James St. Ville

CALL: 1995
James St.Ville is a very experienced junior across patents, trademarks, copyright, designs, confidential information, parallel imports and IT, internet, database and software disputes.

Chambers UK has described him as “well regarded for his attention to detail and commerciality”, “extremely intelligent, thoughtful, thorough, careful, very good on his feet and a real pleasure to work with.” “His preparation on every case is superb and detailed, and he has first-class drafting”.

He is recommended as a Leading Junior in Intellectual Property by Chambers UK and Information Technology by the Legal 500 and is a chartered engineer with substantial commercial experience of electronics, optical communications and engineering.  His patent work includes electronics, mechanical and medical devices, agrochemicals, pharmaceuticals and engineering disputes.

  • 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:

    • Marks & Spencer v Asda Stores [2016] EWHC 2081 (Pat): 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] EWHC 556 (IPEC): 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.
    • 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.
    • Prosyscor v Netsweeper [2018]: ongoing patent entitlement and breach of confidence action regarding distributed internet authentication systems.
    • Positec v Husqvarna [2016] FSR 29: an action for declarations on non-infringement and invalidity concerning robotic lawn mowers, establishes modern principles applicable to disclosure in patent actions.
    • VPG Systems v Air-Weigh Europe [2015] EWHC 1862 (IPEC): trial concerning infringement and invalidity of a patent for on-board vehicle weighing systems.
    • Angus Fire v. Cold Cut Systems [2016]: Patent action concerning high pressure water ‘cutting extinguishers’ used by emergency services.
    • 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:

    • 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:

    • Sheeran v Chokri [2018]: ongoing 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 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) & [2012] EWCA Civ 1569: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:

    • Spin Master v PMS [2017] EWHC 1477 (Pat): registered design case about well-known Bunchems toys.
    • Marks & Spencer v Asda Stores [2016] EWHC 2081 (Pat): 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.

    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:

    • Prosyscor v Netsweeper [2018]: 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) & [2012] EWCA Civ 1569: 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 [2018]: 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: 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) & [2012] EWCA Civ 1569: 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: ongoing 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: 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: 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 [2003] EWCA Civ 995: 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.
  • Education & awards
    • MA (Cantab)
    • CEng
    • MIET
    • 1st Class Honours in Engineering
    • 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.
  • Other relevant information
    • Chartered Engineer
    • Member of the Institution of Engineering and Technology
  • 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 the Eastern Caribbean Supreme Court and Northern Ireland.
  • 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.

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