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

This is a Japanese patent which I have read in translation. It is for a “lighting fixture” and the problem it intends to solve is to provide a lighting fixture capable of reducing a gap between a support surface such as a wall or ceiling and an element which Ueda refers to as a “luminaire” but which has a different meaning to that previously used in this judgment. Mr Fisher refers to it as a diffuser, and I will also refer to it in this way to avoid confusion. It comprises a bracket which is to be fixed to a support surface, and a diffuser. Each of the bracket and diffuser have a locking part which can be engaged with each other. These are configured in a form of bayonet-style lock, so that when they are engaged, and locked by rotating the diffuser, the distance between the diffuser and the bracket bottom are between 3mm and 20mm. The experts agree that this helps prevent water ingress and the build-up of condensation if it is placed, for instance, in a bathroom [0013]. Once engaged, the angle of the diffuser can be adjusted by manipulating the rotation of the diffuser, even after it has been attached to the bracket.

The only integers of Claim 1 of ‘509 identified by the Claimant as missing from Ueda are 1(c) (“a means for supporting a lighting module”), 1(e) (“wherein the roof is configured to inhibit the support from acting as a foothold”) and 1(g) (“inclined with regard to the side wall of the wall pathway by an angle of inclination of 45 degrees or less”). Claims 5 and 6 of ‘509 are also disputed. As well as the corresponding identical integers missing in ‘566, the Claimant further identifies that 1(b) (“wherein the support is elongate…”) and 1(d) (“a means for supporting at least one cable or pipe along an axis of elongation of the support”) are missing in ‘566.

In relation to integer 1(c), the Claimant submits that this is not present as Ueda contains no “lighting module” and no “means for supporting a lighting module”. Rather, it submits, [0001] refers to a light source provided on a bracket and the embodiment described at [0028] and shown at figure 4 of Ueda contains “a socket 51 for a light bulb and a cord insertion hole 15 for inserting an electrical cord 55 to be connected to the socket”. The Defendant does not dispute that this is the case (which was confirmed by Mr Keay in cross-examination) and pleads same embodiment. It relies on the ‘socket 51’ (being a lamp holder) and a light bulb (being a lamp) as together comprising a lighting module. In construing Claim 1, I have found that it is not. Accordingly, I am with the Claimant on this point.

In relation to integer 1(e) and 1(g), Ueda describes an embodiment with “an abbreviated triangular prismatic shape with [diffuser] bottom 32, first coated surface 37 and second coated surface 38 as three sides”. It identifies at [0031] that these two surfaces meet the diffuser bottom 32 at angles of 70 degrees and 50 degrees respectively. However, at [0055] it notes that the embodiment is illustrative, but the invention is not limited to such a shape and that it “allows for a wide choice of [diffuser] designs”. Mr Keay in cross-examination pointed that out, when he agreed with Mr de Froment that the shape of the diffuser was “neither here nor there” to the invention.

The Defendant relies on these integers being present by installing the lighting fixture upside-down to that shown in the illustrated embodiment, so that what is described as ‘[diffuser] bottom 32’ forms an integrated top surface, or roof, with an angle which the Defendant says is between 38 and 45 degrees. It relies on Mr Keay’s evidence that the PSA would contemplate rotating the diffuser 180 degrees so that this lower surface becomes the upper surface and forms a roof. The Claimant disagrees that the PSA would contemplate doing so, as the description of the embodiment explains that the diffuser can only be installed in what it refers to as the “correct position” at [0048]. Mr Keay in cross-examination accepted that, but agreed that this problem could be avoided by coming up with a different diffuser shape.

I am satisfied that neither integer 1(e) nor integer 1(g) are present in Ueda. It does not, in my judgment, disclose a “roof [which] is configured to inhibit the support from acting as a foothold”. The roof in the embodiment, which I accept is merely illustrative, is a simple translucent coated surface which does not appear to have any configuration or design choices intended to inhibit the support from acting as a foothold. Mr Fisher’s evidence is that although he does not know what the diffuser material is constructed of, being translucent and having considered the drawings, he infers it would probably not be capable of supporting much weight and therefore not capable of inhibiting the support from acting as a foothold. The Defendant submits this is mere supposition but I do not agree. He is an expert lighting designer experienced at considering such drawings, and I accept his evidence.

Nor, as is explicit in Ueda, does the roof of the embodiment have an angle which is likely to be sufficient to inhibit the roof as acting as a foothold, as it is not 45 degrees or less as required by integer 1(g). I do not accept the Defendant’s submission that the embodiment could simply rotated 180 degrees, because of the wording which alluded to a “correct position”, as Mr Keay also accepted.

Although the diffuser could be entirely redesigned as to orientation, shape, and material so as to produce a roof which is configured to inhibit the lighting support from being used as a foothold, and which is at an angle of 45 degrees or less this is not, in my judgment, anticipated by Ueda. In my judgment Ueda is a patent concerning an invention of an attachment mechanism between the diffuser bracket, not the diffuser shape. I accept the Claimant’s submission that the fact that a patent is agnostic about the shape of a diffuser is not to say that it would cause the PSA to contemplate each of the entire range of possible forms that diffuser could take. Also relevantly, I have found that the PSA in this case, being a lighting support design engineer without anti-climb and safety matters in his common general knowledge, when reading this patent would not consider anti-climb issues and does not, for example, know that an angle of 45% or less is an appropriate climbing deterrent, contrary to the Defendant’s submission.

Accordingly, I am satisfied that Claim 1 of ‘509 is novel over Ueda.

In relation to Claim 5 of ‘509, the Defendant submits that this feature is present as the roof of Ueda is an integral part of the diffuser, which is detachably fixed to the bracket and easily removed from it. The Claimant submits that it is not detachably fixed to the bracket because it is part of the diffuser as a whole. I am with the Defendant on this point. There is nothing in the claim which requires removal of the roof to be independent of any other part of the housing of the lighting support. The question is whether it is detachably fixed to the bracket and that is, in fact, the point of the invention in Ueda. Accordingly, I am satisfied that the additional feature of Claim 5 (as distinct from Claim 1, on which it depends), is not novel over Ueda.

In relation to Claim 6 of ‘509, the Defendant’s submissions that the roof is saddled over the bracket are founded on the embodiment in figure 4 being installed upside-down, or rotated 180 degrees. I have accepted the Claimant’s submission that this is not permissible for that embodiment, and I am satisfied that if the embodiment was installed as shown in figure 4, that element which the Defendant seeks to describe as the roof (which in that orientation would be the diffuser base and not the roof) would not be saddled over the bracket, but nestled under it. Accordingly I am satisfied that Claim 6 is novel over Ueda.

Given my findings so far, it is not necessary to turn to the additional integers of Claim 1 of ‘566, but I will deal with them quickly. In relation to 1(b) of ‘566, the Defendant submits that the support in Ueda is elongate and the Claimant submits that it is not. This is a matter of assessment of fact and degree. It is true that in figure 4 the support does not appear to be entirely square, but I accept the Claimant’s submission that it is only marginally broader than it is long and I do not think that the PSA, looking at that, would consider that it was elongate. In addition, the bracket is circular, and the diffuser, we are told and Mr Keay accepts, could be any number of shapes, save that it must be able to rotate and lock about the bracket which does not suggest to me that it easily lends itself to an elongate shape. On balance, I am satisfied that integer 1(b) is not present in Ueda. In respect of integer 1(d), 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. I reject that and find that integer 1(d) is not present in Ueda, for the same reasons as Woolston.

For those reasons I am satisfied that Claim 1 of ‘566 is novel over Ueda.