Patents - DW Windsor Ltd v Urbis Schreder Ltd

Woolston Railway Station

Artist Robert Sandham Licence CC BY 2,0 Source Wikimedia Commons

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke) DW Windsor Ltd v Urbis Schreder Ltd [2025] EWHC 563 (IPEC) (14 March 2025)

This was a claim by D W Windsor Ltd. ("DWW") against Urbis Schréder Ltd ("US") for the infringement of UK patents GB 2 495 509 ("'509") and GB 2 495 566 ("'566") by the marketing and sale of Alinea Anti-Climb illuminated handrail and a counterclaim by US for the revocation of the patents on the grounds of want of novelty and obviousness. Her Honour Judge Melissa Clarke tried the action and counterclaim on 17 and 18 Dec 2024 and handed down her judgment on 14 March 2025 (see DW Windsor Ltd v Urbis Schreder Ltd [2025] EWHC 563 (IPEC)).  In para [124] of her judgment, the learned judge found that claims 1, 6 and 8 (as dependent on claim 7 and claim 1) of '509 were valid and claims 1 and 6 were infringed as  US had admitted.  She also held in para [125] that claims 1, 12 and 14 (as dependent on claim 13 and claim 1) of 566 were valid and claims 12 and 14 were infringed by the US as admitted.  Finally, she determined that claim 5 of 509 was not valid independently of claim 1 for lack of novelty.

The Parties

Both DWW and US design, manufacture and supply exterior lighting fixtures.

Patent 509

Patent 509 is for a pathway lighting unit.  More specifically, it is for a pathway lighting unit for a walled pathway, that is to say, a pathway with one or more side walls. The abstract describes the invention as follows by reference to the drawings in the specification:

"A pathway lighting support for attachment to a side wall 20b of a walled pathway has a bracket 208 for fixing the support to the side wall 20b, a means (206, fig 3) for supporting a lighting module 204 and a roof 210 located on top of the support in normal use, wherein the roof 210 is configured to inhibit the support from acting as a foothold by being angled with respect to the side wall 20b."

At para [17] of her judgment, Judge Melissa Clarke identified the problem that the invention was intended to solve:

"Attachment of pathway lighting units to the side walls illuminates the deck and helps facilitate use by pedestrians or by vehicles. Ideally, the pathway lighting units are attached low enough for bright uniform lighting across the deck. However, attachments to the lower reaches of the side wall may serve as a foothold for scaling the side wall. The walled pathway's security may be compromised unless the side wall is raised. This increases the cost of pathway improvement and has the counter-productive effect of making the pathway shady."

The proposed solution is  a wall lighting support with a roof which is inclined at an angle of 45 degrees or less in order to prevent climbing

"Accordingly, in a first aspect of the present invention, there is provided a pathway lighting support for attachment to a side wall of a walled pathway, wherein the support comprises: a bracket for fixing the support to the side wall of the walled pathway; a means for supporting a lighting module; and a roof located on top of the support in normal use, wherein the roof is configured to inhibit the support from acting as a foothold wherein, the roof comprises a substantially flat top surface inclined with regard to the side wall of the walled pathway by an angle of inclination of 45 degrees or less. This inhibits use of the pathway lighting support to scale the side wall of a walled pathway. Advantageously, the pathway lighting support may be attached at any height of the side wall so that it may be located for optimum brightness and uniformity of lighting across the deck. An angle of inclination of 45 degrees or less inhibits gripping of a shoe sole and makes it uncomfortable to even attempt to gain a foothold upon the support."

Patent 566

Patent 566 is also for a pathway lighting unit described in the abstract by reference to the specification drawings as follows:

"A pathway lighting unit 300 for attachment to a side wall of a walled pathway comprises an elongate support 302 having a bracket 308 for fixing the support 302 to the side wall of the walled pathway, means 340 for supporting at least one cable or pipe along an axis of the support, and means for supporting a lighting module 304. A walled pathway (which may be elevated) comprising at least one side wall with the pathway lighting support fixed thereto is also claimed, as is a method of fixing the pathway lighting support to the walled pathway."

Judge Melissa Clarke said at [29] that "the invention in claim 1 of 566 is really that of 509, save that the lighting support is elongate and includes a means for supporting at least one cable or pipe along an axis of elongation of the support."

Disputed Claims

The learned judge identified these as follows:

"[4] The claims relied on for infringement, and which are in issue in relation to validity, are:
i) Claims 1, 5 (as dependent on Claim 1), 6 and 8 (as dependent on Claim 7 and Claim 1) of '509;
ii) Claims 1, 11 (as dependent on Claim 1), 12 and 14 (as dependent on Claim 13 and Claim 1) of '566.
[5] However, at the CMC:
i) the parties undertook to accept that the question of whether Claims 11, 12 and 14 of '566 are valid shall be determined solely by reference to whether Claims 5, 6 and 8 of '509 are valid; and
ii) the Claimant confirmed that it does not pursue its claim for infringement of Claim 8 of '509/Claim 14 of '566, although the Defendant pursues its invalidity argument in relation to them.
[6] Accordingly I am only required to determine the validity of Claims 1, 5 (as dependent on Claim 1), 6 and 8 (as dependent on Claim 7 and Claim 1) of '509 and Claim 1 of '566."

The Claims

Her Honour split the relevant claims into integers between paras [23] and [30] of her judgment:

"[23]  Claim 1 .....................................
(a) A pathway lighting support for attachment to a side wall of a walled pathway, wherein the support comprises:
(b) a bracket for fixing the support to the side wall of the walled pathway;
(c) a means for supporting a lighting module;
(d) a roof located on top of the support in normal use;
(e) wherein the roof is configured to inhibit the support from acting as a foothold;
(f) and comprises a substantially flat top surface;
(g) inclined with regard to the side wall of the walled pathway by an angle of inclination of 45 degrees or less.
[24] Claim 5: A pathway lighting support as claimed in any one of the previous claims, wherein the roof is detachably fixed to the bracket.
[25] Claim 6: A pathway lighting support as claimed in Claim 5, wherein the roof is saddled over the bracket.
[26] Claim 7 is not in issue but I include it here as it is encompassed within Claim 8, which is in issue: A pathway lighting support as claimed in any one of the previous claims, wherein the means for supporting a lighting module comprises a lighting module receiving bay in the support.
[27] Claim 8: A pathway lighting support as claimed in Claim 7, wherein a portion of the lighting module receiving bay is formed by a skirt wall depending from the roof.
'.......
[30]  Claim 1, split into integers for convenience and highlighted to show the differences from the integers of Claim 1 of '509, is:
(a) A pathway lighting support for attachment to a side wall of a walled pathway,
(b) wherein the support is elongate and the support comprises:
(c) a bracket for fixing the support to the side wall of the walled pathway;
(d) a means for supporting at least one cable or pipe along an axis of elongation of the support, and
(e) a means for supporting a lighting module;
(f) wherein the support comprises a roof located on top of the support in normal use;
(g) and wherein the roof is configured to inhibit the support from acting as a foothold;
(h) and comprises a substantially flat top surface;
(i) inclined with regard to the side wall of the walled pathway by an angle of inclination of 45 degrees or less."
 

The Issues

In order to determine the validity of those claims, the judge directed herself in para [6] that she needed to resolve "inter alia, disputes about the identity of the person skilled in the art ("PSA"), the common general knowledge at the Priority Date, and the inventive concepts disclosed in the Patents. I am also required to construe the claims."  In paragraph [6], she appears to have alluded to the test in in Pozzoli Spa v BDMO SA and another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] 1 Bus LR D117, [2007] FSR 37, [2007] Bus LR D117,   She mentioned the test again in para [112] and applied it in [113]..   I discussed the test in detail in Patents - Well Lead Medical Co Ltd v CJ Medical Ltd, on 24 March 2025.  

Prior Art

In para [23] of his judgment in Pozzoli, Lord Justice Jacob required the court to identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed.  Judge Melissa Clarke listed the prior art in para [3] of her judgment:
"i) Prior use at Woolston Railway Station footbridge in Hampshire ("Woolston");
ii) Prior publication of JP 2008091133 ("Ueda");
iii) Prior publication of the Rehau Profila Bench Trunking brochure (published in October 2010) and the Rehau Cable Management Solutions brochure (published in March 2011) ("Profila")."

Persons Skilled in the Art

DWW contended that the person skilled in the art was:

"A lighting design engineer with 2 to 5 years' experience with a focus of working in the field of exterior lighting. They would likely be an individual but could work within a team. They would have had a general awareness of public infrastructure lighting, but would not have any detailed knowledge of or experience working in public infrastructure such as bridges and railways."

US submitted that he or she would be 

"an individual with expertise in pedestrian safety and anti-vandalism measures in public spaces. This person would have knowledge and experience of public infrastructure projects concerning the development of bridges and walkways."

Before deciding the issue, the judge referred to the judgments of Mr Justice Henry Carr in  Hospira UK Limited v Cubist Pharmaceuticals LLC [2016] EWHC 1285 (Pat) and Garmin (Europe) Ltd v Koninklijke Philips NV [2019] EWHC 107 (Ch) on identifying the person skilled in the art. She explained at para [31] that patents are directed to those likely to have a real and practical interest in the subject matter of the invention, which includes devising the invention itself as well as putting it into practice. The person skilled in the art has practical knowledge and experience of the field in which the invention is intended to be applied.  He or she reads the specification with the common general knowledge ("CGK") of persons skilled in the relevant art, knowing that the purpose of the specification is to disclose and claim an invention. The person skilled in the art may be a team of people with different skills or a single hypothetical person to whom the patent is addressed.  However, each such skilled addressee is uninventive and unimaginative.

Referring to para [58] of Mr Justice Birss's judgment in  Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat), [2021] RPC 12, Judge Melissa Clarke said that the concept of the person skilled in the art applied in two distinct circumstances:

•  The first being the person to whom the patent is addressed and whose attributes, skills and common general knowledge will be necessary to implement the patent, who is always the appropriate person skilled in the art from the point of view of addressing sufficiency, since the patentee is entitled to put together his invention by combining any skill-sets he likes; and 
• The second, described by Mr Justice Birss  at [59] of Illumina as "the one relevant to obviousness", is said by him to be "In nearly all cases… the same as the first kind", but may not be,

The person skilled in the art relevant to obviousness was not the same as the person to whom the patent was addressed in the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, [2010] RPC 33.  Judge Melissa Clarke quoted the following passages of Mr Justice Birss's judgment in Illumina at para [32] of her own:

"[59]… The question then is what are the legal principles which define the identity of the second kind of skilled person.
[60] One principle in Schlumberger was identified in [65]:

'In the case of obviousness in view of the state of the art, a key question is generally "what problem was the patentee trying to solve?" That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art.'

[61] This will be the governing approach in many cases but it can lead to trouble. There are cases of so called "problem-inventions" in which simply asking if the solution is obvious given the problem is unfair because inventiveness lay in identifying the problem. The fact the solution was obvious once you identify the problem does not prove a lack of inventive step in such a case. In fact experience shows that real cases are often more nuanced in that there can be aspects of a problem which are not common general knowledge and so one cannot always draw a sharp line between problem invention cases and other cases.
[62] Furthermore, blindly applying an approach based on the definition of the problem to be solved could lead to a very narrowly defined skilled person and that can create its own difficulties, which were well described by Peter Prescott Q.C. in Folding Attic Stairs Ltd v Loft Stairs Co Ltd [2009] EWHC 1221 (Pat); [2009] FSR 24. He showed why it could be wrong to frame the art in a narrow way. At [33]-[34] he said:

'[33] Common general knowledge is quite different. It is what people skilled in the art actually do know, or ought to know, provided that knowledge is regarded as sound. Common general knowledge is not a phrase used in the Patents Act or the European Patent Convention. It would be difficult to define the person skilled in the art in this case, or the common general knowledge, because so far as I know there is no recognised profession or calling of designing folding attic stairways. …It is unfair to define an art too narrowly, or else you could imagine absurd cases e.g. 'the art of designing two-hole blue Venezuelan razor blades', to paraphrase the late Mr T.A. Blanco White. Then you could attribute the 'common general knowledge' to that small band of persons who made those products and say that their knowledge was 'common general knowledge' in 'the art'. That would have the impermissible result that any prior user no matter how obscure could be deemed to be common general knowledge, which is certainly not the law.
[34] However it does not make much difference in this case, because the amount of special knowledge that is required to understand the patent in suit is not great. I would identify the person skilled in the art as one who has practical experience as a manufacturing carpenter, assisted by a metal fabricator. At the date of the patent (1996) this person or team would be vaguely aware of folding stairways in general terms, at most. The actual construction of old Stira, while known to many customers, was not common general knowledge in the art, in my judgment.'

[63] So while Folding Attic Stairs neatly explains one of the difficulties, given its facts the judge did not have to identify a principle to be applied to solve it. Furthermore, while too narrow a definition could be unfair to the inventors, it could be just as wrong and unfair to the public to define a team so widely that their common general knowledge is so dilute as to make something seem less obvious than it really was (see Pumfrey J. in Mayne Pharma Ltd v Debiopharm SA [2006] EWHC 1123 (Pat) at [3]-[4]).
[64] The other principled approach from Schlumberger to identifying the second kind of skilled person is to look at what is really going on in the art up to and at the priority date (Jacob LJ at [42]):

'I think one can draw from [Dyson v Hoover] that the Court, in considering the skills of the notional 'person skilled in the art' for the purposes of obviousness will have regard to the reality of the position at the time. What the combined skills (and mind-sets) of real research teams in the art is what matters when one is constructing the notional research team to whom the invention must be obvious if the Patent is to be found invalid on this ground.'

At para [33] of her judgment, Judge Melissa Clarke said that Mr Justice Birss adopted a test to require 'something which could properly be called an established field at the priority date. Depending on the facts, such field could be a research field… or a field of manufacture, as in Folding Attic Stairs.'  He said at [67]:

'If the design and manufacture of folding attic stairs in particular was an established field then there is nothing unfair in defining the skilled person in that way. But if not then the wider definition (general carpenter plus metal fabricator) is appropriate. In other words, the width of the field in which the skilled person operates for the purposes of obviousness (a.k.a. the "art in which the problem lay" (per Schlumberger) is ultimately governed by what was actually going on up to the priority date. It is not primarily a function of the invention itself, the problem to be solved, nor the patent's text.'

Judge Melissa Clarke noted that Mr Justice Birss concluded at [68] that in a case where it was necessary to define the person skilled in the art for the purposes of obviousness, the approach of the court should be:

"i) To start by asking "What problem does the invention aim to solve?" (clarifying at [69] that this was an objective exercise);
ii) Next to consider what the established field which existed was, in which the problem in fact can be located (clarifying at [70] that how wide the definition of that field should be will depend on the facts and what was going on in reality, and should be established as an exercise in hindsight: "It does not matter at this stage if those in that field at the priority date did not perceive the particular problem or did not perceive it in the manner it is now characterised"); and
iii) Determining that it is the notional person or team in that established field which is the PSA."

Her Honour observed in para [35] that Mr Justice Birss's judgment in  Illumina was upheld by the Court of Appeal in Illumina Cambridge Ltd v Latvia MGI Tech SIA and others [2021] EWCA Civ 1924, [2022] RPC 14 and followed in subsequent cases.

The judge agreed with DWW. Applying Illumina, the objective answer to the question "What problem does the invention aim to solve?" was: "The integration of anti-step measures into a lighting support suitable for fixing on the side wall of a walled pathway. " The established field existing at the priority date in which that problem in fact could be located was, in her judgment, the field of lighting support design.  She listed her reasons in para [49]:

"i) The Defendant has not specifically identified in pleadings (including the 4 June 2024 letter referred to in paragraph 40 above which stands as the Defendant's case on the PSA), or submissions an alternative established field in which the problem can be located. It is not clear to me what established field has within it a PSA "with an interest in items such as handrails and lights suitable for safe use on publicly accessible infrastructure such as at railway stations".
ii) Mr Keay suggested that his PSA would be working in the infrastructure team at Railtrack or one of Railtrack's contractors, and would also be carrying out risk assessments. If I am to assume that the Defendant's established field is that of railway infrastructure, or railway infrastructure health and safety, then I find that is too narrow as: (a) neither the problem nor the invention is limited to railway infrastructure; and (b) the Defendant's PSA is also similarly not limited.
iii) If the alternative established field is intended to be publicly accessible infrastructure, or publicly accessible infrastructure health and safety (taken from the wording of the Mr Keay's PSA, and into which the Defendant's "individual with expertise in pedestrian safety and ant-vandalism measures in public spaces" could be said to fit), then this has not been pleaded, argued or put to the Claimant's expert by the Defendant such that the Claimant has had an opportunity to address it."

Common General Knowledge

The main dispute between the parties was whether the common general knowledge would include safety matters relating to anti-climb measures such as rail safety regulatory requirements and guidelines, including anti-climb measures, and various specific safety features relating to railway footbridges. DWW's case was that the person skilled in the art would have no special knowledge of those matters, while US contended that he or she would. Having found that the person skilled in the art would be a lighting support design engineer, the judge decided that such a person's common general knowledge would not include knowledge of rail safety regulatory requirements, standards and guidelines relating to anti-climb measures or safety features relating to anti-climb or railways generally. 

At para [56], the judge decided that the following were common general knowledge as at 11 Oct 2011:

"i) A complete lighting unit is known as a luminaire. The PSA would be aware that standards exist for luminaires, such as BS60598 and GI/GN7520, but would not have detailed knowledge of the standards, although he could look them up. BS60598 does not have a part specifically for railways or pedestrian footbridges.
ii) BS60598 defines a luminaire as "apparatus which distributes, filters or transforms the light transmitted from one or more lamps and which includes all the parts necessary for supporting, fixing and protecting the lamps, but not the lamps themselves, and where necessary, circuit auxiliaries together with the means for connecting them to the supply". There is a different definition in GI/GN7520 which is paraphrased from that quoted above, but makes no mention of including or excluding lamps.
iii) The light-emitting component of the luminaire is known as the light source. Traditional electrical light sources have used a lamp (what a lay person might refer to as a lightbulb) as the light source. More modern lights may use Light Emitting Diodes (LEDs) as the light source, which are contained in components which may be described as LED modules or lighting modules.
iv) The use of luminaires which could be fixed to walls or other vertical surfaces was well known and long-established.
v) Exterior lighting products have a roof, cover or canopy and that the function of this would be to keep dirt and moisture out and/or protect the lighting module. Exterior lighting products may also have a bracket to affix the lighting product to a wall or other surface.
vi) Pedestrian handrails could be designed to include lighting systems and that they could be ground- or wall-mounted."

Construction of Claims

Referring to para [48 (f)] of Mr Justice Kitchin's judgment in Dyson v Hoover [2001] RPC 26, Judge Melissa Clarke directed herself that it was for the court to construe a patent objectively, adopting the mantle of the notional person skilled in the art to whom it is directed, and in the light of the common general knowledge with which the skilled addressee is assumed to be imbued.  

She noted that it was common ground that the court must give the language of a claim a purposive construction, in light of the inventor's purpose as set out in the description, to arrive at the meaning which would have been understood by those to whom it is actually addressed as Lord Neuberger had said at para [58] of his judgment in in Eli Lilly v Actavis [2017] UKSC 48, [2017] RPC 21 and Lord Hoffmann at para [32] of his speech in Kirin-Amgen [2005] RPC 9.  

Citing para [23] of the judgment of Lord Clarke of Stone-cum-Ebony in Rainy Sky SA v Kookmin Bank [2001] UKSC 50, [2011] 1 WLR 2900 that "Where the parties have used unambiguous language, the court must apply it", she cautioned that it was not legitimate to narrow or extend the clear meaning of the language of a claim by references to the specification. Where language is clear and unambiguous, it does not need construing.  She quoted para [41] of Mr Justice Floyd's judgment in Nokia GmbH v Ipcom GmbH & Co KG [2009] EWHC 3482 (Pat), [2010] Info TLR 1 as approved by Lord Justice Arnold in Optis Cellular Technlogy LLC and others v Apple Retail UK Ltd and others (Rev1) [2021] EWCA Civ 1619 (10 Nov 2021):

"Where a patentee has used general language in a claim, but has described the invention by reference to a specific embodiment, it is not normally legitimate to write limitations into the claim corresponding to details of the specific embodiment, if the patentee has chosen not to do so. The specific embodiments are merely examples of what is claimed as the invention, and are often expressly, although superfluously, stated not to be 'limiting'. There is no general principle which requires the court to assume that the patentee intended to claim the most sophisticated embodiment of the invention. The skilled person understands that, in the claim, the patentee is stating the limits of the monopoly which it claims, not seeking to describe every detail of the manifold ways in which the invention may be put into effect."

She construed peremptorily the terms "bracket" in integer 1(b) of 509,  "depending" in claim 8 of 509 (in the context "…a skirt wall depending from the roof", "elongate" in claim 1 of 566" and "saddled over" in claim 6 of '509: "wherein the roof is saddled over the bracket".  She discussed in more detail the meanings of "a means for supporting a lighting module" in integer 1 (b) and "on top of" in integer 1 (d) of '509 in the context of "a roof located on top of the support in normal use".

Novelty

Although DWW had admitted that certain features of both patents were present in the prior art, Her Honour found that only one claim had been anticipated.  Claim 5 of 509 requires the roof of the lighting support to be detachably fixed to the bracket mentioned in claim 1. The judge found that feature to be present as the roof of the lighting apparatus in Ueda was an integral part of the diffuser detachably fixed to the bracket and easily removed from it.  The judge reached her conclusions after comparing the disputed claims to each of the items of prior art.

.

Obviousness

In para [113], the judge noted that she had identified the person skilled in the art and his or her common general knowledge. She has also identified the inventive concept of claims 1, 5 and 6 of 509. She had considered that the inventive concept of claim 1 of 566 was the integration of an anti-climb measure into a lighting support which also allows for one or more cables or pipes to run horizontally within it,  She added that such a device can be retrofitted without relocating existing cables or pipes and disrupting the networks they serve. She had also addressed the primary differences between the prior art and the claims in relation to novelty. The judge considered the differences between the inventions and each of the items of prior art and decided that none of those differences was obvious.

Comment

In para [16] Judge Melissa Clarke listed the set out she was required to resolve.  As is the case with all her judgments, every point was closely argued and anchored to all relevant authorities.  Thus, the parts of her judgment that identified the skilled addressee and his or her common general knowledge referred to all the authorities on those topics.  That is why those judgments are so helpful.  Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page at any time.