Not a piece of cake: In its first infringement case, the Paris Local Division revokes the Patent
12
Jul
2024
Dexcom’s patent EP 3 435 866 found to be invalid in its entirety across 17 current UPC states, a wider territory than that in which Dexcom had sought to enforce it

The Paris Local Division (LD) recently (4th July) delivered its decision declaring Dexcom’s European patent, EP 3 435 866, invalid in its entirety. As a result, the Paris LD dismissed all related requests made by Dexcom. Therefore, this second UPC decision on the merits in an infringement case does not contain any grounds relating to (non-)infringement of the continuous glucose monitoring device that was attacked.

Moreover, Abbott had requested a provision for costs of 100,000 EUR. However, they had not sufficiently justified the amount. The Court thus also dismissed that request despite Abbott being the winning party and the Court stating that Dexcom should pay all costs in the separate costs proceedings requested by the parties. Costs requests (including provisions for costs) must be justified in a detailed way at the UPC, interim orders usually give parties guidance on this matter.

Dexcom brought multiple infringement actions against Abbott before the UPC, including this one regarding EP 3 435 866. Abbott filed a revocation counterclaim.

Lis Pendens raised to carve Germany out of the revocation counterclaim

The Court’s decision to invalidate Dexcom’s patent applies to all 17 current UPC states, despite Dexcom’s request to carve out Germany from the UPC revocation counterclaim due to (1) on-going nullity proceedings in German national courts, and the fact that (2) the UPC infringement action did not cover infringement acts based on the German part of the patent.

The Court confirms the applicability of Articles 29 and 30 of the Brussels Ibis Regulation, concerning lis pendens and ‘related actions’, specifically questioning whether both the UPC and national courts can conduct parallel proceedings on what the patentee considered being the same cause of action – even when the national action was started before the date of entry into force of the UPCA.

  • In the present case, Defendant 8 (Abbott GmbH) brought a revocation action before the German Federal Patent Court (FPC), prior to the counterclaim for revocation at the UPC. The Paris LD found no identity of parties and subject matter because the German action pertains solely to the German part of the patent and was filed by only one of the 10 defendants in the UPC case. According to Article 29(3), the Paris LD determined it was not obliged to decline jurisdiction in favour of the first court seized.
  • Nevertheless, recognising the “related” nature of both actions concerning the same patent and involving two of the same parties, the Paris LD noted it had discretion under Article 30(2) to defer to the first court seized or not.
  • Given that the German validity court’s decision is not expected until end of January 2025, the Paris LD, guided by the principles of efficiency and expeditious resolution under the UPC Agreement (Recital 6 and Preamble of the Rules of Procedure sections 4. and 7.), decided it would not be in the interest of effective judicial administration to defer jurisdiction to the FPC or to suspend proceedings pending its decision.

The Paris LD also clarified that the scope of a UPC revocation counterclaim can go beyond that of the initial infringement action as there is no UPC rule requiring that the defendant in an infringement action must limit its revocation counterclaim to what was asserted against it. This is not in line with the French practice and makes this decision from the LD Paris in this respect very different to a French national decision based on the same set of facts.

Skilled person definition announcing a decision on inventive step

After defining the skilled person in a fairly traditional way as a team with knowledge in two fields: (1) “(physiological) analyte monitoring systems” such as CGM, and (2) “designing portable electronic systems, who are also familiar with the communication techniques involved in such systems”, the Paris LD then very explicitly tied the skilled person skilled to the field of electronic data communication: “In other words, for the purposes of Art. 56 EPC, the field of electronic data communication is not a technical field remote from the field of analyte monitoring systems”.

This clarification was probably not necessary based on the previous definition of the skilled team. However, it is a way of announcing that, in this era of connected devices and technically qualified judges sitting also in infringement proceedings at the UPC, no patentee will be able to reduce the skilled person’s definition to exclude knowledge of the wireless transmission aspects (the priority date is 2016 according to the EPO Register).

In this UPC case, the Court decided that an analyte monitoring system comprising sensor electronics configured to transmit analyte data by two protocols was expressly disclosed by the prior art, and the question was then whether the skilled person would have implemented analyte data transmission by the specific second protocol of Dexcom’s patent.

Grounds of revocation include inventive step and added-matter

Claim 1 of the main request was attacked for added-matter, but the attack was unsuccessful. In addressing the arguments made, the Court interpreted the claim as-filed on the basis of the examples described in the description, rather than an interpretation of the claim which would result in an embodiment not described. However, claim 1 of auxiliary request 2 was found to add matter because it included an extra feature that was generalising an example of the patent in an inadmissible way.

Interestingly, the question of inventive step was decided within the EPO problem-solution framework (perhaps a result of the parties arguing within this framework), with the Court deciding that “The technical problem can be defined as choosing a protocol for transmitting the second portion of the analyte measurement data” (since the closest prior art lists four candidates for the second protocol), and concluding that “It would therefore be obvious for the skilled person to continue using the same protocol, namely the second near-field communication protocol NFC, to transmit the data and achieve the effects commonly ascribed to this protocol”.

In its conclusions on inventive step, the Court referenced the preliminary opinion issued by the German Federal Patent Court on the German part of EP 866, which echoed their conclusion that it would have been obvious for the skilled person to continue using the same protocol. Presumably, the Court included this preliminary opinion in their decision because they have decided to maintain jurisdiction to rule on the validity of the entire European patent EP 866, including its German part, and they are coming to a similar conclusion based on the same reasoning. However, this raises the question of whether the fact they came to the same conclusion on lack of inventive step affected their decision to maintain jurisdiction and rule on the German part – would they have decided to rule on the German part if it they had arrived at a conflicting conclusion on inventive step? The answer is likely yes, as the FPC had not decided on the validity of the claims yet, but only issued a non-binding preliminary opinion.

A stricter approach than the German national courts on novelty

The German preliminary opinion as cited in paragraph 23.8 of the UPC LD Paris decision seems to focus also on obviousness. However, the inventive step approach, which seems to be common to the Paris LD and the FPC, is based on D1 combined with the skilled person’s CGK, which would allow them to pick one of the protocols listed in D1 to transmit the second portion of the analyte measurement data.

It is not an inventive step argument that requires a combination of documents. Based on a single document, all the information in it, and the knowledge of the skilled person, the claim is found obvious. Some German national judges would in fact have given more credit to the skilled person and considered them capable of reading the missing information into D1 which would have meant that D1 would have been novelty destroying.

The stricter approach on novelty that can be seen in this LD Paris decision is in fact closer to the French and EPO practices than the German approach for instance. It’s summarised in the LD Paris’ decision at para 12.2 which reads: “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.

Conclusions

This ruling highlights the risks of UPC litigation for the patentee, given the patent has been revoked in its entirety across all 17 current UPC states. On the other hand, it represents a win for Abbott, the defendant in this litigation saga, and it will be interesting to see whether the Mannheim Regional Court will stay the infringement proceedings in light of the UPC’s decision to revoke the German part.

Favourite sentence of the decision

In the Court’s view, portions of data are not comparable to parts of a book or portions of a cake (see Abbott’s pleadings during the oral hearing), since it is technically possible to include the same piece of data in different portions for transmission, meaning that the portions may overlap.