Timothy St. John Ellam, QC, FCIArb is a partner in our litigation group in Calgary and is co-chair of the Firm’s international arbitration practice group.
Tim advises clients over disputes relating to intellectual property, technology, energy related commercial matters and with international arbitrations. He has appeared as senior litigation counsel in patent, licensing, copyright and technology related trials, arbitrations and hearings including many in the energy sector. Recent cases where he was lead counsel are recognized in Chambers Global and Lexpert. Tim frequently works with the Firm’s London office on significant international arbitration matters and on litigation proceedings in the High Court of Justice (Commercial Court).
Tim is also a Solicitor Advocate (Higher Courts – Civil) in the Law Society of England and Wales and holds Rights of Audience in the Higher Courts in that jurisdiction. He is an IBA Fellow in International Legal Practice; a distinction granted by the International Bar Association and the College of Law of England and Wales in 2005. He is the first lawyer in Canada to be awarded this designation. In 2014 he was appointed Queen’s Counsel.
Tim is a member of the Law Society of Alberta, The Law Society of England and Wales, the Canadian Bar Association, the International Bar Association, the International Association of Defense Counsel, the American Intellectual Property Law Association, the Solicitors Association of Higher Court Advocates (UK), a Fellow of the Chartered Institute of Arbitrators (FCIArb), a member of the London Court of International Arbitration (LCIA) and an elected Fellow of the American Bar Foundation.
Transactions & Cases
- Intellectual Property Litigation – Extensive experience in patent, copyright and trade-mark litigation including infringement disputes and related injunction proceedings, licensing, technology, trade secret and e-commerce disputes and Internet law. Tim also has extensive experience with cross border patent, copyright and licensing litigation. Noted cases include CADVision v. Telus (1999)(issues relating to the introduction of asymmetrical digital subscriber line access (ADSL) Internet service before the courts in Alberta and the CRTC), AltaRex v. Biomira (2000)(a major biotech company in the successful settlement of a patent dispute), Top-Notch v. Top Notch (2001), 207 F.T.R. 260; 13 C.P.R. (4th ) 260 (the successful defence of a trade mark infringement action),NovAtel v. Harris (2002)(a dispute relating to the manufacture of a global positioning system (GPS) equipment), iDc v. QC Data (2002), 261 A.R. 155 (C.A.) (mandatory injunctive relief upholding a licensing contract), WiLan v. Morris (2003) (Internet defamation), Utilitran v. Doe (2004)(denial of service), Welltec ApS v. Precision Drilling (2004), ABQB 139 (injunctive relief for passing off), Plastifab Ltd. v. Produits Pour Toitures Fransyl Ltée (2004) (patent infringement action), NovAtel v. Ellis (2005) (Internet Defamation), ARAM v. NovAtel (2006) ABQB 697 (injunctive relief on patent issues) ARAM v. NovAtel (2008) ABQB 441 (inventorship dispute trial);Juxtacomm Technologies v. Ascential Software et al US Dist. Ct. 2:07 CV-00359 (Canadian counsel on US patent dispute); ARAM v. NovAtel (2009) ABCA 262 (inventorship dispute appeal); Sasol Technologies (Proprietary) Limited v. De Klerk (2009) ABQB 599 (setting aside Anton Pillar); ARAM v. NovAtel (leave application to Supreme Court of Canada, 2010); award of enhanced party and party costs in a patent derivation case (NovAtel v. ARAM Systems Ltd. (2010) ABQB 152); successful settlement of a patent infringement case in the Federal Court of Canada for Alberta Health Services (2010); successful settlement of a technology case involving the manufacture of a drilling rig (2012), appeal of a judgment dismissing a claim of patent infringement, Wenzel Downhole Tools Ltd. and William Wenzel v. National-Oilwell Canada Ltd. et al 2012 F.C.A. 333; mediation of a major trademark case resulting in a Co-Existence Agreement (2013); various successful interlocutory proceedings to stay a patent infringement case (Jason Swist and Crude Solutions Ltd v MEG Energy Corporation 2015); successful settlement of patent ownership dispute (2016); the successful settlement of a patent infringement action (2017); and invalidating of certain claims in a patent relating to the transportation of natural gas (Aux Sable v JL Energy 2019 F.C. 581).
Commercial Litigation - Extensive experience in technology and energy related commercial litigation. Recent noted cases include successful opposition to a major injunction proceeding (EAD Property Holdings (103) Corp v Greyhound Canada Transportation ULC, 2015 ABQB 239 and 2015 ABQB 425); maintaining privilege over an investigation report and whistleblower identity (Talisman Energy Inc. v. Flo-Dynamics Systems Inc. 2015 ABQB 561); freezing orders for assets outside Canada (Talisman Energy Inc. v. Flo-Dynamics Systems Inc. 2015 ABQB 340); successful settlement of a multimillion dollar conspiracy action (2016).
Appeals - Frequently retained to act as appellate counsel on various matters. Recent cases include Desoto Resources Limited v. EnCana Corporation (2011) ABCA 100; Wenzel Downhole Tools Ltd. and William Wenzel v. National-Oilwell Canada Ltd. et al 2012 F.C.A. 333.
Arbitrations and International Work – Extensive experience in both domestic and international arbitrations involving communications, technology and energy matters, including representing a large utility in disputes under Power Purchase Arrangements (PPA). Recent involvement include: co-counsel in a major energy-related arbitration with respect to certain force majeure provisions under a PPA; settlement of a contractual dispute involving New York law before the ICD (2010); successful arbitration of a trademark case (2012); co-counsel on a major arbitration before the LCIA (2013); Canadian counsel on Tullow Uganda Ltd. v. Heritage Oil and Gas Ltd.  EWHC 1656; Canadian counsel on BP Oil International Limited v. Bankers Petroleum Albania Limited a case before the Commercial Court in the English High Court of Justice (2015); major UNCITRAL arbitrations (2014 and 2016); and on LCIA arbitration with respect of a Joint Operating Agreement (2018).
Court, Administrative Tribunal and ADR Experience – Appearance before all levels of court in Alberta, the Federal Court of Canada (both Trial and Appeal levels), the Supreme Court of Canada, the AUEB, the Alberta Securities Commission and various international administrative bodies.
Presentations, Conferences & Publications
- Speaker, Dealing with Allegations of Illegality and Corruption in International Arbitration, International
Association of Defense Counsel Conference, 2018;
- Speaker, Resolving Disputes Your Way: International Arbitration, PDAC, Toronto 2017;
- Speaker, McCarthy Tétrault Advance™: International Arbitration Practice: Going Beyond the Basics and Examining Some Complex Issues, Toronto, 2015
- Speaker, The Internet of Things, ITU Telecom World 2014, Doha, Qatar;
- Speaker, Oil and Gas Patent Litigation, 2014, Calgary, AB;
- Speaker, Privacy in the Digital World, ITU Telecom World 2013, Bangkok, Thailand;
- Speaker, Canadian Patent Litigation, 2013, Joint McCarthy Tétrault/Winston & Strawn Presentation, Calgary, AB and Houston, TX;
- Speaker, Responding to Allegations of Patent Infringement, 2013, Calgary, AB;
- Moderator, C-Suite Outlook-Managing Risk & Navigating Success in the Global Legal Landscape, 2013, Calgary, AB and Toronto, ON;
- Speaker, Data Ownership, ITU Telecom World 2012, Dubai, UAE;
- Speaker, Preparing for Disputes and Litigation, 5th Cloud Computing Law Conference, 2012, Calgary, AB;
- Speaker, Preparing for Disputes and Litigation, 3rd Cloud Computing Law Conference 2011, Calgary, AB;
- Speaker and Moderator, Toxic and Hazardous Substances Litigation, 2011 International Association of Defence Counsel Annual Meeting, Whistler, BC;
- Speaker, “An Introduction to Intellectual Property”, 2008 (Canadian Institute Seminar), Calgary, AB;
- Speaker and Moderator, ITU World Telecom 2006, Hong Kong;
- Speaker, Asia Pacific Economic Community (APEC) Telecom Meeting 2006, Calgary, AB;
- Speaker, “Negotiating and Drafting Intellectual Property Agreements”, 2006 (Canadian Institute Seminar), Calgary;
- Speaker, “Managing Complex Litigation”, 2006 (Canadian Institute Seminar), Toronto;
- Contributing author on Canadian law to: Hopengarten, F. Antenna Zoning, (2nd Ed.) (2011);
- Co-Author: “Effective Cross Licensing” (2006);
- Co-Author: “Recent Judicial Developments in Arbitration and Mediation” (2006);
- Author: “Harmonized Patent Rights for the Americas” (2005); and
- Co-Author: “Dispute Resolution in the Telecommunications Sector: Current Practices and Future Directions”, The World Bank and ITU (2004).