Wobben Properties GmbH v Siemens Public Ltd Company & Ors

For a Norwich Pharmacal order, the court must consider whether an arguable wrong has been committed, whether the respondent facilitated it, whether the respondent holds the information, whether disclosure is needed to enable proceedings, and whether disclosure is just. The justice of the case requires a practical balance between the claimant’s need and the respondent’s potential harm. Reputational damage does not automatically defeat relief. The court may consider whether refusing disclosure would expose the respondent to greater harm by encouraging wider proceedings. An order under CPR Part 18 is inappropriate where the information is not presently necessary for the existing proceedings, although it may become relevant at a later inquiry into damages or account of profits.

The claimant alleged that the defendants had infringed a European patent concerning technology installed in wind turbines. It sought information from Siemens identifying customers whose turbines had activated the allegedly infringing technology, so that proceedings could be brought against those customers or they could be joined to existing proceedings.

The application relied on CPR Part 18 and the Norwich Pharmacal jurisdiction. Siemens opposed disclosure, principally on the grounds that it was premature, that the claimant had delayed, and that disclosure could cause serious reputational damage. The central issue was whether disclosure was presently necessary and just.

1. Application granted. Siemens were ordered to provide the requested information.
2. An order under Civil Procedure Rules 1998 Part 18 was not appropriate at this stage. The information was not necessary for the existing infringement proceedings. It might become material later if the claim succeeded and an inquiry as to damages or an account of profits were ordered.
3. The Norwich Pharmacal jurisdiction required consideration of five matters: an arguable wrong by Siemens’ customers; facilitation of that wrong by Siemens; possession of the information by Siemens; the claimant’s need for the information to bring proceedings against the customers; and whether it was just to make the order.
4. The first four requirements were satisfied. Activation and use of the technology gave rise to an arguable patent infringement. Siemens had facilitated the alleged wrong, possessed the relevant information, and could identify customers who had actually used the technology. Requiring the claimant to sue every customer and discontinue against those who had not used the technology would be undesirable and wasteful.
5. The decisive question was the balance of justice. Sequential proceedings could require the validity of the patent to be tried repeatedly. There was no procedural injustice to Siemens in enabling customers to agree to be bound, to be joined, or to be dealt with in related proceedings.
6. Reputational damage was a relevant consideration, but the evidence did not justify a mini-trial. The court assessed the risk of serious harm. Refusing disclosure carried a high risk of greater reputational damage because the claimant could lawfully bring quia timet proceedings against a wider group of customers. The approach in Sega Enterprises Ltd v Alca Electronics [1982] FSR 516 required the court to consider the effect of its decision on both parties, but did not dictate the result on materially different facts. The balancing approach in Eli Lilly v Neolab [2008] FSR 615 was similarly relevant.
7. The claimant’s delay did not justify refusing otherwise appropriate relief. It was proportionate to grant the order while there remained time for relevant customers to be joined or otherwise dealt with before trial. No undertaking in damages was required on the facts.