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James Whyte

 


Year of call: 2005

James Whyte read Natural Sciences at Trinity College, Cambridge, where he gained the highest first class degree in genetics. He then undertook research at the Institute of Molecular Pathology in Vienna, and returned to Cambridge for a PhD in molecular cell biology. He was awarded the Max Perutz prize for outstanding achievement in a PhD, and continued his research at postdoctoral level. Before university, he worked as a computer programmer.

He undertook a law conversion course at City University, which he completed with distinction, and was graded outstanding on the bar vocational course. James was awarded several scholarships by Lincoln’s Inn and was called to the Bar in 2005. James’ practice is focused on patents but he also practises in the fields of copyright, confidential information, database rights and registered and unregistered design rights.

It didn’t take long for the major legal directories to recognise James Whyte as an up and coming talent in intellectual property. An emphasis on complex patent cases is underpinned by his capacity to grasp highly technical content, following his broad scientific education and a PhD in molecular cell biology. Given his early experience of working as a computer programmer and longstanding interest in information technology, James is particularly well placed to engage in cases involving electronics, telecommunications and IT, and is involved in ongoing mobile phone patent litigation. James is an author of Laddie, Prescott & Vitoria’s Modern Law of Copyright (4th ed., 2011; 5th ed.expected 2018) and has been involved in significant copyright disputes involving broadcasting (both terrestrial and satellite). He also has expertise in passing off and confidential information actions, and is well equipped to undertake work in registered and unregistered designs.

James has experience of major biotechnology and pharmaceutical sector patent cases (Pacific Biosciences v Oxford Nanopore Technologies, Chugai v UCB, Illumina v Premaitha and others, Regeneron v Kymab (High Court and Court of Appeal), Medimmune v Novartis, Dr Reddy’s Laboratories Ltd v Eli Lilly (High Court and Court of Appeal), Ivax v Glaxo, Actavis v Janssen, Monsanto v Cargill), including SPC issues (Medimmune, Viiv v Teva, Teva v Gilead) and other patent litigation ranging from simple mechanical patents with interesting legal points (Folding Attic Stairs v The Loft Stairs Company) through medical devices (Abbott v Medinol, Ireland) to magnetoresistive sensor technology involving complex physics (Siemens v Seagate, Northern Ireland) wind turbine control (Wobben v Siemens), electromagnetic underwater oil exploration (Electromagnetic Geoservices v Petroleum Geo-Services) and MRI (Varian v Elekta). He has also worked on the technical aspects of a large commercial arbitration relating to drug development, and is involved in an ongoing commercial dispute concerning drug development (Astex v AstraZeneca).

Outside the area of patents, further highlights include high profile media and entertainment cases such as Football Association Premier League v QC Leisure (satellite broadcasting of live football matches) and JHP v BBC Worldwide (copyright in Dalek-related material). James has appeared for the claimants in the long-running Vestergaard Frandsen v Bestnet action (High Court; High Court; High CourtCourt of Appeal; High Court), a breach of confidence dispute relating to insecticidal mosquito nets. Meanwhile, significant trade mark and passing off matters range from esure v Direct Line (Direct Line’s application to register a mouse-on-wheels trade mark) to Knight v Beyond (passing off allegations concerning Beyond's 'Mythbusters' television programme).

Patents

James is involved in several ongoing patent cases in the pharmaceutical, biotechnological and telecoms fields. Recent patent trials were Pacific Biosciences v Oxford Nanopore Technologies (next generation DNA sequencing, settled just before trial), Chugai v UCB (licence dispute concerning construction under US law of a patent about antibody humanisation), Illumina v Premaitha and others (antenatal diagnosis), Varian v Elekta (MRI), Electromagnetic Geoservices v Petroleum Geo-Services (2016, settled before judgment) about marine hydrocarbon exploration using electromagnetics, Unwired Planet v Samsung etc (2016, trial D, postponed just before trial), Regeneron v Kymab (2015) about mouse antibody technology, Wobben v Siemens (2015) about wind turbine controls and Rovi v Virgin (2014) concerning set-top boxes, and James appeared in Novartis v Hospira in relation to the issue of injunctions pending appeal. Recent appearances in patent cases without a leader have included CMCs, applications for a stay of proceedings, for appointment of a technical advisor, for Norwich Pharmacal relief, and for summary judgment. Before an intervening sabbatical James appeared in the antibody phage display case Medimmune v Novartis (2011) and Abbott v Medinol, a 2011 Irish trial about validity and infringement of a patent for a cardiovascular stent. Indeed, James has built up a practice in Irish or Northern Irish patent trials; he was in Northern Ireland in 2010 for a technically complex trial about magnetoresistance and its use in sensors, and was in Ireland in 2009 acting for the claimant alleging invalidity of an asthma combination drug. He previously appeared in Dr Reddy's v Eli Lilly, where the issue of requirements for a selection patent came to the fore, Actavis v Janssen, a revocation action concerning the combination of stereoisomers of nebivolol, and Monsanto v Cargill about genetically modified soya beans. Further highlights include Nichia v Argos, where James was junior counsel for the claimant in the Court of Appeal. Not all his patent cases involve high technology; Folding Attic Stairs Ltd was the descriptive name of a client patentee.


Pacific Biosciences v Oxford Nanopore Technologies [2018] EWHC 806 (Ch)

Validity and infringement of patents relating to next-generation sequencing technology, with the infringement case concerning nanopore sequencing. Settled shortly before trial.

Chugai v UCB 2018

This was a licence dispute concerning construction under US law of a US patent for antibody humanisation.

Regeneron v Kymab [2016] EWHC 87 (Pat); [2018] EWCA Civ 671

In a case described by the trial judge as being of great technical complexity, the patent related to transgenic mice in which variable regions of the endogenous immunoglobulin gene loci had been subject to "in situ replacement" by human variable region gene loci, but in which the murine constant regions were retained, so that hybrid antibodies were produced.

Illumina v Premaitha, Ariosa Diagnostics and others [2017] EWHC 2930 (Pat)

A complex patent case involving three principal patents, two divisionals and two sets of defendants. The patents related to non-invasive prenatal testing (e.g. for gender or disorders such as Down’s syndrome), and the case involved next-generation DNA sequencing technologies.

Astex v Astrazeneca [2017] EWHC 1442 (Ch)

This was not in fact a patent case, but a contract case with a high chemistry content. It was concerned with whether payments were due under a collaboration agreement to develop BACE inhibitors for treating Alzheimer’s disease.

Teva v Gilead [2017] EWHC 13 (Pat)

In this case, Arnold J. made yet another reference to the ECJ concerning the criteria for deciding whether ‘the product is protected by a basic patent in force’ in article 3(a) of the SPC Regulation.

Electromagnetic Geoservices v Petroleum Geo-Services [2016] EWHC 881 (Pat)

This trial concerned the same patent as in the Schlumberger v EMGS proceedings, involving what Birss J described as "difficult physics and mathematics" and in respect of which a scientific advisor to the court was appointed: [2016] EWHC 27 (Pat). The case settled after trial but before judgment.

Wobben v Siemens [2015] EWHC 2114 (Pat); [2017] EWCA Civ 5

In this case, the patent related to operation of variable speed, variable pitch wind turbines at high wind speeds.

Viiv v Teva [2015] EWHC 1074 (Pat)

An SPC case concerning Article 3(d) of the SPC Regulation, acting for the Defendant in resisting an application for a reference to the CJEU (settled before trial).

Rovi v Virgin Media [2014] EWHC 828 (Pat)

One of several trials from the Rovi v Virgin litigation in which James has been involved, this one involving two patents concerned with aspects of set-top box operation (parental controls and the merging of multi-source programme schedule information).

Novartis v Hospira [2014] R.P.C. 3

The Court of Appeal considered the principles applicable to the grant of an injunction pending appeal, in circumstances where the patentee had been unsuccessful at first instance.

Medimmune v Novartis [2012] F.S.R 23

An action concerning generation of antibodies by phage display.

Abbot v Medinol 2011

Irish trial concerned with cardiovascular stents.

Siemens v Seagate Technology 2010

Northern Ireland patent action involving the technology behind hard disk read heads.

Ivax v Glaxo 2009

Appeared for the claimant in the Irish courts in a 6-week trial of validity of the Irish seretide patent equivalent to that of the UK patent at issue in Cipla Ltd v Glaxo Group Ltd [2004] R.P.C. 43.

Folding Attic Stairs v Loft Stairs Company [2009] F.S.R. 24

Junior counsel for the claimant patentee in trial of validity and infringement, and at the resulting inquiry as to damages in April 2010.

Dr Reddy's Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2009] F.S.R. 5, [2010] R.P.C. 9

Junior counsel for Dr Reddy’s in an action for revocation of a selection patent for olanzapine.

Actavis v Janssen [2008] F.S.R. 35

Acted as junior counsel for patentee in a revocation action in relation to a patent for a combination of stereoisomers of nebivolol.

Monsanto v Cargill [2008] F.S.R. 7, [2008] F.S.R. 16

Acted as junior counsel for Monsanto at trial and on appeal in a patent action in which Monsanto claimed infringement of a patent covering DNA sequences related to its RoundUp Ready® technology, which involves the genetic modification of a plant to express an enzyme that confers resistance to the herbicide glyphosate (RoundUp®).

Nichia Corporation v Argos Ltd [2007] F.S.R. 38
Acted as junior counsel for Nichia as respondent in the Court of Appeal on the need for disclosure in relation to obviousness.

Lupin v Servier (2006-2007)
Assisted as junior counsel for the claimant in a claim for invalidity and a declaration for noninfringement of a patent relating to perindopril. Settled before trial.
 

  • What the Directories Say
  • "He has a wonderful understanding of the technical aspects of the case. Clients like his clear and concise advice, and his cool and calm manner." "He combines a rigorous and thorough command of technical detail with clear and patient advocacy- a highly recommended junior for both technology and life sciences work"
    Chambers and Partners (Intellectual Property) 2017

    "He is clever, hardworking and has great judgement."
    Legal 500 (Intellectual Property) 2017

    "He is utterly trustworthy, a good advocate and a pleasure to work with."
    Legal 500 (IT and Telecoms) 2017

    "A good advocate, who is utterly trustworthy and a pleasure to work with."
    Legal 500 (Media & Entertainment) 2017

    "His preparation and analysis is second to none and he presents cases beautifully"
    Legal 500 (Intellectual Property) 2016

    "He is careful, always well prepared and confident on his feet"
    Legal 500 (Media & Enterntainment) 2016

    "Clients like him for his clear, concise advice and his cool and calm manner"
    Chambers and Partners (Intellectual Property) 2016

    "His previous experience as a computer programmer is a plus"
    Legal 500 (IT and Telecoms) 2015

    "Technically and scientifically impressive, he is hard-working and bright" 
    Chambers and Partners (Intellectual Property) 2015

    "He provides insight and support which are beyond his years"
    Legal 500 (Media & Enterntainment) 2015

    "Highly regarded for patent disputes"
    Legal 500 (Intellectual Property) 2015