Collingwood Lighting Ltd v Aurora Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Roth |
| Judgment Date | 10 February 2014 |
| Neutral Citation | [2014] EWHC 228 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC12C02319 |
| Date | 10 February 2014 |
[2014] EWHC 228 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London, EC4A 1NL
Mr Justice Roth
Case No: HC12C02319
Mark Vanhegan QC and Tom Alkin (instructed by EMW Law LLP) for the Claimant
Michael Edenborough QC and Tom St Quintin (instructed by Lewis Silkin LLP) for the Defendant
Hearing dates: 24–26 July 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
By this action the claimant ("Collingwood") contends that the defendant ("Aurora") has infringed its patent for a fire resistant LED downlight. The patent is GB 2475649 B ("the Patent"). Aurora claims that the Patent is invalid on grounds of anticipation and obviousness, but if the Patent should be valid contends that its products complained of did not infringe. Alternatively, Aurora seeks a declaration that a redesign of its product ("the redesign") does not infringe the Patent. Since Aurora has apparently been selling the redesign, Collingwood seeks a finding of infringement in relation also to the redesign and relief in respect of that product.
The Patent is for a lighting unit with a solid state lighting element and a fire resistant housing for fitting into an aperture in building partitions. The priority date of the Patent is 12 November 2008. Solid state lighting refers to light emitted by semi-conductors. Although there were two types of solid state lighting elements 1, the LED (i.e. light-emitting diode) and OLED (i.e. organic light-emitting diode), as at 2008 OLEDs were primarily used in lighting areas relating to displays, in particular mobile telephone displays. It is common ground that for all practical purposes the Patent would have been understood by the skilled addressee as relating to LED downlights for use in ceilings, where fire resistance was required. That is particularly the case for downlights in residential buildings.
Such lighting units are referred to in the industry as "luminaires". A luminaire comprises a light source (e.g. an incandescent bulb, a fluorescent tube or an LED) combined with an optical structure to manage the light (e.g. a reflector, lens and/or diffuser) and a structure to hold the combination of light source and optics in place while typically routing power to the lamp (e.g. a standard lamp base or ceiling rose). The combination of light source and optics is sometimes referred to in the industry as a "lamp" whereas a luminaire is a lamp plus its mounting or housing. A downlight luminaire is also frequently referred to simply as a "downlighter" or "downlight" and that expression will be used in this judgment.
Collingwood's product manufactured according to the Patent was launched in about May 2009, under the name "FireLED". However, Collingwood ceased actively to promote it from about April 2010 when another downlighter called the Halers H2 (which is protected by a different patent) was introduced. For reasons that will be explained, the Halers H2 was initially sold by Halers Lighting Ltd ("Halers"), a separate company related to Collingwood by common ownership and control, although it is now being marketed by Collingwood directly. Because of the success of the Halers H2, Collingwood started phasing out the FireLED product in late 2010 and sales of the latter effectively ceased in November 2011.
A fire-rated downlighter is a downlighter that does not compromise compliance with the fire resistance requirements under the UK Building Regulations of the ceiling into which
it is fitted. Those requirements specify that the floor and ceiling must maintain their structural integrity for a minimum period when subjected to standard fire tests.Downlighters became common in the 1980s with the increasing use of tungsten halogen lamps, which provide a light closer to daylight than traditional incandescent bulbs. Fire-rated downlighters with halogen lamps were introduced later, but had been available for several years before the priority date. The fire resistance was provided in one of two ways. Either the lamp was enclosed by a steel can, with any holes in the can (for ventilation or cabling) surrounded by intumescent mastic, a flame-proof material that expands in the event of fire; or the downlighter as a whole was covered by a fire resistant hood and/or cover made from intumescent material. Where a can was used for fire protection, it was generally made of steel, which melts at well over 1200° C and therefore satisfies the fire test. Although aluminium is commonly used in manufacturing standard luminaires, it has a much lower melting point and would not satisfy the fire test.
A LED generates light by passing a current through a semi-conductor chip. Until about 1998, LEDs were used almost exclusively as lights on panel displays, but LED technology developed significantly in the following years. After a subsidiary of Philips introduced a high power LED in early 2006, interest in the potential of LED luminaires greatly increased. High power LED lighting offered higher efficiency, because of lower energy consumption and long life. However, with LEDs thermal management is a key issue since if the LED becomes too hot, that affects its light output and service life. LEDs are generally mounted onto a metal core printed circuit board ("PCB" or "MCPCB") that conducts heat from the LED emitters onto a metal plate. To conduct heat away from the metal plate, luminaire manufacturers used a heat sink that was attached to the MCPCB. This is usually a cast or extruded component made of a highly conductive material, such as aluminium, so as to conduct and dissipate the heat efficiently. Heat sinks can take a variety of forms, with different size, surface area and methodology. A common form is a finned design so as to increase the surface area relative to the volume. However, for a fire-rated LED downlight, there is the additional requirement to provide a fire barrier so as to satisfy the Building Regulations, as explained above. Thus the need for both fire protection and thermal management in effect pull in different directions. Fire protection involves the provision of an effective firewall through or around the downlighter whereas thermal management involves the effective conduction and dissipation of heat away from the LED elements and the MCPCB.
Aurora's products which are alleged to infringe the Patent are the Aurora I-9 range. There are five specific products but it is common ground that on the issue of infringement the differences between them are immaterial. Further, as referred to at the outset, Aurora recently introduced the redesign, which is clearly intended, in the event that Aurora should lose on validity and the I-9 range be found to infringe, to avoid such infringement.
The Parties
Prior to the introduction of its FireLED product, Collingwood had not been involved in the supply of general downlights. Since the late 1990s, it had been a more specialised company, engaged in supply of what was described as "accent LED lighting" products, i.e. lighting that adds atmosphere rather than providing a main light source. That field is very project based, where a designer would specify a Collingwood product which the installing contractor would then specially order through an electrical wholesaler. Collingwood produced some 600 specialist LED products of that kind and before it launched the FireLED had not been engaged in the production of 'volume' lighting that forms part of a wholesaler's standard stock.
Collingwood's Managing Director explained that initially the FireLED started to prejudice the company's core, accent lighting business as the activity of its sales team became concentrated on the FireLED. Accordingly, when the Halers H2 product was developed, that was launched through a new company with a separate sales force, with the Collingwood sales force reverting to concentration on its accent lighting range. Orders still received for the FireLED continued to be supplied by Collingwood until the product was withdrawn. Collingwood also has a separate division that supplies lighting components.
Aurora is a major supplier of lighting products. It is the English subsidiary of a large Swiss group that is involved in manufacturing, distribution, sales and marking of luminaires and lamps in 38 countries. Aurora is a significantly larger company and has a much broader product range than Collingwood. There are some 10 active companies in the Aurora Group. Aurora itself has considerable experience of patents and has filed about 10 patents or patent applications since 2002.
The Proceedings
This action was started in June 2012 and the Particulars of Infringement were re-amended in May 2013. By agreement between the parties, there was no disclosure. Collingwood was represented at trial by Mr Vanhegan QC and Mr Alkin, and Aurora by Mr Edenborough QC and Mr St Quintin. The trial was very efficiently conducted and completed within its 3 days estimate, with full written closings submitted thereafter.
Each side called one witness of fact and one expert.
Witnesses of fact
Collingwood's witness was Mr Justin Maeers, who has been with the company for some 25 years. He is now its Managing Director and Chief Technical Officer. I found him to be an honest witness, and the fact that there were a number of careless mistakes in his witness statements, which he readily acknowledged when they were pointed out, does not in my view reflect on his overall credibility. I do not accept the submission advanced for Aurora that Mr Maeers was an inherently...
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