Ostomy bags provide warning from the UK courts over undue reliance on concept over claim wording
A battle between competitors in the marketing of such bags relating to making them more user-friendly recently ended up before the EWHC. The resulting decision (see Salts Healthcare Ltd v Pelican Healthcare Ltd [2025] EWHC 497 (Pat) (05 March 2025)) is of particular interest for the approach of the judge in finding lack of infringement of claims of GB2569212 of Salts Healthcare (‘Salts’) by ostomy bags marketed by Pelican Healthcare (‘Pelican’), both on the basis of purposive construction of claims and through consideration of equivalents in accordance with the three pertinent questions set out in the decision of the Supreme Court in Actavis v Lilly.
The patent alleged that it addressed known problems associated with filling of ostomy bags, more particularly unsightly bulging and pulling on the adhesive baseplate which connects the bag to the user, through provision of welded portions. Salts cited a PCT Application in the name of Eakin R & D Limited, the parent company of Pelican, as part of its evidence that Pelican was aware of the publication of the application for the patent of note and set out to make a competing bag. However, the judge saw it as only necessary to focus on the definition of ‘weld portion’ in the claims.
Salts argued that Pelican’s alleged infringing bags provided the weld portions required in use. However, the judge dismissed infringement on purposive claim construction on the basis that, consistent with the description, the claims of note made separate reference to the bag periphery and weld portions which extend “away from the periphery of the appliance and downwardly towards the bottom of the appliance.”
In considering the questions required by Actavis v Lilly, the judge further emphasised that he viewed the inventive concept as not simply a matter of bag shape. Infringement was held to fail on the third question which asks whether the skilled reader would have concluded that the patentee intended strict compliance with the literal meaning of the relevant claims was an essential requirement of the invention. In this instance, the judge considered the answer was ‘yes’ since while the inventive concept might be achieved in other ways “the patentee has chosen a particular way in which to achieve the intended effect and has limited the claims to specific structures. The Patent describes a set of appliances that have particular features. It would, for example, have been straightforward for the patentee to formulate a claim by result or to a ‘narrower’ bag or to omit the word ‘downwardly’, but none of the asserted claims does that. The claims are limited to appliances with the particular structures claimed and strict compliance is intended.”
Further report of this case is due to appear in the on-line CIPA Journal here.
