Professional Experience

Kathryn has over ten years' experience of practice at the English Bar. She has gained extensive litigation experience at all levels and has appeared on behalf of clients at the UKIPO and before the Appointed Person. She has also advised and drafted documents in support of actions at OHIM, appeals to the General Court of the European Union and references to the Court of Justice of the European Union.

Kathryn regularly advises on all aspects of intellectual property law as well as actions for misuse of confidential information, privacy and issues arising from the misuse of information on the internet. Kathryn's background in the natural sciences means that she is well placed to deal with cases where the subject matter is technically complex and she has advised on the construction of commercial contracts, ownership disputes, unjust enrichment, breach of fiduciary duties and breach of professional duties by IP professionals. Kathryn has appeared in the Court of Session, High Court, Court of Appeal and Supreme Court.

  • Case History

    Intellectual Property

    As English Counsel:

    Warner Lambert Co LLC v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 1006 (Court of Appeal): Second medical use patent (pregabalin) - validity appeal - test for insufficiency - patent amendment - abuse of process

    Unwired Planet International Ltd v Huawei Technologies Co Ltd [2016] EWHC 576 (Pat): Telecommunicationsmobile phone standard essential patent - infringement and validity

    Accord Healthcare Ltd v Astellas Pharma GmbH [2015] EWHC 3676 (Ch): Marketing authorisations - generic medicines - Directive 2001/83

    Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2015] EWHC 3370 (Pat): Patent amendment - abuse of process

    Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2016] RPC 3: Second medical use patent (pregabalin) - validity - insufficiency & obviousness

    Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2015] UKSC 31 (Supreme Court): Passing off - foreign business - goodwill in the jurisdiction

    Everseal Stationery Products Ltd v Document Management Systems Ltd [2015] EWHC 842 (IPEC): Patent - mailer - infringement & validity

    Warner-Lambert Co LLC v Actavis Group PTC EHF
    [2015] RPC 24: NHS Guidance - second medical use patents - orders to issue guidance on prescribing and dispensing pharmaceuticals

    Fresh Trading Ltd v Deepend Fresh Recovery Ltd
    [2015] EWHC 52 (Ch): Innocent Smoothies Logo - assignment of logo - copyright ownership, construction, acquiescence, estoppel

    Teva v AstraZeneca AB[2014] EWHC 2873 (Pat): Patent - pharmaceutical - infringement & revocation

    Wilko Retail v Buyology[2014] EWHCC 2221 (IPEC): TM infringement - availability of Norwich Pharmacal relief

    Kennametal v Pramet Tools[2014] EWHC 565 (Pat): Patent - milling cutter tool - infringement & validity

    IPCom v HTC Europe[2014] RPC 12: Patent - 3G telecoms - Court of Appeal review of Glaxo guidance on stays in patent actions

    Actavis v Boehringer[2013] EWHC 2927 (Pat): Supplementary protection certificate - pharmaceutical - reference to CJEU

    Samsung v Apple[2012] EWCA Civ 1223: Stay of publicity order

    Samsung v Apple[2012] EWHC 1882 (Pat): Registered design - expedited trial concerning infringement of Apple's design for tablet computer

    Specsavers v ASDA[2011] FSR 1: Trade Mark and passing-off dispute in relation to an advertising campaign launched by ASDA

    Fosroc International Ltd v WR Grace & Co-Conn[2010] EWHC 1742 (Pat): Patent - validity of patent for improved cement composition

    Orbital 2 Ltd v GigerBL O/033/10: Patent entitlement dispute - wind turbine technology - application to strike out proceedings in Intellectual Property Office

    Virgin Atlantic v Premium Aircraft[2010] FSR 15, CA: Patent - application for stay of inquiry pending ongoing opposition proceedings at EPO

    Mölnlycke Health Care AB v BSN Medical Ltd
    [2009] EWHC 3370 (Pat): Patent - wound dressing - application to stay proceedings pending outcome of foreign proceedings and application for interim injunction

    Virgin Atlantic v Premium Aircraft[2009] EWCA Civ 1062, CA: Patent appeal - aircraft seating system - claim construction and identity of skilled person

    Mölnlycke Health Care AB v Wake Forest University[2009] EWHC 2204 (Pat): Patent revocation action - device for wound therapy

    Aerotel Ltd v Wavecrest Group Enterprises Ltd[2009] EWCA Civ 408, CA: Patent appeal - telecommunications system

    Trafalgar Financial Futures Ltd & Anr v Hamdi & Ors
    [2009] Supreme Court of Gibraltar: Breach of confidence action - trade secrets in futures trading techniques

    Virgin Atlantic Airways v Premium Aircraft
    [2009] EWHC 26 (Pat): Patent and unregistered design right dispute - Virgin Airways' Upper Class Seating system

    KJM Superbikes Ltd v Hinton
    [2008] EWCA Civ 1280, CA: Application for permission to bring contempt proceedings against a witness who signed a false statement of truth

    Patel v Allos Therapeutics Inc[2008] ETMR 75: Cybersquatting dispute concerning challenge to decision of ICANN UDRP tribunal

    Aerotel Ltd v Wavecrest Group Enterprises Ltd[2008] EWHC 118 (Pat): Patent action - infringement and validity of patent for a telecommunications system

    Honda Motor Co Ltd v Neesam[2008] EWHC 338 (Ch): Trade mark infringement action - parallel importation of Honda motorbikes

    GAT Microencapsulation Gmbh v Syngenta LtdO/039/08: Patent revocation action - patent for microcapsules of insecticide

    Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc
    [2008] RPC 1, House of Lords: Appeal on the law of patent entitlement

    Pan World Brands Ltd v Tripp Ltd(EXTREME Trade Mark) [2008] RPC 2: Appeal to the Appointed Person - trade mark revocation action

    Ultraframe (UK) Ltd v Fielding & Ors: [2007] CP Rep 12, CA: Costs - relevance of misconduct to assessment of costs

    GE Healthcare Ltd v PerkinElmer Life Science (UK) Ltd & Ors
    [2006] EWHC 214 (Pat): Patent action - infringement, validity & entitlement - patent for a scintillation proximity assay

    Ultraframe (UK) Ltd v Gary Fielding & Ors[2006] FSR 17: 99-day trial - misappropriation of business and design right infringement

  • Courts & Tribunals

    Scotland: Court of Session 

    England & Wales: Supreme Court; House of Lords; Court of Appeal; Chancery and Queen's Bench Divisions of the High Court of Justice; Intellectual Property Enterprise Court ("IPEC"); Intellectual Property Office; Appointed Person

    In 2008 Kathryn was called to the Bar of Gibraltar for a 10-day breach of confidence action before the Supreme Court of Gibraltar

  • Publications

    Civil Appeals (2nd Ed.), edited by Sir Michael Burton: Sweet & Maxwell (2013): co-author intellectual property chapter

    The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver, edited by Ng, Bently & D'Agostino: Hart Publishing (2010): co-author chapter on patent trials

  • Directories

    Chambers and Partners 2016 (London Bar) recommended for intellectual property law: "Very, very bright, and really knows how to dissect a witness."; "An exceptionally sensible and user-friendly junior."

    Legal 500 2016 (London Bar) recommended for intellectual property law: "Known for pharmaceutical cases"

    Chambers and Partners 2015 (London Bar) recommended for intellectual property law: "Outstanding - she's very thoughtful, writes really well and is very nice to deal with"

    Legal 500 2015 (London Bar) recommended for intellectual property law: "Experienced in the High Court and Court of Appeal"

Professional Career to date

Devil Master: David Thomson

2014: Year of call
2004 (to date): Practice at English Bar (11 South Square)
2012 (to date): Tutor, Intellectual Property, Edinburgh University
2011-12: Supervisor, Intellectual Property, Cambridge University

Education & Professional Qualifications

Member of Faculty of Advocates (2014)
Called to English Bar (Inner Temple) (2001)
BCL (Oxon) (2002)
MA (Cantab Law & Natural Sciences (2000)