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Mark Chacksfield

 


Year of call: 1999

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.

 

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.

  • 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