A decision by the Paris local division of the Unified Patent Court (UPC) has invalidated a patent of medtech company Dexcom across the 17 participating states of the new pan-European patent system.

The ruling is the latest round in an ongoing battle between rivals Dexcom and Abbott over technology to remotely monitor glucose levels used by diabetic patients. 

The fact the revocation applies to large swathes of the EU is a fear realised for many patent holders regarding the risk of opting in to the UPC system, which became fully operational last June – that a central revocation action could apply to all UPC participating states.

The patent in dispute, European patent EP 3 435 866 B1 (866 patent), covers technology used to design smart glucose-monitoring devices and was revoked for lacking an inventive step. 

Dexcom, represented by Bird & Bird and Hoffmann Eitle, filed for infringement of the patent at the Paris division in July 2023 against Abbott. Ten subsidiaries of Abbott, represented by Taylor Wessing and August Debouzy, counterclaimed for revocation and have now been successful with all of Dexcom’s infringement claims based on the patent in suit dismissed.

The Paris court ruled on 4 July that the patent “is entirely revoked with effect in the territories of the contracting member states for which the European patent had effect at the date of the counterclaim for revocation”, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

There are separate proceedings involving three Abbott subisdaries (1, 2 and 8) in Germany regarding the German portion of the 866 patent before the Mannheim Regional Court for an infringement action and before the German Federal Patent Court for a revocation action.

Dexcom had also argued that the scope of the counterclaim for revocation of the patent should be identical to the scope of the infringement claim, from which certain acts of infringement that are already pending before a national court with parallel jurisdiction are excluded for certain defendants. It was referring to the separate infringement and revocation proceedings in the German national courts involving the three Abbott subsidiaries.

The court found this argument “irrelevant” saying it would be “contrary to the principle of a fair trial to deprive” defendants not involved in the German proceedings “of the right to defend themselves by means of a counterclaim for revocation of the entire European patent”.

The judgment added: “There is no provision in the UPC Rules of Procedure that limits the party bringing a counterclaim to the parts of the patent asserted against it by the claimant in the infringement action, and no requirement that such party limit its action for revocation to what is asserted against it in the main infringement action.”

Florence Pilsner, associate at specialist IP firm Bristows, said that it was “unlikely that this decision on pan-UPC revocation alone will significantly affect a patentee’s strategy as to whether to opt out of the UPC system. This (together with the availability of a pan-UPC injunction), and the consequential costs savings and efficiencies was after all what the UPC was set up to achieve”.

However, she noted that taken together with other recent UPC decisions, such as that by the Hague local division in Abbott Diabetes Care v Sibio, in which the court decided that it had jurisdiction to grant relief in countries which have contracted to, but not yet ratified the UPC agreement, may cause patentees to “pause for thought before opting their patents back in”.

The dispute between Abbott and Dexcom is part of ongoing global litigation regarding the 866 patent. The UK High Court has revoked the UK designation of EP866.

The rivals are also in dispute in the US. In January, the US federal appeals court upheld a district court decision to refuse Dexcom a preliminary injunction against Abbott in a patent infringement dispute.

Dexcom is required to bear the costs of the proceedings in the action and Abbott’s request for an interim award of costs of €100,000 was dismissed.

Dexcom was represented by a team led by partner Anne-Charlotte Le Bihan and counsel Laurent Labatte from Bird & Bird’s Paris office and partners’ David Sproston and Mark Jones from the London office of Hoffmann Eitle.

Abbott was represented by a pan-European Taylor Wessing team led by London-based partners Nigel Stoate, Matthew Royle and Michael Washbrook and Munich-based partners’ Gisbert Hohagen, Christian Lederer and Dietrich Kamlah. The team also included partner Christian Dekoninck located in the Brussels office, partners’ Eelco Bergsma and Wim Maas located in Eindhoven and Amsterdam, respectively, and Vienna-based partner Thomas Adocker. 

Abbott France was represented by August Debouzy partner François Pochart. 

This is the second decision on the merits issued by the UPC. Just a day earlier on 3 July, the Dusseldorf local division delivered the UPC’s first ever judgment on infringement. The case was between the claimant Kaldewei – which makes sanitary tray devices – and bath tub manufacturer Bette. The Kaldewei patent was declared valid and infringed and an injunction preventing Bette from selling certain shower trays in seven different countries was imposed.