Claim No: IP-2023-000054 - [2025] EWHC 563 (IPEC)

Claim 5 of ‘509 is not independently valid, for lack of novelty over Ueda.

There is no dispute that the Court is required to follow the well-known structured approach to obviousness set out in Pozzoli v BDMO SA [2007] FSR 37 at [23], which I will not set out here in the interests of brevity. As both counsel remind me, however, there is only one question, ultimately, which is whether the invention was obvious to the PSA having regard to any matter which forms part of the state of the art at the priority date (per Actavis v ICOS [2019] UKSC 15 at [60]). The Defendant reminds me, citing Brugger v Medic-Aid Ltd [1996] RPC 635 at 656, that it is the claim that is paramount and it is important to consider the inventive concept of the claim over its full width. It also relies on Hallen Co v Brabantia (UK) Ltd [1989] RPC 307 at 327, upheld at [1991] RPC 195, for the principle that “the public are entitled to manufacture that which has been published, in the sense of made available to the public, with obvious modifications”, those being modifications which technically or practically would be obvious to the unimaginative and uninventive PSA in the art.

Going through Pozzoli, then, I have identified the notional PSA and the relevant common general knowledge of that person. I have identified the inventive concept of Claims 1, 5 and 6 of ‘509 at paragraph 43 above. I have considered the parties’ pleaded cases and submissions in relation to the inventive concept of Claim 1 of ‘566 and consider that is the integration of an anti-climb measure into a lighting support which also allows for one or more cables or pipes to run horizontally within it, and can be retrofitted without relocating existing cables or pipes and disrupting the networks they serve. I have addressed the primary differences between the prior art and the claims in relation to novelty.

In relation to Woolston, the Defendant submits that if I found, as I have, that the green wedge is not a roof, that in Mr Keay’s opinion the PSA would consider it obvious to integrate it with the handrail to create a single overall configuration, for example by fixing a panel over any gap between the base of the roof and the body of the luminaire. This is founded on the assertion that it was common to do so on railway infrastructure in order to cover and protect components from the elements and from access by the public, and it follows, in my judgment, from his view of the PSA as someone who “would have had measures to prevent climbing at the front and centre of their mind”. That is not the PSA as I have found him to be. I have found that the PSA is a lighting support design engineer who is not familiar with railway infrastructure within his common general knowledge, and did not have within their common general knowledge either an appreciation that incorporating anti-climb measures into a lighting support was a technical problem that required solving, or any motive to solve it.

Mr Fisher’s opinion in his report is that the PSA would have considered an illuminated handrail of the kind in Woolston, and a lighting support of the kind disclosed in the Patents, to be entirely different, with the functionality of the handrail being an important feature in the mind of the PSA. When addressing obviousness in cross-examination, however, Mr Fisher showed, and admitted, a significant lack of understanding, in my judgment. In particular, when asked by Ms Lawrence why he did not consider that the PSA would think that the Patents were obvious over Woolston, he said “I’m not convinced the PSA would have any drawing or any reference of what it would look like, and wouldn’t know that there was a roof”. It required Ms Lawrence to point out to him that the PSA would have the photographs which were in issue as Prior Art in these proceedings. It may be that he was tired at the end of a long cross-examination. It has caused me to consider what he has said in his report about obviousness very carefully, but it does seem logical and credible to me and I accept it.

Accordingly I consider that it would require invention by the non-inventive PSA who had seen Woolston to produce a pathway lighting support containing the features of Claim 1 of ‘509, and the first part of the inventive concept of Claim 1 of ‘566 (the integration of an anti-climb measure into a lighting support) and so I am satisfied they are not obvious.

In relation to Claims 5, 6 and 8, although it accepts those features are absent from Woolston, the Defendant relies on Mr Keay’s opinion that a detachable roof, saddled over a lighting support bracket and a panel which would form a lighting module receiving bay are routine modifications of a lighting support which would not require any degree of invention for a PSA who had seen Woolston to produce a pathway lighting support containing the features of those claims. I do not accept this submission either, for really the same reasons. It seems to me that these cannot be characterised as routine modifications which an unimaginative and uninventive PSA as I have defined him to be would undertake, having seen Woolston.

In relation to Ueda, Mr Keay’s opinion, should the Court find, as I have done, that Ueda does not disclose a lighting support with a roof sloped at 45 degrees from the side wall to which it is attached, is that it would be obvious to the PSA that the invention described in Ueda envisages a roof which had an angle of inclination of 45 degrees or less. In his opinion the PSA would not consider that this particular choice of this angle of inclination was unusual for an anti-climb measure, as it was part of the common general knowledge. However, I have found that it was not part of the common general knowledge of the PSA as I have found him to be, and once again, this does not fit with my finding that the PSA did not have within their common general knowledge either an appreciation that incorporating anti-climb measures into a lighting support was a technical problem that required solving, or any motive to solve it. Accordingly I consider that for the PSA who had read Ueda to produce a lighting support with the features of Claim 1 of ‘509 would require an inventive step. It is not obvious.

I have found that Claim 5 of ‘509 lacks independent validity for lack of novelty over Ueda because the roof is detachable, so I will not go on to consider the Defendant’s argument on inventiveness.

The Defendant submits that the PSA would consider it obvious to modify Ueda to saddle the roof over the bracket for the purposes of Claim 6 of ‘509, and to modify Ueda to add features 1(b) (elongate the support) and 1(d) of ‘566 (support at least one pipe or cable), but I do not agree. The Defendant has not made any submissions about why the PSA, having read Ueda, would be motivated to do any of these things and I consider that it would require invention on his part to do so.

In relation to Profila, the Defendant relies on Mr Keay’s opinion to submit that, if I find that Profila is not configured to inhibit a foothold because the Bench Trunking brochure does not disclose that it can be mounted on a wall in any orientation other than as illustrated, and that it is unsuitable for lighting a pathway, as I have found, the PSA would nonetheless consider it obvious that Profila could be used to illuminate a pathway. It submits that is because although not ideal, upward lighting may be necessary for reasons other than illuminating the ground, such as for aesthetic reasons. Mr Fisher’s evidence is that the PSA would not make a link between the undershelf lighting of Profila and the design of a lighting support with an integrated anti-climb measure. I am with Mr Fisher. It seems to me that the 45 degree angle at which the light would come out of the roof of Profila, if installed inverted as the Defendant suggests, would be quite blinding to pathway users unless installed at a height above the pathway users’ eye-line, in which case it is unlikely to need to be anti-climb. I do not consider that would be a technically or practically obvious modification for the PSA. I do not consider that an unimaginative and uninventive PSA having seen the Bench Trunking brochure showing a product used as downward undershelf lighting would consider that it could be installed in this way for this purpose, and for him to do so would require an inventive step.

Finally, the Defendant makes a fairly bare submission that it would not require any degree of invention for the PSA who had seen Profila to produce a pathway lighting support containing the features of Claims 5, 6 and 8. If Profila was installed as the Defendant suggests so that the roof is where the lighting module emits the light, then I am satisfied that the Profila module has a detachable roof which is saddled over the bracket, so no further inventive step is required. In respect of Claim 8, I do not understand how a portion of the lighting module receiving bay could be formed by a skirt wall depending from the roof, when the roof lighting module was inserted into the roof as envisaged by the Defendant. Nor can I understand what would motivate the unimaginative and uninventive PSA to seek to achieve that. In my judgment this would not be a routine modification but one that would require an inventive step.

For those reasons, I find that none of Claims 1, 5, 6 and 8 of ‘509 or Claim 1 of ‘566, are invalid for obviousness over the prior art.

Claims 1, 6 and 8 (as dependent on Claim 7 and Claim 1) of ‘509 are valid and Claims 1 and 6 are infringed by the Defendant as admitted.

Claims 1, 12 and 14 (as dependent on Claim 13 and Claim 1) of ‘566 are valid and Claims 1 and 12 are infringed by the Defendant as admitted.

Claim 5 of ‘509 is not valid independently of claim 1, for lack of novelty over Ueda.