Rapid Reaction – Dexcom v Abbott – The Paris Local Division hands down the UPC’s second merit decision

The Paris Local Division of the UPC yesterday handed down its decision in an action for infringement by Dexcom and a counterclaim for revocation by Abbott (available here). There are parallel proceedings in the UK High Court, the Mannheim Regional Court and the German Federal Patent Court.

The patent in suit was EP 3 435 866 (EP 866), which relates to technology for remotely monitoring blood glucose levels in diabetes patients. Revocation was sought on the grounds of added matter, lack of novelty, and lack of inventive step. In addition, there was also a jurisdictional point – Dexcom requested that the Paris Local Division decline jurisdiction in relation to the German part of the European patent in issue, while Abbott requested the Court rule on revocation of the patent in its entirety. 

The proceedings began on 7 July 2023, which makes this judgment another that is adhering to the UPC’s goal of delivering a final merits judgment within a year of commencement of proceedings. 

Jurisdiction

Dexcom argued that the UPC did not have jurisdiction to hear the counterclaim for revocation against the German part of EP 866 as some of the Abbott Defendants (1, 2 and 8) had not had the German national part of the patent asserted against them in Dexcom’s infringement action. It also asserted in addition that the UPC lacked jurisdiction as Defendant 8 had previously brought a nullity action before the German Federal Patent Court against the German national part of EP 866. 

Scope of Dexcom’s infringement claim

The Court decided that it did have jurisdiction to rule on the validity of the entire EP 866 patent, including the German part. 

The Court found that the scope of the counterclaim for revocation of the patent need not be identical to the scope of the infringement claim from which certain acts of infringement were excluded for certain defendants. The following reasons were given:

It would not be fair for the defendants other than 1, 2 and 8 not to be able to defend themselves by means of a counterclaim for revocation of the entire European patent, given that they had been sued for infringement in all territories. 

There is also no provision in the 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, and no requirement that such party limit its action for revocation to what is asserted against it in the main infringement action. 

In conclusion, the Court found that while there is a principle that the parties should govern the subject matter of the dispute, this principle cannot restrict a defendant in its challenge to the validity of a European patent that is being asserted against it. 

Parallel proceedings

In relation to parallel proceedings, the Court considered that the parallel proceedings must be considered “related actions” as they both concerned the same patent and two of the same parties. It was therefore at the discretion of the Court to decline its jurisdiction in favour of that of the first court seized. In this case, the Paris Local Division concluded that, given the timelines of the German action, the German national Court will not give its final decision until after the present UPC decision, therefore it was not in the interests of the proper administration of justice to decline jurisdiction. 

Validity

The Court took a largely EPO-style approach to assessing validity and found that EP 866 was invalid for lack of inventive step. 

Novelty

The Court presented a clear test for novelty, outlining that it considered an invention to be part of the state of the art if it can be found “integrally, directly and unambiguously in one single piece of prior art”. Novelty was assessed over three pieces of prior art in these proceedings, and EP 866 was found to be novel over all three.  

Inventive step

In order to assess inventiveness, the Court defined inventive step “in terms of the specific problem encountered by the person skilled in the art”. In considering EP 866, the Court found that when confronted with the relevant technical problem, the skilled person would have had to select one of the four data transmission protocols listed in the prior art. The selection of the protocol which was included in the patent was deemed obvious.

The Court determined therefore that EP 866 was not inventive over the prior art, agreeing with the Preliminary Opinion issued by the German Federal Patent Court on the German part of the patent. The technologies in the patent were stated to be well-established common general knowledge, to which EP 866 does not ascribe any particular or surprising effect when used in combination. 

Infringement was not assessed in light of the finding of invalidity.