The case of Le Bourgeois Gentilhomme and a sugary discovery

The IPKat is now getting a bit tired from reading all these judgments that have been coming out of the English courts recently. The latest of these (at least the last time he looked anyway) is that of Tate & Lyle Technology Ltd v Roquette Freres, decided yesterday by Mr Justice Lewison (pictured, right) in the Patents Court.

The case related to the validity of a European patent granted to Roquette Freres, which the IPKat presumes is EP0905138 (the patent does not seem to be mentioned by number in the judgment itself, unless the IPKat's eyes and search technology are deceiving him). The patent, after much disputation including an opposition and an eventually abandoned appeal, was left with only one claim, which reads:

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

Several documents were cited by Tate & Lyle, some of which clearly disclosed the use of maltotriitol in the process of manufacture of maltitol, a particular type of artificial sweetener made from starch. It was determined, with the assistance from expert witnesses, that maltotriitol did indeed control and modify the form of crystals formed, so the claimed invention was not novel. Regardless of whether the particular prior art processes disclosed mentioned the purpose of maltotriitol, the inevitable effect would have been that of controlling the form of maltitol crystals that formed. This reasoning was, of course, nothing new and was summarised by the eminent Lord Hoffmann in Synthon BV v Smith Kline Beecham plc:

"…the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing: "whether or not a person is working [an] … invention is an objective fact independent of what he knows or thinks about what he is doing": Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] R.P.C. 76 , 90. It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so."

Having used this approach in relation to the various documents cited, the patent was found to be anticipated by no less than five of them. For good measure, however, Tate & Lyle's counsel, Colin Birss QC, also suggested that the claim was in any case invalid due to the contribution being a mere discovery, excluded from patentability under section 1(2). Because the claim merely informed the reader that maltotriitol, which was a known impurity in the manufacture of maltitol, had the effect of changing the formation of crystals, all the patent contributed was the discovery that the crystal changing was caused by maltotriitol's presence. Mr Justice Lewison thought this was a jolly good idea, and it clearly sparked off some thoughts of 17th century French comedy:

"In Molière's play Le Bourgeois Gentilhomme, Monsieur Jourdain asks something to be written in neither verse nor prose. A philosophy master says to him, "Sir, there is no other way to express oneself than with prose or verse". Jourdain replies, "By my faith! For more than forty years I have been speaking prose without knowing anything about it, and I am much obliged to you for having taught me that." That is this case. The industry has been using maltotriitol to control or determine crystal habit without knowing it. What is left of the patent as granted is no more than a discovery as such."

For some reason unknown to him, the IPKat's mind turns to the well known saying of that other famous Frenchman, Eric Cantona: "When the seagulls follow a trawler, it is because they think sardines will be thrown into the sea".

Merpel thinks that the IPKat might have been reading a bit too much caselaw recently.