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

As stated, Profila is made up of two pieces of prior art, the Rehau Profila Bench Trunking brochure (published in October 2010) (“Bench Trunking”) and the Rehau Cable Management Solutions brochure (published in March 2011) (“Cable Management”).

The Bench Trunking brochure is subtitled “A cable management system with multiple alternatives”. It states that “Modern buildings and refurbishment projects demand flexible solutions for the safe and unsightly distribution of power and communication in teaching and working spaces” and goes on to talk about laboratories and workshops being common situations where a cable trunking system “running on top or below working surfaces is the best solution for power and data installations”. It describes the product range as a “diverse range of market specific products and proven experience in health and education projects”, and although it talks about use in “dangerous environments” it is clear that it is referring to use in areas where “spillages of dangerous materials can frequently occur such as laboratories and workshops”. Photographs on and within the brochure show that it can be installed with lighting modules and the brochure states that the product can be used for, inter alia, “housing light fittings”.

The Cable Management brochure states that it is a product for data trunking and data cabling. It states that it offers “…immediate permanent cable support on installation for data and power cables from below…” designed “…to meet the requirements for the latest power and data cables to be introduced to the marketplace…” and that the product has “been particularly successful in schools, colleges, hospitals and medical centre installations where hundreds of thousands of metres have been installed”. There is in my judgment nothing in the brochure which states or illustrates or suggests that this product can be used with a lighting module.

The Defendant’s case is that all the features of Claim 1 of both Patents and Claims 5, 6 and 8 of ‘509 are present in Profila. The Claimant’s case is that integers 1(a), 1(e), 1(g) of ‘509 (and the corresponding identical integers of ‘566), Claims 5, 6 and 8 of ‘509, and additional integer 1(b) of ‘566 are missing. Although the Claimant in Mr de Froment’s skeleton and oral submissions objects to the Defendant seeking to elide two different products from two different documents into a single piece of prior art, it does not appear that this was raised at the case management conference, and both parties have addressed the documents as if they were one piece of prior art in their claims charts and in experts reports. The Claimant, in fact, agrees with the Defendant that integer 1(c) of ‘509, (“a means for supporting a lighting module”), is present in Profila. Nonetheless the defence of invalidity for reasons of anticipation is for the Defendant to prove, and it is not permissible to combine two documents dealing with two entirely separate products with different features and specifications for the purposes of creating one composite piece of prior art to launch an invalidity attack. As Mr de Froment submits, this is not a case where the same product is relied on, but evidenced in two or more different documents. For that reason, I will only go on to consider the Bench Trunking brochure as the Profila prior art.

Turning then to the issues in dispute. Integer 1(a) (“A pathway lighting support for attachment to a side wall of a walled pathway”). The Claimant submits that Profila is not a lighting support for a pathway. It submits that the Bench Trunking is an undershelf lighting product marketed for use in laboratories and workshops. It notes that the sole reference to lighting in the Bench Trunking brochure is that it can “also be installed underneath shelves or cabinets to provide high level power points or for housing light fittings”. Mr Fisher’s opinion is that it is not suitable for outdoor use. The Defendant notes that both Patents refer to walled pathways “in a building” (see for example lines 7-8 of ‘509) and so to the extent that the Mr Fisher suggests that the lighting support described in the Patents is only for outdoor use, he is wrong. I accept that submission. The Defendant further submits that the device is designed to be attached to a wall, and I accept that it is shown, housing a light fitting, on a wall installation on the cover of the brochure. In my judgment it can be used as a lighting support, and can be attached to a side wall of a pathway. I am satisfied that integer 1(a) is present in Profila.

1(e) – (“wherein the roof is configured to inhibit the support from acting as a foothold”). The Claimant has accepted integer 1(d), that Profila has “a roof located on top of the support in normal use”, which Mr Fisher identifies in the photographs as the shelf under which the Bench Trunking with a lighting module is installed. It could also be the top wall of the product, where it meets that shelf as installed with a lighting module – I do not know what the Claimant considers it has admitted, and its admissions depart from Mr Fisher’s opinions in many cases. In any event, the Claimant submits that there is no configuration of the roof when wall mounted as a lighting support which would inhibit it from acting as a foothold.

The Defendant relies on an image from page 4 of the Bench Trunking brochure showing a cross-section through the modular product into which a lighting module can be inserted. The cross-section is that of a right-angled triangle, with the lighting or other module inserted into the hypotenuse. The Defendant submits that could be installed to a wall so that it was oriented so that the sloped surface or hypotenuse was uppermost, at 45 degrees. However: (i) the PSA as I have found him to be does not have anti-climb measures in mind as part of his common general knowledge, as I have stated before; (ii) as Mr Fisher has noted, that sloped surface, which the Claimant relies on as the roof, is the surface into which the lighting module is slotted into the product, such that the light emitted would be directed upwards rather than downwards. However, the Patent as described is for the attachment of pathway lighting units to illuminate the pathway’s deck (see lines 17 to 18 of page 1 of ‘509). In my judgment, that would be unsuitable for illuminating a pathway’s deck.

When this latter point was put to Mr Keay in cross-examination, he said that the PSA would readily understand that he could put the lighting in the bottom face of the Profila product. Although Mr Keay denied when it was put to him that to do so, the product would need to be completely redesigned, he accepted that the lighting module shown on the cover of the brochure could not be put in the bottom face of the product illustrated on page 4 of the brochure. This is the product relied on by the Defendant in the claims chart. He said that it did not have to be the same lighting module, and another module could readily be fixed into the bottom face. He said that would not result in a different product, just the same product with a different hole in it.

I was not convinced by Mr Keay’s evidence on this point. The Bench Trunking product is one in which there is a wide array of housings into which can be slotted plug sockets and lighting modules, and which can be put together and mounted in different ways. That appears to be the benefit of it, as I am satisfied would be understood by the PSA. However there is no evidence in the brochure that any such housings allow for insertion of modules into the bottom face as relied on by the Defendant, and I am not satisfied that the PSA would understand, from looking at the Bench Trunking brochure, that the product could be mounted so that it had a roof configured to inhibit the support from acting as a foothold, whilst still accepting a lighting module. In my judgment that would require a complete redesign of the product. I am satisfied that integer 1(e) of ‘509, and for the same reasons integer 1(g) of ‘509, are not present in Profila.

In relation to additional integer 1(d) of ‘566, the Defendant submits that it is present based on Mr Keay’s opinion reached in the same way and for the same reasons, and subject to the same flaws, as for Woolston and Ueda. I reject that and find that integer 1(d) of ‘566 is not present in Profila, for the same reasons as Woolston and Ueda.

It follows that I am satisfied that Claim 1 of ‘509 and Claim 1 of ‘566 are novel over Profila.

Claim 5 of ‘509 – The Defendant submits that the sloped surface of the product is detachable via snap fix, as Mr Fisher accepts, and so this feature is present. The Claimant submits that this is not a roof as this relies on turning the product upside-down and saying that the lit face is a roof, which it is not. That is also my view, for the reasons I have already given. The roof which the Claimant has admitted is either the shelf under which the unit incorporating the lighting module is installed, or the side wall of the unit which abuts the shelf, and in neither case does the Defendant claim these are detachable. I find that Claim 5 of ‘509 is novel over Profila.

Similarly, in relation to Claim 6 of ‘509, the Defendant cannot satisfy me that the roof that the Claimant has admitted is saddled over the bracket. I find that Claim 6 of ‘509 is novel over Profila.

In relation to Claim 8, whether this integer is present in Profila really depends on what roof the Claimant has admitted. If the roof is the shelf under which the product is installed, as is Mr Fisher’s opinion, then no part of the lighting module receiving bay is formed by a skirt wall depending from the roof. If it is the side wall of the product which abuts the shelf, then it may be. However, invalidity is for the Defendant to prove and the Defendant relies on a definition of roof which I have found is not made out. Accordingly, I find that Claim 8 is novel over Profila.