Tom Hinchliffe

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Called to the Bar 2013

Practice area
All aspects of Intellectual Property law, including patents, trade marks, passing off, copyright, designs, confidential information and contractual disputes involving intellectual property or technical subject matter.

SELECTION OF CASES (* = unled); ([] = confidential)

Patents:

• Napp Pharmaceutical Holdings Ltd. v Dr Reddy’s Ltd. & Sandoz Ltd. (Infringement of 2 patents, trans-dermal patches for pain relief, instructed in several interim hearings, HC)

 Celltrion v Biogen & Others (Revocation of 3 patents, rituximab dosage regimes, pre-trial preparation, HC)

• Warner-Lambert Company LLC v Teva UK Ltd. (Pregabalin dispensing practices, pre-trial preparation, HC)

Secondment to Powell Gilbert LLP (Sep 2014 – July 2015)

Assisted in patent matters in the fields of life sciences, engineering/physics and telecommunications. Principally:

• TCT Mobile Europe SAS v. Telefonaktiebolaget LM Ericsson (Invalidity, speech coding technology for mobile telecommunications (3 patents), pre-trial preparation: pleadings, claim amendments (opposition), disclosure incl. Section 1782 Discovery; global anti-suit injunction)

• Wobben Properties GmbH v Siemens [2015] EWHC 2114 (Pat) (Infringement, method of operating a wind power station, assisted with all aspects of the case: claim amendments, expert reports, XX materials, opening and closing trial skeletons)


Trade Marks/passing off/designs/copyright

• Mary Monson Solicitors Ltd. v Cain and Cochran Solicitors Ltd. (Copyright infringement (literary works), assisted with CMC, IPEC)

• *[Cosmetics Client] v (Trademark infringement/passing off, beauty products, PoC led to settlement)

 *Enigma Imports (UK) Ltd v Vina Trade (Europe) Ltd (Copyright and UK/C-UDR infringement, statues, successfully resisted summary judgment, all trial preparation, settled on 1st day of trial, IPEC)

 *Goulding v Bedford (Copyright infringement/licensing, swim-wear, applications to set-aside DJ and strike-out (part-heard), IPEC small claims track)

 *Hill & Knowlton Strategies v Kitch & Honey (Trademark opposition, negotiated co-existence settlement)

 [Luxury Jewellers] v (Trademark infringement/passing off, luxury jewellery, PoC led to settlement)

• Penyards Property Management v Mr Graham Evans & Others (Trademark infringement/passing off, property sales and lettings, Defence and C/C, Directions hearing (unled), settled, HC)

*Pizza Express v One Delivery Limited (Trademark/copyright infringement/passing off, food delivery, PoC, obtained default judgment, settled prior to damages inquiry)

• *Ram Parkash Sunderdass & Sons Ltd (Successful trademark opposition)

• *[Medical Products] v (UK-UDR infringement, hospital beds, PoC led to settlement)

• The Entertainer (Amersham) Ltd. v The Entertainer FZ LLC & Others (Trademark infringement, toy retailer, CMC skeleton, HC)

• Omnibill v EPGSXXX Ltd [2014] EWHC 3762 (IPEC) (Copyright infringement (images), adult websites, drafted security for costs and trial skeletons)

SELECTION OF CASES OBSERVED/CONTRIBUTED TO DURING PUPILLAGE

Patents:

• Philips v. Nintendo (Infringement, Nintendo Wii console, pre-trial preparation, form of Order hearing, HC)

• Samsung v. Apple (Invalidity, channel coding in mobile telecommunication systems, preparation for appeal)

• Teva v. AstraZeneca (Invalidity, asthma treatment, Barrell jurisdiction, HC)

• Teva v. Amgen (Patent & SPC infringement/invalidity/declaratory relief, GCS-F polypetides, pre-trial preparation incl. applications to substitute parties, HC)

• Actavis v. Lilly (Infringement/declaratory relief, pemetrexed for use in treating cancer, pre-trial preparation incl. substantive extraterritorial legal aspects under Rome II, foreign law expert evidence, etc., HC)

• Hospira v Genentech (Invalidity, trastuzumab antibody purification and dosing regimes, assisted with all aspects of the case from pre-trial preparation to the form of Order hearing, HC)

• Mr El-Tawil v. Comptroller General of Patents (drafted skeleton for UKIPO to HC appeal)

• EPO opposition (Observed an EPO opposition, daptomycin in treating bacterial infections)

Trade Marks/passing off/designs/copyright:

• Enterprise v. Europcar (Trade marks/passing off, Enterprise ‘e’ logos, pre-trial preparation incl. application to adduce survey evidence, disclosure and trial skeleton, HC)

• Comic Enterprises Ltd v. Twentieth Century Fox (Trade marks/passing off, ‘Glee’, form of Order hearing, HC)

 Symington Family Estates v. Gourmet Classic Ltd (Passing off/breach of EU Council Regulation on PDOs, port wine, IPEC pre-trial preparation incl. CMC, etc., IPEC)

 Cyclehoop Ltd. v. Bike Dock Solutions Ltd. (Infringement of UK unregistered & Community registered designs/unjustified threats, bicycle storage products, pre-trial preparation, IPEC)

• Nestlé v Cadbury (3D shape marks, Kit Kat, appeal UKIPO to HC, reference to the CJEU)

 Ministry of Commerce, Industry & Tourism (Cyprus) v. OHIM (CTM ‘certification marks’, Halloumi cheese, appeal to the General Court)

 The Coca-Cola Company v. OHIM (Trade marks, oral submissions on behalf of the applicant for annulment in an appeal to the General Court)

 

OPINIONS/WRITTEN ADVICE

Joint technology development agreements; breach of privacy under the Data Protection Act 1998 and infringement of copyright in an employment agreement; prospects of success in trade mark oppositions/invalidity/revocation proceedings; freedom to operate/import diagnostic medical devices; merits of a claim in relation to infringement of UK and Community unregistered designs; extra-territorial relief in patent infringement actions; experimental use exceptions.

Personal
Former-president of Oxford University Powerlifting Club and national and international powerlifter (Oxford University Sportsman of the Year, 2008). Former competitive Olympic weightlifter. Experienced martial artist: Wado Ryu Karate, Shotokan Karate, Kung Fu To’A, Shaolin Kung Fu and Wushu Kung Fu.

 

 

Education
• 2013-2014: 12-month pupillage at Three New Square, to Tom Hinchliffe, Tom Mitcheson, Simon Malynicz and Geoff Pritchard, covering all aspects of Intellectual Property law
• 2012-2013: Bar Professional Training Course, City University
• 2011-2012: Graduate Diploma in Law, Oxford Brookes University (Distinction)
• 2009-2011: St Cross College, Oxford University, Junior Research Fellow in Biological Physics
• 2006-2009: St Hugh’s College, Oxford University, DPhil in Physics (Bionanotechnology): “DNA Lattices and Protein Arrays – Novel Approaches to Biological Structure Determination”
• 2005-2006: St Hugh’s College, Oxford University, Life Sciences Interface Doctoral Training Centre (transitioned from the Life-Sciences into the Mathematical, Physical & Computational Sciences)
• 2001-2005: St Hugh’s College, Oxford University, MBiochem (Hons) degree in Molecular and Cellular Biochemistry (Distinction, 1st Class)

Awards
• Mooting: Winner of the ESU-Essex Court Chambers National Mooting Competition (Awarded the Silver Mace, 2012); Winner of the Oxford Inter-Varsity Moot (2012); Winner (UK team) & Best Individual Mooter, 13th Commonwealth Mooting Competition, Cape Town, South Africa (Awarded the Commonwealth Shield, 2013); Coach of the Oxford IP International Moot (2017)
• Lincoln's Inn: Hardwicke Entrance Award; Lord Bowen Scholarship (top GDL scholarship); Lord Mansfield Scholarship (top BPTC scholarship); Shelford Pupillage Scholarship
• Oxford University: Mary Lunt Scholarship (Distinction in 1st year examinations); Book Prize (1st class in Finals); Fulford Scholarship (Highest academic merit at St Hugh’s college); EPSRC Graduate Studentship (PhD scholarship); EPSRC Doctoral Prize Fellowship (postdoctoral award – top 10% of PhD students); BBSRC Postdoctoral Research Fellowship (postdoctoral award – research grant ranked 1st overall); Junior Research Fellowship (elected a Fellow of St Cross College)

• Charterhouse School: Additional Foundation Scholar