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

The Claimant submits that following Birss J’s approach in Illumina at [69], in order to define the PSA for the purposes of obviousness, the Court must answer to the first question “what problem does the invention aim to solve?”. Mr de Froment put it to Mr Keay in cross-examination that “What the PSA would have thought that Claim 1 [of ‘509] is really about, the heart of it, is that it integrates an anti-climb measure into a lighting support does it not?” to which Mr Keay answered “yes”. Mr Keay also agreed that Claim 5 of ‘509 was really about having a detachably fixed roof, as that facilitates easier assembly and maintenance, and that the heart of Claim 6 of ‘509 was that the roof being saddled over the bracket enables easier assembly of the roof and that the roof can be more easily detached. So those inventive concepts appear to be agreed, and I accept them. But the Claimant submits it is the identification of the possibility of integrating anti-climb measures into a lighting support, per Claim 1, which in large part is the inventive step in ‘509. I accept this, as both Claims 5 and 8 in issue in ‘509 are dependent on Claim 1.

The Claimant further submits that, in answer to the second Illumina question, the established field which existed at the Priority Date, in which this problem in fact can be located, is the established field of lighting product design, and the PSA is a lighting product design engineer, as this is the only established field that existed at that date where somebody is going to come up with a lighting product. The Claimant submits that the Defendant’s more broadly and vaguely defined PSA, being “an individual with expertise in pedestrian safety and anti-vandalism measures in public spaces”, or Mr Keay’s narrower opinion, being “someone with an interest in items (such as handrails and lights) that were suitable for safe use on publicly accessible infrastructure such as at railway stations”, misidentifies the relevant field, as the problem identified is not one which can be located in the field of pedestrian safety/anti-vandalism measures in public spaces, or railway safety experts or railway infrastructure operators or contractors, as they do not devise or put into practice lighting support designs. Mr Keay’s evidence was that such persons would choose or specify products from those available on the market, or more likely, he thought, specify a brief for a custom product to be designed by a company or engineer working in the area of lighting product design.