friendly and very experienced junior"
    Chambers & Partners (Information technology) 2016 

    "Excellent in advising on matters with an IP or contractual dimension"
    Legal 500 (IT and Telecoms) 2015

    "Displays incredible attention to detail, is very responsive, gives sound commercial advice and has excellent IT industry knowledge" 
    Chambers & Partners (Information technology) 2015

    "He leaves no stone unturned- he offers superb detailed preparation on every case and first-class editing"
     Chambers & Partners (Intellectual Property) 2015

    "Expertise in IT disputes involving engineering, electronics and software"
    Legal 500 (IT and Telecoms) 2014

    "Technically strong," he is "hard-working and on top of the detail"
    Chambers & Partners (Intellectual Property) 2014

    "He is very good on the technical side"
    Chambers & Partners (Information Technology) 2014