Daesang Corporation and Daesang Europe (BV) v Ajinomoto Co. Inc.

This case concerned an application for revocation of a patent. There were invalidity attacks based on anticipation, obviousness and insufficiency. Laddie J described the patented invention as very simple but went on to uphold the validity of the patent.

Ajinomoto own a European Patent claiming a process for the production of aspartame on an "industrial scale". Aspartame is a low calorie sweetener which is used in a variety of food and drinks. The claimed invention relates to the purification of aspartame by using a static crystallization process on an industrial scale.

Ajinomoto had sued Daesang in the Netherlands for infringement of the Dutch and UK European patents. Daesang applied for revocation of the European (UK) patent ("the Patent").

The attack on the Patent was on three grounds – insufficiency, anticipation and obviousness.

Daesang argued that terms in the claims such as "industrial scale" were ambiguous and that this gave rise to an insufficiency attack. The attack was not run as the primary attack on invalidity but rather as a squeeze against a narrow construction of the prior art.

Laddie J added that although the various terms use imprecise, no one in the art would have any difficulty in knowing what they meant. In his view the claimed process was extremely simple, namely the use of a static crystallisation process instead of an agitated crystallisation process. Laddie J therefore dismissed the insufficiency attack.

Laddie J warned that as with obviousness, when considering anticipation it is necessary to be aware of the dangers of hindsight: "The smaller the invention, the easier it is to analyse, explain and discredit it".

There was only one item of prior art relied upon for both the anticipation and obviousness attacks, Japanese laid-open patent, as "JP ‘267".

The teaching of JP ‘267 related to a method of purifying aspartame by using a combination of methods all of which incorporated a crystallisation step. The specification of JP ’267 said its objective was to provide an industrial method to purify aspartame.

It was accepted by both parties that the general teaching of JP ‘267 disclosed nothing about the method of crystallisation. However, Daesang argued that static crystallisation was at least inferred.

Laddie J held that JP ‘267 did not give clear and unmistakable directions to use static crystallisation, and even if it did there were no such instructions to do so on an industrial scale. All the examples in JP ‘267 were carried out on a laboratory scale. The anticipation attack therefore failed.

Daesang alleged obviousness over JP ‘267 and common general knowledge. In his approach to obviousness, Laddie J did not slavishly follow the structured steps of the test set out by the case of Windsurfing. Instead, after considering the meaning of "on an industrial scale" and the relevant common general knowledge, he went to the question of obviousness.

In Laddie J’s view, industrial scale meant no more than to distinguish between commercial and laboratory activity.

As to common general knowledge, Laddie J held that the accepted method of crystallisation on an industrial scale was by using an agitated crystallisation process. Furthermore, at the relevant date there were considered to be a number of serious disadvantages of using a static crystallisation process.

There was nothing in JP ‘267 to suggest an agitated system would not work and there were no indications that a static system should be used for industrial scale production. Indeed, there were compelling technical reasons for using an agitated crystallisation process.

In his judgment, Laddie J placed weight on the fact that aspartame had been discovered some 16 years before the priority date of the Patent yet no one had thought of purifying commercial quantities of aspartame using a static crystallisation process.

Ajinomoto’s expert expressed the view that the claimed process was "counterintuitive and far removed from the accepted wisdom of the day." Laddie J accepted this and therefore held that the patent was not obvious.

It is refreshing to see the English Patents Court showing a willingness to consider secondary evidence on obviousness (no-one had used a static crystallisation system to purify aspartame despite aspartame having been manufactured for 16 years), and taking into account what actually happened at the relevant time in the art in question (there was a technical prejudice in favour of using an agitated crystallisation system).

The judgment also follows the recent tendency of the UK Court to go to the question of obviousness directly rather than via the structured approach of Windsurfing. This does seem appropriate in the case of less complex inventions.