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.

Of Catnic, clamps and catheters: the story of an ordinary word

"Judge gives word its ordinary meaning" was the striking headline of the IPKat's post last summer (here) on the decision of Mr Justice Mann (Patents Court, England and Wales) in Occlutech GmbH v AGA Medical Corp; Dot Medical Ltd [2009] EWHC 2013 (Ch). Well, yesterday -- while all true men were watching the world's major sports events -- all true IP enthusiasts were straining themselves to follow the decision of the Court of Appeal in this dispute, which you can find on BAILII here. In the event, the appellate court's ruling was not much more exciting than the England-Algeria football match. A court which was sadly lacking Lord Justice Jacob -- who is probably taking a little time off from his strenuous judicial responsibilities to pen some lectures for his new UCL job and to buy a jacket with leather patches at the elbows -- took not very long to dismiss the appeal. While a Court of Appeal patent judgment that runs to 60 paragraphs shows that their Lordships at least had to pause for thought before reaching their decision, tennis fans might see it as a bit of a 6-0.

Anyway, to summarise the matter: AGA made intravascular devices for treating certain medical conditions and had a patent for

"a collapsible medical device comprises a metal fabric formed of braided metal strands, the device having a collapsed configuration for delivery through a channel in a patient's body and a generally dumbbell-shaped expanded configuration with two expanded diameter portions separated by a reduced diameter portion formed between the opposed ends of the device, and clamps for clamping the strands of the opposed ends of the device".

Occlutech made patent foramen ovale (PFO) occluders for use in patients with heart defects where there were gaps in the atrial wall. The PFO occluder, introduced by a catheter or similar device, consisted of two discs -- one in each atrium -- and a thin middle section which occupied the gap in the atrial wall. This device was held in place by the natural inward 'pinching' forces exerted by the discs along its axis. During manufacture, one end of the device was closed but the other was left open, the loose ends of the device protruding through the open end but being welded to form a clot during the final part of the manufacturing process.

Occlutech sought (i) a declaration of non-infringement in respect of its PFO occluders and (ii) revocation of AGA's patent for obviousness over the prior art, this being a Boston Scientific patent for 'stents for body lumens exhibiting peristaltic' which claimed "a method for providing reinforcements to the lumen of a peristaltic organ. The stent is formed by knitting a filament into interknit loops...". AGA counterclaimed for infringement and joined Dot, the importer of Occlutech's PFO occluders, to the proceedings. It was basically accepted that, for the purposes of the proceedings, the skilled addressee was a team consisting of a medical devices engineer and a clinician.

Mann J held the patent valid but decidedly uninfringed. In reaching this decision he said that the word 'clamp' had its common meaning -- an object which exerted a physical fixing and binding force on the strands of the fabric so they did not unravel. The Court of Appeal (Lord Justices Pill and Patten, plus Sir Paul Kennedy) agreed. In their Lordships' collective view, articulated by Patten LJ:

* in AGA's patent, clamps did not include welding and soldering, as well as external devices that were physically attached to the welded ends. The skilled addressee would understand that the patent specification meant there were two separate ways to secure the loose ends of the braid, and that a clamp meant the application of an external device to hold the strands together as opposed to fusing them together with solder or a weld.

* the claims in the patent did not therefore extend to an external device attached by welding or soldering to ends that were effectively held in place by an earlier welding process; the clamp had to be the primary and effective means of securing the loose ends.

* Occlutech's devices did not contain a clamp because the strands were not clamped in the sense of being kept together, though they were kept together by a previous weld.

* the claims referred to the plural "clamps", and there was nothing that would cause the skilled addressee to take a different view from that conveyed by the natural meaning of the words of the claims -- that (i) clamps had to be attached at the opposing ends of the device, and (ii) clamps were a distinctive and necessary feature of the invention.

Says the IPKat, it's always a pleasure to be reqcquainted with the much-loved, oft-cited and greatly analysed decision of the late, lamented House of Lords in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 -- a decision in which the equally late, lamented Lord Diplock warned against allowing "meticulous verbal analysis" to skew the reading of a claim to a rather low-tech patent (the gist here being arguably that 'clamp' doesn't so much mean 'clamp' as 'something which has a sufficient quality of 'clampishness' to operate as a clamp). He would however love to know whether anyone has compiled a Catnic chart, tracking those decisions in which it has been cited by the winner in any dispute over claim interpretation against those decisions in which it has been cited by the loser. He suspects that the moment Catnic is mentioned, the party citing it in support of a proposition is actually flagging up the weakness of his case. Any thoughts?

Clamps here and here

Removing a clamp here and here