Salts Healthcare Limited v Pelican Healthcare Limited

Patent claims are construed purposively in context, but purpose cannot override the language chosen. A requirement that weld portions extend away from a periphery and downwardly towards the bottom requires the weld portion as a whole to satisfy those descriptions. Under the doctrine of equivalents, the inventive concept is assessed at the level of generality of the claims and must reflect their function without simply reproducing their wording. Structural specificity, a limited teaching, multiple independent claims and disclosed-but-unclaimed alternatives may show that strict compliance was intended. Novelty requires clear and unambiguous disclosure or an inevitable result; an obvious modification or a result more likely than not is insufficient. IPEC scale-cost protection for pre-transfer work depends on the transfer order and the court’s discretion.

Salts appealed from the Patents Court’s dismissal of its infringement claim concerning claims 5, 8 and 20 of a patent for an ostomy appliance. The judge held that Pelican’s ModaVi bags did not infringe and declared claim 8 as granted invalid for lack of novelty over Grum-Schwensen, while permitting a validating amendment. The appeal challenged the construction of claims 5 and 8, infringement under the doctrine of equivalents, novelty, and the assessment of costs incurred before transfer from the Intellectual Property Enterprise Court to the Patents Court. The central issues were the proper construction of the weld-portion limitations, the application of the Actavis questions, whether Grum-Schwensen clearly disclosed the claimed arrangement, and whether pre-transfer costs were subject to IPEC scale limits.

Arnold LJ gave the judgment of the court, with Miles LJ and Newey LJ agreeing.

1. Construction and infringement. Claims must be construed purposively in context, having regard to the invention’s purpose, but purpose is not conclusive and cannot rewrite deliberate claim language. The requirement that a weld portion extend away from a periphery refers to the actual periphery, not a hypothetical line which the peripheral weld would have followed. The requirement that it extend downwardly towards the bottom applies to the weld portion as a whole, not merely to its upper edge. The judge’s construction was therefore correct, and the ModaVi bags did not infringe on the ordinary meaning of claims 5 or 8.
2. Equivalence. The court applied the three questions in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48. The inventive concept is assessed at the generality of the claims alleged to be infringed. For claim 8 it comprised additional weld portions positioned and shaped to force waste upwards rather than outwards, reduce bulging and sagging, and avoid trapping waste above the welds. The lobes satisfied questions 1 and 2. Question 3 was answered yes because claim 8 used specific structural language, the functional teaching was limited to particular disclosed welds, the patent contained many independent claims, and downward extension was claimed in claim 8 but omitted from other independent claims. The closed ModaVi bag therefore did not infringe by equivalence.
3. Novelty. Prior disclosure requires clear and unambiguous disclosure or clear and unmistakable directions inevitably resulting in something within the claim. It is insufficient that an alteration would be obvious or that the result would be more likely than not. Grum-Schwensen did not clearly and unmistakably disclose the location of the bottom of the folded pouch, and an inevitable result was not established. The finding that claim 8 as granted lacked novelty was set aside.
4. Costs. The IPEC scale-cost regime does not provide an automatic answer to the treatment of costs incurred before transfer to the Patents Court. Practice Direction 30 empowers IPEC to specify that such costs are to be assessed on the IPEC scale. If it does not do so, the Patents Court has a discretion. The transfer judge’s indication that the IPEC scale should apply could be departed from only for good reason, and none was shown. The pre-transfer costs were therefore limited to the IPEC scale.
5. The appeal was dismissed on infringement, allowed on novelty and pre-transfer costs, and the costs order was varied accordingly.

• Court of Appeal (Civil Division) dismissed the infringement appeal but allowed the appeal on novelty and pre-transfer costs.
• High Court of Justice, Patents Court dismissed the infringement claim and declared claim 8 as granted invalid for lack of novelty: [2025] EWHC 497 (Pat). The consequential costs decision was reported at [2025] EWHC 1056 (Pat).
• Intellectual Property Enterprise Court transferred the proceedings to the Patents Court: [2023] EWHC 2232 (IPEC).