UPC_CFI_230/2023

SYSTEMS AND METHODS FOR DISPLAY DEVICE AND SENSOR ELECTRONICS UNIT COMMUNICATION

InfringementMain Infringement ActionParis LDInfringementCase Closed

Overview Decisions Reasoning Citations Documents Timeline

Plain-English summary

Dexcom sued multiple Abbott entities alleging infringement of EP 3435866 (a CGM sensor communication system) before the Paris Local Division; Abbott counterclaimed for revocation. The court found the patent lacked inventive step over the prior art, with both auxiliary requests 1 and 2 also invalid (the latter for added subject-matter). The court addressed an important jurisdictional principle: a claimant's Art. 83 UPCA carve-out limiting infringement claims cannot prevent the defendant from pursuing a full revocation counterclaim; all Dexcom's infringement claims were dismissed as a result.

Accepted arguments

What the court agreed with — by party.

EP 3435866 lacks inventive step over prior art
RespondentLegal basis: Art. 138(1)(a) EPC; Art. 56 EPC; Art. 65(2) UPCA
Note: Paris Local Division found main claim lacked inventive step; both auxiliary requests also invalid (auxiliary requests 1 and 2 had added subject-matter or also lacked inventive step).
UPC has jurisdiction over revocation counterclaim notwithstanding claimant's carve-out limiting infringement claims
RespondentLegal basis: Art. 76(1) UPCA; Arts. 29-31 Brussels Ibis Regulation
Note: Court held that the parties' right to define scope of dispute under Art. 76(1) UPCA cannot restrict defendant's challenge to patent validity in a counterclaim for revocation.
Auxiliary requests 1 and 2 introduce added subject-matter beyond the original application
RespondentLegal basis: Art. 138(1)(c) EPC
Note: Court found auxiliary request 2 extended patent subject-matter beyond the application as filed; auxiliary request 1 also found invalid.

Rejected arguments

What the court did not agree with — and why.

EP 3435866 is novel and inventive; dependent claims 2–9 are independently valid
ClaimantLegal basis: Art. 56 EPC
Reason: Novelty was accepted for claim 1, but inventive step was denied for all claims; Dexcom failed to provide specific arguments defending dependent claims 2–9 individually.
Infringement of EP 3435866 by Abbott entities' continuous glucose monitoring devices
ClaimantLegal basis: Art. 65(2) UPCA
Reason: Infringement action dismissed in full as patent was entirely revoked.
Abbott's carve-out defence limits scope of revocation counterclaim to UPC-claimed territories
ClaimantLegal basis: Art. 83 UPCA; Art. 76(1) UPCA
Reason: Court held the carve-out principle governing claimant's infringement scope does not restrict defendant's revocation counterclaim; no legal text in UPC law expressly limits such counterclaims.

Key legal principles

Doctrines and rules cited in the reasoning.

Parties' right to define subject-matter of dispute (Art. 76(1) UPCA) does not restrict defendant's counterclaim for revocation Brussels Ibis Arts. 29-30 apply directly to the UPC without requiring Art. 71c Defendant's failure to provide specific arguments for dependent claims leaves them undefended Art. 83 UPCA carve-out by claimant to exclude certain acts does not limit scope of revocation counterclaim Claim construction: skilled person applies technical meaning with aid of description, not merely philological reading

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Claim construction notes

The Paris Local Division discussed principles of claim interpretation for EP 3435866 (analyte monitoring system for continuous glucose monitoring). The court applied purposive construction, finding that the scope of the dispute is governed by party submissions while holding that general principles of claim interpretation favour technical meaning over literal/philological reading.