Key takeaways
Applicable standard concerning novelty
In order to be considered part of the state of the art (Art. 54 (1) EPC), an invention must be found clearly integrally, directly and unambiguously in one single piece of prior art and in its existing form, it must be identical in its constitutive elements, in the same form, with the same arrangement and the same features.
For lack of novelty to be found, the subject-matter of the invention must be derived directly and unambiguously from the prior art. This applies to all claim features.
Inventive step assessment includes formulation of an objective technical problem
See Decision, sec. III.2.a: Reading the patent at issue (paragraph [0043] to [0045]), the objective technical problem can be formulated as how to optimize the energy consumption and other resources of a CGM system.
Inventive step assessment includes establishing whether prior art serving as starting point was of interest to skilled person
See Decision, sec. III.2.e: Based on the case law of the CoA (UPC_CoA_335/2023; App_576355/2023), it must first be determined whether Berman would have been of interest to a person skilled in the art who, at the priority date of the patent at issue, was seeking to optimize the energy consumption and other resources of a CGM system.
Court may assess attacks document by document rather than novelty first, inventive step second
See Decision, sec. III.3: It can be left open whether the analyte monitoring system described in the patent at issue was already disclosed in the prior art by D11 or D13 as novelty-destroying. In any case, based on Berman, this system is not based on an inventive step
Dependent claims need to be defended separately and expressly
See Decision, sec. V: Claimant has not provided any specific arguments as to why any of the grounds for revocation relating to claim 1 would not apply to the dependent claims. The dependent claims are therefore also not valid.
Division
LD Munich
UPC number
UPC_CFI_233/2023
Type of proceedings
Infringement Proceedings
Counterclaim for Revocation
Parties
Claimant: DexCom, Inc.
Defendants: Abbott Laboratories, Abbott Diabetes Care Inc., Abbott GmbH, Abbott Diagnostics GmbH, Abbott Logistics B.V., Abbott (S.A./N.V.), Abbott s.r.l., Abbott B.V., Abbott Scandinavia Aktiebolag, Abbott France (S.A.S.)
Patent(s)
EP 3 797 685
Body of legislation / Rules
Art. 54, 56, 138(1) EPC, Rule 30 RoP, Art. 65(2) UPCA
