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Mark Chacksfield

 


Year of call: 1999

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Described in the directories as “enormously bright and diligent, with a keen focus on client demands”, “a knowledgeable and deeply impressive adviser on the full spectrum of IP disputes” and “widely considered to be one of the rising stars of the IP Bar”, Mark has been nominated for the Chambers and Partners IP/IT Junior of the Year in both 2014 and 2015. He practices in all areas of intellectual property law, with particularly strong expertise in major patent litigation where he is described as a “sector leading” litigator. He has considerable experience in appearing as the sole advocate both at first instance and in the Court of Appeal, as well as in the EPO.

Mark has an outstanding reputation in the patents field, having acted in many of the leading cases. Recent pharmaceutical and biotech cases include FKB v. AbbVie (‘Arrow declarations’, adalimumab), Teva v. Boehringer (inhaled tiotropium), Novartis v. Focus (rivastigmine patches), Hospira v. Genentech (Herceptin), Teva v. Leo (calcipotriol/betamethasone), Resolution Chemicals v H. Lundbeck (escitalopram/res judicata), Teva v Merck (efavirenz/quia timet actions), Eli Lilly v HGS (Neutrokine-α), Regeneron Pharmaceuticals v Genentech (VEGF Trap-EYE®/Lucentis®), Ranbaxy v AstraZeneca (Swiss-form claims/esomeprazole), and Convatec v Smith & Nephew (Durafiber® wound care products). Mark has represented Nokia in the Interdigital, IPCom and HTC litigations, and Unwired Planet against Google, Samsung and Huawei, as well as working with a number of other high profile telecoms and licensing companies on both standards essential and non-essential patents. He has also appeared in both high tech and mechanical patent actions, including appearing alone in the leading Court of Appeal case on indirect infringement of Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott

Other areas of practice include media and entertainment, where Mark has represented broadcasters, record companies, picture libraries and well-known personalities in copyright and privacy claims, as well as having experience in musical copyright actions concerning substantial hits. His media clients include Northern & Shell, the Premier League Football Association, the Ian Fleming Estate, the BBC, ITV Network, Phonographic Performance, and various record companies and well known personalities.

Trade mark, passing off, copyright, design rights and complex copyright/breach of confidence actions (often involving commercial information such as client lists or technical software disputes), constitute other common areas of his practice. Mark also has experience in professional negligence cases concerning patent and IP professionals, the most recent being Kerr v Lawrence Shaw & Associates.

 

Patents

Mark has an outstanding reputation in the patents field, having acted in many of the leading cases. Recent pharmaceutical and biotech cases include FKB v. AbbVie (‘Arrow declarations’, adalimumab), Teva v. Boehringer (inhaled tiotropium), Novartis v. Focus (rivastigmine patches), Hospira v. Genentech (Herceptin), Teva v. Leo (calcipotriol/betamethasone), Resolution Chemicals v H. Lundbeck (escitalopram/res judicata), Teva v Merck (efavirenz/quia timet actions), Eli Lilly v HGS (Neutrokine-α), Regeneron Pharmaceuticals v Genentech (VEGF Trap-EYE®/Lucentis®), Ranbaxy v AstraZeneca (Swiss-form claims/esomeprazole), and Convatec v Smith & Nephew (Durafiber® wound care products). Mark has represented Nokia in the Interdigital, IPCom and HTC litigations, and Unwired Planet against Google, Samsung and Huawei, as well as working with a number of other high profile telecoms and licensing companies on both standards essential and non-essential patents. He has also appeared in both high tech and mechanical patent actions, including appearing alone in the leading Court of Appeal case on indirect infringement of Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott

Chugai Pharmaceutical Co Ltd v UCB Pharma SA (January 2018)

This was the trial of this declaratory action, which concerned whether Chugai was obliged to continue to pay royalties under a licence from UCB in relation to its tocilizumab product. The action concerned technically complicated biotechnology issues, and was also run under US patent law, requiring the Court and parties to grapple with many uncertain questions of principle, facets undecided in the US cases. Judgment is awaited.

Actavis Group PTC EHF v ICOS Corp [2017] EWCA Civ 1671; (2018) 159 B.M.L.R. 108

Concerning Lilly’s blockbuster Cialis™ product, on this appeal Actavis was able to persuade the Court to overturn the first instance judge’s decision on obviousness, often a barren ground for appellants. The decision also considered for the first time the law as to the burden of proof in cases which concern the entitlement of the prior art to claim its own priority date, a decision of wide significance to the patent profession. The case is now on appeal to the Supreme Court.

Chugai Pharmaceutical Co Ltd v UCB Pharma SA [2017] EWHC 1216 (Pat); [2017] Bus. L.R. 1455; [2017] F.S.R. 45

This was a licensing dispute which at its core concerned the question of whether Chugai’s tocilizumab product fell within the claims of one of UCB’s US patents. Argued under US law, UCB sought to strike out initially the whole claim and later just part of it relating to the US infringement doctrine that the claims of a patent cannot be read so as to cover the prior art. Having heard arguments as to the power of the High Court to entertain arguments said to touch upon issues of the validity of foreign patents, the Court dismissed the challenge and allowed Chugai’s claim to proceed.

Unwired Planet International Ltd v Huawei Technologies Co Ltd [2017] EWCA Civ 266; [2017] Bus. L.R. 1971

This was the first of the Unwired Planet cases to come to appeal, and was the subject of intense attention from the industry. Having succeeded at first instance, Unwired Planet successfully defended the entire judgment on appeal, paving the way for the much discussed FRAND action.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Ltd [2017] EWHC 395 (Pat)

This extremely high profile trial concerned the dosage regimen of the world’s most valuable pharmaceutical, Humira™. Beyond the complex technical issues and Cook v Edwards-style priority dispute, this case explored further the extent and limits of the exercise by the Court of the power to grant ‘Arrow’ declarations. The judge found against AbbVie but granted permission to appeal on these issues to allow industry to obtain further clarification from the Court of Appeal. The litigation, however, settled after the appeal had been argued but before judgment had been handed down.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology
[2017] EWCA Civ 1; [2018] Bus. L.R. 228; [2017] C.P. Rep. 16; [2017] R.P.C. 9

This was the appeal from the first instance decisions of Car J (on subject matter jurisdiction) and Arnold J (on personal jurisdiction) in litigation concerning the world’s largest pharmaceutical product, Humira. This litigation is probably the heaviest pharma/biotech dispute in recent years, and is based upon the deployment of so-called Arrow declarations said to clear the way for a product launch in the face of pending divisional applications in the EPO, from the case of Arrow v Merck, a case in which Mark acted for Arrow. The main focus of the argument was on the allowability of Arrow declarations in the context of the structure of the 1977 Act and the EPC, having regards to the well known Barraclough principle.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology (No. 3) [2016] EWHC 3383 (Ch); [2017] R.P.C. 8

This was the third round of strike out application in this litigation, which here concerned the power of the Court (or limits of the appropriate exercise of discretion) to entertain Arrow relief in circumstances where the relevant patent protection had been limited geographically so as to exclude the UK, touching on fundamental requirements as to the need for there to be any or any potential legal right touching upon the UK in order to grant declaratory relief, and the use of the Court’s of this jurisdiction to act as a ‘debating club’.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology [2016] EWHC 2204 (Pat); [2017] Bus. L.R. 333; [2017] R.P.C. 7

This was the second of the jurisdictional disputes in the Humira litigation. This two day application focussed on the Court’s in personam jurisdiction over the main Bermudan defendant, traversing issues from the basis of negative declaratory relief, the grant anti-suit injunctions, the Brussels regulation and the scope of the gateways under CPR6 PDB. The judge held that there was such a jurisdiction, but gave permission to appeal his decision.

Hospira UK Ltd v Genentech Inc [2016] EWCA Civ 780; [2017] R.P.C. 13; (2016) 152 B.M.L.R. 62

This was the appeal in the second of the Herceptin trials, relating to Genentech’s blockbuster antibody trastuzumab. The appeal raised quite acutely the question of obviousness in an empirical field, having regards in particular to the earlier decision in Teva v Leo. The Court refused the appeal, pushing the law of obviousness backwards from the high water mark in Teva v Leo, and took the opportunity to try to restate and draw together the many separate strands which have developed in ‘obvious to try’ cases.

Positec Power Tools (Europe) Ltd v Husqvarna AB [2016] EWHC 1061, [2016] Bus. L.R. 714, [2016] F.S.R. 29

This was an interlocutory decision on a CMC which has had a very significant impact on the approach to disclosure and the conduct of patent litigation in this jurisdiction. The giving of disclosure by a patentee on questions of validity has often been considered a highly expensive and time consuming exercise, but which provides little benefit. After a number of previous failed attempts under the RSC and CPR, on this application Mark persuaded the Court to finally removed the presumption that validity disclosure should be provided in most patent actions. The decision has been widely cited and relied upon since, resulting in a wholesale change in the approach in patent cases.

Unwired Planet International Ltd v Huawei Technologies [2016] EWHC 576; [2016] Bus. L.R. 435

This was the third of the Unwired Planet trials, which together represent one of the largest and heaviest recent sets of telecoms litigation. The patent here concerned technologies relating to reporting and handover between networks using different radio technologies. The case was heavily fought, and was interesting in that the approach of the defendants was to seek to demonstrate that the infringement was obvious at the priority date (building on the Gillette defence) rather than classical free standing attacks on obviousness and non-infringement. As it was, those arguments were rejected, and this actions represents a rare example of a telecoms patent which has been held to be both valid and essential (here, to both UMTS and LTE).

Accord Healthcare Ltd v Medac Gesellschaft fur Klinische Spezialpraparate GmbH
[2016] EWHC 24 (Pat); [2016] R.P.C. 17

This core of this action involved the then evolving intersection between obviousness, insufficiency and plausibility, whilst also containing important analyses of the right approach to allegations of obviousness over the common general knowledge.

Unwired Planet International Ltd v Huawei Technologies Co Ltd [2015] EWHC 3366 (Pat); [2016] Bus. L.R. 435

The first of the high profile Unwired Planet trials, this extremely heavy case concerned developments in polling in 4G telecommunication networks. The technically complicated action also acutely raised an interesting point of law as to how one should assess whether a document was filed on the ‘same day’ as a patent application or not for the purposes of considering the availability of that document as prior art. Unwired Planet were successful on all fronts.

Teva UK Ltd v Boehringer Ingelheim Pharma GMBH & Co KG [2015] EWHC 2963; and [2016] EWCA Civ 1296; [2017] 4 All E.R. 976; [2017] F.S.R. 29

This was a bitterly fought action in which Boehringer adduced expert evidence from no less than four technical expert witnesses to try to maintain their monopoly over the formulation for their blockbuster inhaled tiotropium product. Having lost at trial and had permission to appeal refused, Boehringer pursued seeking permission from the Court of Appeal to an oral hearing at which Teva persuaded the Court to set aside the previous guidance from Pozzoli and to restate the hurdle for permission to appeal at a much more rigorous level. As a result permission was refused, and the market cleared for Teva’s product.

Teva v Leo [2015] EWCA Civ 779; [2016] R.P.C. 5; (2015) 146 B.M.L.R. 150

This appeal has been described as one of the most important judgements of the Court of Appeal for the pharmaceutical industry in recent times, and concerned the question of obviousness in empirical fields. Is it enough that it is obvious to test a particular compound to find out if it works, or does it have to be obvious in advance what the results of that testing will be? The first instance Judge, Birss J, had held that the former was enough and had revoked Leo’s patent. The Court of Appeal, however, said that this was the wrong approach, and overturned the decision applying the latter approach. This substantially changes the applicable approach in law and would appear to significantly lower the hurdle necessary to show inventiveness in the pharmaceutical industry.

Hospira v. Genentech 3 [2015] EWHC 1796; [2016] RPC 1 

This was the final first instance trial in the Herceptin litigation, and concerned Genentech’s patent to a combination regimen of Herceptin and a taxoid such a Paclitaxel. The questions of novelty and inventive step raised complex and difficult questions of the construction of, and approach to, medical use claims. The patent was revoked, but the Judge gave permission to have the matter reviewed by the Court of Appeal.

Novartis v Focus Pharmaceuticals [2015] EWHC 1068

The main issues of law arising in this complex pharmaceutical action were that of added matter (and in particular the complexities arising out of the Acme Signs line of cases), and questions of partial priority and poisonous divisionals as are currently being considered by the Enlarged Board of the EPO. Mark’s client was successful in revoking Novartis’ patent for its rivastigmine Excellon patch product, for added matter and lack of inventive step.
 
Hospira v. Genentech 1 [2015] EWCA Civ 57

This was the appeal in the first of the Herceptin cases, and concerned an examination of errors in the Judge’s approach to the question of obviousness, in particular in the evolving area of obviousness arising out of computerised predictions / mathematical models rather than concrete science results.

Other significant patent decisions:

  • Hospira v. Genentech 2 [2014] EWHC 3857 (Pat)
  • Teva v. Leo [2014] EWHC 3096 (Pat)
  • Hospira v. Genentech [2014] EWHC 1094 (Pat)
  • Resolution Chemicals Ltd v H Lundbeck A/S [2013] EWCA Civ 924
  • Merck Sharp Dohme Corp v Teva Pharma BV [2013] EWHC 1958 (Pat)
  • Resolution Chemicals Ltd v H Lundbeck A/S [2013] EWHC 739 (Pat)
  • Regeneron Pharmaceuticals v Genentech [2013] EWCA Civ 93 [2013] RPC 28
  • Eli Lilly v. HGS [2012] EWHC 2290 (Pat)
  • MSD v. Teva [2012] EWHC 627 (Pat), [2012] FSR 24
  • Regeneron Pharmaceuticals v Genentech [2012] EWHC 657 (Pat)
  • Teva v. Astra Zeneca [2012] EWHC 627 (Pat)
  • Convatec v. Smith & Nephew [2012] EWCA Civ 520
  • Nokia GmbH v IPCom GmbH [2012] EWHC 225 (Pat)
  • Convatec Ltd v Smith & Nephew and ors. ([2011] EWHC 2039 (Pat))
  • Ranbaxy (UK) Ltd v Astrazeneca AB ([2011] EWHC 1831 (Pat); [2011] F.S.R. 45)
  • Grimme Landmaschinenfabrik Gmbh & Co. KG v Derek Scott (T/A Scotts Potato Machinery) ([2010] EWCA Civ 1110; [2011] F.S.R. 7)
  • Actavis v Novartis ([2010] EWCA Civ 82; [2010] F.S.R. 18)
  • Kerr v. Lawrence Shaw ([2010] EWHC 585 (Ch), [2010] F.S.R. 19)
  • ratiopharm GmbH & Sandoz Limited v Napp ([2009] EWCA Civ 252, [2009] RPC 18)
  • Novartis AG v Dexcel-Pharma Ltd ([2009] EWHC 336 (Pat) 1)
  • Generics (UK) Ltd & Arrow Generics Limited v H. Lundbeck A/S ([2009] UK HoL 12, [2009] RPC 13)
  • ratiopharm v Alza ([2009] EWHC 213 (Pat))
  • Actavis v Novartis ([2009] EWHC 41 (Pat))
  • Interdigital v Nokia
  • Novartis AG v Dexcel-Pharma Ltd ([2008] EWHC 1266 (Pat); [2008] F.S.R. 31)
  • Generics (UK) Ltd & Arrow Generics Limited v H. Lundbeck A/S ([2008] EWCA Civ 311, [2008] RPC 19)
  • Arrow Generics Limited v Merck & Co Inc ([2007] EWHC Pat 1900, [2007] FSR 39)
  • Generics (UK) Ltd & Arrow Generics Limited v H. Lundbeck A/S ([2007] EWHC 1040 (PAT), [2007] RPC 32)
  • Ranbaxy UK Ltd & Arrow Generics Limited v Warner-Lambert Company[2 ([2006] EWCA Civ 876,007] RPC 4)
  • Limited v Akzo Nobel ([2006] EWHC 1089, [2007] RPC 3)
  • Ranbaxy UK Ltd & Arrow Generics Limited v Warner-Lambert Company ([2005] EWHC 2142, [2006] FSR 14)
  • Arrow Generics Ltd v Glaxo Group Limited ([2004] EWHC 477, [2004] RPC 43)
     

 

Copyright and Design Rights

Mark's practice covers technically complex copyright actions as in the case of Cray Valley Ltd v Deltech Ltd, technical software / source code disputes such as Sport Universal S.A. v Prozone Holdings Limited and media cases concerning allegations relating to various well known pop songs.

Copyright

Football Dataco Ltd v Smoot Enterprises Ltd ([2011] EWHC 973 (Ch); [2011] 1 W.L.R. 1978; [2011] F.S.R. 25

This was an interesting case which raised the question of the availability of judgment in default where, in a parallel action against different defendants, the question of the subsistence of the right relied upon had been referred to the Court of Justice. The Court was initially hesitant about allowing the application to proceed, but was ultimately persuaded that this was the appropriate path to follow, and judgment was granted.

A v.B

This was a claim for misuse of highly private personal information relating to a well known celebrity.

E v. B. & Ors

This action concerned a claim that a substantial number 1 hit was based upon, and infringed the copyright in, a song written by E. The action was strongly contested by the record labels, and proceeded close to trial, when it settled on confidential terms.

Celebrity Pictures v. Dolman

This case involved a substantial number of ex-parte 3rd party disclosure orders, followed by search orders in order to track down the party responsible for hacking into, and circulating on the internet, exclusive photos from the claimant photographic library. Ultimately the culprit was identified, and judgement obtained to prevent any further such activities.

Sport Universal S.A. v Prozone Holdings Limited

This concerned a computer program which monitored and analysed the movement of players over a football pitch. The claim was for infringement of copyright, as well as touching upon breach of confidence, breach of contract and passing off. It started with an Anton Piller order, and was brought against the Claimant’s ex-head programmer and his new employer. The case was technically very complex and involved a detailed analysis of the structure and content of hundreds of lines of C++ code. It settled shortly before trial.

Cray Valley Ltd v Deltech Ltd ([2003] EWHC 728)

This was a claim for breach of confidence, infringement of copyright and other related causes of action brought against the exemployees of a third party from whom the Claimant had bought information relating to the formulation and manufacture of alkyd and polyester resins. The trial concentrated on the value of the information, steps taken to preserve its confidentiality and on its use by ex-employees who were largely unable to remember it save by reference to the ex-employer’s documents. 

Roche v SHAC

An ex-parte injunction to prevent the Defendant (an animal rights activists umbrella organisation) from publishing on the internet certain confidential and copyrighted documents relating to inter alia the personal details of the Claimant’s staff.

Design Rights

D. Jacobsen & Sons v. Crocs Inc [2014] EWHC 987 (Ch)

This was an interesting application by the defendant pursuant to Art 91 of the Community Designs Regulation for a stay of the proceedings pending an ongoing invalidity action in OHIM. The claim was one in threats relating to letters written in 2005, which had been subject to a previous voluntary stay pending different, earlier OHIM invalidity proceedings. The history of the proceedings were complex, and raised difficult issues concerning the scope of the stay provisions, and ECHR Art 6 aspects, although ultimately the Court decided the matter on much narrower grounds.
 

Grimme Landmaschinenfabrik Gmbh & Co. KG v Derek Scott (T/A Scotts Potato Machinery) ([2009] EWHC 2691 (Pat), [2010] FSR 11)

This claim concerned the infringement of unregistered design rights in the parts of a mechanical potato harvesting machine. The claim traversed all of the usual issues, such as subsistence, commonplace, must fit, must match, and infringement. The Claimant was successful in virtually all of it's claims.

Elite Angling v RAGS ([2007] FSR 10)

This was a claim for infringement of unregistered UK and Community Design rights in the Patents County Court. The trial eventually lasted three weeks, traversing all of the issues of originality, commonplace, ‘new’ and ‘individual character’ and independent design in the context of specialist carp fishing tackle. The Defendant raised an interesting argument as to whether an article can be commonplace if made by a known, but very rarely used, technique, as well as presenting the Court with questions of how to approach a claim to design rights in a highly flexible article. The Claimant was successful on most of the legal points, but failed on the issue of copying.

Spiralstem Ltd v Marks & Spencer, Superframe Group PLC (25 February 2005)

This was an inquiry into damages following on from an admission on liability in an action for design right infringement. The Claimant advanced a total claim for £2.1M in relation to the core claim and a very broad range of ‘convoyed’ goods and services. Argument involved detailed analyses of the proper construction of the Allied Maples test, as well as the notional background against which damages for infringement of IP rights are to be assessed. In the event the Claimant was awarded only about a third of the damages claimed.

Trade Marks and Passing Off

Mark frequently acts in breach of confidence, trade mark and passing off disputes, often involving SMEs. He was instructed alone in the Court of Appeal in a passing off claim between local undertakers - Newman v Adlem - which involved the much discussed issue of the so called "own name defence", as well as fundamental questions concerning the proprietary nature of goodwill.

Allergan - BOTOX®.

Mark has worked on a number of cases for Allergan concerning its famous BOTOX® product. Given its allure, the reputation of this brand is frequently abused by third parties, leading to litigation in the High Court, UK IPO and OHIM, and subsequent appeals. These cases have varied from modest oppositions, to hugely fact heavy litigation.

I. N. Newman Ltd v Adlem (CoA)) ([2005] EWCA Civ 1741, [2006] FSR 16)

This was a bitterly fought claim, concerning the sale and ownership of a business name. The case, and appeal, raised a number of interesting legal points in relation to the assignability of goodwill, the distinction between goodwill and personal reputation, and the so called ‘own-name’ defence. The Claimant was successful on all of its claims, and was awarded all of its costs, the vast majority on the indemnity basis.

I. N. Newman Ltd v Adlem ([2004] EWHC 1563 (Ch))

This was the first instance hearing on the case mentioned above – although in the end the judgment turned on a decision on the facts as to joint ownership of goodwill, and the judge did not need to find in relation to the more difficult legal points relating to assignments of goodwill and the ‘own-name’ defence.
 

Media and Confidential Information

Mark has a growing practice in relation to media privacy and technical breach of confidence actions, the latter often shading over into copyright matters. He has acted for various celebrities in
relation to threatened and actual misuses of private information, and been involved in cases which have required the seeking of appropriate ex parte relief to track down infringers and to nip the actions in the bud.

Convatec Ltd v Smith & Nephew and ors.

This was a very substantial action brought by the claimants to try to keep the defendants’ Durafiber® gelling wound dressing product off the market. The action commenced with an interim injunction based upon allegations of misuse of confidential information (by an ex-employee of the claimants, now employed by one of the defendants), and the infringement of two patents. A third patent action was later added. The breach of confidence aspect involved the detailed analysis of the entire research program underpinning the development of Durafiber, together with an in depth consideration of the allegedly confidential information relied upon. Ultimately the entirety of the breach of confidence action had to be abandoned by the claimants shortly before trial.

Additionally , shortly before trial two of the remaining three patent cases were also abandoned. The decision on the remaining patent action, in which Mark’s clients were also successful, is reported as Convatec Ltd v Smith & Nephew and Ors. [2011] EWHC 2039 (Pat).

A. v. B.

This was a claim for misuse of highly private personal information relating to a well known celebrity.

E v. B. & Ors

This action concerned a claim that a substantial number 1 hit was based upon, and infringed the copyright in, a song written by E. The action was strongly contested by the record labels, and proceeded close to trial, when it settled on confidential terms. 

Celebrity Pictures v. Dolman

This case involved a substantial number of ex-parte 3rd party disclosure orders, followed by search orders in order to track down the party responsible for hacking into, and circulating on the internet, exclusive photos from the claimant photographic library. Ultimately the culprit was identified, and judgement obtained to prevent any further such activities.

Sport Universal S.A. v Prozone Holdings Limited

This concerned a computer program which monitored and analysed the movement of players over a football pitch. The claim was for infringement of copyright, as well as touching upon breach of confidence, breach of contract and passing off. It started with an Anton Piller order, and was brought against the Claimant’s ex-head programmer and his new employer. The case was technically very complex and involved a detailed analysis of the structure and content of hundreds of lines of C++ code. It settled shortly before trial.

Cray Valley Ltd v Deltech Ltd ([2003] EWHC 728)

This was a claim for breach of confidence, infringement of copyright and other related causes of  ction brought against the exemployees of a third party from whom the Claimant had bought information relating to the formulation and manufacture of alkyd and polyester resins. The trial concentrated on the value of the information, steps taken to preserve its confidentiality and on its
use by ex-employees who were largely unable to remember it save by reference to the ex-employer’s documents.

Roche v SHAC

An ex-parte injunction to prevent the Defendant (an animal rights activists umbrella organisation)
from publishing on the internet certain confidential and copyrighted documents relating to inter alia the personal details of the Claimant’s staff.

Additional Information

Education Awards

1994 - 97: Clare College, Cambridge BA Natural Sciences (Zoology) (Double First)
Hurst Prize for Zoology
1997 - 98: The College of Law, York (CPE) The Hammond Suddards’ Prize for Land Law
1998 - 99: Inns of Court School of Law, Bar Vocational Course Bar Prize from the Worshipful Company of Arbitrators.

 

Publications

Bullen, Leake & Jacob's Precedents of Pleadings (15th to 17th editions) Exhaustion of Rights and Wrongs.

‘Exhaustion of Rights and Wrongs: section 92 of the Trade Marks Act 1994’ [2003] EIPR 388.

‘A Community Patent Court at last?’ Commercial Lawyer, June 2003

‘Examining the Evidence’ Legal Week, July 2001

The Hedgehog and The Fox, a Substantial Part of the law of Copyright? [2001] EIPR 259

 

Seminars and Lectures

Mark’s numerous lectures and seminars have included:

  • New provisions on experimental use
  • The Amgen decision
  • EU design rights
  • Database rights
  • The Biotechnology Directive
  • Pharmaceutical patents
  • ISP Liability/E-Commerce Directive
  • Internet copyright/consumer contracts
  • Trade mark law

 

Professional Memberships

AIPPI, Intellectual Property Bar Association (IPBA) and Chancery Bar Association.

 

Interests

In an earlier life Mark was a keen sportsman, fencing at a national level, coming 2nd as an U20 epeeist, and once squeaking into the top 8 in the national championships. He was also a committed modern pentathlete, obtaining his Blue at Cambridge. Now, however, his exercise is mostly limited to carrying boxes of papers, an occasional run home from chambers and kicking a ball around with his three much loved children. He also remains involved in modern pentathlon, through a charity set up by Mark and two of his team mates (now with 200 supporters) to raise funds for, and generally assist with, the Cambridge University club. Mark also loves to travel, good food and music (mostly of the type with irritating repetitive beeps).

Recent Activity

» Fujifilm Kyowa Kirin Biologics Company v Abbvie Biotechnology and Others
» Fujifilm Kyowa Kirin Biologics Co. Limited v Abbvie Biotechnology Limited and Abbvie Limited [2017] EWCA Civ 1
» Fujifilm Kyowa Kirin Biologics Co. and Samsung Bioepis UK (2) Biogen IDEC -and- v AbbVie Biotechnology Ltd [2016] EWHC 3383 (Ch)
» Novartis AG v Focus Pharmaceuticals UK Ltd
» Teva UK LTD v Boehringer Ingelheim Pharma GMBH & Co KG [2016] EWCA Civ 1296
» Hospira UK LTD v Genentech INC [2016] EWCA Civ 1185
» Unwired Planet International Ltd v Huawei Technologies Ltd, Samsung Electronics Co Ltd and others [2016] EWHC 576 (Pat)
» Accord v Medac [2016] EWHC 24 (Pat)
» Unwired Planet v Huawei and Samsung [2015] EWHC 3366 (Pat)
» Hospira UK Limited v Genentech Inc [2015] EWHC 1796 (Pat)
» Novartis AG & Ors v Focus Pharmaceuticals Ltd & Ors [2015] EWHC 1068 (Pat) (27 April 2015)
» Hospira (UK) Ltd v Genentech, Inc [2015] EWCA Civ 57
» Hospira UK Ltd v Genentech Inc [2014] EWHC 3857 (Pat)
» Teva UK Ltd & Anor v Leo Pharma A/s [2014] EWHC 3096 (Pat)
» Hospira v Genentech [2014] EWHC 1094 (Pat)
» D. Jacobsen & Sons v Crocs Inc [2014] EWHC 987 (Ch)
» Resolution Chemicals v H Lundbeck A/S [2013] EWCA Civ 924
» Resolution Chemicals v H. Lundbeck A/S [2013] EWHC 739 (Pat)
» Regeneron Pharmaceuticals Inc and Bayer Pharma AG v Genentech Inc [2013] EWCA Civ 93

What the Directories Say

"He is really great with clients and is very solid, commercial and creative." "He is enormously bright and diligent, with a keen focus on client demands"
Chambers Directory (Intellectual Property) 2017

"He is highly rated and gives excellent advice."
Legal 500 (Intellectual Property) 2017

"He always makes time for the clients"
Legal 500 (Intellectual Property) 2016

"He's extremely busy and sought after by major pharmaceutical and technology companies." "A creative lateral thinker who approaches every case with huge commitment and enthusiasm"
Chambers Directory (Intellectual Property) 2016

"A very impressive and highly recommended senior junior, who adds gravitas"
Legal 500 (Intellectual Property) 2015

"Enormously bright and diligent, with a keen focus on client demands"
Chambers Directory (Intellectual Property) 2015

 

 

  • What the Directories Say
  • "He is really great with clients and is very solid, commercial and creative." "He is enormously bright and diligent, with a keen focus on client demands"
    Chambers Directory (Intellectual Property) 2017

    "He is highly rated and gives excellent advice."
    Legal 500 (Intellectual Property) 2017

    "He always makes time for the clients"
    Legal 500 (Intellectual Property) 2016

    "He's extremely busy and sought after by major pharmaceutical and technology companies." "A creative lateral thinker who approaches every case with huge commitment and enthusiasm"
    Chambers Directory (Intellectual Property) 2016

    "A very impressive and highly recommended senior junior, who adds gravitas"
    Legal 500 (Intellectual Property) 2015

    "Enormously bright and diligent, with a keen focus on client demands"
    Chambers Directory (Intellectual Property) 2015