UPC CFI 454/2023
Nov 30, 2023·EP2196231 · System for ambulatory drug infusion comprising a filling apparatus for flexible containers
Action number: ACT 589997/2023
- Case details
- StatusCase Closed (Patent upheld as granted)ActionRevocationCategoryMain revocation action
- Parties
- Claimants
- Tandem Diabetes Care, Inc.Operating co.
- Tandem Diabetes Care Europe B.V.Operating co.
Representatives- Christian Dekoninck-Taylor Wessing
- Charlotte Garnitsch-Taylor Wessing
- Wim Maas-Taylor Wessing
- Alexander Rubusch-Taylor Wessing
- George Seezink-AOMB
- Pauline Springorum-Taylor Wessing
Respondents- Roche Diabetes Care GmbHOperating co.
Representatives- Christof Augenstein-Kather Augenstein
- Katharina Brandt-Kather Augenstein
- Thomas Kronberger-Grünecker Patent- und Rechtsanwälte PartGmbH
- Robert Knaps-Kather Augenstein
- Division
- Paris CD
- Technology
- InstrumentsMedical technology
- Language
- English
- First decided
- Feb 20, 2024
- Last decision
- Dec 18, 2024
| Patent revoked | Median days to first decision | |
|---|---|---|
| All UPC | 37% (34/91) | 124 |
| Paris CD | Locked | Locked |
| Judge Paolo Catallozzi | Locked | Locked |
| Judge Tatyana Zhilova | Locked | Locked |
| Judge Giorgio Checcacci | Locked | Locked |
At the UPC: Tandem Diabetes Care Group (18 cases)·Roche Group (29 cases)
This dispute contains 9 other proceedings
UPC CoA 120/2025·UPC CFI 11/2025·UPC CFI 88/2024·UPC CFI 455/2023·UPC APP 3514/2024 and 4 more
1 other defendants litigating the same or a related patent
- 2024-12-18Revocation ActionPublic
Summary: The Paris Central Division dismissed Tandem Diabetes Care's revocation action against Roche's EP 2 196 231 B1 (ambulatory drug infusion system), maintaining the patent as granted and ordering the claimants to bear the costs of proceedings, finding the grounds for invalidity (including lack of inventive step over prior art Diaz/Robertson/Glejboel) were not proven.
Show the legal issues (3)
- revocation action lack of inventive step
- standstill clause breach as admissibility issue
- ambulatory drug infusion patent validity
- —revocation
Summary: a) dismisses the revocation action filed by [redacted] and against [redacted] b) maintains the European patent EP n° 2 196 231 B1 as granted; c) orders that the costs of the proceedings shall be borne by the claimants.
| Document title | Date | Public |
|---|---|---|
| Final order anonymized - 18.02.2025 | 2025-02-19 | Not public |
| Outcome of the Order | 2025-02-18 | Not public |
| rule 353 | 2025-02-18 | Public |
| rule 353 | 2025-02-18 | Not public |
| Acknowledgement-of-change-of-a-representative | 2025-02-14 | Not public |
| Acknowledgement-of-change-of-a-representative | 2025-02-14 | Not public |
| Comments on Rectification Merits Decision | 2025-01-30 | Not public |
| Comments on Rectification Merits Decision | 2025-01-30 | Not public |
| preliminary order | 2025-01-23 | Not public |
| preliminary order | 2025-01-23 | Not public |
Tandem Diabetes Care sought revocation of Roche's EP 2 196 231 (ambulatory drug infusion system with filling apparatus for flexible containers). The Paris Central Division rejected all invalidity attacks, finding that neither Diaz nor Robertson (alone or in combination), nor Glejboel combined with those references, disclosed the key feature requiring the support structure to limit container expansion (feature 1.3iii). The court also held that breach of a standstill agreement does not bar proceedings but may give rise to contractual liability, and maintained the patent as granted.
Breach of a standstill clause does not deprive the breaching party of the right to sue, but may give rise to contractual liability
ClaimantNote: The Paris Central Division rejected any jurisdictional/admissibility challenge based on breach of a standstill clause, holding such breaches do not divest the party of the right to bring an action.
Claim 1 feature 1.3iii (support structure limiting expansion of flexible container) is not disclosed by 'Diaz'
RespondentLegal basis: Art. 56 EPCNote: The court found that Diaz's reservoir casing performs a protective function and the gap shown in figures is intended to remain even when filled, so the limitation feature is not disclosed.
Robertson (container for solid medicaments/pills) is not a relevant combination with Diaz (liquid drug delivery)
RespondentLegal basis: Art. 56 EPCNote: The court found the skilled person would be unlikely to consult Robertson (a box for pills) to improve Diaz (a liquid medicament delivery system), and in any event Robertson does not disclose the missing feature.
Lack of inventive step over Diaz combined with Robertson
ClaimantLegal basis: Art. 56 EPCReason: Neither Diaz nor Robertson discloses feature 1.3iii (the support structure limiting container expansion), and the combination of the two references cannot supply this missing element; the skilled person would have had no motivation to combine the two documents.
Lack of inventive step starting from Glejboel combined with Diaz and/or Robertson
ClaimantLegal basis: Art. 56 EPCReason: Neither Glejboel, Diaz, nor Robertson discloses feature 1.3iii, so this combination also fails to establish obviousness.
- Diaz (unspecified publication, liquid drug delivery system)Obviousness combination
- Robertson (unspecified publication, container for solid medicaments)Obviousness combination
- Glejboel (unspecified publication)Obviousness combination
The court interpreted claim 1 of EP 2 196 231 as requiring a support structure that limits the expansion of the flexible container (feature 1.3iii). This feature was critical to the inventive step analysis: the court found that Diaz's reservoir casing, which surrounds the reservoir to protect medication, does not disclose this limiting function because the casing in Diaz is intended to leave a gap even when the reservoir is full.