2024-12-11 - LD Paris - DexCom v. Abbott et al. - UPC_CFI_395/2023

1. The order pursuant to Rule 36 RoP issued by the judge-rapporteur relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise the defendant to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason for the defendant, which had already stated its own claim interpretation in its Statement of Defence and counterclaim, to raise a new ground for revocation at a later stage of the proceedings concerning the validity of the patent as granted. The additional ground concerning the patent as granted raised in the Rejoinder to the reply to the Statement of Defence is inadmissible pursuant to Rule 9.2 RoP. 2. As regards the claim interpretation, the Court adopted a “whole-content approach”. In the present case, a question to be addressed is whether the skilled person considering a claim 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 earlier application.

In this the decision, the Paris Local Division revoked the patent in suit in its entirety based on the lack of an inventive step. At the same time, the Court rejected additional grounds for revocation as inadmissible because they were only raised late during the proceedings.