Unified Patent Court Disproves Diabetes Patent Of Dexcom

Unified Patent Court Disproves Diabetes Patent Of Dexcom

The ruling is the latest in its ongoing battle with Abbott over the technology for patients to monitor their glucose levels remotely

The Unified Patent Court (UPC) of Paris has invalidated a patent of MedTech company Dexcom across 17 participating states of the new pan-European patent system.

Rivals Dexcom and Abbott have been fighting over the technology.

The revocation applies to many regions of the European Union (EU). Several patent holders are finding it risky to opt for the UPC system, which became fully operational in June. It rules that a central revocation action could apply to all UPC participating states.

The patent in dispute, EP 3 435 866 B1 (866 patent), covers technology used to design smart glucose monitoring devices. It was revoked for lacking an inventive step.

Represented by Bird & Bird and Hoffmann Eitle, Dexcom, filed for infringement of the patent against Abbott in Paris in July 2023.

Abbot’s 10 subsidiaries, represented by Taylor Wessing and August Debouzy, counterclaimed for revocation and succeeded in all Dexcom’s infringement claims based on the patent.

The court ruled, “The patent is entirely revoked with effect in the territories of the contracting member states for which the European patent had effect at the date of the counterclaim for revocation.”

The countries are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

Separate proceedings involved three Abbott subsidiaries (1, 2 and 8) in Germany on the German portion of the 866 patent. These were before the Mannheim Regional Court for infringement and the German Federal Patent Court for revocation.

Referring to the Abbot subsidiaries, Dexcom argued that the counterclaim for revocation of the patent should be identical to the infringement claim, from which acts of infringement, already pending before a national court with parallel jurisdiction, were excluded for the defendants.

However, the court found the argument “irrelevant,” stating that it was “contrary to the principle of a fair trial to deprive” the defendants not involved in the German proceedings “of the right to defend themselves by means of a counterclaim for revocation of the entire European patent.”

The judgment added, “There is no provision in the UPC Rules of Procedure that limits the party bringing a counterclaim to the parts of the patent asserted against it by the claimant in the infringement action, and no requirement that such party limit its action for revocation to what is asserted against it in the main infringement action.”

Florence Pilsner, an associate at specialist IP firm Bristows, remarked, “It is unlikely that this decision on pan-UPC revocation will significantly affect a patentee’s strategy to opt out of the UPC system. This (together with the availability of a pan-UPC injunction), and the consequential cost savings and efficiencies was after all what the UPC was set up to achieve.”

She cited the Abbott Diabetes Care v Sibio case, wherein the Hague court ruled that it had the jurisdiction to grant relief to countries that contracted but had not yet ratified the UPC agreement. This may cause the patentees to think before opting their patents back.

The dispute between Abbott and Dexcom is part of ongoing global litigation regarding the 866 patent. The UK High Court has revoked the UK designation of EP866.

Meanwhile, the rivals are also in dispute in the US. Early this year, the US federal appeals court upheld a district court decision to refuse Dexcom a preliminary injunction against Abbott in a patent infringement dispute.

Dexcom must bear the costs of the proceedings, though Abbott’s request for an interim award of €100,000 was dismissed.

This is the second decision on the merits issued by the UPC. Earlier, the Dusseldorf local division delivered the UPC’s first-ever judgment on infringement.

The case was between the claimant Kaldewei (which produces sanitary tray devices), and Bette (bathtub manufacturer). While Kaldewei’s patent was declared valid and infringed, Bette was prevented from selling shower trays in seven countries.

Dexcom was represented by the Paris office team of Bird & Bird, led by partner Anne-Charlotte Le Bihan and counsel Laurent Labatte. It included partners David Sproston and Mark Jones from the London office of Hoffmann Eitle.

Abbott was represented by a pan-European Taylor Wessing team led by London-based partners Nigel Stoate, Matthew Royle and Michael Washbrook.

The Abbot team included Munich-based partners Gisbert Hohagen, Christian Lederer and Dietrich Kamlah. It also comprised Brussels office partner Christian Dekoninck, partners Eelco Bergsma and Wim Maas in Eindhoven and Amsterdam, respectively, and Vienna-based partner Thomas Adocker.

Abbott France was represented by August Debouzy partner François Pochart.

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