Wobben Properties GmbH v Siemens Public Ltd Company and others  EWHC 3173 (Pat) is a Patents Court, England and Wales, decision of Mr Justice Morgan that dates back to early December of last year. Sorry about the delay in blogging it, but we are all over-stretched and this blog desperately needs more blogging fire-power. This decision is one of the many which deal with the nuts and bolts of procedural issues in pursuit of enforcement at national level.
Norwich Pharmacal order that Siemens disclose the names of the customers concerned.
Siemens resisted the application, arguing that the disclosure of the information would cause it reputational damage.
Morgan J granted the application. In his view:
* the jurisdictional requirements for making a Norwich Pharmacal order had been made out. If the technology had been activated, resulting in its use by a customer, there was an arguable case of infringement which Siemens would have facilitated; Siemens had the information that Wobben asked for, and Wobben was not able to know which customers had arguably committed patent infringement by using the technology unless Siemens told it that which customers the technology had been activated for
* in proceedings against the end-users, the time and resources of Wobben and of the court would be wasted if the issue of the patent's validity were to be raised again.
* As for reputational damage likely to be suffered by Siemens, it was actually the case that Siemens ran a higher risk of exposure to even greater reputational damage, involving more customers, if it didn't provide the information sought. This was because Wobben was likely to make claims against more customers if it didn't know which ones to sue than it would if Siemen eliminated the customers which had not used the technology.
* it was not appropriate to have a mini trial in relation to the assertions and counter-assertions about reputational damage. Rather, the court should simply assess the likelihood (or risk) of serious harm coming about. On this basis Siemens would be better off if the court made the order sought, leaving it to Siemens to put its own spin on it via its own customer communications.
* while Wobben could could have made its application sooner, it would be disproportionate to deny it a Norwich Pharmacal order on the ground of delay.
This decision seems to be a sensible and practical one, particularly when viewed from the perspective of the efficient use of the court's time and resources -- an issue that the House of Lords did not consider when it first contemplated the availability of such orders back in 1973.