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

The context is integer 1(d) of ‘509 – “a roof located on top of the support in normal use”.

The dispute is that the Claimant submits the PSA would understand this to mean that the roof is attached to and contiguous with the support, just as the roof of a house is part of, and contiguous with the house, whereas the Defendant submits that there is no such requirement in the claim for the roof to be an integral part of the support, and submits that a “roof” within Claim 1 can be not touching and separate to the lighting support, as we will come to see when considering the Woolston prior art.

Mr Fisher in his first report opines that the PSA would understand the “roof” to be a solid structure covering the assembly and “on top of” as requiring the roof to be an integral part of the whole lighting support. In cross-examination by Ms Lawrence he said that he considered that “a roof located on top of the support in normal use” implies that it is fixed to the support, but he said that he arrived at that interpretation by looking at one of the diagrammatic figures in the Patent (which Ms Lawrence described as one of the embodiments but in fact there is only a single embodiment illustrated in multiple figures), and by the fact that Claim 5 refers to a support “wherein the roof is detachably fixed to the bracket”, from which he drew the inference that the roof in Claim 1 was fixed. When he was correctly informed by Ms Lawrence that it was impermissible to construe Claim 1 by reference to a later claim, or to limit Claim 1 by reference to an embodiment, Mr Fisher then agreed with her proposition that the PSA would understand that the roof would “cover” the assembly and not be attached to it.

Mr Keay in his first report equates “on top of” with “over”. In cross-examination he expressed the view that there are houses in other parts of the world where the roof is raised on stilts such that it is not integral with the house but sits over it. Mr Keay is not, of course, an architectural expert and I am concerned with Claim 1 of this Patent and not domestic architecture.

The Claimant has provided me with the Oxford English Dictionary definitions of “on” and “over”. The Oxford English Dictionary states at I.i.1.a that “on” when used of local position outside of, but in contact with or close to a surface, means: “Above and in contact with, at rest on the upper surface of; above and supported by”. This is in my view not particularly helpful, given the way in which it is limited. Of course if you consider something only when meaning in contact with a surface, it will be defined as being in contact with a surface. The Oxford English Dictionary states at A.I.1.a that “over”, when used as a preposition in the sense of “above” as the Defendant wishes the Court to construe it, means: “Above, higher up than. Used of position or motion within the space above.” and has a note saying, “Used irrespective of whether the lower object is immediately adjacent or distinctly separate, although generally implying closer proximity than above”. However, it also provides a definition of “over” in the sense of ‘on’ or ‘upon’, which must be what Mr Keay was intending. That states at A.II.5.a that it means “On the upper or outer surface of; on top of, upon, esp. so as to be supported by, rest on, or cover (part of) the surface….” and finishes with a note “Not always easily distinguished from sense A.I.1.a”.

In my judgment this integer cannot be construed in isolation. I am construing Claim 1 as it would be understood by the PSA, not a single integer of it, and I am doing so in the wider context of the purpose of the invention. Reading integer 1(d) as a part of the whole of Claim 1 makes clear that the lighting support includes (“comprises”, in patent terms) a roof located on top of the support: “A pathway lighting support…wherein the support comprises:…a roof located on top of the support in normal use”. In my judgment, the PSA would understand that the roof is part of the lighting support as it is explicitly stated to be included in it. I also consider that the PSA would understand “on top of”, which is an ordinary English phrase, to mean that the roof was supported by or resting on or covering (but touching, like a tablecloth covers a table) the top of the lighting support, and was not separated above it. I remind myself that, per Nokia v Ipcom, the PSA will understand that in the claim, the patentee is stating the limits of its claimed monopoly, and that if it had wanted the claim to be wide enough to encompass an embodiment with a roof which was not part of the lighting support, and was above and separated from it, it could have chosen language to do so. I am satisfied that were I to construe the language of this Claim 1 in the way the Defendant seeks, I would be impermissibly amending it and widening the monopoly of the Patent.

For completeness, I do not construe this integer as requiring the roof to be fixed to the lighting support. I accept the Defendant’s submission that there is no language in the claim by which the PSA would understand that to be the meaning of the claim and it is not required to give effect to the purpose of the invention. The claim would encompass an embodiment where the roof is on top of the lighting support and part of it, but fixed to the supporting wall, for example.

The Claimant has admitted the following features of the following claims of the Patents were present in the prior art in its claim charts on validity:

However, the Claimant’s expert Mr Fisher reached different conclusions in his report. Of those features admitted by the Claimant he opines that only claim features 1(f) of ‘509 and 1(b) of ‘566 are disclosed by Woolston, none are disclosed by Ueda, and only claim features 1(b) and 1(d) of ‘566 are disclosed by Profila.

It follows that although the Claimant sought to argue in Mr de Froment’s skeleton argument, based on Mr Fisher’s opinion, that the PSA would understand the bracket for fixing the support to the side wall of the walled pathway (being claim feature 1(b) in ‘509 and 1(c) in ‘566) as extending along the full length of the pathway lighting unit, it has accepted that feature is present in each of Woolston, Ueda and Profila.

The Claimant did not apply to resile from its admissions, nor to amend its pleaded case. Nor, the Defendant argued at the start of trial, would it be willing to admit infringement on the basis of the new and different construction of Claim 1 of ‘509 and Claim 1 of ‘566 being advanced for in Mr Fisher’s report. As I made clear to the parties at trial, in those circumstances I will hold the Claimant to its admissions. In my judgment, the appropriate course is simply to ignore Mr Fisher’s opinion to the extent that it conflicts with the Claimant’s admissions. I do, however, accept Mr de Froment’s submission that the fact that Mr Fisher has come to a different opinion when considering the prior art is evidence that he has carried out his task independently of those who instruct him, and I do not criticise him for that reason.