Daniele Selmi

Called to the bar 2013 Junior

BIOGRAPHY

In addition to extensive advisory and drafting work, Daniele has a broad and busy intellectual property practice appearing unled before the UKIPO (at first instance and on appeal), IPEC and High Court. He practices in 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.

Daniele has a uniquely broad scientific background. Having completed an undergraduate Masters degree in Molecular and Cellular Biochemistry at the University of Oxford, graduating with Distinction and 1st class (Hons) in 2005, he was the only life scientist accepted onto the Life Sciences Interface Doctoral Training Centre programme at the University of Oxford, which provided comprehensive postgraduate training in the application of mathematical, physical, computational and engineering science techniques to research in the biomedical and life sciences.

Daniele subsequently undertook a DPhil (PhD) in Physics at Oxford titled “DNA Lattices and Protein Arrays: Novel Approaches to Biological Structure Determination”, which was awarded in 2010. His research sought to improve the throughput and resolution of cryo-electron microscopic structure determination, using a G-protein-coupled receptor as a test case protein that is difficult to crystallise. This cutting-edge interdisciplinary research spanned fields that were to be awarded Nobel Prizes in Chemistry in 2012 and 2017. Daniele’s PhD thesis itself was examined as being “exceptional for a PhD student” and “timely, thought-provoking, and ground-breaking”. Daniele subsequently continued his research at postdoctoral level and was elected to a prestigious Fellowship at Oxford.

EDUCATION AND TRAINING

  • 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

Awards: Lord Mansfield Scholarship (top BPTC scholarship); Shelford Pupillage Scholarship

Mooting: Winner (UK team) & Best Individual Mooter, 13th Commonwealth Mooting Competition, Cape Town, South Africa (Awarded the Commonwealth Shield, 2013)

  • 2011-2012: Graduate Diploma in Law, Oxford Brookes University (Distinction)

Awards: Hardwicke Entrance Award; Lord Bowen Scholarship (top GDL scholarship)

Mooting: Winner of the ESU-Essex Court Chambers National Mooting Competition (Awarded the Silver Mace, 2012); Winner of the Oxford Inter-Varsity Moot (2012)

  • 2009-2011: St Cross College, Oxford University, Junior Research Fellow

Awards: BBSRC Postdoctoral Research Fellowship (postdoctoral award – research grant ranked 1st/~500 overall)

  • 2006-2009: St Hugh’s College, Oxford University, DPhil in Physics (Bionanotechnology): “DNA Lattices and Protein Arrays – Novel Approaches to Biological Structure Determination”

Awards: EPSRC Doctoral Prize Fellowship (postdoctoral award – top 10% of PhD students)

  • 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)

Awards: EPSRC Graduate Studentship (PhD scholarship)

  • 2001-2005: St Hugh’s College, Oxford University, MBiochem (Hons) degree in Molecular and Cellular Biochemistry (Distinction, 1st Class)

Awards: Mary Lunt Scholarship (undergraduate scholarship at St Hugh’s college); Book Prize (1st class in Finals); Fulford Scholarship (graduate scholarship at St Hugh’s college)

SECONDMENT EXPERIENCE

Following completion of his pupillage, Daniele has spent time on secondment at three leading solicitors’ firms (totalling 15 months). He thoroughly enjoys working as part of a litigation team and through this exposure has gained in-depth experience of patent matters in the fields of life sciences, engineering/physics and telecommunications, principally:

  • TCT Mobile Europe SAS v. Telefonaktiebolaget LM Ericsson (2014-15) (Assisted with pre-trial preparation concerning infringement and validity of speech coding technology for mobile telecommunications (3 patents with the highest technical rating of 5))
  • Wobben Properties GmbH v. Siemens [2015] EWHC 2114 (Pat) (Assisted with pre-trial preparation and in a 1-week trial of a patent action concerning a method of operating a wind power station)
  • Warner-Lambert Company LLC v. Teva UK Ltd. (2015) (Assisted with pre-trial preparation in a patent action concerning pregabalin dispensing practices)
  • Celltrion v. Biogen & Others (2015) (Assisted with pre-trial preparation in a 3-patent action concerning rituximab dosage regimes)
  • Teva v. Astra Zeneca (2017) (Assisted Scottish counsel in a multi-jurisdictional 3-patent action concerning Fulvestrant)
  • TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (Assisted on secondment and instructed as junior counsel in the CMC of a 2-patent action concerning ADSL2/2+, VDSL2 technology)

CASE EXPERIENCE (SELECTION)

PATENTS

  • Align Technology, Inc. v. ClearCorrect (2017-2019) (Instructed as junior counsel in a 10-day trial concerning the infringement and validity of 4 patents relating to orthodontic appliances. Trial in October 2019)
  • Resman AS v. Tracerco Ltd. (2017-2019) (Instructed as junior counsel in a 1-week trial concerning the infringement and validity of a patent for reservoir monitoring. Settled shortly before trial in February 2019)
  • TQ Delta LLC v. ZyXEL [2017] EWHC 3305 (Pat) (Assisted on secondment and instructed as junior counsel in the CMC of a 2-patent trial concerning ADSL2/2+, VDSL2 technology)
  • Napp Pharmaceutical Holdings Ltd. v. Dr Reddy’s Ltd. & Sandoz Ltd. [2016] EWHC 1517 (Pat) (Instructed as junior counsel in several pre-trial hearings in a 2-patent action concerning trans-dermal patches for pain relief. Appeal to CoA: [2016] EWCA Civ 1053)
  • Actavis v. Lilly [2015] EWCA Civ 555, [2015] EWCA Civ 666 (Assisted in the appeal to the CoA of this seminal dispute concerning pemetrexed, which involved complex issues of foreign law as well as fundamental issues relating to the construction of patents. Appeal to the Supreme Court: [2017] UKSC 48)
  • T 2154/14 (Daptomycin II/CUBIST PHARMACEUTICALS. Assisted in this appeal at the EUIPO relating to the use of daptomycin in treating bacterial infections)
  • Philips v. Nintendo [2014] EWHC 1959 (Pat), [2014] EWHC 3172 (Pat), [2014] EWHC 3177 (Pat) (Assisted with pre-trial preparation and the form of order hearing in relation to a 1-week 3-patent trial concerning Nintendo Wii consoles)
  • Hospira v. Genentech [2014] EWHC 1094 (Pat) (Assisted with pre-trial preparation and in a 9-day 2-patent trial concerning trastuzumab antibody purification and dosing regimens)
  • Samsung v. Apple [2014] EWCA Civ 376 (Assisted in Apple’s application for an order requiring Samsung to elect between this appeal and its central amendment applications. Patents related to channel coding in mobile telecommunication systems)
  • Teva v. Amgen [2013] EWHC 3711 (Pat) (Assisted in Amgen’s application to substitute one of the defendants in this patent & SPC infringement/invalidity/declaratory relief action concerning GCS-F polypetides)

TRADE MARKS/ PASSING OFF/ DESIGNS/ COPYRIGHT

  • Eco-Bat Technologies Ltd v *Westlake Longview Corp O/032/19, [2019] 1 WLUK 316 (Instructed in a trade mark invalidity appeal to the Appointed Person)
  • *HBI Europe Gmbh MMS Wholesale Ltd. (2018) (Instructed in a 1-day IPEC trial relating to trade mark infringement/passing off of HBI’s RAW trade marks. Settled shortly before trial in December 2018)
  • *Breitling v Moshe, Taktak, Garcia (2018) (Instructed in a 1-day IPEC trial (small claims) in relation to trade mark infringement of Breitling’s marks)
  • Fidelity v. Fidelis [2018] EWHC 667 (Ch), [2018] EWHC 1097 (Pat), [2018] EWHC 2074 (Ch) (Instructed as junior counsel in a 4-day trial relating to trade mark infringement/passing off of Fidelity’s trade marks. Appeal in November 2019)
  • Twinkle O-738-18 (Trade mark revocation under section 46 TMA 1994)
  • MGM O-556-17 (Trade mark opposition under inter alia section 5(2)(b) TMA 1994)
  • Goulding v *Bedford (2016-2017) (Instructed in several interim applications and in a 1-day IPEC (small claims) damages inquiry in relation to copyright infringement/licensing of swim-wear images)
  • Pho Holdings Limited v. *Pho Street Limited (2017) (Instructed in a passing off action in relation to Vietnamese restaurants. Settled before trial)
  • Royal Circus Ltd. O-462-17 (Trade mark opposition under inter alia section 5(2)(b) TMA 1994)
  • Enigma Imports (UK) Ltd v *Vina Trade (Europe) Ltd (2016) (Instructed in a summary judgment application and in a 2-day IPEC trial concerning copyright and UK/C-UDR infringement in statues. Settled on the first day of trial in June 2016)
  • The Entertainer (Amersham) Ltd. v The Entertainer FZ LLC & Others [2016] EWHC 344 (Ch) (Assisted the claimant in resisting the transfer to the IPEC of a trademark infringement claim relating to THE ENTERTAINER marks)
  • Penyards Property Management v Mr Graham Evans & Others (2015/2016) (Instructed as junior counsel in this trademark infringement/passing off action. Settled before trial)
  • *Pizza Express v One Delivery Limited (2015-2016) (Instructed in a trademark/copyright infringement/passing off action. Settled prior to damages inquiry in 2016)
  • Omnibill v EPGSXXX Ltd [2014] EWHC 3762 (IPEC) (Assisted in several applications and in a 1-day IPEC trial concerning copyright infringement in images on adult websites)
  • Enterprise Europcar [2014] EWHC 2498 (Ch), [2015] EWHC 17 (Ch), [2015] EWHC 300 (Ch) (Assisted with pre-trial preparation including Enterprise’s application to adduce survey evidence for a 1-week trial for trade mark infringement/passing off in relation to Enterprise ‘e’ logos. Assisted with the scope of various remedies post-judgment)
  • Indian Motorcycle v Indian Motorcycle O-439-14, [2015] RPC 15 (Assisted in a trade mark appeal to the Appointed Person concerning invalidity and revocation claims brought by the applicant)
  • The Coca-Cola Company OHIM (2014) (Assisted in preparing oral submissions on behalf of the applicant for annulment in a trade mark appeal to the General Court)
  • Comic Enterprises Ltd. v. Twentieth Century Fox [2014] EWHC 185 (Ch) (Assisted with the form of order hearing following a 5-day trade mark infringement/passing off action concerning ‘Glee’ marks)
  • Nestlé v Cadbury [2014] EWHC 16 (Ch) on appeal from O/257/13 (Assisted in this appeal from the UKIPO concerning the registrability of Kit Kat’s 3D shape and in the subsequent reference to the CJEU for a preliminary ruling)

DAMAGES INQUIRIES

  • Health & Case Management Limited v The Physiotherapy Network (UK) Ltd [2018] EWHC 869 (QB) (Instructed as junior counsel following the trial of this action in a 1-week damages inquiry for sui generis database infringement. Trial in late 2019/early 2020)
  • Goulding v *Bedford (2016-2017) (Instructed in several applications and in a 1-day IPEC (small claims) damages inquiry in relation to copyright infringement/licensing of swim-wear images)

PERSONAL

  • Coach of the Oxford IP International Moot (2017)
  • Competitive powerlifting between 2007-2009 (Varsity, national and international. Oxford University Sportsman of the Year, 2008). Currently re-training for British Powerlifting Nationals (Masters)
  • Competitive Olympic weightlifting between 2009-2011. Currently re-training for British Weightlifting Nationals (Masters)
  • Various martial arts
  • Fishkeeping