UPC CFI, LD Paris, 11 December 2024: Lack of inventive step plus added matter
16-01-2025 Print this page
EP 282 revoked (Article 138(1)(c) EPC, Article 65(2) UPCA).
Inadmissible new added matter ground for revocation raised in Rejoinder to the reply to the Statement of Defence inadmissible (R. 9.2 RoP). Order by the judge-rapporteur allowing further written pleadings (R. 36 RoP) relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise ABBOTT to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason to allow a new ground for revocation to be raised at a later stage of the proceedings concerning the validity of the patent as granted, even if such an order would have allowed the other party to respond to the new grounds.
Claim interpretation (Article 69 EPC). The skilled person (article 56 EPC):is a group of persons, comprising persons skilled in the field of (physiological) analyte monitoring systems (such as Continuous Glucose Monitoring (CGM)) and persons skilled in the art of designing portable electronic systems, who are also familiar with the communication and data processing techniques involved in such systems.
Strict literal interpretation of claim features relating to “the rules and the setting” in the present case (Article 1, Interpretation Protocol). Deviating from the wording of the claim would in the present case to the detriment of third parties not combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.
Lack of inventive step claim 1 as granted (article 56 EPC): the invention set out in claim 1 as granted does not involve an inventive step when considered in view of Valdes combined with Goodnow. Two aspects of the solution - the presence of a server between the host and the remote devices, and an invitation scheme – are rendered obvious by Goodnow.
Added matter auxiliary requests (Article 138(1)(c) EPC) claim 1 according to the auxiliary requests extends the subject-matter of the European patent beyond the content of the earlier application as filed. “Whole-content approach” must be adopted in the present case to determine added matter. 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 WO 631
