Salts Healthcare Limited v Pelican Healthcare Limited

In patent proceedings, permission to rely on experiments should be granted where the experiments are relevant and proportionate. Experiments may provide useful context for understanding a patent disclosure or prior-art embodiment, but cannot replace the words of the disclosure.

A product and process description must give full particulars sufficient to enable all infringement issues to be resolved. General descriptions, tendentious assertions and unexplained uncertainty are inadequate. Documentary disclosure remains a last resort where deficiencies can be addressed by amending the product description. Search-based disclosure should be targeted and proportionate, and may be refused where its likely evidential value does not justify its cost, delay or risk to the trial.

Salts Healthcare Limited brought patent infringement proceedings against Pelican Healthcare Limited concerning an ostomy appliance patent. Two applications were before the Patents Court.

Pelican sought permission to rely on experiments involving its allegedly infringing products, embodiments of the patent, prior-art and common-general-knowledge products, and modified products. Salts sought permission for its own experiments, amendments to Pelican’s product and process description, and documentary disclosure.

The applications followed case-management directions made by Meade J at the CMC, reported at [2024] EWHC 354 (Pat). The central issues were the relevance and proportionality of the experiments, the adequacy of the amended product description, and whether further search-based disclosure was justified.

1. Experiments. The court granted Pelican permission to rely on its experiments. The experiments concerning embodiments of the patent, prior art and common general knowledge were potentially relevant to understanding how the relevant appliances performed when filled. A working example could provide context, although it could not supplant the primacy of the words of the disclosure. The proposed modifications could also be relied on, subject to expert evidence and argument at trial.
2. Salts’ own unopposed application to rely on experiments was also allowed. The court treated relevance and proportionality as the governing considerations and did not take account of alleged lack of co-operation between the parties.
3. Product and process description. The court required Pelican to amend its description. Consistent with Consafe v Emtunga [1999] RPC 154, full particulars meant particulars sufficient to enable all infringement issues to be resolved. The description had to address the actual effect of each relevant feature on bulging, sagging and distribution. It should avoid the imprecise expressions “purpose” and “not understood”; where the effect was unknown, that should be stated directly.
4. Disclosure. The court declined to order Model D search-based disclosure. Documentary disclosure in patent cases was a last resort, particularly where perceived inadequacies in the product description could be cured by amendment. Relevant documents would ordinarily be addressed through the existing obligation to disclose known adverse documents. The likely limited additional value of a search did not justify its onerousness, cost, delay and potential effect on the trial.
5. The procedural objection based on Tibbles v SIG plc [2012] EWCA Civ 518 failed. The application was based on the amended product description and was not an attempt to re-argue the earlier order. All application costs were ordered to be costs in the case.

The judgment was a first-instance case-management decision. It described earlier case-management orders made by Meade J at the CMC, reported at [2024] EWHC 354 (Pat), but this was not an appeal from that decision.