From the outset, the UPC Court of Appeal has asserted the primacy of the claims in determining the protective scope of the patent but avoids a strict literal interpretation and allows the description to be taken into account, not just when the claims are ambiguous. The Paris Local Division (LD)’s revocation of Dexcom’s European patent EP 3 831 282 in late 2024 turned on a finding that, although the description might suggest other features, these would be inconsistent with the clear wording of the claims. The LD considered that to interpret the claims contrary to their clear meaning would go beyond using the description as an explanatory aid and would provide insufficient legal certainty for third parties. This illustrated the limits of the UPC using the description to interpret the claims, and appeared to be driven by a need to provide sufficient legal certainty to third parties.

The Patent

The patent at issue relates to remote monitoring, in particular monitoring of glucose levels in people suffering from diabetes. Remote monitoring means that the user (“host”) of a continuous analyte monitor can share their glucose information with family, friends and so on so that they can support the host in their glucose management.  Dexcom has brought multiple infringement actions against Abbott before the UPC, including enforcing EP 3 821 282, resulting in a revocation counterclaim from Abbott. In this case, because the patent was found invalid, there was no consideration of infringement.

Claim Interpretation

Claim interpretation in this case focused on the “rules” and “settings” for generation of notification messages by a host monitoring application and the receipt and display of notification messages at a remote monitoring computing device.

Claim 1 of the patent is a method claim which includes receiving, at a remote device, notification messages that are generated based on rules initially set by the host at a host monitoring application. A remote monitoring application on the remote device is configured to receive the one or more notification messages according to the rules.  The remote monitoring application is also configured to receive modifications to the settings and provide the at least one notification message for display in accordance with the settings including any modifications to the settings.

It was common ground that the description of the patent discloses that a remote user may change the rules on the server, such as adjusting the threshold glucose level that triggers notification messages. However, the question for claim interpretation was whether this functionality is reflected in claim 1.

Dexcom submitted that claim 1 does not mean that the remote user would configure only the remote device in order to define the settings, or that the settings are necessarily stored only locally on the remote device. They further argued that the claims should be interpreted as implicitly meaning that the server must be configured to trigger notification messages according to the rules, with the rules being modified based on the modifications to the “settings”. Dexcom argued that this would be the only way to achieve the claimed result, i.e. the remote device receiving only these messages. They argued that this interpretation would correspond to the teaching in the description.

The Court agreed with Dexcom that, based solely on the description, the skilled person would understand that a remote of the described monitoring system can modify the rules that serve as a basis for generating notification messages on the server. However, the Court disagreed that this justifies the claim interpretation put forward by Dexcom. As explained by the Court, no feature in the claim associates the rules with the modification to the settings (in other words, the claim does not say that the rules are modified in accordance with the modifications to the settings), and the remote device of claim 1 may therefore receive more notification messages than those which would be based solely on the settings. Furthermore, the claim expressly sets out two distinct steps (“receiving” and “providing… for display”) so that messages are received in accordance with the rules, whereas they are provided for display in accordance with the settings (including any modifications). This distinction makes sense only if the rules are different from the settings (including any modifications). Otherwise, the claim would mean that all the messages received would be displayed without any processing in the remote device.

When considering which interpretation to adopt, the Court relied on the following principles, emphasising that this approach was necessary in the present case to provide sufficient legal certainty for third parties:

The patent claim is the decisive basis for determining the protective scope and the validity of the European patent. As explained above, the wording of claim 1 does not contain any ambiguities to be resolved and it permits a technically reasonable interpretation that differs from DEXCOM’s interpretation.

The patent claim cannot serve only as a guideline and its subject-matter may not extend to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection [1]. The Proprietor’s interpretation is consistent with the description. However, adopting it for the purposes of claim interpretation would lead to an incompatibility with the wording of several claim features, namely features 1.1.3, 1.4 and 1.6, thus going beyond using the description and the drawings as explanatory aids for the interpretation of the patent claim.

Such an interpretation deviating from the wording of the claim would not combine adequate protection for the patent proprietor with sufficient legal certainty for third parties, to the detriment of third parties in the present case.

The Court dismissed a new ground for revocation based on added subject-matter due to claim interpretation

Abbott raised added subject-matter as a ground for revocation for the first time in its Rejoinder.

According to Abbott’s interpretation of claim 1, notification messages are received at the remote device in accordance with the rules. On the other hand, the settings are on the remote device and the remote device analyses the received notification messages with respect to its local settings to determine whether to display them. Abbott argued that those features have no basis in the parent application (WO 2014/105631 A2) where the rules and the settings are stored and used on the server.

As so often when looking at admissibility, the Court confirmed that the UPC procedure is a front-loaded system. They found no legitimate reason for Abbott, which had already stated its own claim interpretation in its Statement of Defence and Counter Claim for Revocation, to raise a new ground for revocation at a later stage of the proceedings. The additional ground concerning the patent as granted was therefore deemed inadmissible.

The added matter objection against the main claim was based on the claim interpretation put forward by Abbott in its counterclaim for revocation, so the added matter objection is one that could (and should) have been included in that submission.

Since the ground of added matter was not admitted into the proceedings against the claims of the main request, the proceedings turned to the ground of lack of inventive step.

The main request was found to lack inventive step.

Auxiliary requests found to add matter based on the claim interpretation for the main request 

The three auxiliary requests were found to extend the subject-matter beyond that found in the original application documents. Interestingly, the Court’s conclusion was based on the claim interpretation of the main request. Specifically, the amendments to the auxiliary requests were based on embodiments within the description, but the Court decided in respect of the main request that those embodiments were not to be taken into account when interpreting the claim. As a result, the auxiliary requests (found to suggest that the settings on the remote device somehow modify the rules which are stored in the server) were not consistent with the Court’s interpretation of the main request (which had the modifiable settings stored in the remote device).

In more detail, the Court held, as a consequence of the position taken on claim interpretation of the main request, that the first auxiliary request had been amended so as to require that the rules as modified by modifications to the settings could be used to trigger the notification messages to the remote device. However, the Court considered that the relevant parts of the description could provide basis only “for generating / triggering alerts in the server” (emphasis added in both quotes). The Court concluded that the amendment adds subject matter because there is no clear basis in the application as filed for triggering notification messages based on the set of rules for generating notification messages, combined with the modifications used to display alerts on the remote device.

The second and third auxiliary requests were found to add matter for similar reasons. It is difficult to see if Dexcom could have successfully made any amendments to incorporate subject-matter from the description: it would not have been disclosed in combination with the subject-matter of claim 1, which the Court had interpreted as meaning something different to what is disclosed in the description and drawings.

Compare and contrast with late-filed grounds for opposition at the EPO

The claims of the patent were heavily amended versus the parent claims as filed, which did not mention “settings” nor the display of notification messages in accordance with the settings.  Abbott’s added matter attack against the main request was based on the claim interpretation (adopted by the Court) that requires the remote device to store the settings and analyse the messages according to those settings (to determine whether to display them).  Abbott argued that there was no embodiment in which the remote device stored and used the settings (because they were said to be stored and used by the server in the application), and the claim therefore adds matter.

Indeed, the Court’s analysis with respect to the auxiliary requests suggests that the same added matter would have been found in the main request (had it been considered). In particular, the parent application was found to consistently disclose the invention as comprising a server for processing sensor data to generate notification messages, possibly based on different rules for different host/remote devices. However, the Court interprets differently the rules and modifiable settings of claim 1, with notification messages generated in accordance with the set of rules and processed locally (filtered) on the remote device for display in accordance with the settings. The Court stated that it could find no clear basis for triggering notification messages based on the set of rules for generating notification messages combined with the modifications used to display alerts on the remote device.  Had added mater of the main request been considered, then it seems that the finding would also have been negative, since the Court has said that there is no clear basis for the combination of features appearing in claim 1.

Thus, had the Court found claim 1 of the main request to be inventive, the patent might have been maintained despite added-matter being present in the claims.

The decision of the Paris LD to dismiss the new ground for revocation of added matter (based on the interpretation of claim 1) is at odds with what we would expect to happen at first instance at the EPO. In EPO opposition proceedings, if examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then such grounds, facts or evidence must be taken into consideration no matter what stage the procedure has reached and whether or not the belated submission is justified.

To what extent can the description and figures be used to interpret the claim?

The Paris LD considered that the extent to which the description and drawings can be relied upon for interpreting the claims is whether the wording of the claim contains any ambiguities to be resolved. The LD found that, if the claim permits a technically reasonable interpretation (without ambiguity), then the description and drawings cannot be used to change that technically reasonable interpretation, even if the technically reasonable interpretation is not described as an embodiment in the patent. In this case, this limitation in reliance on the description and drawings had a significant impact on the outcome for the validity of the auxiliary requests.

This decision follows on from the Paris LD’s earlier decision on Dexcom’s European patent, EP 3 435 866, where the Court rejected an interpretation of the claim as filed that would exclude the examples described in the description. In that case, there was ambiguity in the claim language which the Court resolved by turning to the embodiments of the description, which is in contrast to the present decision in which the claims as granted have a clear interpretation (which interpretation cannot be dismissed after considering the embodiments of the description).

Both decisions have similarities to the common approach at the EPO, where the description and drawings are used to interpret an ambiguous claim but do not hold as much weight in light of a claim which is technically sensible and without ambiguity. However, this is still a matter of debate at the EPO, and is the question at the heart of the Enlarged Board of Appeal referral in G1/24.

Footnotes

[1] The second part of this sentence appears to be a paraphrasing of the Court of Appeal’s test, which arguably reverses its meaning, presumably unintentionally.