UPC CFI LD Paris, 4 July 2024: patent revoked because of lack of inventive step

09-07-2024 Print this page
IPPT20240704, UPC CFI, CD Paris, DexCom v Abbott

Patent revoked because of lack of inventive step. Reasons for validity dependent claims to be presented by patentee (Article 65(2) UPCA). It is not for the Court to provide reasons why any of the grounds for revocation referred to in Art. 65(2) UPCA, as presented by ABBOTT, would not apply to dependent claims 2 to 9. 

 

Claim construction (article 69 EPC): “portion” cannot be construed as meaning “all” measurement data. This corresponds to the usual meaning of a “portion” and is in line with the description of the patent in suit, which distinguishes a portion from all data (Patent at issue, paragraph [0020]: “send a portion or all of the stored data”). 

 

Added subject-matter (article 138(1)(c) EPC). No added subject matter: Omitting from claim 1 as granted features related to estimated analyte values allowable because the skilled person understands that the steps of calculating and transmitting estimated analyte values are distinct from receiving and sending portions of the data indicative of analyte levels. Added subject-matter in Auxiliary request 2:  there is no basis for a broadening or a generalisation to any use of the second protocol that would be suitable for achieving the effect of facilitating pairing. 

 

Novelty (Article 54 EPC). 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. 

 

Lack of inventive step (Article 56 EPC). 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 obtained 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. Patent in suit does not involve an inventive step when considered in view of D1 combined with common general knowledge. Obvious for the skilled person to continue using the same protocol when confronted with the task of carrying out D1, which lists four candidates (NFC, Bluetooth, BLE and Wifi). Not any particular or surprising effect ascribed to choosing NFC (or RFID), beyond the well-known advantages of low power consumption and security due to the low range. 

 

Scope of the counterclaim for revocation of the patent is unrestricted; not limited to the scope of the infringement claim (Article 33(3)(a) UPCA).

 

Brussels Ibis applies to UPC irrespective of article 71c as the UPC is a “common court” (Article 71a Brussels Ibis, Article 31 UPCA)

 

Lis pendens. The Court uses its discretion in case of “related actions” (Article 30(2) Brussels Ibis) to maintain jurisdiction to rule on the validity of the entire European patent EP 866, including its German part: not in the interests of the proper administration of justice either to decline jurisdiction in favour of the German national court or to stay proceedings pending the decision of the national court.
 

 

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott