DW Windsor Limited v Urbis Schreder Ltd

For assessing inventive step, the person skilled in the art must be identified by reference to the established field in which the technical problem was located and to what was actually occurring at the priority date. The field must not be artificially narrow or so broad that the common general knowledge becomes diluted.

Patent claims must be construed objectively and purposively, but clear claim language cannot be narrowed or widened by importing limitations from the specification, an embodiment or another claim. A single construction applies when considering novelty, obviousness and infringement.

Prior-art documents cannot be combined to create a composite disclosure for a novelty attack. Obviousness remains an assessment of whether the claimed invention, considered as a whole, would have been obvious to the uninventive and unimaginative skilled person.

The claimant, proprietor of two patents for pathway lighting supports, alleged that the defendant’s Alinea Anti-Climb illuminated handrail infringed specified claims. Infringement was admitted subject to validity.

The defendant counterclaimed for revocation, alleging lack of novelty and obviousness over prior use at Woolston Railway Station, the Japanese patent Ueda, and Rehau Profila materials. The court determined the appropriate person skilled in the art, the common general knowledge, claim construction, novelty and inventive step.

The central issues were whether the claims disclosed anti-climb features integrated into a lighting support, and, for the second patent, cable or pipe support within an elongate support.

1. Person skilled in the art. Following the approach in Illumina, the relevant problem was the integration of anti-climb measures into a lighting support suitable for attachment to a walled pathway. The established field was lighting support design. The skilled person was a lighting support design engineer, rather than a railway infrastructure or public-safety specialist.
2. Common general knowledge. The skilled person knew general lighting matters, including wall-mounted luminaires, exterior-lighting roofs or canopies and lighting in handrails. Rail-safety regulations, railway anti-climb measures and the technical problem of integrating anti-climb measures into lighting supports were not part of that common general knowledge.
3. Construction. The claims were construed objectively and purposively. Clear language could not be amended by importing limitations from an embodiment or a later claim. The term “lighting module” meant a self-contained lighting unit, not merely a lamp holder and lamp. “On top of” required the roof to form part of, and touch or rest on, the support, although it need not be fixed to it. “Elongate”, “depending” and “saddled over” retained their ordinary meanings, assessed by the skilled person.
4. Novelty. Woolston, Ueda and Profila did not disclose all the features of Claims 1, 6 and 8 of ‘509 or Claim 1 of ‘566. The two Profila brochures could not be combined into one composite item of prior art. Claim 5 of ‘509 was independently anticipated by Ueda because its roof was detachably fixed to the bracket.
5. Obviousness. Applying the structured Pozzoli approach, the claimed combinations would have required invention by the relevant skilled person. The prior art did not provide the necessary anti-climb concept or motivation. None of the disputed claims was invalid for obviousness.
6. Claims 1, 6 and 8 of ‘509 and Claims 1 and 12 of ‘566 were valid and infringed as admitted. Claim 5 of ‘509 was invalid independently of Claim 1 for lack of novelty over Ueda.