UPC_CFI_231/2024
ANALYTE SENSOR DEVICES, CONNECTIONS, AND METHODS
Sibio Technology Limited (Hong Kong) filed a revocation action against Abbott Diabetes Care Inc. (US) seeking to revoke EP 3 831 283 B1, a patent for continuous glucose monitoring sensor devices and connections. The Paris Central Division dismissed the revocation action in full, maintaining the patent as granted: Sibio's novelty attack over WO'896 was inadmissible for failure to provide a separate novelty analysis, and the inventive step attack combining WO'896 and US'440 failed because US'440 provides no pointer to the dramatic design change needed to arrive at the claimed recess-and-opening configuration.
Patent EP 3 831 283 B1 is novel over WO'896 (closest prior art for inventive step) because WO'896 does not disclose the recess in a bottom exterior surface with the connect support received through a distal-facing opening
RespondentLegal basis: Art. 54 EPCNote: Court found that WO'896 does not anticipate the distinguishing features 1.4 and 1.5 of claim 1.
Claim 1 involves an inventive step: US'440 provides no pointer to motivate or enable the dramatic design change needed to arrive at the claimed invention from WO'896
RespondentLegal basis: Art. 56 EPC; problem-solution approachNote: Court applied problem-solution: regardless of how the technical problem is formulated, US'440 would not motivate the skilled person to modify WO'896 in the required manner because it does not disclose the relevant distinguishing features and no pointer exists for the dramatic design change required.
Sibio's second line of inventive step argumentation (re-mapping top/base of housing) is inadmissible as late-filed
RespondentLegal basis: R. 75 RoPNote: Court upheld Abbott's admissibility objection to the second line of argumentation first raised in Sibio's Reply.
Sibio's novelty challenge over WO'896 is inadmissible: merely referencing a document for novelty/inventive step in general terms without a detailed novelty analysis is insufficient
RespondentLegal basis: Art. 65 UPCA; R. 206 RoPNote: Court held that lack of novelty and lack of inventive step are separate grounds that cannot be absorbed by each other; a detailed analysis only for inventive step does not establish that novelty is separately challenged.
Claim 1 of EP 3 831 283 B1 lacks novelty over WO'896
ClaimantLegal basis: Art. 54 EPC; R. 206 RoPReason: Admissibility: Sibio only provided a detailed analysis with respect to inventive step over WO'896; merely indicating a document will be used for novelty and/or inventive step without specific novelty analysis is insufficient to establish a novelty challenge. Substantively also not established.
Claim 1 lacks inventive step starting from WO'896 combined with US'440
ClaimantLegal basis: Art. 56 EPCReason: US'440 provides no incentive for the skilled person to make the dramatic design change required; no pointer identified for arriving at the distinguishing features 1.4 and 1.5.
R. 75(3) RoP bars a new counterclaim for revocation concerning the same patent after an earlier revocation action
RespondentLegal basis: R. 75(3) RoP; Preamble to RoP para. 4Reason: R. 75(3) RoP does not apply when a counterclaim for revocation in a subsequent infringement action before a Local Division is filed after the oral hearing in an earlier Central Division revocation action; flexibility and efficiency principle prevails.
Browse other cases on this principle.
- WO'896 (glucose monitoring prior art)Obviousness combination
- US'440 (glucose sensor assembly prior art)Obviousness combination
Claim 1 of EP 3 831 283 B1 (analyte sensor for continuous glucose monitoring) was construed with attention to features 1.4 (recess in a bottom exterior surface) and 1.5 (connect support received through a distal-facing opening into the recess). The mapping proposed by Sibio in the alternative (treating the top of the housing as the base portion) was held unreasonable and inadmissible.