Summary
In a recent case ([2026] EWCA Civ 93), the Court of Appeal dismissed Salts Healthcare’s appeal against a finding that Pelican Healthcare’s product did not infringe its ostomy bag patent on both a normal construction and under the doctrine of equivalents. Salts was however successful in overturning the High Court’s decisions on novelty and IPEC pre-transfer costs.
Background
In the Patents Court, the judge held that Salts’ patent was not infringed by Pelican’s ModaVi ostomy bag, and that claim 8 of the patent lacked novelty over a prior art citation called Grum-Schwensen. (For further background, see our summary of this decision here.)
Salts was granted permission to appeal on both infringement and validity. As the claim was originally commenced in the IPEC (Intellectual Property Enterprise Court) before being transferred to the Patents Court, the Court of Appeal also dealt with the issue of pre-transfer costs.
Decision
Arnold LJ, giving the leading judgment, dismissed Salts’ appeal on claim interpretation and infringement, but allowed it on novelty of claim 8 and pre-transfer costs.
Claim interpretation and infringement on normal interpretation
Arnold LJ agreed with the judge’s findings on claim interpretation. He was correct to find that a weld portion which “extends away from a periphery of the appliance” would not cover a weld portion which changes direction in the manner put forward by Salts. He also agreed that a weld portion extending “downwardly towards a bottom of the appliance” does not cover weld portions whose top edge slopes downwards. The weld portion as a whole must extend downwardly towards the bottom of the bag, and not merely its upper surface.
As the decision on claim interpretation stood, it followed that the ModaVi bag did not infringe on normal interpretation.
No infringement by equivalence
The issue on appeal was whether the lobes of the closed ModaVi bag “extend away from a periphery of the appliance and downwardly towards a bottom of the appliance” by virtue of equivalence. At first instance, the judge answered the first two questions from Actavis v Lily [2017] UKSC 48 in Salts’ favour, but the third in Pelican’s favour.
As a first step, Arnold LJ considered the inventive concept of claim 8. He disagreed with both parties’ positions, instead holding that the inventive concept would be: “the provision in an ostomy appliance of weld portions additional to the peripheral connection (in the sense explained in paragraph 79 above) which are positioned and shaped (i) so as to force waste up rather than out, so that the waste is distributed more evenly along the length of the bag, thereby reducing bulging and sagging, and (ii) so as to avoid trapping waste above them.”
Turning to Actavis question 1, Arnold LJ agreed with the judge that this should be answered in the affirmative. The judge had made a finding of fact as to how the ModaVi bags worked, and the Court of Appeal was not in a position to question his finding. There was no dispute that, if question 1 was answered “yes”, then question 2 must also be answered “yes”.
On Actavis question 3, the judge had held that the lobes of the ModaVi bag extend upwardly, rather than downwardly towards the bottom of the bag as required by claim 8. Consequently the critical question was whether the skilled reader would understand that strict compliance with that feature of claim 8 was required. Arnold LJ concluded that the judge was correct to answer question 3 as “yes”. He agreed with Pelican’s reasoning that the skilled reader would consider it significant that:
- claim 8 is formulated in structural and not functional terms,
- the functional improvements claimed in the specification are only claimed for the specific weld portions and there is no disclosure of a general principle,
- there are a large number of independent claims, which suggests careful consideration by the patentee of the extent to which the scope of the claims should extend beyond the specific embodiments, and
- claim 8 is limited to weld portions which extend downwardly towards a bottom of the appliance, whereas this is not a feature of other independent claims. This is a strong case of the principle that what is disclosed in the specification, but not claimed, is disclaimed.
Novel over Grum-Schwensen prior art
The dispute on appeal was whether Grum-Schwensen discloses weld portions which “extend away from a periphery of the appliance and downwardly towards a bottom of the appliance”. This issue depends on the location of the bottom of the bag when the outlet portion is folded up. Pelican argued that the weld portions were above the bottom of the bag (and therefore can extend away from the periphery and downwardly towards the bottom of the bag), whereas Salts contended that the bottom of the bag is higher up.
Arnold LJ agreed with Salts, holding that “it cannot be said that Grum-Schwensen clearly and unmistakably discloses that the bottom of the bag when the outlet portion is folded up is in the position contended for by Pelican.” He noted that the schematic nature of the figures and inconsistency of where the welding portions are shown made it “impossible to be sure where the bottom of the bag is”. Arnold LJ also accepted Salts’ argument that, even if Grum‑Schwensen were put into practice, it would not inevitably result in the bottom of the bag being located as Pelican suggested.
The Court of Appeal concluded that Pelican had not demonstrated that claim 8 lacks novelty over Grum-Schwensen, and that Salts’ appeal on this ground should be allowed.
Pre-Transfer Costs
When the case was transferred from the IPEC to the Patents Court, HHJ Hacon’s transfer order included a recital stating that “costs prior to transfer should be assessed in accordance with the usual IPEC scale cost caps” but reserved the pre-transfer costs for the trial judge. The Patents Court judge subsequently declined to order that Pelican’s costs prior to transfer be assessed in accordance with the IPEC scale.
Arnold LJ considered the relevant rules and concluded that, while the judge did have discretion as to whether or not to assess pre-transfer costs in line with the IPEC scale, this discretion had been exercised incorrectly. The judge should have treated HHJ Hacon’s indication as a starting point that could only be departed from if there was a good reason to do so. As no such reason had been identified, the judge’s approach was flawed. Accordingly, Arnold LJ varied the judge’s costs order to limit the pre-transfer costs payable by Salts in accordance with the IPEC scale.
Comment
This decision by the Court of Appeal serves as a useful recap on the principles of novelty and infringement by equivalence.
From a practical perspective, it also provides a helpful clarification on how the courts should approach IPEC pre-transfer costs. Arnold LJ specifically noted that the same analysis will also apply to transfers of copyright and trade mark claims from IPEC to the High Court.
For further information, please contact:
Imogen Kelso, Bird & Bird
imogen.kelso@twobirds.com
