Wobben Properties Gmbh v Siemens Plc and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Morgan |
| Judgment Date | 02 October 2014 |
| Neutral Citation | [2014] EWHC 3173 (Pat) |
| Docket Number | Claim No: HP13 E02610 |
| Court | Chancery Division (Patents Court) |
| Date | 02 October 2014 |
[2014] EWHC 3173 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
The Rolls Building,
7 Rolls Buildings,
Fetter Lane,
London, EC4A 1NL
Mr. Justice Morgan
Claim No: HP13 E02610
Mr. James Abrahams (instructed by Powell Gilbert LLP) for the Claimant
Mr. James Whyte (instructed by Bristows LLP) for the Defendants
Introduction
These proceedings consist of claims against various defendants for alleged patent infringement in respect of a European patent EP (UK) 0 847 496, of which the claimant is the proprietor (by assignment). The patent relates to an alleged invention of a method of operating a pitch-controlled wind turbine. The first three defendants to the claim are Siemens plc, Siemens Wind Power AS and Siemens AG. I will refer to these defendants collectively as "Siemens". The claimant contends that Siemens have infringed the patent by manufacturing, marketing and supplying wind turbines to its customers, which wind turbines incorporate technology which is the subject of the patent.
This judgment concerns an application by the claimant for an order that Siemens do provide to the claimant information as to its customers within the jurisdiction of the court and, in particular, information as to the identity of customers to whom Siemens have supplied allegedly infringing wind turbines, the number of such wind turbines owned and operated by such customers, and the period of time during which the allegedly infringing technology has been both installed and activated for use in relation to those turbines. The information sought is not confined to those cases where the technology has been installed and activated in the past, but extends to cases where the technology is installed and activated after the date of the order.
The claimant says that the court has power to make the order it seeks either under CPR Part 18, dealing with further information, or under the jurisdiction identified in Norwich Pharmacal Co. v Customs and Excise [1974] A.C. 133 ('Norwich Pharmacal') and the cases which have followed that decision.
The Proceedings
The claim form in these proceedings was issued on 3 rd July 2013. There are altogether eight defendants. The claimant contends that all of the defendants have infringed the patent in suit. I have described the claim against the first three defendants ('Siemens'). The next three defendants have been referred to as Dong Energy and it is said that they have infringed the patent in the course of their development of various wind farms which use the wind turbines manufactured by Siemens. The last two defendants have been referred to as A2SEA. It is said that they have infringed the patent in the course of their installation of wind turbines for Siemens and Dong Energy.
All eight defendants have instructed the same solicitors and counsel and have served a single defence and counterclaim. The defendants contend that the patent in suit is invalid on various grounds. The proceedings have been the subject of two case management hearings before Mann J. The hearings took place on 28 th March 2014 and 8 th May 2014. Mann J gave directions for a trial which will focus on the issues arising as to the validity of, and the infringement of, the patent. That trial is scheduled to take place in June 2015 with a time estimate of seven days with one day pre-reading.
The London Array proceedings
The claimant has brought a further set of proceedings in which it alleges infringement of the same patent. The defendant in those proceedings is London Array Limited ('London Array'). This defendant owns, and is responsible for, the operation of the London Array Offshore Wind Farm in the Thames Estuary. London Array is a customer of Siemens. This wind farm uses a large number of Siemens wind turbines in which there has been installed the allegedly infringing technology.
London Array has defended the proceedings brought against it. It alleges that the patent is invalid on a number of grounds. Those grounds are much the same as the grounds put forward in the first set of proceedings against Siemens and others save that London Array has pleaded that it will rely upon an additional piece of prior art not (so far) relied upon by Siemens and the other defendants. Although London Array's solicitors are not the same as the solicitors instructed by Siemens and the other defendants, London Array has now instructed the same counsel as are instructed by Siemens and the other defendants and both sets of proceedings will be heard together in June 2015.
The Claimant's case
The claimant says that the allegedly infringing technology has been installed in the wind turbines which Siemens have supplied to its customers. In some cases, but certainly not all cases, that technology has been, or may have been, activated so that it has been used by Siemens' customers. Further, the technology could be activated and used between the present time and the date of the trial in June 2015.
The claimant is not at present minded to argue that the mere installation of the technology in wind turbines supplied to a customer is an infringement by the customer, but the claimant does wish to argue that the activation of that technology leading to its use by a customer is an infringement by the customer. It is said that the use of the technology is very profitable both for Siemens and for a customer who uses it.
The claimant says that in many cases of alleged patent infringement, a patentee is content to sue only the supplier of an infringing product or process, without also suing the end user. In such a case, a patentee can have a high degree of confidence that a decision of the court that a patent is valid and has been infringed by the supplier will not be challenged by the end user. Thus, if it becomes necessary for the patentee to claim relief as against the end user, the issue of the validity of the patent will not in practice have to be fought out a second or subsequent time.
It is said that this case is different principally because: (1) the end users of the technology are very substantial parties; (2) the use of the technology is very profitable; and (3) the patent expires in August 2016 so that the delay which might be involved in bringing a second or subsequent action against an end user may result in the claimant not obtaining injunctive relief before the expiry of the patent.
The claimant says that this combination of circumstances is at least likely to produce the result that a decision of the court following the trial in June 2015 upholding the validity of the patent will not be accepted by the end users of the infringing technology. The claimant can point to the fact, as I understand it, that when London Array was asked to agree to be bound by the decision in the proceedings against Siemens and others, it declined to do so.
The claimant says that if it succeeds in the two sets of proceedings which it has already brought and it then becomes necessary to sue one or more end users of the technology, those end users will not be bound (by res judicata) by the decision of the court in the first two sets of proceedings. A declaration that the patent is valid will not be a judgment in rem. The end users can allege that the patent is invalid and the matter will have to be tried a second or subsequent time. Such a result would be wasteful of the time and resources of the claimants. Such a result would be wasteful of the time and resources of the court.
If an end user succeeded in challenging the validity of the patent and in obtaining an order revoking the patent, the result would be that any injunction obtained in the first two sets of proceedings and any order for an inquiry as to damages or an account of profits would be overridden by the revocation of the patent, see Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2014] A.C. 160. This would produce the result that the defendants in the first two sets of proceedings would have a second bite of the cherry of attempting to have the patent declared invalid.
If the claimant is given information as to the identity of Siemens' customers within the jurisdiction where the technology has been activated, or is activated between the present time and the trial, the claimant can take steps to bring about the result that such a customer agrees to be bound by the decision in the first two sets of proceedings or, if necessary, is joined as a party to those proceedings, or similar further proceedings are brought. If such a customer realises that the claimant is in a position to proceed against it in that way, it is submitted that it is likely that a customer will agree to be so bound.
Such an agreement would make good sense from the customer's standpoint. The customer would know that the present proceedings are being defended by specialist solicitors and counsel so the customer need not incur expense of its own in defending proceedings to which it is a party. If, for whatever reason, such customer did not agree to be bound by the result of the present proceedings then the claimant will be able to take action to join that customer or bring separate proceedings against it and to obtain an order that the claim against such a customer will also be heard in June 2015. It is submitted that there is still time for such steps to...
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