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

This is judgment on liability only in a patent infringement claim relating to two patents, both entitled “A pathway lighting unit” and each describing itself as an invention which “relates to a pathway lighting unit for a walled pathway”: UK Patent GB 2 495 509 (“’509”) and UK Patent GB 2 495 566 (“’566”) and together (“the Patents”). The Patents each have the same priority date which is their filing date of 11 October 2011. The examples in both Patents describe the invention as being suitable for use in places where climbing is to be discouraged, such as on railway bridges.

Both the Claimant and the Defendant design, manufacture and supply exterior lighting fixtures. The Claimant is the proprietor of the Patents and claims that the Defendant’s Alinea Anti-Climb illuminated handrail (“Alinea Product”), which there is no dispute was developed after the priority date of the Patents, infringes the Patents. Before the case management conference in this matter, the Defendant had admitted infringement of the claims of the Patents relied on by the Claimant, subject to the issue of validity. The Defendant counterclaims for a declaration of invalidity and revocation in respect of both Patents, alleging that the claims in issue lack novelty over three items of prior art and are obvious over the same three items of prior art read in the light of the common general knowledge at the priority date.

The items of prior art relied on by the Defendant are:

The claims relied on for infringement, and which are in issue in relation to validity, are:

However, at the CMC:

Accordingly I am only required to determine the validity of Claims 1, 5 (as dependent on Claim 1), 6 and 8 (as dependent on Claim 7 and Claim 1) of ‘509 and Claim 1 of ‘566. To do so, I need to determine, inter alia, disputes about the identity of the person skilled in the art (“PSA”), the common general knowledge at the Priority Date, and the inventive concepts disclosed in the Patents. I am also required to construe the claims. Mr de Froment for the Claimant submits that the dispute about the identity of the PSA fundamentally mirrors that about the common general knowledge, and vice versa, and I accept that this is so, as I will come on to explain.

The trial was heard over two days. Mr Adrian de Froment appeared for the Claimant and Ms Heather Lawrence for the Defendant. I am very grateful to them for their clear and comprehensive skeleton arguments and helpful oral submissions.

As is usual in IPEC, the pleadings were signed by directors of the parties and stand as evidence. Neither were called to give evidence and so their evidence is unchallenged.

The Claimant’s expert is Simon Lee Fisher. He is a product designer specialising in lighting technology and particularly lighting product design. He holds an OND and HND in Industrial Design from the Colchester Institute, and has 34 years’ experience in the field of lighting design, development and innovation. He is a fellow of the Society of Light and Lighting and was Vice President of that body from 2015 to 2017, and sits on technical committees relating to, inter alia, remanufacturing of lighting at the Lighting Industry Association and the British Standards Institute. Mr Fisher wrote an initial report dated 8 November 2024 and a reply to Mr Keay’s report of 29 November 2024. He attended Court and was cross-examined and re-examined.

The Defendant relies on David William Keay, who is a Chartered Electrical Engineer, a Fellow of the Institution of Engineering and Technology and a Chartered Mechanical Engineer and a registered European Engineer. He has a BSc in Electrical and Electronic Engineering from the University of Birmingham and a PGDip in Health & Safety. Mr Keay has over 50 years of experience in the railway and tramway industry. The first 11 years were spent as a Principal Engineer working on the design, development testing and commissioning of railway equipment in the UK and worldwide, first for GEC and then British Railways. He was then Chief Engineer for the Passenger Transport Executive and in 1997 became the Deputy Chief Inspector for HM Railway Inspectorate, responsible for overseeing safety regulation for UK mainline railways, tramways, light railways, metros and heritage railways. He therefore has significant experience in health and safety in respect of railways and railway stations. His work as DCI for HMRI included approval of new works, plant and equipment, including bridges and anti-climb measures. Mr Keay wrote an initial report dated 7 November 2024 and a reply to Mr Fisher’s report dated 29 November 2024. He attended Court and was cross-examined and re-examined.

The experts came from different backgrounds and had very different ideas of who the appropriate PSA should be, and what common general knowledge they should have, and their opinions were necessarily provided through the prism of their suggested PSA. The parties each criticised the other’s expert for their approach, but this was a legitimate difference of opinion and a dispute for the Court to resolve, and I deal with those criticisms when dealing with the question of the PSA and common general knowledge.

The Defendant criticised Mr Fisher for implying into his interpretation of the claims wording which was not there. For example, he opined that to “saddle” the roof for the purposes of Claim 6 of ‘509 meant that it would allow the installer to use both hands, such that the luminaire could be maintained and installed without holding the roof, but those words are not in the claim and he resiled from that in cross-examination. He opined in relation to Claim 8 that the skirt depending from the roof would be a “vertical surface”. These words are not in the claim, as he also accepted in cross-examination. In construing Claim 1 of ‘509 he made reference to “a lighting module receiving bay” which are words that do not appear in Claim 1 and have been borrowed from Claims 7 and 8.

Ms Lawrence put it to Mr Fisher squarely that his interpretation of the claims of the Patents read words into them which are not there, and that he did so in an attempt to limit the scope of the Claims to avoid the prior art. He disagreed, but later admitted, when shown that he had construed Claim 1 by reference to the words “detachably fixed” from Claim 5, that he had in fact attempted to limit Claim 1 by reference to later claims. He said that he didn’t think he had made a mistake, and was just reading the context of all of the Patent as opposed to just Claim 1. When asked if he understood what he had done was impermissible, he said that he was not sure that he still fully understood that. In my assessment, Mr Fisher did not lack independence and was not deliberately trying to limit the claims, but did not fully understand how he should go about it. This is no doubt why in his claim chart he disputed the presence of a number of features of various claims which the Claimant had already admitted. I deal with this at paragraphs 75-78 below, but I accept his evidence in cross-examination that he had not been told that the Claimant had already agreed that certain features of the claims of the Patents were present in the Prior Art. He said, “I was presented with a novelty chart and I opined on it”. In re-examination he confirmed that he had not been provided with the Claimant’s claim charts before he drafted either of his reports, and he had still not seen the Claimant’s claim charts. I accept his evidence.

When it came to obviousness, Mr Fisher also showed a lack of understanding, which I address at paragraph 115 below. I feel that he could have been given a bit more assistance in how to go about these tasks by the Claimant’s solicitors. Despite these challenges, I found Mr Fisher to have the expertise to offer his opinions to the Court, to be honest, and although I have had to scrutinise it carefully, he has provided much evidence which assisted me.

The Claimant submits that Mr Keay suffered from the opposite problem to Mr Fisher, namely a too heavy hand on the tiller by the Defendant’s solicitors. I deal with this at paragraphs 82 and 83 below, but I agree. He was criticised for relying in his report on what he said was lighting on a footbridge at Penkridge station, which in fact it was not, and that took some time to sort out, but I accept that as an honest mistake and in fact that evidence has proved to be irrelevant. The parties will be pleased to know that this is the last mention of Penkridge station in this judgment. Mr de Froment also submitted that Mr Keay had a tendency to seek to argue unrealistic points, but it seems to me that he was fairly open and happy to make concessions where appropriate. I am also satisfied that he had the expertise to offer his opinions to the Court, was honest, and has also provided me with evidence which has assisted me in my task.