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

Ms Lawrence for the Defendant criticises Mr Fisher for ignoring the “pathway” part of the title of the Patents, and specifically the walled pathway as described in the specification of the Patents, and the fact that the lighting support of the invention is intended to be used in real-life situations within the public infrastructure realm, where public safety is paramount and regulations are necessarily strict. I do not think that this is a fair criticism, when she has acknowledged at para 43 of her skeleton that Mr Fisher accepted in his first report that if tasked with designing a pathway lighting unit, the PSA would consider the specific requirements of the project, noting that the Patents refer to a number of different types of walled pathways, including elevated pathways such as a bridge or a path on a high slope or in a building, walled pathways adjacent to private property, and walled pathways that are bridges over a railway or motorway.

The Defendant submits that the Claimant’s approach to the PSA is far too narrow, which wrongly limits the CGK and leads to an erroneous construction of the Patents. The Defendant describes Mr Fisher’s opinion on this issue as a “blinkered approach” and submits that the Claimant’s PSA is one which is not grounded in reality as required by Dyson v Hoover as interpreted by Jacob LJ at [42] of Schlumberger, cited above, and as required by [115] of Modernatx: “The Court must consider the real situation”. The Defendant submits that, by contrast, its PSA, whether as set out in its 4 June 2024 letter or as more narrowly described by Mr Keay, is mindful of safety and takes a real-life approach, looking at what the lighting is actually going to be used for. Ms Lawrence in closing submitted that “You could not design a lighting support for a railway bridge without knowing what the rules and regulations were for railway bridges”.

In her closing submissions, Ms Lawrence drew my attention to [104] of Modernatx, in which Meade J relied on the judgment of Laddie J (as he then was) in Inhale v Quadrant at [53] to explain:

“What Laddie J. was saying was that where an invention involves the use of more than one skill, if is obvious to a person skilled in the art of any one of those skills, then the invention is obvious. And rightly so, for it would otherwise impede a class of person who found it obvious”.

When I pointed out that it was not the Defendant’s case that the PSA was a team of people with different skills, she submitted that “the skilled person would be interested in making a product for use in this particular area, and immediately that brings in the regulations that are required for a lighting product to be put to use in that way, and that you cannot get away from that. So the blinkered approach that Mr Fisher is taking essentially addresses one-half of this skilled person, what the skilled person would know. He is ignoring the ’wall’ side of the invention, where it is going to be put, and simply focusing on the lighting situation, and ignoring everything to do with the environment and the purpose for which the product is being made and used.”.