DSM IP Assets BV & Anor v Algal Omega 3 Ltd & Anor (Rev1)

Factual and Procedural Background

The Court considered cross-appeals by the Plaintiff and the Defendant against aspects of an order made by Judge Mellor on 18 June 2025, arising from the judge's March 2025 judgment ([2025] EWHC 625 (Pat)). The Plaintiff alleged that the Defendant infringed three European patents (referred to in the opinion as EP155, EP740 and EP801). The Defendant denied infringement and counterclaimed for revocation of the patents. The first-instance judge conducted a nine-day trial (October 2024) and delivered an extensive judgment: he held EP155 valid (infringement admitted if valid), EP740 invalid on multiple grounds, and EP801 invalid for obviousness (but that some of the Defendant's processes would have infringed EP801 if it had been valid). The Defendant obtained permission to appeal the finding of validity of EP155. The Plaintiff obtained permission to appeal the finding that EP801 was invalid and also challenged the judge's infringement findings as to EP801.

Legal Issues Presented

1. Whether claim 1 of EP155 is obvious over European Patent Application No. 1 179 118 ("Bijl").
2. Whether claim 1 of EP801 is obvious over US 2006/00099693 ("Kobzeff"), including (a) the correct construction of the integer "wherein the lipid contains less than 5% by weight of an organic solvent" and (b) whether EP801 would be obvious on DSM's (Plaintiff's) preferred construction.
3. Whether the integer "raising the pH of the lysed composition to 8 or above" in claim 1 of EP801 was wrongly construed by the judge (contingent on the outcome of patent-construction and obviousness issues).
4. Ancillary: Whether more of the Defendant's processes infringed EP801 if it were valid.

Arguments of the Parties

Plaintiff's Arguments

• EP801 was not obvious over Kobzeff; the judge erred in construing the "< 5% organic solvent" integer and in holding obviousness even on the Plaintiff's construction (Grounds 1(a) and 1(b)).
• The judge wrongly construed "raising the pH ... to 8 or above" (Ground 2), affecting infringement conclusions (contingent on success on Ground 1).
• More of the Defendant's processes should have been found to infringe EP801 if it were valid.

Defendant's Arguments

• Claim 1 of EP155 is obvious over Bijl, which teaches solventless extraction by lysis (mechanical, physical, chemical or enzymatic) followed by separation (centrifugation) and mentions enzymatic methods including proteases.
• Claim 1 of EP801 is obvious over Kobzeff because Kobzeff discloses enzymatic liberation of lipids and teaching that proteases aid demulsification and separation; Kobzeff contemplates separation either directly (no solvent), by polar organic solvent (FRIOLEX-type) or by solvent extraction.
• By respondent's notice, if relevant, Hendrik (related to Bijl) would render EP801 obvious if the EP155 appeal succeeded.

Table of Precedents Cited

Court's Reasoning and Analysis

The Court analysed the appeals against the detailed factual findings and legal conclusions of Judge Mellor. Key analytical steps were:

• Skilled Team and Evidence: The judge found the patents addressed a skilled team with upstream and downstream expertise, experienced in lab experimentation and scale-up. The Plaintiff's experts (a microbiologist and a bioprocessing engineer) were regarded as generally reliable but oriented to commercial-scale practice; the Defendant's single expert was less reliable in parts.
• EP155 (Bijl): The Court reviewed the judge's obviousness analysis applying the Pozzoli approach. The judge identified differences between Bijl and claim 1 of EP155 (notably choice of Schizochytrium and the foregrounding of protease enzymatic lysis). The judge found Bijl to be a "strange document" to the skilled team, noted Bijl's speculative aspects (notably claiming solventless centrifugation) and concluded the skilled team would be cautious and would not be sufficiently motivated to pursue enzymatic lysis for Schizochytrium without hindsight. The judge gave four main reasons for rejecting obviousness: (1) Mara's case relied on Bijl merely as a hook to enzymatic lysis (which was common general knowledge); (2) the novel teaching of Bijl was the solventless centrifugation step demonstrated with mechanical lysis, not enzymatic lysis; (3) lack of explanation why Bijl's specific teaching would have triggered action where prior CGK had not ("why was it not done before?"); and (4) absence of evidence that the skilled team would understand enzymatic lysis produced a gentler, easier-to-break emulsion. The Court upheld these factual and evaluative conclusions, finding no legal error or impermissible hindsight.
• Standard of Review: The Court reiterated that appellate interference with multi-factor obviousness assessments requires an error of law or principle (citing Actavis, Lifestyle Equities, Iconix).
• EP801 — Claim Construction ("< 5% organic solvent"): The Court considered the contested construction whether the "< 5% by weight of an organic solvent" integer referred to solvent content of the lipid throughout the process or to the lipid as obtained at the end of the process. Applying purposive construction principles (Virgin), the Court agreed with the judge that the phrase refers to the lipid resulting from the claimed process (i.e., the lipid as separated in step (d)). The reasons included textual linkage ("the lipid" referring back to "a lipid" in step (d)), the internal coherence of the claim, and specification passages that expressly discuss lipids containing <5% solvent.
• Kobzeff and EP801 Obviousness: Kobzeff disclosed enzymatic liberation of lipids (proteases), demulsification and separation options including direct separation (no solvent), polar organic solvent use (FRIOLEX-type), and solvent extraction. The judge found all claim elements except the pH≥8 feature were present or obvious from Kobzeff; he accepted that use of pH≥8 with a protease would be obvious. On the Plaintiff's construction, the judge found Kobzeff still rendered claim 1 obvious because Kobzeff expressly taught protease use, suggested demulsification/separation techniques (including salt and heating) and contemplated direct separation without a polar solvent. The Court found the judge was entitled to accept the cross-examination evidence (of the Plaintiff's bioprocessing expert) that salt and/or heat would be obvious alternatives to attempt without polar organic solvent, and that practical success would be tested at lab scale. The Court rejected submissions of hindsight or stepwise reconstruction in that context.
• Contingent Issues: Ground 2 (precision of "8") was held contingent on success of earlier grounds and was not decided.

Holding and Implications

DISPOSED OF

Holding:

• The Court dismissed the Defendant's appeal on EP155; claim 1 of EP155 was held not obvious over Bijl (EP155 upheld as valid on that ground).
• The Court dismissed the Plaintiff's appeal on EP801; the judge's findings (including construction that the "< 5% organic solvent" integer refers to the lipid as obtained and the conclusion that claim 1 was obvious over Kobzeff) were upheld, such that EP801 remained held invalid for obviousness by the first-instance judge.

Implications:

• Direct effect: EP155 remains valid (subject to the other findings at first instance), and EP801 remains invalid for obviousness as concluded below. The disposition leaves the first-instance judge's allocations of validity/infringement in place as to the issues addressed on appeal.
• No broader new precedent: The Court applied established principles on obviousness and purposive claim construction (citing existing authorities) and did not purport to establish novel legal doctrine; the decision applies those authorities to the facts before the Court.