UPC Paris LD issues merits decision on infringement and revocation in DexCom v. Abbott
The UPC Paris Local Division issued its first decision on the merits on 4.07.2024, 12 months after the commencement of the relevant proceedings (UPC_CFI_230/2023). The action was started by DexCom, Inc. claiming infringement of its European Patent no. 3435866 by several companies of the Abbott group. The latter filed a counterclaim for revocation which the court granted, thus revoking the patent and dismissing DexCom’s infringement claim. The decision is now effective in the 17 EU Member States that have ratified the UPC Agreement; it may however be appealed.
BACKGROUND
DexCom is a US company active in the development, manufacture and marketing of continuous glucose monitoring systems for persons with diabetes; amongst others, it holds European Patent no. 3435866 (EP 866) titled "Analyte Monitoring System".
Abbott develops and distributes a glucose monitoring system which, according to DexCom, infringes EP 866. The dispute is part of ongoing global litigation between DexCom and Abbott which is taking place in Germany and the UK.
On 7 July 2023, DexCom lodged an infringement action against Abbott before the UPC Paris LD, seeking remedies against the infringement of EP 866 committed by several Abbott entities within the States that have ratified the UPCA (including Germany), except for the acts committed by the Abbott entities which were already the subject of infringement proceedings in Germany.
With its statement of defence, Abbot filed a counterclaim for revocation of EP 866 on the grounds of added matter, lack of novelty and lack of inventive step. DexCom, in its reply, rejected the arguments for revocation, also claiming that the Court did not have jurisdiction to hear the claim for revocation of the German part of the patent, and filed two auxiliary requests to amend the patent. In its further reply, Abbot added a request for revocation of the patent as possibly amended.
DECISION
Jurisdiction on the counterclaim for revocation
DexCom claimed that the UPC lacked jurisdiction on Abbott’s counterclaim for revocation of the German part of the patent on two grounds:
i) DexCom had carved out from its infringement claim the acts of the defendants that were already the subject of the German infringement proceedings, hence the same carve-out should apply to the counterclaim for revocation; and
ii) Abbott GmbH had filed a revocation action against the German part of EP 866 before the German Federal Patent Court on 9 May 2023, i.e. prior to the counterclaim for revocation in the UPC case, hence the UPC should decline jurisdiction in favour of the German court under Art. 29 or 30 EU Regulation 1215/2012.
The Paris LD found that the first ground was irrelevant, as:
a. the application for revocation was also supported by defendants other than those involved in the parallel German proceedings, and it would be contrary to the principle of a fair trial to deprive them of the right to defend themselves by means of a counterclaim for revocation of the entire European patent, considering that they had been sued for infringement in all UPC territories (including Germany);
b. there is no provision in the UPC Rules of Procedure that limits the party bringing a counterclaim to the parts of the patent asserted against it by the claimant in the infringement action.
On the second ground, the Paris LD considered that:
a. this case did not constitute a situation of lis pendens under Art. 29 of the Regulation (requiring identity of parties and subject-matter), as the revocation action in Germany concerned only the German part of the patent and the sole Abbot GmbH. The Paris LD was therefore not obliged to decline jurisdiction in favour of the first court seized.
b. however, “the two parallel actions must be considered ‘related actions’ insofar as they both concern patent EP 866 and involve two of the same parties in the present action (DexCom and Abbott GmbH). Thus, the situation falls under Art. 30(2) EU Regulation 1215/2012, which specifies that, in this case, it is at the discretion of the court seized second to decide whether to decline its jurisdiction in favour of the court first seized. In the case at hand, the German Federal Patent Court scheduled an oral hearing for 29 January 2025, hence it will not give its final decision until after the present decision has been rendered on 4 July 2024. In light of the principles of efficiency and expeditious decisions set out in points 4 and 7 of the Preamble and Recital (6) of the Agreement, the Court considers that, in the present situation, it is not in the interests of the proper administration of justice either to decline jurisdiction in favour of the German national court or to stay proceedings pending the decision of the national court”.
For these reasons, the Court decided to maintain jurisdiction to rule on the validity of the entire EP 866, including its German part.
Validity of the patent
The Paris LD adopted the EPO standards in assessing validity, and found for invalidity of EP 866 both as granted and as amended based on DexCom’s auxiliary requests.
First of all, the court recalled the principles on patent claims interpretation already summarised by the UPC Court of Appeal in its decision in Genomics vs NanoString (UPC_CoA_335/2023) which we already commented upon here on this blog:
i) the patent claim is to be interpreted from the point of view of a person skilled in the art and it is the decisive basis for determining the protective scope of a European patent;
ii) however, its interpretation does not depend solely on the strict, literal meaning of the wording used: the patent’s description and the drawings must always be used as explanatory aids;
iii) in applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties;
iv) these principles apply equally to the assessment of the infringement and the validity of a European patent. This follows from the function of patent claims, which serve to define the scope of protection of the patent (Art. 69 EPC) and thus the rights of the patent proprietor (Art. 64 EPC), while considering the conditions for patentability under Art. 52 to 57 EPC.
Moving on to the assessment on novelty, the Paris LD recalled that:
i) pursuant to Art. 54 EPC, an invention shall be considered new if it does not form part of the state of the art; and
ii) “in order to be considered part of the state of the art, an invention must be found integrally, directly and unambiguously in one single piece of prior art and in its existing form it must be identical with its constitutive elements, in the same form, with the same arrangement and the same features”.
In applying these principles, after a comparison with the prior art submitted by Abbott, the Paris LD found that EP 866 meets the novelty requirement.
On inventive step, the Paris LD then recalled that:
i) art. 56 EPC states that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art;
ii) “in order to assess inventiveness, it is necessary to determine whether, given the state of the art, a person skilled in the art would have obtained the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is defined in terms of the specific problem encountered by the person skilled in the art”.
In applying these principles, after having detected the technical problem addressed by the skilled person, the Paris LD found that the solution covered by EP 866 would be obvious for the skilled person, when combining the prior art with the common general knowledge. Hence, EP 866 was considered as lacking inventive step.
The same conclusion was reached in respect of auxiliary request 1 for amendment of the patent, whilst auxiliary request 2 was dismissed on the ground that it extended the subject-matter of the patent beyond the content of the application as filed (Art. 138(1)(c) EPC).
Considering the above, the Paris LD found that EP 866 was not valid, neither as granted nor as amended, and revoked it in its entirety in accordance with Art. 138(1) EPC and Art. 65(2) UPCA. Consequently, the court also dismissed the infringement action brought by DexCom due to lack of legal basis.
Costs
As both parties had requested separate proceedings on costs, pursuant to Rule 118. 5 RoP the Court only decided in principle that DexCom, as the unsuccessful party, was required to bear legal costs in accordance with Art. 69 UPCA.
The Court, indeed, also dismissed Abbott’s request for an interim award of costs of € 100.000, as it considered it not sufficiently justified, since Abbott had not submitted arguments as to this requested amount. Consequently, the amount of the costs shall be determined by the Court in separate proceedings, upon request by a party pursuant to Rule 151 RoP.
