David is a Partner in the Intellectual Property Department and heads up the firm's Patent Group. His practice focuses on clearing, protecting and enforcing IP rights.
David is a highly experienced litigator and one of only a small number of IP lawyers in the UK who have taken both patent and trade mark cases to the Court of Justice of the European Union.
He has acted in a number of high profile and often ground-breaking cases before both the UK and European Courts including successfully representing Sky in the first passing off case to reach the UK's highest court (the Supreme Court) in over 25 years (Starbucks v. Sky) and acting for Nintendo in securing the first ever blocking injunction against ISPs in reliance on technological protection measures under the UK's copyright legislation. Additional high profile actions include: HTC v Gemalto; Sky v Microsoft; Napp v Sandoz; ratiopharm v Alza; Sky v Skype; Marks & Spencer and others v One in a Million; Lupin v. Gilead; Ann Taylor v. Holzer; Sony Computer Entertainment v Pacific Game Technology; Racing UK v Satellite Information Services; Arrow Generics v Merck; Cairnstores v Astra Zeneca; and Servier v Lupin.
In the patent sphere, David advises on infringement, validity and ownership disputes, the scope of protection of Supplementary Protection Certificates (SPCs) and disputes over standard essential patents (SEPs) including their licensing on FRAND terms (principally for implementers). He also has considerable experience advising on "clearing the way" strategies in relation to pharmaceutical patents. Recent representations include acting for Lupin in its successful application to revoke Gilead's SPC for the HIV treatment Truvada® following hearings before the Grand Chamber of the Court of Justice of the EU and the Court of Appeal in London.
In the area of brand and design protection, David has extensive experience advising on brand and design portfolio management with particular expertise acting in administrative proceedings before the UKIPO and the EUIPO and their respective appellate tribunals, including appearing successfully in numerous cases before the General Court of the EU.
David is one of only four UK IP lawyers listed in the Legal 500 "Hall of Fame", is ranked as a leading individual in Chambers (IP, life sciences and patent litigation), IAM Patent 1000 (patents and life sciences), Who's Who Legal (patents, life sciences and trade marks) and is recognised as one of World Trademark Review's "Global Leaders". Recent commentary from the directories includes: "tough as nails... a 'natural litigator' who is 'experienced and aggressive" (World Trademark Review); "a real client's lawyer, always very tenacious in looking after their interests…He is good to work with and gets the best out of his team." and "has impeccable judgement on strategic matters" (Chambers); "outstanding experience in this arena makes him a force of nature in the courtroom" (IAM Patent 100).
David has a Master's Degree in Intellectual Property from the University of London and writes widely on IP matters in a range of journals including EIPR, BioScience Law Review, JIPLP and MIP. He is a member of CIPA, CITMA, AIPPI and INTA. David holds an Irish Practising Certificate.
Key cases include:
- Warner-Lambert v Dr Reddy's Laboratories Limited
- HTC v Gemalto
- Lupin v Gilead
- ratiopharm v Alza
- Leo Pharma v Sandoz
- Arrow Generics v Merck
- Cairnstores v AstraZeneca
- Sky v SkyKick
- SKB v Generics UK
- Finecard v UDL
- Nintendo v BT and others
- Lupin v Servier
- Starbucks v Sky
- EMI v Sky
- Sky v Skype
- Sky v Microsoft
- Ann Taylor v Holzer
- Marks & Spencer & ors v One in a Million
- Sony Computer Entertainment v Nuplayer
- Sony Computer Entertainment v Pacific Game Technology
- Racing UK v Satellite Information Services
- Guinness UDV North America Inc v Flexitrace Ltd
Partner, Mishcon de Reya LLP
Partner and Head of IP for Europe, King & Wood Mallesons LLP (formerly SJ Berwin) (September 1992 to May 2016)
Queen Mary, University of London, Masters in Intellectual Property Law
University of Manchester, Law
ARTICLES AND PUBLICATIONS
- Bio-Science Law Review (July 2016) Injunctions in pharmaceutical patent cases: the approach of the English courts and the likely impact of the UPC
- Managing Intellectual Property Magazine (May 2016) UPC Scenario 4: Challenging a non-opted out European patent
- Intellectual Property Magazine (December 2015) The UPC and Unitary Patent: The final countdown
- Intellectual Property Magazine (October 2014) Catwalk Confusion
- CIPA Journal (December 2013) Court of Appeal Re-casts Guidance on Stays of Patent Proceedings
- International Pharmaceutical Industry (Summer / Autumn 2013) Supplementary Protection for Medicines - Functioning or Failing?
- Journal of Intellectual Property Law & Practice (November 2012) Football Dataco v Yahoo! Implications of the ECJ Judgment