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Wednesday, 20 October 2010

Tate & Lyle v Roquette Frères: meticulous verbal analysis?

The IPKat has been pondering the Court of Appeal judgment in Tate &Lyle Technology Ltd v Roquette Frères [2010] EWCA Civ 1049 for a little while now, after noticing it issuing last week.  This related to an appeal by Roquette Frères from the judgment of Mr Justice Lewison in the High Court in June 2009, on which the IPKat commented at the time here.  What he found most interesting the first time round was the reference to the 17th century French playwright Molière, which nicely illustrated a point about inherent anticipation (read the judgment for more details).  The point of interest this time round, however, was a little different.

As a reminder, the case related to European patent EP0905138, granted to Roquette Frères in 2002.  The patent described processes for synthesising a sugar substitute maltitol by hydrogenation of maltose.  A key feature of the patent was that a known by-product of the hydrogenation process, maltotriitol, was found (surprisingly, of course) to affect the crystal formation of the resulting maltitol.  At low maltotriitol concentrations, a bipyramidal crystal form would tend to result, while at higher concentrations a prismatic form would instead result.  Controlling the type and proportion of these crystal forms could be useful in affecting how the resulting product behaved, such as in terms of its flow behaviour.  The patent was granted with 10 claims but, after opposition, only one claim was left, being:

"The use of maltotriitol to modify or control the form of maltitol crystals."

At first instance, the judge found that the claimed invention was invalid for a number of reasons, one being that it lacked novelty over a prior disclosed process involving hydrogenation of maltose, in which maltotriitol would inevitably modify or control the form of maltitol crystals.  Did this mean that the prior art disclosed the use of maltotriitol to modify or control the form of the resulting maltitol crystals?  The judge effectively held that it did, after construing the words of the claim (in particular those in italics).  The issue on appeal was then principally one of construction.  Did the wording of the claim, taken in context, mean that it was merely describing what was already known (or at least inherent), or would a skilled reader understand the invention to be something different and new? 

As might be expected at this point, a familiar old chestnut from Catnic Components v Hill & Smith [1982] RPC 183 was wheeled out, by reference to the more recent case of Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062.  The relevant part of Lord Diplock's judgment in Catnic reads:

"A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge."

After paying due attention to this, Lord Justice Lloyd then proceeded to do, as far as the IPKat can see, precisely the kind of meticulous verbal analysis warned against by Lord Diplock.  Alternative meanings of the words "use", "control" and "modify" were analysed.  Paragraph 47 is a particular corker of obfuscatory verbosity:

"Mr Purvis' point that on the judge's construction the patent is self-defeating, so to speak, has some force. Such a situation is not what the skilled reader would expect. However, while avoiding the danger of being over-technical and semantic, the skilled reader has to read the language of the patent in a fair way, having regard to all of its contents. He might well be led by [0034] to expect that the claim would involve changing the level of maltotriitol. The claim does not use the word "vary", however, and although "modify" is a synonym for "vary", "control" is not necessarily so. What he finds is that, first, "control" is spoken of at [0035] as covering several different types of process, carried out at different stages. Secondly, "control" of the maltotriose content is referred to at [0047], in relation to adjusting the maltotriose content, and specifically in relation to the form of the eventual crystals. Then, at [0059], reference is again made to the maltotriose content, and to it being "controlled", that is to say being reduced (depleted) to a greater or lesser extent "or not at all". Next, at [0071] to [0074], four different versions of the process are explained, of which one occurs before hydrogenation (thus, in relation to maltotriose, not to maltotriitol) and one does not involve any adjustment of the level of maltotriitol. Lastly, when he comes to the one and only illustrative example of the invention, at [0076] to [0077], no adjustment is mentioned at all."

To cut a long story short, as far as the IPKat understands it the issue was whether the claim required a deliberate modification of the maltotriitol content in order to vary the crystal forms in the resulting maltitol.  Lord Justice Lloyd, with whom the other Lords Justice agreed, found that it did not in light of what was disclosed in the rest of the specification.  So, in a very roundabout way, a meaning of the claim was arrived at that agreed with that of the judge.  The appeal was dismissed.

The IPKat is unsure what, if anything, to make of this judgment.  It is hardly a model of clarity, but he suspects there is an important core meaning in there somewhere, if only he could get to it.


Anonymous said...

If you want to see photographs of the crystals, here is where to go:

The French decision discussed there deals with the question whether preliminary injunction was appropriate.

David said...

Merci, M. Anonymous! I considered using the photos, which are from the published patent specification, but they are not very clear.

Norman said...

The important core meaning, I suggest, is that Lord Hoffmann’s decision in Kirin-Amgen amounts to a repudiation of Catnic. His statement at [34] that “The words will usually have been chosen on skilled advice. The specification is not a document inter rusticos for which broad allowances must be made” directly invites – indeed mandates – “ meticulous verbal analysis in which lawyers are too often tempted by their training to indulge.” This statement was the basis for the observation in Virgin Atlantic that “the skilled reader is taken to suppose that the patentee knew some patent law,” which was relied upon in Tate & Lyle. This proposition reinforces the call to a lawyerly analysis. It was too much to suppose that judges – who are lawyers after all – could restrain themselves indefinitely from interpreting legal documents in a lawyerly manner. Catnic will probably never be expressly overruled, but it has achieved zombie status – Catnic is dead, at least at the appellate level, but its corpse stumbles around in ritual citations.

Chris H said...

Based on the extract shown above Lloyd's reasoning seems to be in line with Diplock's judgement IMHO.

Lloyd contrues the terms according to what the skilled person would have understood the inventor to have meant i.e. a purposive contruction. He is not placing a literal meaning on the terms which is what Diplock warned against in Catnic (wherein from memory 'vertical' was deemed not to be limited to the literal meaning of 'exactly perpendicular')

Anonymous said...

In the absence of anything in the specification to provide any meaningful technical limitiation, a claim that reads “The use of maltotriitol to modify or control the form of maltitol crystals” is equivalent to claiming “all practical applications of the discovery that maltotriitol influences the form of maltitol crystals”. Overclaiming, pure and simple. I’m not convinced that lack of novelty was the correct sword with which to dispatch it.

Anonymous said...

Actually the photos are much clearer in the priority document ;-)

twr57 said...

Let's construe the claims as a reasonable technical expert might (dispensing with MVA). Wouldn't she understand that the claim is to a process in which you dose a solution of maltitol with maltotriitol with the intention of influencing crystal growth in the way desired? The question then is, is the intention of the operator a proper way to distinguish from the prior art? Isn't this on a par with practice in computer-assisted inventions, where non-technical distinctions are not taken into account in judging novelty and obviousness?

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