Wobben Properties GmbH v Siemens Plc & Ors concerns a claim brought by Wobben for patent infringement (in relation to European Patent EP (UK) 0 847 496)) against eight defendants. The patented
Wobben Properties GmbH v Siemens Plc & Ors concerns a claim brought by Wobben for patent infringement (in relation to European Patent EP (UK) 0 847 496)) against eight defendants. The patented invention relates to a method of operating a pitch-controlled wind turbine.
The first three defendant companies are part of the wider Siemens group and are referred to collectively in the judgment as Siemens. They are accused by Wobben of manufacturing and supplying wind turbines that infringe the patent-in-suit. The remaining defendants include: (i) companies that have purchased wind turbines from Siemens (i.e. end users); and (ii) companies that install the wind turbines for Siemens and some of Siemens' customers.
This recent decision concerned an application brought by Wobben for an order that Siemens provide information relating to a number of their customers to which they had supplied wind turbines. There were a number of strands to why Wobben wanted this information, but in summary Wobben sought the order so as to be able to act against all infringers at the same time - particularly important to Wobben as the patent had less than two years left to run.
Siemens did not dispute that this information was necessary, but opposed the application on the basis that it would cause grave harm to Siemens' reputation as a result of Wobben communicating with Siemens' customers and asserting that Siemens and its customers were infringing the patent (relying on the earlier case of Sega Enterprises v Alca Electronics). The Judge agreed with the finding in Sega that Courts should exercise caution when granting relief, where to do so would inflict damage on a party despite no actual finding of wrongdoing.
However, the facts in this case were quite particular. At the time of making the application, Wobben already had in its possession a list of Siemens' customers. What it did not have, however, was a list of those customers whose wind turbines (as supplied by Siemens) had been installed and activated (or installed but not yet activated). This put Wobben in a very strong position as regards its application; if the Court refused to make the disclosure order, Wobben would simply bring quia timet proceedings against all of Siemens customers to restrain them from activating and using the allegedly infringing technology, and therefore cause even greater harm to Siemens than if it were provided with an accurate list of the relevant customers. Despite Siemens' view that Wobben would simply not do this, the Judge saw no reason why, in the circumstances, and being legally entitled to do so, it would not. On this basis, the order was granted, as to do otherwise would inflict even greater reputational damage on Siemens.
Comment
On the facts, this seems an unarguably logical decision to have been reached. The decision is a helpful refresher on the authority identified in the case of Norwich Pharmacal which sets out the principles on which such disclosure should be given, Sega and other related cases, namely that when making such an order, the Court must take into account the effect of its decision on all parties before deciding where the justice ultimately lies. We now wait to see what Wobben will do once they receive the information, and how the customers will react - will they all become active participants in the action, or will agreements be reached whereby the customers take a passive role and agree to be bound by the decision in the main action against Siemens?
The first three defendant companies are part of the wider Siemens group and are referred to collectively in the judgment as Siemens. They are accused by Wobben of manufacturing and supplying wind turbines that infringe the patent-in-suit. The remaining defendants include: (i) companies that have purchased wind turbines from Siemens (i.e. end users); and (ii) companies that install the wind turbines for Siemens and some of Siemens' customers.
This recent decision concerned an application brought by Wobben for an order that Siemens provide information relating to a number of their customers to which they had supplied wind turbines. There were a number of strands to why Wobben wanted this information, but in summary Wobben sought the order so as to be able to act against all infringers at the same time - particularly important to Wobben as the patent had less than two years left to run.
Siemens did not dispute that this information was necessary, but opposed the application on the basis that it would cause grave harm to Siemens' reputation as a result of Wobben communicating with Siemens' customers and asserting that Siemens and its customers were infringing the patent (relying on the earlier case of Sega Enterprises v Alca Electronics). The Judge agreed with the finding in Sega that Courts should exercise caution when granting relief, where to do so would inflict damage on a party despite no actual finding of wrongdoing.
However, the facts in this case were quite particular. At the time of making the application, Wobben already had in its possession a list of Siemens' customers. What it did not have, however, was a list of those customers whose wind turbines (as supplied by Siemens) had been installed and activated (or installed but not yet activated). This put Wobben in a very strong position as regards its application; if the Court refused to make the disclosure order, Wobben would simply bring quia timet proceedings against all of Siemens customers to restrain them from activating and using the allegedly infringing technology, and therefore cause even greater harm to Siemens than if it were provided with an accurate list of the relevant customers. Despite Siemens' view that Wobben would simply not do this, the Judge saw no reason why, in the circumstances, and being legally entitled to do so, it would not. On this basis, the order was granted, as to do otherwise would inflict even greater reputational damage on Siemens.
Comment
On the facts, this seems an unarguably logical decision to have been reached. The decision is a helpful refresher on the authority identified in the case of Norwich Pharmacal which sets out the principles on which such disclosure should be given, Sega and other related cases, namely that when making such an order, the Court must take into account the effect of its decision on all parties before deciding where the justice ultimately lies. We now wait to see what Wobben will do once they receive the information, and how the customers will react - will they all become active participants in the action, or will agreements be reached whereby the customers take a passive role and agree to be bound by the decision in the main action against Siemens?