DexCom, Inc v. Abbott Logistics B.V. and others, Paris Local Division, 11 December 2024, Reference numbers: UPC_CFI_395/2023
Summary
The Paris Local Division has dismissed DexCom’s claim against Abbott for infringement of its European Patent number EP 3 831 282 relating to continuous glucose monitoring devices, holding that the patent as granted was invalid for obviousness and that all three auxiliary requests made by DexCom should be rejected on the basis that the proposed amended claims would be invalid for added matter.
Points of note
1. On claim construction, the Local Division followed the decisions of the Court of Appeal:
In accordance with Art. 69 of the Convention on the Grant of European Patents (EPC) and the Protocol on its Interpretation, the present panel adopts the standard for the interpretation of patents set by the UPC Court of Appeal in two recent orders (UPC_CoA_335/2023 and UPC_CoA_1/2024), as follows:
1) The patent claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent.
2) The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
3) However, this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.
4) The patent claim is to be interpreted from the point of view of a person skilled in the art.
5) In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.
These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.
(paragraph 37-38)
2. The CFI’s assessment of obviousness followed a problem/solution type approach: “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 arrived at 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.”
(paragraph 72)
3. The CFI’s assessment of added matter followed a “whole content approach”: “The Court agrees with DEXCOM that a “whole-content approach” must be adopted. In the present case, a question to be addressed is whether the skilled person considering claim 1 would be confronted with new technical information based on what was derivable, directly and unambiguously, from the whole contents of the description, claims and figures of [the parent application as filed].”
(paragraph 117)
4. On a significant procedural point, it should be noted that Abbott also wished to attack the claims of the patent as granted for added matter. However, this invalidity argument was not permitted to proceed at trial, as the Court considered that Abbott could have raised the issue earlier in the proceedings. Abbott had initially raised inventive step in its revocation counterclaim; the added matter objections were only made in its Reply to the Defence to the Counterclaim for revocation. The Court could find no legitimate reason for Abbott to raise this additional ground of invalidity at this later stage.
(paragraph 68)
A copy of the decision can be read here.
