The Court of Appeal of England & Wales in Tate & Lyle Technology Ltd v Roquette Freres [2010] EWCA Civ 1049 has held that, on the basis of the facts presented, the construction of a patent claim destroyed its novelty.

BACKGROUND

The Claimants, T&L, alleged that Roquette’s patent was invalid on the grounds of lack of novelty and obviousness. The claim in issue was “the use of maltotriitol to modify or control the form of maltitol crystals”.

At first instance, Mr Justice Lewison had held that the patent was anticipated by at least five items of prior art and also that the patent was unpatentable because it was a discovery.

DECISION

Roquette accepted that, if Lewison J’s decision had been correct on the construction of the patent, then its appeal would fail. The interpretation of the claim in the patent in suit turned on what was meant, in context, by “use”, “modify or control” and “form”.

Noting that the claim spoke of modifying or controlling the form of the crystals, not of modifying or controlling the maltotriitol, or the level of the maltotriitol, Lloyd LJ rejected Roquette’s contention that “modify” applied to crystalline maltitol whereas “control” applied to the pre-crystalline stages, stating that this was not supported by the description which referred to controlling the maltitol content both upstream and downstream of crystallisation.

Lloyd LJ accepted that the skilled reader is taken to know that the patentee is trying to claim something that the patentee considers to be new, so the skilled reader will be strongly averse to ascribe to the claim a meaning which covers that which the patentee acknowledges is old. In this case, however, Lloyd LJ held that

 …the question is nevertheless one of construction, and whether what is claimed is or is not new will depend on, rather than be determinative of, the construction of the claim. There is no rule that because prior art is referred to in the specification, that prior art cannot be found to have anticipated the invention claimed.

In conclusion, Lloyd LJ upheld the decision of the High Court that

…the skilled reader would conclude that what was being described included not only the case where the level of maltotriitol is not that which is desired, so that it has to be adjusted, but also the case in which the analysis shows that it is suitable, and can therefore be left alone.

Since Roquette had accepted that the Court of Appeal’s decision on construction would be decisive, the appeal was dismissed.