Guy Burkill QC
Called to the bar in 1981, and took silk in 2002
Practice Area
Guy Burkill is experienced in all areas of intellectual property. His practice is focused on patent litigation, particularly in the IT and electronic fields, to which he brings an authoritative technical background. He has acted for many leading multinational companies in the computer, electronics, paper, chemical, pharmaceutical, aviation, and other fields. Recent cases have involved mobile phones, MP3 players, the “Blackberry” email system, recordable CDs, reduced text keyboards, subsea electromagnetic surveying, and satellite navigation systems.
Publications
Co-editor of Terrell on the Law of Patents (15th edition, 2000; 16th edition, 2006).
Education and Background
Entrance scholarship to Winchester College 1970.
Entrance scholarship to Corpus Christi College, Cambridge 1975.
MA degree, First Class Honours, in Engineering (Electrical option) from Cambridge University 1978.
During his engineering degree course, Guy Burkill spent four months in industry (involved in the design, assembly, testing and repair of electronic remote signalling and control apparatus with Westinghouse). He also designed and built his own microcomputers from scratch (with associated bootstrap firmware and operating software) in the mid/late 1970s before their widespread commercial availability, and later wrote entries for the first European Microcomputer Chess Championship (1978) and first World Microcomputer Chess Championship (1980).
What others are saying
• “Guy Burkill QC is a name synonymous with electronics work and is considered ‘one of the best around for all questions technical’. Involved in the high-profile cases Qualcomm v Nokia and Ericsson v Samsung Electronics, he demonstrates ‘a mastery of detail’ and ‘outstanding resilience stamina and enthusiasm’. His speciality lies in electronic patents, handling cases such as Research in Motion v Inpro, with sources hailing him ‘one of the best intellectual property owner silks around because of his knowledge and creativity’” (Chambers UK, 2008).
• “Solicitors say Burkill is ‘constantly creative and has an extraordinary eye for detail’ and is ‘good with the toughest technology issues’”; “the ‘go-to’ man for electronics and IT cases” (Legal 500, 2007).
• “Not only interested in technology but can explain it in terms that laymen can understand” (Chambers UK, 2007).
• ’Leading on the technical front’ is Guy Burkill QC who, according to observers, has an ‘amazing grasp of the law’ and is ‘succinct and straight to the point’” (Chambers International, 2006).
• Shortlisted (final 3) for “IP silk of the year”, Chambers Bar Awards 2007.
Principal Cases
House of Lords and Court of Appeal patent cases including:
• Sevcon v. Lucas (House of Lords case on limitation periods in patent actions)
• Asahi's patent (House of Lords case on enabling disclosures)
• Allen & Hanburys Limited v. Generics (House of Lords case on licences of right; effect of European law on Comptroller's discretion to impose terms)
• SKF (cimetidine) and American Cyanamid (fenbufen) (licences of right; royalty rates and terms)
• Procter & Gamble v. Peaudouce and Mölynlycke v. Procter & Gamble (both disposable nappies; ambiguity; evidence of obviousness)
• Pavel v. Sony (the "Walkman" case, first case in Patents County Court)
• Hallen v. Brabantia (corkscrews; technical versus commercial obviousness)
• Van der Lely v. Rustons (harrows)
• Step v. Emson (atomisers; claim construction - claim integers cannot be entirely ignored)
• Glaverbel v. British Coal (furnace repair; principles of construction of patent claims)
• Hoechst Celanese v. BP (two actions concerning acetic acid purification, account of profits)
• Lubrizol v. Exxon (oil additives: prior use, obviousness, ambiguity, "section 64 defence")
• Pioneer v. Warner (compact discs; product-by-process claims)
• Discovision v. Disctronics (compact disc mastering: unopposed appeal setting aside revocation order)
• Buehler v. Chronos Richardson (no estoppel arising from previous EPO opposition decisions)
• Asahi v. Macopharma (blood transfusion apparatus; obviousness)
• Amersham Pharmacia v. Amicon (chromatography apparatus; construction of claims)
• Thermos v. Aladdin (registered designs; function of appeal court)
• Dyson v. Hoover (cyclonic vacuum cleaners; post-expiry injunction)
• Agilent v. Waters (chromatography pumps: claim construction and estoppel)
• Glaxo v. Dowelhurst (parallel imports: “placing on the market” in EU)
• Smith International v. SPS (drill string equipment: second tier appeals from Patent Office)
• RIM v. Inpro (“Blackberry” email system; anticipation and obviousness)
• Halliburton v. Smith (computer-aided design of oil drill bits; insufficiency)
Appeared before the ECJ (European Court of Justice) sitting with all eleven judges in Thetford v. Fiamma (harmonisation of patent law within the EEC).
Numerous High Court and Patents Court matters. Those first instance cases which went no further but which he remembers with particular affection include:
• IBM v. Phoenix (passing off rebuilt memory cards, Eurodefences)
• Philips v. Princo (position information on blank recordable CDs)
• Sega v. Codemasters (protection systems in video game consoles to enforce licensing)
• Sweeney v. MacMillan (revived copyright in James Joyce's novel "Ulysses": alleged passing off of new edition)
• Texas Instruments v. Hyundai (integrated circuit component layout)
• Thomson v. Pace (DVD and MPEG-2 encoding techniques)
Appearances before the EPO (European Patent Office) in Munich in cases involving inter alia tachometers, aspartame crystallisation, oil wellheads, liquefied air distillation, machine tool cutting inserts, refractory articles, 3-D displays, predictive text keyboards, and television audience measurement systems.
Outside Interests
Leisure interests include the violin - he performs regularly with the London Phoenix Orchestra, London's leading amateur orchestra - tennis, opera, travel, and trying to mend things.
Besides his interest in the subject matter of his practice, he has maintained his enthusiasm for technology by beta testing Microsoft Windows products (working on the Win95, Win98, Win98SE, Millennium, and Windows XP technical beta programs). He has written software in a variety of computer languages including 6502 and 808x assembly language, Fortran, Basic, Pascal, and C, and nowadays occasionally programs in C# on the Visual Studio.net platform when time permits.
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