EPLAW PATENT BLOG

UK – Tate & Lyle v Roquette Frères

Posted: October 26th, 2010

Tate & Lyle Technology Ltd v Roquette Frères, Court of Appeal (Civil Division), on appeal from the High Court of Justice, London [2010] EWCA Civ 1049

The Court of Appeal has dismissed the appeal brought by the patentee, Roquette Frères (“Roquette”), against a decision of the Patents Court (Lewison J) that the patent-in-suit was invalid for lack of novelty.

The patent related to the cyristallisation of maltitol, a sugar substitute; its only claim being to “the use of maltotriitol to modify or control the form of maltitol crystals” (different crystal forms having different performance characteristics, e.g. flow behaviour). The appeal concerned primarily the issue of claim construction, in particular the interpretation of the words “use” and “modify or control” and whether the claim required a deliberate modification of the maltotriitol content in order to vary the crystal forms in the resulting maltitol.

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The Court of Appeal decided that the invention as claimed also included the case where the level of maltotriitol remains unchanged and, therefore, did not necessarily involve an adjustment to the level of maltotriitol in order to achieve the desired crystal form outcome. This accorded with the construction of the patent at first instance and, consequently, Roquette’s appeal was dismissed (Roquette having accepted upfront that if the Court of Appeal found that the first instance decision was right on construction, then its appeal would fail).

As an aside, in connection with the parties’ references to the patent’s prosecution history (pursuant to which the EPO rejected nine of the ten originally filed claims), it may be worth noting that Lord Justice Lloyd stated that it was not helpful to consider what might have been the position under the other (rejected) claims or to take into account what was said by any party or the EPO in the opposition proceedings, but that “the patent needs to be construed as it stands” on the basis of the material and arguments in the case in hand.

Read the judgment (in English) here.

Head note: Sara de Sousa

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