2024-07-04 - LD Paris - DexCom v. Abbott - UPC_CFI_230/2023
- Aktenzeichen:
- UPC_CFI_230/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Paris (FR) Local Division
- Art:
- Order
- Parteien:
- DexCom, Inc. v. Abbott Laboratories, Abbott Diabetes Care Inc., Abbott France, Abbott NV / SA, Abbott B.V., Abbott S.r.l., Abbott Scandinavia Aktiebolag, Abbott GmbH, Abbott Diagnostics GmbH, Abbott Logistics B.V.
Kernaussage: The Paris Local Division revoked DexCom's analyte-monitoring SEP EP 3 435 866 B1 for lack of inventive step over a single prior art document (Berman) combined with common general knowledge, and consequently dismissed the infringement action against ten Abbott entities.
2024-07-04 - LD Paris - DexCom
v.
Abbott - UPC_CFI_230/2023
landmark
The Paris Local Division revoked DexCom's analyte-monitoring SEP EP 3 435 866 B1 for lack of inventive step over a single prior art document (Berman) combined with common general knowledge, and consequently dismissed the infringement action against ten Abbott entities. The decision is significant for three procedural holdings: (i) the UPC is governed by Brussels Ibis directly via Art. 71a (as a 'common court'), without need to invoke Art. 71c; (ii) a defendant's counterclaim for revocation is not limited by the claimant's 'carve-out' of acts in parallel national proceedings — revocation has erga omnes effect and no RoP provision restricts it; (iii) claim interpretation under Art. 69 EPC follows the CoA framework (UPC_CoA_335/2023; UPC_CoA_1/2024) and applies equally to validity and infringement. On the merits, the court confirmed novelty over D1, D2, D3 but found the only distinguishing feature over D1 (use of NFC for the second portion) obvious because D1 already disclosed NFC for the request command. Costs awarded to Abbott; €100,000 interim costs request dismissed as insufficiently justified.
Nichtigkeitsgründe
Art. 138 EPCNovelty
Patent invalid (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Claim 1 found novel over each of D1 (Berman), D2 (Cole) and D3 (Bernstein); D1 did not expressly disclose NFC as the protocol for the second portion [20]; D2 distinguished notification data from measurement data [21.6]; D3 did not configure both protocols for two portions of measurement data [22.4].”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Court found claim 1 (and Auxiliary Request 1) lacking inventive step over D1 (Berman) combined with common general knowledge. Selection of NFC as the second protocol obvious where D1 already used NFC for the request command [23.5–23.7].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Subject-matter of claim 1 as granted does not extend beyond the application as filed (basis in original claim 22) [11.3–11.6]. Auxiliary Request 2 conversely held to add matter — generalisation of pairing-via-second-protocol concept beyond Figure 8 embodiments [26.1–26.4].”