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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).

 

Patents

James has a busy patent practice. His recent cases include Marks & Spencer v. Asda Stores [2017] FSR 11 - a patent action concerning expandable shirt cuffs, Epoch v. Character Options (2017) – trial concerning whether patent for rhombic triacontahedral water soluble beads infringed, obvious or an un-patentable aesthetic creation, Positec v. Husqvarna [2016] Bus LR 714 - action for revocation and declaration of non-infringement of patent for robotic lawn mowers, VPG Systems v. Air-Weigh Europe [2016] FSR 4 - trial concerning on-board vehicle weighing systems, Glendimplex v. Poundstretcher (2014) - patent, copyright and design right action concerning flame effect fires, Jackson-Ebben v. Wine Innovations (2014) - trial of patent entitlement dispute about single serve pre-filled wine glasses, Eli-Lilly v. Teva (2013) - letters of request seeking evidence to invalidate US patent for pemetrexed chemotherapy drug ALIMTA (appeared against Sara Cockerill QC resisting application to set aside order for examination) and First Subsea v. Balltec (2013-15) - trial of claim for alleged constructive trust over an international patent application as 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. Other cases include Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA) - patent action concerning high strength channel and bolt assemblies used in the construction industry, M Systems v. Trek [2008] RPC 18 - Patent Office trial and High Court appeal regarding the ubiquitous USB memory stick, Nichia v. Argos [2007] Bus LR 1753 (CA) - new basis for disclosure in patent actions, BSW v. Balltec [2007] FSR 1 - successful resistance of pre-action disclosure relating equipment used in the offshore oil and gas industry, IDA v. University of Southampton [2006] RPC 21 (CA) - substantial patent entitlement dispute.

Marks & Spencer v. Asda Stores [2017] FSR 11.

Patent and unregistered design right action concerning expandable shirt cuffs.

 Epoch v. Character Options (2017).

Trial of patent action concerning rhombic triacontahedral water soluble beads for use in children’s toys - infringement and whether patent obvious or claimed an un-patentable aesthetic creation.  On-going appeal to the Court of Appeal.

 Positec v. Husqvarna [2016] Bus LR 714.

Patent action concerning robotic lawn mowers - principles applicable to disclosure, claim for revocation and declaration of non-infringement.

 VPG Systems v. Air-Weigh Europe [2016] FSR 4.

On-board vehicle weighing systems – trial of validity and infringement action.

 Angus Fire v. Cold Cut Systems (2016).

Patent action concerning high pressure water ‘cutting extinguishers’ used by emergency services.

 Phase Focus v. Thibault, UCL and others (2015/2016).

Patent action about lens-less coherent diffraction imaging technology, ptychography, and ptychographic reconstruction of 3 dimensional image information from interference patterns in high powered light and x-ray sources. Control and licencing of open source code repositories for academic research.

First Subsea v. Balltec (2013-2015).

Six week trial of claim for constructive trust over international patent application as result of alleged breaches of fiduciary duty and copyright infringement, breach of confidence and fraud on the court in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools.

Glendimplex v. Poundstretcher (2014).

Patent infringement, unregistered design right and copyright action concerning flame effect fires.

 Jackson-Ebben v. Wine Innovations (2014).

Trial of patent entitlement dispute about single serve pre-filled wine glasses.

 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.

  Eli-Lilly v. Teva (2013).
Letters of Request concerning US patent for the pemetrexed chemotherapy treatment ALMITA using antifolates and vitamin B12. Appeared against Sara Cockerill QC successfully resisting Lilly’s application to set aside an order for examination pursuant to letters of request from the US Court.

Collingwood Lighting v. LED Lighting and Electrical Distribution (2012).
Patent infringement action and invalidity attack concerning domestic LED lighting units.

Brigade v Autosonics (2012).
Patent action in the Patents County Court concerning white noise vehicle reversing alarms.

Compliant Phones v Obsidian (2011-2-12).
Patent infringement action concerning mobile phone apps and call monitoring and recording systems for Financial Services Authority Compliance.

Lormac v. ILC Dover (2011).
An action concerning flexible intermediate bulk carriers for the pharmaceutical industry.

Taltech v. Dewhirst (2011).
A patent action concerning seams for wrinkle free shirts. 

ITAB v. Gray (No.2) (2010).
Scope of exclusive patent licence and breach of technology disclosure obligations in licence for infra-red supermarket trolley retention systems.

ITAB v. Gray (No.1) (2009).
Four-week trial concerning exclusive patent licenses for supermarket trolley retention systems.

Ancon v. ACS Stainless Steel Fixings [2009] All ER (D) 148 (CA).
Patents Court and Court of Appeal case concerning high strength channel and bolt assemblies for the construction industry.

Nokia v. IPCom (2008/2009).
Instructed by IPCom in patent actions concerning third generation (3G) and enhanced 2G (2½ G) mobile telephones.

M-Systems v. Trek [2008] RPC 18.
Appeal to High Court and UK IPO proceedings concerning the validity and amendment of the patent for the ubiquitous USB memory stick - novelty – inventive step - sufficiency - amendment - added matter - disclaimer - whether issue estoppel as result of construction of application PCT in Singapore.

Nichia v. Argos [2007] FSR 38 (CA).
Patent action and appeal regarding white and blue LEDs. Whether court should exclude disclosure on obviousness - Court of Appeal ordered disclosure, set out principles on which disclosure should be ordered in future and provided guidance on approach which should be taken to contemporary evidence in cases of obviousness and whether privilege can be used to withhold information concerning experiments undertaken for the litigation.

BSW v. Balltec [2007] FSR 1.
Pre-action disclosure application in proposed action for patent, copyright and design right infringement and breach confidence in relation to pipeline recovery and offshore platform mooring equipment.

IDA v. University of Southampton [2006] RPC 21 (CA).
Magnetic powders to trap insects - patent entitlement - inventorship - whether contributing well known techniques is sufficient to be joint inventor - confidential information - excluding wrongdoer from ownership of patent.

AGT v. Aubin (2006).
Patent entitlement dispute concerning crude oil viscosity reduction.

IDA v. University of Southampton [2005] RPC 11.
Magnetic powders to trap insects - patent entitlement - inventorship - confidential information - contract concerning ownership of patents.

M-Systems v. Trek (2005).
Proceedings in the UK Patent Office and the Singapore Court of Appeal concerning the validity and amendment of the patent for the USB ThumbDrive.

ITG v. Algernon (2005).
Patent dispute concerning electronic tagging equipment - consolidation - prior use - alleged breach of confidence in prior use - security for costs.

Reckitt Benckiser v. Calmar (2005).
Patent action - trigger operated fluid dispensers

Master Mover's Cage Puller Patent (2005).
Entitlement proceedings after lapse of application - new application under section 8(3) of the Patents Act -third party conditions.

Master Mover's Industrial Tug Patent (2004).
Amendment proceedings in the Patent Office.

Jackson v. Johnson & Johnson (2004).
Employee inventor’s compensation claim – whether patent of outstanding benefit to patentee - law relating to amount of compensation.

Collag v. Merck [2003] FSR 263.
Agrochemical formulation and production process – confidential information - entitlement to patent - inventorship - consultancy agreement.

Rohm & Haas v. Collag [2002] FSR 28 (CA).
Declaration of non-infringement – agrochemical formulations - material in EPO file admissible on construction.

University of Southampton’s Application [2002] RPC 44.
Patent - entitlement – further information regarding details of foreign applications.

Frontline v. Tasc (2002).
Patent infringement action - validity - wireless network technology.

Advanced Phytonics v. Wilde (2002).
Injunction to restrain filing of opposition at EPO - breach of Tomlin Order - chemical extraction technology.

Advanced Phytonics v. MGA (2002).
Ex-parte injunction to restrain filing of opposition at EPO - information obtained as a result of inducing breach of contract - conspiracy – intimidation.

Rohm & Haas and Dow v. Collag and Agform [2001] EWCA 1411
Admission of additional evidence on appeal - joinder of intervening party.

Rohm & Haas v. Collag [2001] FSR 28
Declaration of non-infringement - agrochemical formulations.

Intel v. Via (2000).
Integrated circuit technology - snoop ahead patent - technology of Pentium processors - infringement – validity.

Via v. Intel (2000).
Integrated circuit technology - bus arbitration patent - technology of Pentium processors - petition to revoke - counterclaim for infringement – amendment.

Oneac v. Raychem [1999].
Info TLR 57. Patent action - lightning protectors for telephone lines.

Briscoe v. Middy Tackle International (1999).
Patent - fishing tackle - interim injunction.

Texas v. Hyundai (1998).
Semiconductor fabrication - product by process patent - striking out.

Cambridge Positioning Systems v. The Technology Partnership (1998).
Patent entitlement - confidential information - telecommunications and positioning systems - urgent injunction.
 

  • 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