Unlike the outcome of a related US action where GE was banned from selling its Haliade-X wind turbines in the US, the UK judge found that GE did not infringe Siemens Gamesa's patent because certain features of the patent were absent and because the installation of wind turbines at Dogger Bank was not considered to be within the territorial ambit of the UK Patents Act – an important consideration for all patent holders in the offshore wind industry.
Siemens Gamesa's patent was directed to a wind turbine and required that “an outer ring of the at least one bearing is integral with an annular member of the rotor hub”, with the terms “integral” and “of the rotor hub” being central to the proceedings.
To briefly summarize, GE argued they did not infringe because the term “integral” did not cover their press-fit connection and that their annular member was of the generator, not “of the rotor hub”.
The judge concluded, based on expert evidence, that the term “integral” would be understood to cover GE’s press-fit connection (due to loads being transmitted in the same way), however GE managed to escape infringement because the judge agreed that GE’s annular member was part of the generator, not the rotor hub, despite Siemens Gamesa's arguments to the contrary.
Despite the difference in GE’s annular member resulting in no infringement, the judge went on to say that the installation of GE’s wind turbine at Dogger Bank would not be covered by Siemens’ UK patent.
In particular, for a UK patent to be infringed, the infringing act (e.g. making, using, selling or importing a product) must have taken place in the UK.
However, UK patent law goes further to clarify the territorial scope in respect of the continental waters of the UK to activities connected with the exploitation of the natural resources of the shore, bed of waters or the subsoil beneath it.
The judge concluded that GE’s plans to assemble their wind turbines at Dogger Bank would not be “exploitation” of the kind required since no natural resources of the shore or bed of waters were exploited, instead what is taken advantage of is the mere existence of the sea bed and subsoil beneath it.
Implications of the judgment
The judge’s interpretation of “exploitation” appears to open the door for offshore use of patented technology in wind turbines without the risk of infringement. This may have significant repercussions for patents relating to offshore wind technology, and highlights the importance for patent owners to ensure their patents are fit to capture infringement at all stages of deployment.
Fortunately, there are several ways to prevent this potential issue in patent protection arising.
For instance, while one may consider writing a patent to protect a wind turbine utilizing their invention, this may require a third party to assemble the complete wind turbine before infringement occurs, and if the third party only assembles their wind turbine at an offshore location, there is a risk that the patent holder’s rights could be undermined.
Therefore, it is important that patents are written in a way to protect multiple forms of the invention, in particular so that a third party’s onshore activities are captured where the law unequivocally applies.
For example, a patent that protects “a kit of parts” may be able to capture a third party’s activities at port before the parts are transported offshore for assembly, while a patent that protects a method may capture the third party’s activities in preparing the kit of parts for transport.
It will now be particularly interesting to see if Siemens Gamesa appeal this decision and whether any of the judge’s conclusions are overturned, especially since the judge’s finding on the territorial reach of a UK patent may have a broad impact on patents in this field.
Robbie Gauld is European patent attorney at Marks & Clerk
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