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Mark Platts-Mills QC

 


Year of call: 1975
Year of silk: 1995

After reading engineering and economics at Balliol College, Oxford, Mark Platts-Mills QC joined the pre-eminent patent and intellectual property set at the time, the Chambers of Mr. Thomas Blanco White at Francis Taylor Building. He has since specialised in all aspects of intellectual property including patents, trade marks, passing off, registered designs, copyright, design right, technical trade secrets and commercial matters with a technical content. Mark was characterised as a “real fighter” in Chambers Directory 2010 and indeed, Ultraframe v Eurocell is prominent among his recent highlights as one of very few fully fought out inquiries as to damages in a patent action. He has also recently represented the applicant for revocation of a UK patent which, if upheld, would have covered the ubiquitous USB memory stick (Trek v MSystems). In other highlights, Mark appeared for the defendant in the leading database right case (British Horse Racing Board v William Hill), and for the claimant in a successful trade mark infringement trial concerning tree shaped air fresheners (Julius Samann v Tetrosyl). In addition, he successfully represented the defendant in a design rights case relating to helmets for the rescue services (Helmet Integrated Systems v Mitchell Tunnard). He is currently representing the claimants in the trade secrets case Vestergaard Frandsen v Bestnet.

Clients can expect to benefit from Mark’s long experience encompassing an extremely diverse range of cases, which has given him a lasting appetite for the most challenging of disputes.

Patents

In patent revocation proceedings concerning USB key drives (Trek Technology (Singapore) v M-Systems Flash Pioneers), Mark successfully defended M-Systems against Trek’s appeal to the Patents Court and advised the same client regarding the equivalent Trek patent in proceedings in Singapore. Elsewhere, he represented Ultraframe in one of very few fully fought out inquiries concerning damages in a patent action (Ultraframe (UK) Ltd v Eurocell Profiles Ltd and another), and the applicant for revocation of a UK patent in AlleyEnterprises Ltd v Gerkros Boilers (Tipperary) Ltd, a case that settled before trial. Further highlights include Hesco v Macafferri (bastions), Playhut v Springform (self-erecting tent structures) and Charlesworth v Relay Roads (invention to lay asphalt curbing).

Recent cases include

Kingspan Insulation Ltd v Xtratherm (2014)

Defending a claim for infringement in relation to insulation boards with counterclaim for revocation.

Brilliant Achievement SDN v Asia File Products Sdn (2012)

Advising in relation to an appeal from the decision of the High Court in Singapore in a patent action relating to the design of box files.

Trek Technology (Singapore) v M-Systems Flash Pioneers (2008) EWHC 102 (Patents Court - Kitchin J). 

Representing M-Systems with Jonathan Hill. Patent revocation proceedings in the Patent Office. The Patentee sought to amend the patent in the course of those proceedings. Successful defence of Trek’s appeal to the Patents Court. The case concerned a patent for USB key drives. The appeal also raised issues of re judicata based on foreign judgments. We have also advised the same client in respect of the equivalent Trek patent in Singapore proceedings in Singapore.

Ultraframe (UK) Ltd v Eurocell Profiles Ltd and another (2006)

Represented Ultraframe with Jessie Bowhill and Adrian Speck. This was an Inquiry as to damages in a Patent Action relating to conservatory glazing panels. One of very few fully fought out inquiries. In excess of £3m was recovered on behalf of the Claimant.

AlleyEnterprises Ltd v Gerkros Boilers (Tipperary) Ltd, (2006)

Representing, with Jonathan Hill, the Applicant for revocation of a UK Patent. The principle issues related to alleged prior use by the manufacture and sale of boilers in Ireland and whether they were in fact manufactured prior to the priority date at all. Settled before trial.

Fieldturf v Heydour Contract Services (2004)

A patent action in the Patents County Court in respect of an invention relating to artificial turf structures. In the course of the action the Claimant applied to amend its two patents. The amendment was opposed by a third party. The action settled and the amendment proceedings were directed to be heard in the Patent Office together with revocation proceedings brought by the third party.

Hesco v Macafferri 2000

A patent infringement action relating to “bastions”. Bastions are wire mesh structures which, when filled with sand or building material are used to form a structural barrier they were successfully used to hold back the sea in East Anglia and as temporary fortifications during the Gulf War. The patent was found to be valid and infringed.

Playhut v Springform 1999

A patent infringement action relating to self-erecting tent structures. Although the Defence was unsuccessful the case is going to the Court of Appeal in 2001. It is understood that the EPO may have reached a different decision to Laddie J. in respect of added matter.

Charlesworth v Relay Roads, 1999

Representing the claimant with Mike Tappin. This was a further aspect of the patent action mentioned below. Having found the patent to be partially valid and infringed Neuberger J permitted the Defendant to re-open the action in order to try an issue of alleged self prior use by the Claimant. It was alleged that the Claimant or an associated company had used a machine embodying the invention to lay asphalt curbing on the M3 Motorway some 6 months before the date of the patent and allegedly in front of an array of witnesses. The allegation was flatly denied and the Claimant had documents that appeared to refute the proposition. Sadly the Defendant failed to meet conditions imposed by the Judge and the proposed defence did not proceed.

Haberman v Jackel International

1999 A patent infringement action relating to toddlers’ training cups. The extreme success of the invention may have tipped the balance in favour of the Claimant on the issue of obviousness.

Novamedix v NDM 1997

Patent infringement and validity – Patents County Court and Court of Appeal.

Lars Norling v Eez-Away Ltd, 1997

Patent Infringement, amendment - meat de-boning machinery.

Brain v Ingledew Brown Bennison & Garret, 1997

Action for unjustified patent threats. Laddie J found in favour of the Claimant albeit doubting whether much in the way of damages would result.

Michael Ladney v Cinpres Ltd, 1997

The first round of this ongoing dispute. Patent proprietorship - blow moulding process - Court of Appeal. The Court of Appeal reinstated the Patent Office decision in favour of Mr. Ladney which Laddie J had overturned.

  • What the Directories Say
  • "He is phenomenal at cross-examination; equally charming and ruthless in his line of questioning."
    Legal 500 (Intellectual Property) 2017

    "Adept in all areas of IP"
    Legal 500 (Intellectual Property) 2016

    "Formidable in court"
    Chambers & Partners (Intellectual Property) 2016

    "Recommended for all aspects of IP law."
    Legal 500 (Intellectual Property) 2015

    " Head of chambers, he brings an impressive amount of experience to cases." " Highly versatile and a good street fighter"
    Chambers & Partners (Intellectual Property) 2015