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 degree in engineering, with Cambridge’s “electrical option”). He also enjoys a more diverse practice in copyright, trade marks, confidential information, and other IP.

He has acted for many leading multinational companies in the computer, electronics, telecoms, paper, chemical, pharmaceutical, aviation, and other industries. Recent cases have involved mobile phone systems (multiple aspects of 2G/3G/wifi technology), MP3 players, the “BlackBerry” email system, recordable CDs, reduced text keyboards, satellite navigation systems, subsea electromagnetic surveying, and public key cryptography. He has also appeared in several major arbitrations, the details of which remain confidential.

Publications

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

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)
  • 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)

Appeared 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 and subsea electromagnetic surveying.

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 – opera, travel, and trying to mend things.

“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

“On an electronics case, he’s a complete master of the technology.” “He’s absolutely terrific on his feet.”

Chambers UK, 2014
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“’Gets to grips with the most difficult technical subject matter known to man’”

Legal 500, 2013

“A veteran patent litigator who enjoys great renown for his handling of electronic engineering, IT and TMT disputes”

Chambers UK, 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

“‘Very creative’ and ‘meticulous and detailed in his work’

Legal 500, 2010

“Guy Burkill QC is a name synonymous with electronics work and is considered ‘one of the best around for all questions technical’

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