James St.Ville KC

• Experience

  Patents & SPCs

  James has substantial experience in patent infringement, validity, licencing and entitlement actions including being led and leading the litigation team.  He has appeared in High Court, IPEC, EPO and UKIPO proceedings.  Recent cases include:

  • Hand Held Products Inc v Zebra Technologies Europe Ltd [2022] BCC 905 [2022] FSR 26: multi-patent infringement action concerning 2D and 3D bar code scanning. Service of claim form at alleged place of business in UK after Zebra called for service under CPR 7.7(1) and applied to dismiss the claim under CPR7.7(3).  Application rejected and directions given for inter-partes determination of permission to serve out of the jurisdiction.
  • Cabo Concepts Ltd v MGA Entertainment (UK) Ltd [2021] FSR 29: alleged abuse of a dominant position, anticompetitive agreements and threats of patent infringement proceedings said to be justified or excused by purported cross claim in passing off.
  • Shenzen Carku Technology Co Ltd v Noco Co [2021] EWHC 1513 (Pat): Patent infringement and validity claim successfully stayed pending the outcome of proceedings between the patentee and another company concerning the same patent, products and prior art, on the basis undertaking to abide by the findings of liability and validity.
  • TQ Delta v ZyXEL [2020] FSR 10 (CA): appeal about the effect on a patentee’s right to a RAND declaration of an infringer’s waiver of its right to enforce RAND obligations after a standards essential patent (SEP) had been held valid and infringed, and, the consequences of the absence of international standards for determination of whether an infringer is a willing licensee of SEPs.
  • Janger v Tesco [2020] EWHC 3450: Patent action about retail hangers for jeans and confidentiality of alleged prior disclosure.
  • Ludlow v University of Ulster [2020]: action in the High Court of Northern Ireland concerning contractual obligations under University IP Policy upon exploitation of patented innovations concerning extended lip skins for aircraft nacelles.
  • Permavent Ltd v Makin [2020]: claim brought under a Tomlin Order concerning whether entry of a notice on the register of patents was made in breach of a patent assignment and settlement agreement.
  • Prosyscor v Netsweeper [2019] EWHC 1302: entitlement and breach of confidence action regarding distributed internet authentication systems.
  • Keylite v VKR Holdings [2018]: represented Keylite at oral opposition proceedings at the EPO concerning Velux roof windows including arguments about reliance on written and oral expert evidence and analysis of physical samples.
  • Marks & Spencer v Asda Stores [2017] FSR 11: a patent and unregistered design action relating to expandable shirt cuffs which sets out principles which court applies to costs management in patent actions.
  • Epoch v Character Options [2017] FSR 42: a patent action about rhombic triacontahedral water soluble beads for use in children’s toys which deals with infringement, validity and un-patentable aesthetic creations.
  • Positec v Husqvarna [2016] Bus LR 714 [2016] FSR 29: action for declarations on non-infringement and invalidity concerning robotic lawn mowers, establishes modern principles applicable to disclosure in patent actions.
  • Angus Fire v Cold Cut Systems [2016]: Patent action concerning high pressure water ‘cutting extinguishers’ used by emergency services.
  • VPG Systems v Air-Weigh Europe [2016] FSR4: trial concerning infringement and invalidity of a patent for on-board vehicle weighing systems.
  • Jackson-Ebben v Wine Innovations [2014]: Trial of patent entitlement dispute in UKIPO concerning single serve pre-filled wine glasses.
  • First Subsea v Balltec [2014] EWHC 866: six week trial including patent entitlement action as result of alleged breaches of fiduciary duty in relation to deep-sea mooring equipment and pipeline recovery tools – led by David Cavender QC.

  Trade marks & Brands

  James’s practice encompasses trade mark infringement actions, parallel imports, passing off, proceedings in the High Court, IPEC, UKIPO and the General Court of the EU.  His recent cases have included:

  • ICE Trade Mark – Industrial Cleaning Equipment (Southampton) v Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWHC 411 (IPEC): Trial of passing off, trade mark infringement and trade mark invalidity claims, cross claims and defence of statutory acquiescence.  Subject of ongoing appeal.  
  • Engineer.ai Global Limited v Appy Pie Limited and Appy Pie LLP [2022]: Successful ex-parte on notice application for anti-anti-suit injunction to restrain application for anti-suit injunction in India in proceedings regarding Google AdWords advertising.
  • Greencastle MM LLP v Payne [2022] EWHC 438 (Ch): Complex passing off action against a departing team of celebrity presenters, Alex Payne, Mike Tindall and James Haskell, from the high profile ‘House of Rugby’ podcast.
  • Cabo Concepts Ltd v MGA Entertainment (UK) Ltd [2021] FSR 29: alleged abuse of a dominant position, anticompetitive agreements and threats of patent infringement proceedings said to be justified or excused by purported cross claim in passing off.
  • Procter & Gamble v J and S Brands [2019]: Trade mark infringement action about counterfeit Gillette Mach 3 razor blades.
  • Fox Group v Teleta Pharma [2019]: Trade mark claim about parallel imports of cosmetic skin treatment injection kits.
  • BSS Group v Perry Street Software [2018-2019]: Infringement and invalidity action about merchandising associated with the well known SCRUFF dating app for the global gay community. Attempt to prevent merchandising by owner of trade mark SCRUFFS for work-wear.
  • Discovery Yachts v Sunchalk and Northshore Shipyard [2018]:  Trade mark, passing off and breach of contract claim resulting from sale of premium yacht business and associated brand.
  • Maclay Murray & Spens v Sheriff [2017]: Trade mark infringement and passing off dispute between solicitors.
  • Smoothfield v Smithfield Fods [2017]: Trade mark infringement dispute concerning device mark Smoothfield and alleged infringement by confusion and swamping by Smithfield, appearing against Simon Malynicz QC.
  • Aljadeed v Fadaat Media [2017]:  High Court trade mark action about the Arabic trade mark ‘Aljdeed’ (‘new’) in Roman and Arabic script for newspapers, television and online publications, against Mark Vanhegan QC.
  • Procter and Gamble v Star Global [2016] EWHC 734 (Ch): summary judgment application concerning luxury branded fragrances with tracking codes removed which deals with burden of proof in parallel import cases and application of BMS conditions to decoded fragrances.
  • NOCN v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC): trade mark and passing off trial – right to use terms OCN and Open College Network for adult education accreditation – ownership of goodwill – shared goodwill – descriptive marks – bad faith.
  • Hospital Metalcraft v Optimus British Hospital Metalcraft [2015] EWHC 3093: interim injunction to restrain use of long standing business name (which was wrongly alleged to be descriptive) and newly coined acronym ‘OPTIMUS-BHM’ based on the claimant’s long standing name.
  • Medichem v Hillpart [2015]: cancellation proceedings in the EU IPO (formerly OHIM) in relation to the trade mark ‘I ♥ MAKEUP’ (containing the heart ideograph verbalized as ‘I love makeup’) for cosmetic kits, perfumes and products sold alongside them.
  • Devonshire Pine v Day [2013] EWHC 2619: against Michael Edenborough QC, alleged reverse passing off and breach of e-commerce regulations in relation to pine furniture products and brochures and web sites advertising them.

  Copyright & Databases

  James deals with copyright and database cases involving computer software, engineering products and systems, banking systems, literary works, screen plays, stage works, choreography and pop-songs.  Recent examples include:

  • Centek Holdings Ltd v Giles [2020] EWHC 1682: acting for claimant in claim for breach of confidence, infringement of copyright and breach of restrictive covenants.  Defendant committed to prison for 14 months.
  • Sheeran v Chokri [2018]: action concerning alleged infringement of copyright in Sammy Switch’s track ‘Oh Why’ by the Ed Sheeran single ‘Shape of You’.
  • Spin Master v Character Options [2015]: copyright, registered design, community unregistered design right, and passing off claim relating to an extremely successful and well known flying toy.
  • Glendimplex v Poundstretcher [2014]: copyright, design right and patent action concerning flame effect fires.
  • First Subsea v. Balltec [2014] EWHC 866: six week trial including alleged infringement of copyright, breach of confidence and fraud on the court in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools – led by David Cavender QC.
  • Alfa Laval v Separator Spares [2012] EWHC 1155 (Ch) and [2013] 1 WLR 1110 [2013] FSR 22 (CA): in the High Court (against John Baldwin QC) and in the Court of Appeal (led by Martin Howe QC) resisting the joinder of Polish ex-employee and company to dormant UK proceedings for breach of confidence and infringement of copyright in drawings for marine separator parts.
  • Devonshire Pine v Day [2013] EWHC 2619: alleged copyright infringement, reverse passing off and breach of e-commerce regulations in relation to brochures and web sites advertising pine furniture against Michael Edenborough QC.

  Design Rights

  James regularly deals with in Community and UK registered designs, Community unregistered designs and UK unregistered design rights.  His recent cases include:

  • Brainstorm v Green Field [2020]: claim regarding alleged breaches of umbrella supply contract and unregistered design right in commercial toys.
  • Spin Master v PMS [2017] Bus LR 1627 [2017] FSR 44: registered design case about well-known Bunchems toys.
  • Marks & Spencer v Asda Stores [2017] FSR 11: unregistered design right and patent action concerning expandable shirt cuffs.
  • Spin Master v Character Options [2015]: registered design, community unregistered design right, copyright, and passing off claim relating to extremely successful and well known flying toy.
  • First Subsea v Balltec [2014] EWHC 866: six week trial including UK unregistered design right in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools – led by David Cavender QC.
  • Glendimplex v Poundstretcher [2014]: design right, copyright and patent action concerning flame effect fires.
  • Devonshire Pine v Day [2013] – Alleged infringement of copyright, unregistered design right, reverse passing off and breach of e-commerce regulations in relation to furniture and brochures and web sites advertising them. Appeared against Michael Edenborough QC, successfully resisting application for summary judgment.

  Trade Secrets & Confidentiality

  James deals with a wide range of confidential information cases ranging from investment opportunities to patent entitlement disputes and from chemical and agrochemical formulations to engineering systems.  His recent cases have included:

  • Centek Holdings Ltd v Giles [2020] EWHC 1682: acting for claimant in a claim for breach of confidence, infringement of copyright and breach of restrictive covenants.  Defendant committed to prison for 14 months.
  • Prosyscor v Netsweeper [2019] EWHC 1302: ongoing action for breach of confidence and patent entitlement regarding distributed internet authentication systems.
  • First Subsea v Balltec [2014] EWHC 866: six week trial including alleged breach of confidence and breach of fiduciary duty in relation to 3D CAD for deep-sea mooring equipment and pipeline recovery tools – led by David Cavender QC.
  • Vibrafloor v Shepherd Construction [2014]: action for breach of confidence and breach of contract, wrongful interference with goods, conversion, patent entitlement and patent infringement concerning vibrating floor technology for large scale storage silos.
  • Alfa Laval v Separator Spares [2012] EWHC 1155 (Ch) and [2013] 1 WLR 1110 [2013] FSR 22 (CA): in the High Court (against John Baldwin QC) and in the Court of Appeal (led by Martin Howe QC) resisting the joinder of Polish ex-employee and company to dormant UK proceedings for breach of confidence and infringement of copyright in drawings for marine separator parts.
  • Allied Pressroom v Printchem [2013] EWHC 3715: breach of confidence in chemical formulations for products used in the pressroom and car care industries.

  Internet Law & Cybersecurity

  James’ internet technology, IT, computer contract and data protection cases often involve advice in relation to matters which do not come to trial or become public.  Recent cases have included:

  • Prosyscor v Netsweeper [2019] EWHC 1302: ongoing action for breach of confidence and patent entitlement regarding distributed internet authentication systems.
  • Software delivery up, hard drive imaging and hacker tracking orders and IT contract termination and transition disputes which cannot be made public.
  • Web Services Integration v Watertrace [2012] EWHC 3953: data management, enrichment and validation systems – alleged breach of software licencing and system hosting agreement accompanied by failure to allow inspection of computer systems in accordance with the contract – against James Ayliffe QC, compelled inspection of the defendant’s computer system.
  • Zodiac v Third Eye [2011]: Technology and Construction Court action about alleged fraudulent misrepresentation in relation to virtually reality systems.

  Jurisdiction & Remedies

  James has experience obtaining and dealing with search, freezing, software delivery up, evidence preservation, Norwich Pharmacal and hacker identification orders, as well as jurisdiction disputes and letters of request obtaining evidence for foreign proceedings.  Examples include:

  • Recent series of search, document preservation, hard drive imaging and freezing orders.
  • Hacker tracking and disclosure order including document preservation and Norwich Pharmacal order to trace perpetrators in multiple jurisdictions.
  • Alfa Laval v Separator Spares [2012] EWHC 1155 (Ch) and [2013] 1 WLR 1110 [2013] FSR 22 (CA): in the High Court (against John Baldwin QC) and in the Court of Appeal (led by Martin Howe QC) resisting the joinder of Polish ex-employee and company to dormant UK proceedings for breach of confidence and infringement of copyright in drawings for marine separator parts.
  • University of Salford v. KPI Zone [2012]: ex-parte order for imaging of computer systems and analysis of very substantial amounts of information.
  • ALIMTA (appeared Eli Lilly v Teva [2013] EWHC 2416: letters of request seeking evidence to invalidate US patent for pemetrexed chemotherapy drug ALIMTA (appeared against Sara Cockerill QC resisting application to set aside order for examination).

  Media, Sport & Entertainment

  James has experience of media and sport cases ranging from trade marks for the Premier League and football clubs, photographs of sports matches, claims against newspapers and copyright claims ranging from television, though ice dance shows to music.  Examples include:

  • Sheeran v Chokri [2018]: action concerning alleged infringement of copyright in Sammy Switch’s track ‘Oh Why’ by the Ed Sheeran single ‘Shape of You’.
  • Aljadeed v Fadaat Media [2017]: High Court action about Arabic trade marks ‘Aljadeed’ (‘new’) and ‘Al-Araby Aljadeed’ (‘The New Arab’) in Roman and Arabic script for newspapers, television and online publications, appearing against Mark Vanhegan QC.
  • Premier League v LCD [2009]: Action concerning football magazines – copyright in football club and Premier League badges – football club and Premier League trade marks – contracts controlling use of photographs taken at Premiership matches – alleged competition issues.
  • Premier League v Panini [2004] 1 WLR 1147, [2004] FSR 1 (CA): copyright in football club badges – football sticker albums and stickers – action shots of players – whether incidental use. Appeal to Court of Appeal.
  • Arbitration and expert determination in relation to confidential dispute concerning elite professional photography dispute.

  Arbitration & Mediation

  • Regularly represents clients at mediation in patent actions, trade mark proceedings, breach of confidence and media and sports disputes including drafting position papers and working with clients to structure and prepare make opening statements.
  • Arbitration and expert determination for instance in relation to elite professional photography dispute, including re-crafting dispute resolution procedure to avoid subsequent attacks based on allegations based on bias.
  • Sits as an examiner to receive evidence in response to letters of request from foreign courts.

  Talks & Seminars

  James regularly gives talks and seminars. Subjects he has addressed include Claim Construction and Scope of Protection for CIPA, Bristows and Mills & Reeve, invited speaker on Similarity of Designs at the 2020 Patents Court of Korea International IP Court Conference, invited speaker on Shapes, Designs, Trade Marks and Damages at the 2019 Patents Court of Korea International IP Court Conference in Seoul, Commercial Ways to Resolve Disputes at the CITMA Autumn Conference, After Actavis with Daniel Alexander QC for Mishcon de Reya, Back to the Future – The Patent Landscape after Actavis for Harrison Goddard Foote, The changing face of scope of protection for the Midlands Intellectual Property Society, Purposive Destruction for CIPA and Kilburn & Strode, Watch this space – Actavis v. Lilly for the Midlands Intellectual Property Society, European Judicial Training Network IP mock trial and Unitary Patents Court seminar in Budapest, ‘A Licence to Fill’ with Keystone Law at Kilburn & Strode, Software Copyright & Adwords for Berks, Bucks and Oxon Junior Lawyers Division, Practical Tips for Litigation for CIPA in Nottingham, Defending your  Trade Mark for the Wilkes Partnership, Data Protection after Durant at  Lawrence Graham and again (by request) at Bristows, Recent Developments in Patent Law – Interpretation & Entitlement at Simmons & Simmons, The Proposed Community Patent Court for the Commercial Lawyer, Trade Secrets for Coudert Brothers, UK and European Intellectual Property Law for Coudert Brothers, Domain Name Dispute Resolution at Humphries Kirk and The Law of Internet Security at the Internet Special Interest Group.

• Education & awards
  • MA (Cantab)
  • Chartered Engineer (CEng)
  • Member of the Institution of Engineering & Technology, MIET (prev. MIEE)
  • 1st Class Honours in Engineering (Electrical and Information Sciences)
  • Bird & Bird Award for Intellectual Property, Moot Society Prize and the Prince of Wales Award at Gray’s Inn
  • University IEE Institution Prize, Sir Joseph Larmor’s Plate, Morton Scholar and St. John’s College Prize
• Professional Memberships
  • IP Bar Association, Chancery Bar Association.
  • The Intellectual Property Lawyers’ Organisation (TIPLO).
  • Institution of Engineering and Technology (formerly IEE).
  • Called to the bar of Northern Ireland.
• Irish Qualifications

  James has been called to the Irish Bar, but is not presently on the Roll of Practising Barristers; straightforward administrative steps would need to be taken before he can accept instructions as an Irish barrister.  Please contact one of the clerks to discuss how we may assist on European work.

• Hobbies & Interests

  James is a member of the board of the Clod Ensemble dance and theatre company. He plays jazz flute and has interest in contemporary opera and theatre.

  James also sits on the board of the Clod Ensemble theatre company and chairs the board of the Alfred Fagon Awards.  He currently sits on IP Inclusive Management (IPIM), the management committee of the IP professions’ inclusivity and diversity initiative, IP Inclusive.

Contact James St.Ville KC's clerks

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