Wobben Properties GmbH v Siemens Plc and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss,Mr Justice Birss |
| Judgment Date | 20 July 2015 |
| Neutral Citation | [2015] EWHC 2114 (Pat) |
| Docket Number | Case No: HP-2013000014 |
| Court | Chancery Division (Patents Court) |
| Date | 20 July 2015 |
[2015] EWHC 2114 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Birss
Case No: HP-2013000014
Formerly: HP13 E02610
Andrew Lykiardopoulos QC and James Abrahams (instructed by Powell Gilbert LLP) for the Claimant
Justin Turner QC and James Whyte (instructed by Bristows LLP) for the Defendant
Hearing dates: 19th, 22nd, 23rd, 24th, 30th June and 1 st July 2015
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Topic | Paragraph |
| Introduction | 1 |
| The issues | 3 |
| The witnesses | 10 |
| The skilled person | 25 |
| Common general knowledge | 27 |
| The patent | 68 |
| Claim construction | 84 |
| Novelty: | 86 |
| Shozaburo | 87 |
| Inventive step | 115 |
| Bossanyi | 118 |
| Infringement | 153 |
| The foreign decisions | 210 |
| Conclusion | 211 |
| Annex 1 — the claims |
Introduction
This case is about wind turbines. The claimant (Wobben) holds patent EP (UK) 0 847 496 entitled "Method of Operating a Wind Power Station". The patent claims priority from a German filing on 1 st September 1995. The patent was granted on 9 th August 2000. Wobben contends that the defendants have infringed the patent by installing wind turbines in the UK. Particular installations relied on include the off-shore sites at the London Array, Westermost Rough and Gunfleet Sands. Before me Wobben estimated the value of this action as of the order of £13 million.
It is convenient to refer to the defendants collectively as Siemens. Siemens denies infringement and contends that the patent is invalid.
The issues
The authentic text of the UK patent is German. There is an agreed translation.
Wobben contends that a particular feature of the Siemens wind turbine technology infringes the patent. The feature is called High Wind Ride Through (HWRT). There is no debate about exactly how HWRT works but there is an argument about whether it falls within the claims.
Siemens relies on two items of prior art:
i) A Japanese application filed in 1980 and published in 1981 as JP 56-150999 (" Shozaburo").
ii) The article " Probabilities of sudden drop in power from a wind turbine cluster" written by E.A. Bossanyi and published in September 1982 (" Bossanyi").
Shozaburo is cited for novelty and lack of inventive step. Bossanyi is relied on for lack of inventive step only. Up to trial Siemens had also relied on a United States patent dating from 1855 (US 13, 247 " Frantz") but this was dropped. Insufficiency was pleaded but all those arguments have either fallen away or no longer appear to be advanced.
Wobben has applied to amend the claims in various ways. Its position was clarified following a pre-trial review. Wobben sought some unconditional amendments and advanced others conditionally. By the opening of the trial the position resolved down to two sets of claims, referred to as a Main Request and an Auxiliary Request. By closing there was no need for Wobben to maintain the amendments in the Auxiliary Request and Siemens did not object to the amendments set out in the Main Request in Annex 1 (which includes deletion of claim 3). The amendments are shown underlined and struck through as compared to the granted claims.
Wobben contends that claims 1 and 4 are independently valid. The court need not consider claim 2.
An uncontentious amendment is sought to the German language version of the claims. That is because they contain an obvious typographical error in which some English wording has been inserted by accident. It was not opposed. I will allow the amendments in the form sought by Wobben in the Main Request and to correct the typo on the German language claim.
The witnesses
Wobben called expert evidence from Professor Douglas Leith. Prof Leith is a Professor in the School of Computer Science and Statistics at Trinity College Dublin. At the priority date, he worked within the Industrial Control Unit at the University of Strathclyde. At the time, this group was one of the leading research groups in the UK on wind turbine control and was an international centre of excellence. The group at Strathclyde always had strong industry links and Prof Leith's projects were in part sponsored by industry including Wind Energy Group (WEG) and Renewable Energy Systems (RES). Prof Leith dealt with both validity and infringement.
Prof Leith gave his evidence fairly, clearly aiming to assist the court. Siemens did contend that the Professor was not well positioned to deal with the issues for various reasons I will address. Before doing so I will mention Siemens' submission that one aspect of his evidence was "not satisfactory". This related to what Siemens called the witness's rigidity of approach in relation to whether there was a convention relating to turbine shut down at the priority date. Prof Leith's evidence was not unsatisfactory. He explained his genuinely held opinion on this point and gave reasons for it. I reject the submission that anything can be made of long pauses which counsel submitted occurred at certain points in his cross-examination. Any pauses by Prof Leith made no impression on me other than being the result of the expert taking proper care about his answers.
Siemens refers to mistakes Prof Leith is alleged to have made. They are best addressed in context.
As regards the expert's position, the major submissions were:
i) that Prof Leith was unaware of any commercial variable speed, variable pitch turbine (VSVP) turbines which were operating at the priority date (large or small).
ii) that Prof Leith rigidly adhered to a view about how turbines were operated in high winds which was unjustified.
As to the first point, Prof Leith's first direct experience of working on a VSVP machine was the design project which started in 1996 (or 1995) for a VSVP machine for the company RES. What I understood Prof Leith to have explained in cross-examination (transcript T1/8410-12) was that before 1996 (or 1995) he knew about the concept of VSVP machines and how they worked. As I understood his evidence as a whole, he was not concerned with and did not know the details of any commercially operational VSVP machines at the priority date. That reflects his experience and role as an academic albeit one with close links to the industry at the relevant time.
There is nothing in the second point. As I shall address below, the normal way turbines were run in high winds was clear in the evidence. Prof Leith was not inappropriately inflexible on this.
Overall I thought that Prof Leith's evidence was given from a position of genuine knowledge and experience of the issues of control engineering relating to wind turbines. He was in a position to assist the court in that respect. I also have in mind that he left the industry well before this case and so in a sense his knowledge is uncontaminated with knowledge of later developments.
Siemens called expert evidence relating to validity from Mr Charles Butterfield. Mr Butterfield holds a BSc and MSc in Mechanical Engineering from the University of Massachusetts. In 1980 he co-founded a wind turbine manufacturing company and from 1986 he worked at the National Renewable Energy Laboratory (NREL), a US wind technology research and development laboratory. By 1994 he was the Chief Engineer of NREL's National Wind Technology Center. In 2010 he founded his own start-up company focussed on direct drive generators.
Mr Butterfield gave his evidence fairly, clearly aiming to assist the court. Wobben submitted he was dogmatic, could not entertain the possibility that others might not have thought as he did and had not taken a proper approach to common general knowledge because he had not gone back and checked his views against the documents. Mr Butterfield did not seem dogmatic to me. I reject the submission that he can be criticised for his approach. He clearly had a wealth of practical experience in the industry. Evidence of common general knowledge may come from textbooks but in a practical field textbooks do not necessarily reflect what those actually working in the art knew or thought. Mr Butterfield's approach was not inappropriate. I will deal with Mr Butterfield's evidence about shut down speed in context.
Mr Butterfield explained in cross-examination that he first heard about the Wobben patent long before this case, in the early 2000s and was not impressed. This does not disqualify him from giving evidence. Wobben submitted that Mr Butterfield's approach to the prior art was flawed because he read Bossanyi and Shozaburo knowing that this was a dispute about different shut down techniques. I agree with Wobben that it is incumbent on an expert to put him or herself back into the correct frame of mind at the priority date. I am sure that Mr Butterfield did so. The submission that he "did not wrestle with any of this" is unwarranted.
Wobben criticise Mr Butterfield for denigrating Prof Leith at one point. The tone of Mr Butterfield's remark at the time was beneath him but has no wider significance and Mr Butterfield immediately said sorry. This is a tiny point, only mentioned to be dismissed.
On infringement Siemens called Dr Richard Santos. He completed his MSc in 1990 at Syracuse University and has a PhD in aerospace sciences from the University of Colorado relating to "Damage Mitigating...
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