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

I am with the Claimant. In my judgment, following Illumina, the objective answer in respect of ‘509 to “What problem does the invention aim to solve?” is the integration of anti-step measures into a lighting support suitable for fixing on the side wall of a walled pathway, as Mr Keay accepted in cross-examination. The established field existing at the priority date in which that problem in fact can be located is, in my judgment, the field of lighting support design, for the following reasons:

Even if I am wrong on that latter point, that alternative established field seems far too wide when considered in hindsight against what was going on in reality at the relevant time. What came out of both experts’ evidence, but particularly that of Mr Keay’s oral evidence in my judgment, was that a lighting support product which would be safe and suitable for one application or installation would not or might not be safe and suitable for another. He gave, as an example, a standard bulkhead light of the type illustrated in his first report in figures 7 and 8, which has the potential to be used as a foothold. As he said, such a light might be suitable for use on the side wall of a railway bridge if it was positioned high up, so that it realistically could not be used as a foothold; or it might be suitable for use lower down if the side walls were so high that the step up provided by the bulkhead was ineffectual to aid climbing, or if other mitigations had been put in place such as a cage over the bridge. In reality, as he stated, before any lighting support was installed in those sorts of high-risk areas, the relevant location would be risk assessed, with relevant regulations and guidelines identified and taken into account, and an appropriate product specified or commissioned taking into account the site, the history, the regulatory framework, and the other mitigations which were or would be put in place.

Accordingly, in my judgment, the problem which the invention sought to solve was not located in the field of those with experience in pedestrian safety and ant-vandalism measures in public spaces, or with an interest in handrails and lights in publicly accessible infrastructure, who Mr Keay described really as those specifying such lighting in an infrastructure team. I accept his evidence that those who were specifying lighting at the priority date could choose and specify whatever lighting support products were on the market, or they could commission a custom-designed solution to meet their particular brief, and install them together with anti-climb mitigations, whether those were physical (spikes, infills, cages, sloped surfaces and copings as identified by Mr Keay in his first report); psychological (notices, other visual signals not to climb as described by Mr Keay in his cross-examination); placement of fittings and fittings to deter climbing as already discussed; or CCTV or live surveillance. However they were not developing new lighting products. Even when commissioning custom-designed lighting supports, those were being designed by lighting support designers like the Claimant’s proposed PSA to meet the brief required. Mr Keay’s evidence was that a person working at Railtrack or one of its contractors or in railway safety inspection would not look at patents, although he accepted that a lighting product design engineer would need to keep up with the latest technology and would pay attention to patents. Mr de Froment submits that it is clear from Mr Keay’s evidence that the Defendant’s PSA would not have a real and practical interest in the Patents, but of course, as Ms Lawrence says, the question is rather who would have a real and practical interest in the subject matter of the invention.

I have considered, but reject, the Defendant’s submission that the Claimant’s PSA is far too narrow, and reflects a “blinkered approach” not rooted in the real world. I am satisfied that it reflects what was going on in reality at the priority date. I am satisfied that such a lighting support design engineer was either designing lighting supports for the general public infrastructure market, without knowing exactly where or for what purpose that would be specified, and so the only regulations and standards that it would comply with were those for luminaires in publicly available spaces, as Mr Fisher stated, or he/she was designing lighting supports to meet a specific, custom brief, such as from a member of the railway infrastructure team. Such a brief would have been produced, on Mr Keay’s evidence, following the risk assessment process he described, and would include within it such regulatory standards or guidance as the commissioner required the designer to design the lighting support to meet. I accept Ms Lawrence’s submission that “you could not design a lighting support for a railway bridge without knowing what the rules and regulations were for railway bridges”, but such a designer could design a general lighting support for publicly accessible infrastructure products without knowing such rules and regulations, and it would be up to the railway infrastructure team either to specify it, if it could be installed safely in a specific site either with or without additional mitigations, or to choose not to specify it. This is the point Mr Fisher made when he said that “at the point of designing [such a lighting support] it would not be clear that [railway infrastructure] was the intended or sole application and so he would not have designed for that environment”. Alternatively such a designer could design a lighting support to meet a commissioned design specification or brief for a railway bridge if that specification/brief informed him of the rules and regulations he had to meet.

Accordingly, I am satisfied that it is the notional lighting support design engineer identified by the Claimant, in that established field of lighting support design, which is the PSA. I am satisfied that such a notional person will have a real and practical interest in the subject matter of the invention, which includes devising the invention itself as well as putting it into practice.

The parties have each pleaded statements of the common general knowledge. There is little if any material dispute that the common general knowledge would have included knowledge on a range of lighting matters as set out in both parties’ pleaded statements and the experts’ reports, save as set out below.

The main dispute between them is whether the common general knowledge would include safety matters relating to anti-climb measures generally, rail safety regulatory requirements and guidelines, including about anti-climb measures, and various specific safety features relating to railway footbridges, as set out in Mr Keay’s report. The Claimant’s case, supported by Mr Fisher’s opinion, is that the PSA would have no knowledge of these matters, and the Defendant’s case, supported by Mr Keay’s opinion, is that that the PSA would. It follows my finding that the PSA is a lighting support design engineer that I accept Mr Fisher’s evidence that the PSA’s common general knowledge would not include knowledge of rail safety regulatory requirements, standards and guidelines relating to anti-climb measures or safety features relating to anti-climb or railways generally, including those which the Defendant has pleaded as being within the common general knowledge. Further, I accept Mr de Froment’s submissions that:

There is little dispute about the lighting matters which are within the common general knowledge. I am satisfied that the following matters were common general knowledge as at 11 October 2011:

It is for the Court to construe the patent objectively, adopting the mantle of the notional PSA to whom it is directed, and in the light of the common general knowledge with which the PSA is assumed to be imbued (Dyson v Hoover [2001] R.P.C 26 at [48f]). It is common ground that the Court must give the language of a claim a purposive construction, in light of the inventor’s purpose as set out in the description, to arrive at the meaning which would have been understood by those to whom it is actually addressed (see Lord Neuberger in Eli Lilly v Actavis [2017] UKSC 48, [2017] RPC 21 at [54], Lord Hoffman in Kirin-Amgen [2005] RPC 9 at [32]). However, it is not legitimate to narrow or extend the clear meaning of the language of a claim by references to the specification as where language is clear and unambiguous, it does not require construing (see [21] of the judgment of Lord Clarke of Stone-cum-Ebony JSC, with whom the other members of the Court agreed, in Rainy Sky SA v Kookmin Bank [2001] UKSC 50, [2011] 1 WLR 2900: “Where the parties have used unambiguous language, the court must apply it”, albeit not cited by either party). To narrow or widen a claim in such circumstances is not construing it, but amending it.

Similarly, per Floyd J in Nokia v Ipcom [2009] EWHC 3482 (Pat) at [41] (approved by the Court of Appeal in Optis v Apple [2021] EWCA Civ 1619 at [50]), relied on by the Defendant:

“Where a patentee has used general language in a claim, but has described the invention by reference to a specific embodiment, it is not normally legitimate to write limitations into the claim corresponding to details of the specific embodiment, if the patentee has chosen not to do so. The specific embodiments are merely examples of what is claimed as the invention, and are often expressly, although superfluously, stated not to be ‘limiting’. There is no general principle which requires the court to assume that the patentee intended to claim the most sophisticated embodiment of the invention. The skilled person understands that, in the claim, the patentee is stating the limits of the monopoly which it claims, not seeking to describe every detail of the manifold ways in which the invention may be put into effect.”

The Claimant seeks the Court’s construction of a number of the claims or claims integers. However, one of those is the meaning of “bracket” in integer 1(b) of 509, despite the Claimant having admitted the presence of claim feature 1(b) in each of Woolston, Ueda and Profila. Mr de Froment originally sought to argue that although it was not necessary to construe this integer for the purposes of novelty, it remained in dispute for the purposes of obviousness. I accept Ms Lawrence’s submission for the Defendant that there can be only one construction which applies across the case for all purposes, whether the Court is considering novelty, obviousness or, indeed, normal infringement. There are exceptions, of course, in the case of infringement by equivalence and product-by-process claims, but neither are a feature of this case. I believe Mr de Froment also accepted this principle in closing. See Kitchin J as he then was at [88] in European Central Bank v Document Security Systems [2007] EWHC 600, relied on by the Defendant and approved on appeal by the Court of Appeal [2008] EWCA Civ.

Of the remaining elements of the claims that I am asked to construe, then, three I can dispose of quickly as I do not consider they need construing:

There is a greater dispute over the construction of “lighting module” for the purposes of integer 1(c) of ‘509 and “on top of” for the purposes of integer 1(d) of ‘509.