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Daniel Alexander KC

CALL: 1988 (England and Wales 1988, Ireland 2021*) | SILK: 2003
Daniel Alexander KC
Daniel Alexander KC is a highly-regarded advocate, focusing on IP disputes of international significance in a wide range of technologies and industries. He has been lead counsel in a number of defining cases in electronics, pharmaceuticals, biophysics and biotechnology, as well as some of the leading trade mark and media disputes. He has a broad practice, focussing on intellectual property but extending to contractual cases, IT, media/entertainment law and a range of international disputes. He is rated in the top band of silks in IP in legal directories.

Daniel also sits part-time as a judge (High Court, Chancery Division and Patents Court and as an Appointed Person). He sits as an arbitrator, including as chair, under various rules. He is also a member of the Football Association Premier League appeals panel. In his judicial/arbitral capacities he has written over 80 decisions, of which a number are reported, on IP law/procedure, competition, commercial, regulatory, real property and sports law.

  • Experience

    Patents & SPCs

    • BMS v Sandoz (2023): forthcoming appeal relating to patent for apixaban and the law of plausibility.
    • Abbott v Dexcom (2022-23): ongoing multi-patent action concerning diabetes testing devices.
    • InterDigital v Lenovo (2022-23): determination of FRAND terms of 3G,4G,5G SEP patent portfolio.
    • Honeywell v Zebra (2021-22): multi-patent action concerning optical scanning devices.
    • Teva & Anor v Bayer [2021] EWHC 2690: patent action relating to sorafenib formulation.
    • Unwired Planet v Huawei [2020] UKSC 37: leading UK case on approach to FRAND determinations.
    • Aixtron v Paragraph (2020): patent claim relating to semi-conductor manufacturing.
    • Teva UK v Gilead [2019] EWCA Civ 2272: leading SPC case relating to Truvada® – the leading recent case on Article 3(a) of the SPC Regulation in the UK and CJEU.
    • Conversant Wireless Licensing SARL v Huawei Technologies Co., Ltd & Ors [2019] EWHC 1687: telecommunication patent action concerning transmission in HSUPA.
    • Shanks v Unilever [2019] UKSC 45: leading Supreme Court case on employee compensation.
    • Koninklijke Philips NV v Asustek [2019] EWHC 3463: multiple patent and FRAND case.
    • Accord v Celgene (2018): High Court patent action relating to thalidomide analogue.
    • Silence v Alnylam (2018): High Court patent/SPC action relating to small interfering Ribonucleic Acid (siRNA) silencing products.
    • Icescape v Ice-World [2018] EWCA Civ 2219: scope of claim following UKSC in Actavis and approach to priority
    • Bose Corporation v Freebit  [2018] EWHC 889 (Pat): patent actionconcerning in-ear headphones.
    • Eli Lilly v Actavis [2017] UKSC 48: leading case in Supreme Court on scope of patent protection and doctrine of equivalents.
    • Novartis  v Focus Pharmaceuticals  [2015] EWHC 1068 (Pat) & [2016] EWCA Civ 1295: regarding patent for rivastigmine delivery systems.
    • Thoratec Europe Ltd v AIS GmbH Aachen Innovative Solutions [2016] EWHC 2637: patent action relating to cardiac pump device.
    • Numerous other patent cases before 2016, including leading major actions/appeals involving some of the world’s leading pharmaceutical products (Humira®, infliximab and Erbitux®); electronics and telecoms patents and engineering products.

    Copyright, Design Rights & Database Rights

    • Racing Point/Renault F1 dispute resolution (2020) concerning alleged design rights in F1 cars.
    • Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat): registered/unregistered design and patent case regarding endoscopy devices.
    • AETN v Channel 4 (2006): passing off case concerning use of programme title for alleged TV format.
    • Spiralstem v Superframe & M&S (2000-2006): design right in display equipment and inquiry as to damages.
    • Landor & Hawa v Azure [2006] EWCA Civ 1285: design right case concerning s.213 CDPA and interpretation of “method or principle of construction”
    • Estate of Francis Bacon v Artprints (2006) Copyright case relating to works by Francis Bacon.
    • Apple Corps v Apple Computer [2006] EWHC 996 (Ch): claim by the Beatles’ company in claim against Apple Computer in respect of breach of trade mark delimitation agreement.
    • Clearsprings  v Businesslinx [2005] EWHC 1487 (Ch): Implied terms in copyright licence.
    • IPC v Mirror [2005] EWHC 317 (Ch): fair use defence to copyright infringement and the law on comparative advertising.
    • British Horseracing Board v Cantor Index (2003) database right claim relating to horse racing information raising issues of UK and EU competition law.
    • Numerous other copyright cases as a junior counsel, including acting for UB40 in large song lyrics copyright case, band members of the Jam in dispute over rights, major Copyright Tribunal disputes (including BskyB v. PRS) over collective copyright licences and film company in dispute over copyright to well known novel.

    Trade marks & Brands

    • Montres Breguet v Samsung [2022] EWHC 1127: trade marks relating to smartwatch apps and scope of e-Commerce Directive.
    • Lifestyle Equities v Amazon [2022] EWCA Civ 552: appeal concerning use of trade marks in international internet stores.
    • Liverpool Gin Distillery v Sazerac Brands & Ors [2021] EWCA Civ 1207: trade mark concerning bourbon, now the leading case on “indirect” confusion.
    • Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd [2016] EWHC 1537 (Ch): registrability of colour and design trade marks for pharmaceutical products.
    • Maierv Asos [2014] EWHC 123 (Ch) & [2015] EWCA Civ 377: alleged infringement of trade mark and scope of “own name” defence.
    • Total v YouView [2014] EWHC 1963: media industry trade mark dispute.
    • Fage v Chobani [2013] EWHC 630 (Ch) & [2014] EWCA Civ 5: leading case on extended passing off, concerning the phrase ‘Greek yoghurt’.
    • Iliffe v HMRC [2012] UKFTT 696 (TC): leading case on assignment of unregistered marks in tax context.
    • Donvand v Altun [2010]: trade marks and passing off for online travel business.
    • Acted on several of the leading trade mark cases in the CJEU defining the scope of the Trade Marks Directive/Regulation as Comptroller’s counsel.

    Confidentiality, Data Protection, IT & Cybersecurity

    • Mitsubishi Electric Corporation v Oneplus Technology [2021] EWHC 1541: protection of confidential information in FRAND proceedings.
    • Conductive Ink-Jet Technology v Unipixel Display [2013] EWHC 2968 (Ch): confidential information and patents dispute with complex jurisdictional aspects.
    • Cranway v Playtech [2009] EWHC 1588 (Pat): patent infringement claim for on-line gaming.
    • BUAV  v Home Office [2008] UKIT EA: appeal from Information Tribunal concerning information relating to animal experiments.
    • Proceedings before Special Commissioners of income tax (2006): concerning claims to confidential information relating to formulae in context of CGT valuation.
    • SSA v Megger (2003) TCC: dispute concerning scope of copyright licence raising points of estoppel relating to financial software.
    • Oliver v Arbuthnot Latham (2001-2): acting for merchant bank defending claim for breach of confidence in proposals for a property development.
    • Surface Technology v Young  (2002): case concerning the transmission of rights of privilege and confidence in a liquidation. Acted for the defendant to proceedings on an application to determine where rights lay.
    • Optimum Solutions v Yorkshire Electricity/Eastern Electricity (2002): breach of confidence in electricity trading systems.
    • NERC v McKeown (2000-2): dispute concerning quality of a large software installation for major public research body.
    • Abraxas v Nationwide (2000-2) claim for copyright infringement in insurance industry software.
    • Ellerman v Ritz (2001-2): litigation concerning rights to use trade marks on the internet, raising issue of where use of a trade mark takes place on the internet.
    • (See also above on telecoms patents cases).

    Jurisdiction, Private International Law & Remedies

    • Nokia v Oneplus [2022] EWCA Civ 947: jurisdiction in FRAND cases
    • Conversant v Huawei [2018] EWHC 1216 (Ch): litigation concerning alleged SEPs and FRAND issues for various generations of telecoms.
    • Conductive Ink-Jet Technology v Unipixel Display [2013] EWHC 2968 (Ch): jurisdiction in confidential information and patent case.
    • GAT v Luk [2004-6]: leading ECJ case concerning jurisdiction under Article 16(4) of the Brussels Convention.
    • Celltech v Medimmune [2003] EWCA Civ 1008, [2004] EWHC 1124 (Pat) & [2004] EWHC 1522 (Pat): impact of an exclusive jurisdiction clause on forum non conveniens arguments.
    • Apple Corps v Apple Computer [2004] EWHC 768 (Ch): Rome Convention on choice of law in an intellectual property agreement.
    • British Horseracing Board v Cantor Index (2003): database right claim relating to horse racing information raising issues of UK and EU competition law.
    • Microsoft v BDL (1998): article 86 allegations of predatory pricing and trade marks/copyright.
    • IDEX v UPEK/ST (2007): litigation involving right to recover payments in respect of use of four patents in field of fingerprint identification technology involving multi-jurisdictional issue.

    Media, Sport & Entertainment

    • AETN v Channel 4 [2006]: passing off case concerning use of programme title for alleged TV format.
    • Estate of Francis Bacon v Artprints [2006]: Copyright case relating to works by Francis Bacon.
    • Apple Corps v Apple Computer [2006]: claim by the Beatles’ company in claim against Apple Computer in respect of breach of trade mark delimitation agreement.
    • See also below on arbitrations.

    Arbitration & Mediation

    • WIPO arbitration concerning rights in music industry (2021-22): member of arbitral panel.
    • ICC arbitration concerning green energy (2020-21): member of arbitral panel.
    • Ad hoc rules arbitration concerning biotechnology licence (2018-2019): counsel for biotech rights owner.
    • International arbitration at Special Chamber of ITLOS (Ghana v Cote d’Ivoire, 2015-2017): maritime boundary determination pursuant to UNCLOS. Counsel for Republic of Ghana in interim measures and merits stages.
    • Premier League panel [2010-2020] and currently member of appeals panel: several confidential disputes between players and clubs, clubs and the Premier League including in the recent published dispute between FA Premier League and Manchester City (see Manchester City Football Club Ltd v The Football Association Premier League Ltd & Ors [2021] EWCA Civ 1110). Arbitrator, including chair of panel.
    • LCIA arbitration concerning biotechnology agreement (2007-2009): counsel for biotech company.
    • ICC arbitration concerning biotechnology agreement (2007) – Appointed as member of arbitral tribunal but case settled at an early stage.
    • ICC arbitration concerning computer contract (2005) – Member of arbitral tribunal. Case settled after initial hearing.
    • ICC arbitration in Brussels concerning confidential formulations (2004-5) – Claim by US company against Belgian company and others relating to medical products. Counsel for US company.
    • ICC arbitration in Amsterdam concerning movie channel (2003-4) – Member of arbitral tribunal. Claim by UK company against Dutch company.
    • ICC arbitration in London concerning petroleum industry joint venture (2003-2004)Acted as counsel for oil services company. Claim between members of large multinational groups.
    • US Mediation-Arbitration concerning petroleum industry patents (2004) – Acting as expert witness on UK patent law in claims and cross-claims between US-based companies.
    • Regularly mediates cases confidentially (especially in IP cases) both in person and on-line in media, trade mark, patent and other disputes and has acted as an expert adjudicator in such cases.
  • Education & awards
    • BA Physics and Philosophy (1st class, Oxford University, 1985).
    • Diploma in Law (PCL, 1986).
    • LLM (Harvard Law School, 1987).
    • Kennedy Scholar and Lord Harlech Award, Harvard Law School.
    • Queen Mother Scholar, Middle Temple.
    • Wilde Prize (jointly) for Philosophy, Oxford University.
  • Appointments

    Current Appointments

    Law

    • Deputy High Court Judge (Chancery Division and Patents Court).
    • Appointed Person under the Trade Marks Act.
    • Member of the appeal panel for disputes arising under Rules of the Premier League.
    • Regular appointments as arbitrator and mediator in commercial disputes.
    • Bencher, Middle Temple.

    Other

    • Board Member, Orchestra of the Age of Enlightenment

    Previous appointments

    Law

    • Chair, Intellectual Property Bar Association.
    • Member of UK Government Commission on Intellectual Property Rights.
    • Member of European Commission advisory group on the Biotechnology Patents Directive.
    • Chair of the Code of Practice committee for the images and metadata strand of the Copyright Licensing Steering Group.
    • Member of the panel for disputes arising under Rules of the Premier League.
    • Member of Bar Council and Bar disciplinary panels.
    • Visiting Professor of Law, University College, London.
    • Member of Oxford University Law Faculty advisory group.

    Other

    • Trustee, Natural History Museum, London.
    • Trustee, Kennedy Memorial Trust.
    • Governor, Bedales School.
    • Trustee, National Endowment for Science Technology and the Arts (Chair of the Invention & Innovation and Finance & Audit Committees).
    • Trustee, London Ecology Centre.

     

  • Irish Qualifications

    Daniel 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.

  • Other relevant information

    Calls to other Bars

    Called to the New York Bar 1988. Called to the Irish Bar 2021.

    Publications and teaching

    The Modern Law of Copyright – co-author various editions; Guidebook to Intellectual Property Law – co-author various editions. Report of Commission on Intellectual Property Rights – co-author. Previously contributor to Clerk & Lindsell on Torts (various editions) and other texts. Articles and case notes in ICLQ, EIPR, Zeitschrift für Geistiges Eigentum and others.

    Previously visiting professor, at University College, London, teaching on LLM IP course. Numerous lectures/seminars, including at universities and policy/government institutions in the UK (Oxford, Cambridge, UCL, LSE, QMU law faculties), US, several EU countries, Japan and China; talks at WIPO/EPO and Korean IP judges conferences and professional conferences in the UK, Singapore, Federal Circuit Bar Association (US), CIPA, ITMA and AIPPI.

    Policy and other work

    Previously United Kingdom Government’s lead advocate in IP policy cases in the UK courts and CJEU as Standing Counsel to the Comptroller General of Patents, Designs and Trade Marks.  Involved, through IPBA, in the development of policy and procedure including UK’s prospective involvement in the UPC and post-Brexit UK legislation. Occasional evidence to UK Parliament committees.

    Human rights and science policy work on museum collections as a trustee of Natural History Museum and role of IP law in developing countries as a member of CIPR. Member of the Bar Council group which developed parts of the original E&D code and later acted as E&D officer of chambers.

    Regular reviewer for Queen’s Anniversary Prizes for further and higher educational institutions. Currently trustee of Pegasus Award for law students at Middle/Inner Temple. Previously member of Oxfam Association, assisting one of the largest development charities.

    Professional Memberships

    Intellectual Property Bar Association, Chancery Bar Association.

    Other

    Awarded Chambers and Partners IT Silk of the Year.

    Interests

    Music, architecture and landscape design, theatre and arts.

  • Languages

    German – good

    French – passable

Contact Daniel Alexander KC's clerks

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