Guy Burkill QC

Called to the bar 1981 Took silk 2002 Silk

Practice Area

Guy Burkill is experienced in all areas of intellectual property.  He has been particularly active in technology-oriented patent cases involving telecoms, computer hardware and software and electronics, in which his knowledge of the law is coupled with a strong technical background (a first class degree in engineering, with Cambridge’s “electrical option”). He has acted for many leading multinational companies in the computer, electronics, telecoms, paper, chemical, pharmaceutical, aviation, and other industries. He was a co-editor of the 15th, 16th and 17th edition of “Terrell on the Law of Patents”, the practitioners’ textbook.

He also enjoys a more diverse practice in copyright, trade marks, confidential information, and other IP.  Recent non-patent cases have involved misuse of confidential information removed by ex-employees (acting variously  for employers and employees), copyright in architect’s plans, trade mark use on rebranded parallel imported goods (acting variously  for trade mark owners and for alleged infringers).

Publications

Co-editor of Terrell on the Law of Patents (15th edition,  2000; 16th edition, 2006; 17th edition, 2011).

Guy’s article on the Supreme Court decision in Actavis, and subsequent IBIL panel discussion, is online at

https://www.intellectualpropertymagazine.com/patent/wish-actavis-had-never-happened-you-should-be-so-lucky-127075.htm

and a pdf version can be downloaded HERE.

Principal Cases

House of Lords and Court of Appeal 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)
  • 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)
  • Schlumberger v EMGS (subsea electromagnetic surveying for hydrocarbons)
  • Apple v. HTC (patentability of computer software / computer implemented inventions)
  • Nokia v. HTC (stay of first instance injunction pending appeal)
  • Samsung v. Apple (parallel proceedings in Court of Appeal and central limitation at EPO)
  • Flynn Phama v DrugsRUs (rebranding of products imported from EU)

Appeared for the patentee before the ECJ (European Court of Justice) sitting as the full court with 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 (encoding of position information on otherwise blank recordable CDs)
  • Sega v. Codemasters (protection systems in video game consoles to enforce purported licensing obligation)
  • 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)
  • Qualcomm v. Nokia (power control in mobile phone systems)

Appearances before the EPO (European Patent Office) and Technical Boards of Appeal 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, television audience measurement systems, subsea electromagnetic surveying, and banknote security markings.

Education

  • Entrance scholarship to Winchester College 1970.
  • Entrance scholarship to Corpus Christi College, Cambridge 1975.
  • First Class Honours MA degree in Engineering (Electrical option) from Cambridge University 1978.

Extra-Legal Experience

  • 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).
  • He has written software in a variety of computer languages including 6502 and 808x machine code and assembly language, Fortran, Basic, Pascal, and C, and nowadays programs in C# on the Visual Studio.net platform when time permits.

Outside Interests

Leisure interests include the violin – he performs regularly with the London Phoenix Orchestra, probably London’s leading amateur orchestra, and other symphonic and operatic ensembles – opera, battling with HS2, and trying to mend things.

He is just so creative; he knows where to stretch the law and reads the court fantastically well.’ ‘If you need someone to work on very complex technology at the highest level it has to be Guy.’ “

Chambers UK, 2018

“The complex technology guru.”

Legal 500, 2017

“Celebrated for his white-hot intellect and superior instincts which have been honed by three decades of handling IP litigation at the highest levels”

Chambers UK, 2016
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“One of the finest legal minds in the country with regard to the law on patents, who has played a prominent role in litigating the ‘Smartphone Wars’ of recent years. Many sources express admiration for his knowledge of computers and electrical engineering.   ‘Spectacular in front of the judge, he has absolute control over the courtroom.’  ‘He’s very user-friendly and has a superb engineering brain that allows him to give practical advice.’”

Chambers UK, 2015

‘Extraordinarily clever; very gifted at guiding the judges through the most complex of cases’

Legal 500, 2015

“’Gets to grips with the most difficult technical subject matter known to man’”

Legal 500, 2013

“The ‘unbelievably clever, extremely funny and technically superb’ Guy Burkill QC is a favourite for patent cases including complex technology, particularly in the electronics field. … An expert on the technological aspects of a case, Guy Burkill QC is ‘fiercely intelligent and someone you want when you’re dealing with highly complex matters. He is seen as something of an electronics guru.”

Chambers UK, 2010