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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.

 

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)
     

 

  • 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