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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

 

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology (CoA 29-30 November 2016)


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. Judgment is awaited.

Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology [2016] EWHC 2204 (Pat)


This was the second of the jurisdictional disputes in the Humira litigation. This two day dispute was primarily over whether the Court had 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


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


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).

 

Teva v Leo [2015] EWCA Civ 779


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


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.

Hospira v. Genentech 2  [2014] EWHC 3857 (Pat)

This was the second of the Herceptin trials, here concerning a lyophilised formulation of Herceptin incorporating, amongst other excipients, trehalose. The action focussed on questions of obviousness on the 'obvious to try' basis, and the decision is particularly important for its exposition of the role and status of 'product by process' claims under UK and EPO jurisprudence. The decision is currently under appeal.

Teva v. Leo [2014] EWHC 3096 (Pat)

This was a claim to revoke two of Leo’s formulation patents for its combination betamethasone diproprionate/calcipotriol ointment, used for the treatment of psoriasis, which were defended on the basis of both clinical prejudice and formulation grounds. Mark’s client, Teva, was successful and both patents were revoked in their entirety.

Hospira v. Genentech [2014] EWHC 1094 (Pat)

In this heavy biotech action Hospira sought to revoke three of Genentech’s patents relating to the blockbuster Herceptin monoclonal antibody product, as well as seeking a declaration of non-infringement. The patents related to issues of product purity and dosage regimens, with technical evidence being given by six experts, and particularly focussed on issues of novelty, obviousness and priority.

Resolution Chemicals Ltd v H Lundbeck A/S [2013] EWCA Civ 924

This was the appeal of Arnold J’s decision that Resolution was not precluded from challenging the validity of H Lundbeck’s SPC for its escitalopram product. On appeal H Lundbeck sought to argue that the Judge’s approach to the question of whether Resolution’s former relationship as a sister company to Arrow Generics (a company which had previously sought to revoke the basic patent relating to escitalopram) barred its claim in this action was flawed. The appeal was dismissed, and the matter allowed to proceed towards a substantive trial.

Merck Sharp Dohme Corp v Teva Pharma BV [2013] EWHC 1958 (Pat)

This trial turned on the question as to whether the defendant, Teva, had threatened and intended to infringe a patent or SPC owned by MSD covering its efavirenz product. Unusually the issues of validity and infringement (were the product to be imported into the UK) were not contested in this jurisdiction, and the only issue was one of Teva’s intentions. The judge at first instance held on the evidence in favour of MSD.

Resolution Chemicals Ltd v H Lundbeck A/S [2013] EWHC 739 (Pat)

The question raised by this preliminary issue in a claim to revoke the SPC for H Lundbeck’s blockbuster escitalopram product was whether Resolution was precluded from bringing the claim at all by reason of an earlier action brought by inter alia Arrow Generics and companies within the Teva group to revoke the basic patent to which the SPC related. Resolution was at the time of that earlier action a sister company to Arrow Generics, and now having been divested from the Arrow group it was proposing to obtain its supply from a company within the Teva group. Lundbeck alleged that by reason of either or both of these facts, Resolution was now precluded by cause of action estoppel, issue estoppel or abuse of process from contesting the validity of the SPC. Having reviewed the law and facts in some detail, the Court found in favour of Resolution and concluded that there was no impediment on it bringing its claim on either basis.

Regeneron Pharmaceuticals v Genentech [2013] EWCA Civ 93 [2013] RPC 28

This was an appeal of the fist instance decision in this heavy biotech patent action, which concerned the validity of patents relating to Genentech’s Lucentis® product, and their alleged infringement by Regeneron’s VEGF-Trap-Eye®. The action raised issues across the range of novelty, obviousness and insufficiency.

Eli Lilly v. HGS [2012] EWHC 2290 (Pat)

This case concerns the SPC aspects of the Neutrokine-α battles between Lilly and HGS. Lilly issued this action seeking declaratory relief that any SPC applied for by HGS based upon a particular HGS patent would be invalid, founding its arguments upon (a) the decision of the CoJ in Medeva and (b) the fact that (it says) Lilly is entirely independent of the patentee and so no SPC could issue. Lilly sought immediate references to the CoJ of questions on these points. This was successfully resisted by Mark’s client, HGS, with the Judge agreeing that no reference should be made until a full trial has taken place.

MSD v. Teva [2012] EWHC 627 (Pat), [2012] FSR 24

What constitutes a threat to infringe a patent? Is the mere receipt of a marketing authorisation enough? Those were the questions raised by this matter. MSD is the owner of a patent and an SPC relating to Efavirenz, an anti-AIDS drug. Upon the receipt of an MA by Mark’s client, Teva, MSD wrote requesting confirmation of Teva’s commercial position and for undertakings to be provided. Teva refused to answer these questions, since the information as to its future commercial plans was highly confidential. MSD subsequently sought an interim injunction, and Teva cross-applied to strike out the claim on the basis that there was no threat to infringe the patent. The arguments traversed the policies behind the Bolar provisions, patent linkage and the case law of the UK and numerous other European jurisdictions. Ultimately the Judge held against Teva, although reserving costs until the trial. The matter is now proceeding towards a final hearing.

Regeneron Pharmaceuticals v Genentech [2012] EWHC 657 (Pat)

This was a heavy biotech patent action concerning therapies directed towards the growth factor VEGF for use in non-cancerous conditions, and in particular wet age related macular degeneration (VEGF Trap-Eye® and Lucentis®). The argument covered difficult aspects of novelty, obviousness and insufficiency, raising fundamental questions of the research needed to found a valid patent in the biotech field.

Teva v. Astra Zeneca [2012] EWHC 627 (Pat)

The subject matter of this case was AstraZeneca’s Seroquel XL® product, a long release version of the anti-psychotic drug quetiapine. The case principally turned on issues of obviousness. The Judge held the patent to be invalid, but granted permission to appeal.

Convatec v. Smith & Nephew [2012] EWCA Civ 520

This was the appeal of the validity and infringement of a wound dressing patent owned by Convatec. The appeal was dismissed, leaving Mark’s clients free to commercialise their own wound dressing product and to recover on the cross undertaking under the interim injunction to which they had been subject at first instance.

Nokia GmbH v IPCom GmbH [2012] EWHC 225 (Pat)

This was another battle in the dispute between Nokia and IPCom, a patent licensing firm. This claim focussed on the field of the handover of mobile connections between base stations, and raised issues of the validity and essentiality of the claimed technology to aspects of the GSM, UMTS and LTE standards. In addition a cascade of proposed amended claims were advanced by IPCom, raising additional issues of support, clarity and added matter. Ultimately at trial the Court found in Nokia’s favour, holding the claims as granted and main request invalid for lack of novelty and obviousness, and both of the auxiliary requests bad for adding matter.

Other patent cases:

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